10378001 (B.P.A.I. Oct. 28, 2008)

Ex Parte Edwards

Board of Patent Appeals and InterferencesOct 28, 2008

10378001 (B.P.A.I. Oct. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte D. CRAIG EDWARDS ____________ Appeal 2008-0436 Application 10/378,001 Technology Center 3700 ____________ Decided: October 28, 2008 ____________ Before WILLIAM F. PATE, III, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant has filed a request for rehearing under 37 C.F.R. § 41.52 requesting that we reconsider our Decision of April 16, 2008 wherein we affirmed the rejections of claims 1-10, 33-42, 75-77, 79, and 92-96. The Appellant argues that the Decision has made Findings of Fact which are not based on evidence in the record and that the Decision has overlooked the Appeal 2008-0436 Application 10/378,001 2 Examiner’s statement in the record concerning the operation of an implantable pacemaker as well as a portion of the definition of “emergency” (Request for Rehearing, 2). THE INVENTION The Appellant’s claimed invention is directed to the management of status information from emergency medical devices, such as automatic emergency defibrillators ([Spec. 0009]). ANALYSIS The Appellant argues that in the Decision that Findings of Fact (1, 3) are not based on evidence in the record. Findings of Fact (1, 3) in the Decision were dictionary definitions for the words “emergency” and “pacemaker” and are listed below: FF1. Webster’s Third New International Dictionary (1971), lists the primary definition of “emergency” as: 1) an unforeseen combination of circumstances or the resulting state that calls for immediate action. FF3. Webster’s Third New International Dictionary (1971), lists as an appropriate definition of “pacemaker” as: 2b) an emergency device for stimulating the heart with an alternating current to steady the beat or to reestablish the rhythm of an arrested heart. The Appellant argues that Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) held that findings of fact must be supported by substantial evidence in Appeal 2008-0436 Application 10/378,001 3 the record (Request for Rehearing, 2). The Appellant argues that there has been no prior opportunity to address issues relied on from the 1971 dictionary definitions because it was never evidence of record. The Appellant argues that in the interest of fairness the Appellant should have the opportunity to address whether a 1971 dictionary is applicable to implantable pacemaker technologies. In Phillips v. AVH Corp., 415 F. 3d 1303, 1322 (Fed. Cir. 2005) the Court citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1995) noted that judges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. As noted in the Decision at page 7, the Specification does not provide a definition of “emergency medical device” that is inconsistent with our definitions in Finding of Facts (1, 3), and we decline to read a specific embodiment, such as, an “emergency medical device” from the detailed description into the rejected claims. Here we have consulted a general purpose dictionary to establish the common meaning of the terms “emergency” and “pacemaker” since the Specification has not defined those terms. We have concluded that one of ordinary skill in the art when considering the meaning of those terms and reading the Specification would interpret a pacemaker to be an “emergency medical device.” This is because the state where the pacemaker is being used when the heart is not working Appeal 2008-0436 Application 10/378,001 4 properly is a “state that calls for immediate action” or an “emergency” using our conventional definitions (FF 1, 3) and considering the context of the Specification. The rejected claims do not require that the “emergency medical device” be specifically acting in an “emergency” at all times. Further, note that in the Appellant’s own invention, the external defibrillators are stored in cabinets (Fig. 1) and are not used virtually all the time but are still referred to by the Appellant as “emergency medical devices.” This would lead one of ordinary skill in the art to similarly consider a pacemaker to be an “emergency medical device.” Regardless, an implanted pacemaker can be considered an “emergency medical device” even when the heart is working properly because it is monitoring a defective heart which is an emergency condition. The Appellant further argues that the Decision has overlooked the Examiner’s statement in the record concerning the operation of an implantable pacemaker (Request for Rehearing, 3-4). The Appellant argues that the Examiner’s Answer at page 11, lines 1-4 states that the pacemaker works continuously. The Appellant has failed to consider the entire context of the citation in the Examiner’s Answer. The citation from the Examiner’s Answer at page 11, lines 1-5 is set forth below: an implantable defibrillator is designed such that during periods of normal heart rhythm it does not apply electrical therapy to the heart. During these normal heart rhythm periods, the device monitors the heart for any abnormal condition and in the event that an abnormal condition is detected, delivers energy to defibrillate the heart. Therefore, the implanted medical device 1 of Kraus is considered an emergency medical device. [Emphasis added.] Appeal 2008-0436 Application 10/378,001 5 The Examiner has considered the implantable defibrillator of Kraus to be an emergency medical device even when the defective heart has normal heart rhythms. The Appellant argues that since Kraus’s device is used “continuously” that it not an “emergency medical device” (Request for Rehearing, 4). We disagree with the Appellant. As noted above the rejected claims do not require that the “emergency medical device” be specifically acting in an “emergency” at all times. Further, note that in the Appellant’s own invention, the external defibrillators are stored in a cabinet (Fig. 1) and not used virtually all the time but are still referred to by the Appellant as “emergency medical devices.” This would lead one of ordinary skill in the art to similarly consider a pacemaker to be an “emergency medical device.” Regardless, an implanted pacemaker can be considered an “emergency medical device” even when the heart is working properly because it is monitoring a defective heart which is an emergency condition. The Appellant further argues that the definition of “emergency” set forth in Finding of Fact 1 focuses on the “call for immediate action” aspect of the definition and not the “unforeseen circumstances” aspect of the definition (Request for Reconsideration, 4). We disagree with the Appellant. Note that the definition of “emergency” in FF1 uses alternative language with the use of the preposition “or” and that the “unforeseen circumstances” portion of the definition is not required if “the resulting state calls for immediate action.” Regardless, when a pacemaker is implanted the actual specific time at which the heart failure will occur is “unforeseen.” One of ordinary skill in the art would consider a pacemaker to be an “emergency medical device” using this portion of the definition of “emergency” as well. Appeal 2008-0436 Application 10/378,001 6 For the above reasons we find the Decision of April 16, 2008 to be proper in rejecting claims 1-10, 33-42, 75-77, 79, and 92-96. DECISION Accordingly, the Appellant’s request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). DENIED hh MARY Y. REDMAN MEDTRONIC, INC. 710 MEDTRONIC PARKWAY NE M.S. LC340 MINNEAPOLIS, MN 55432-5604