Ex Parte Estes et al

Patent Trial and Appeal Board

Nov 30, 2016

13279150 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
130.36-US-C2 2299
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
13/279,150 10/21/2011
12813 7590 11/30/2016
Gates & Cooper LLP - Minimed
6701 Center Drive West
Suite 1050
Los Angeles, CA 90045
Mark C. Estes
11/30/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK C. ESTES, LEIF N. BOWMAN, DENETTA MALAVE,
and CARY DEAN TALBOT
Appeal 2015-001923
Application 13/279,150
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark C. Estes et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 4—10, 13—19, and 26—
28. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to systems for delivering and monitoring
medications.
Appeal 2015-001923
Application 13/279,150
Claims 1 and 10 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A system for delivering medication, comprising:
an infusion pump including an alarm to indicate status of
the infusion pump; and
a control system for controlling medication delivery by
the infusion pump;
wherein:
the control system includes an alarm profile
function for programming a variable alarm volume of the
alarm;
the alarm profile function varies the variable alarm
volume according to a daily schedule; and
the variable alarm volume
provides a first alarm volume during a first period
of hours in a day; and
provides a second alarm volume during a second
period of hours in the day; such that different volume levels are
provided for different periods of hours of the day.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 4—10, 13—19, and 26—28 under 35 U.S.C. § 103(a) as
being unpatentable over Mann (WO 00/10628 A2, published Mar. 2, 2000)
and Arzoumanian (US 5,382,941, issued Jan. 17, 1995).
(ii) claims 1, 10, 16, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Lebel (US 2002/0019606 Al, published Feb. 14, 2002)
and Arzoumanian.
2
Appeal 2015-001923
Application 13/279,150
Appellants canceled claims 20—25 in an Amendment filed subsequent
to the Final Office Action on June 30, 2014. That Amendment was entered
in an Advisory Action dated July 30, 2014. As such, the rejections of now-
canceled claims 20—25 that are present in the Final Office Action are moot,
notwithstanding that the Examiner’s Answer does not identify the rejections
as having been withdrawn.
ANALYSIS
Claims 1, 4—10, 13—19, and 26—28— Obviousness—Mann/Arzoumanian
The Examiner finds that Mann discloses most of the limitations of
claim 1 including “an alarm profile function for programming a variable
alarm volume of the alarm.” Final Act. 5. (citing Mann, p. 14,11. 22—25 and
p. 40,1. 13—p. 41,1. 6). The Examiner relies on Arzoumanian as teaching an
alarm volume that varies according to a daily schedule, wherein different
volume levels are provided for different times of the day. Id. at 6 (citing
Arzoumanian, col. 1,1. 65—col. 2,1. 7). The Examiner concludes that it
would have been obvious to modify Mann to vary the alarm volume
according to a daily schedule so that different volume levels are provided for
different times of the day, as taught by Arzoumanian, “in order to adjust the
alarm volume to be quieter and less startling at night and to be louder during
waking hours.” Id.
Appellants argue that Arzoumanian fails the established “‘two-prong
test’ for determining whether particular references are analogous art.”
Appeal Br. 3 (citing In re Deminski, 230 USPQ 313 (Fed. Cir. 1986) and In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellants assert that
3
Appeal 2015-001923
Application 13/279,150
Arzoumanian does not meet the first prong because “the Arzoumanian
invention is from a different field of endeavor as the Mann and Lebel
inventions and the claimed invention (i.e. electrical communications in the
field of car alarms as compared to surgery in the field of medicine).” Id. at
4. Appellants assert that the second prong also is not met because
Arzoumanian is not reasonably pertinent to the problem of “suboptimal
dosing of therapeutic agents via systems and methods that can, for example,
provide alarms to diabetic patients that prompt them to modulate their
glucose levels (e.g. by administering a dose of insulin).” Id. at 5.
The Examiner responds that “the field of endeavor common to the
prior art and the claimed invention is alarm control.” Ans. 2. The Examiner
states that the rejection does “not rely on Arzoumanian for teachings related
to the broad suboptimal medicinal dosing problem, but for the teachings of
controlling the volume of an alarm based on the needs of the user, such as
during different times of day.” Id. at 3. The Examiner notes that because
“the claimed invention and Arzoumanian seek to solve the problem of
different volume levels being necessary depending on different
environments,” Arzoumanian is reasonably pertinent to the inventor’s
problem. Id. at 3^4.
In reply, Appellants reiterate that Arzoumanian is not in the medical
device field and thus is not analogous prior art under the first prong of the
analogous art test. Reply Br. 4. Appellants argue that “[i]t is not common
sense to conclude that physicians or other health care personnel will turn
their attention to patent publications in the field of car alarms when thinking
about problems such as patient control over the delivery of therapeutic
4
Appeal 2015-001923
Application 13/279,150
agents,” and thus, “Arzoumanian cannot qualify as prior art under the second
prong of the Federal Circuit’s two prong test for analogous art.” Id. at 5.
Regardless as to whether Arzoumanian could properly be regarded as
being in Appellants’ field of endeavor, we do not agree that the teachings of
Arzoumanian are not reasonably pertinent to the problem faced by the
inventors. Appellants disclose that “the user can select different volume
levels for different time periods of the day,” and that this “enables users to
have a desired alarm volume at a desired time without having to manually
change the volume setting daily.” Spec., para. 73. Therefore, an inventor
faced with the problem of changing the volume setting at different times of
the day would look for suitable mechanisms that permit automatic volume
adjustment, and, as the Examiner correctly finds, Arzoumanian discloses
“control of the alarm set signal by a circuit that adjust[s] the alarm set chirp
volume automatically depending upon the outside li[ght] conditions.”
Arzoumanian, col. 2,11. 1^4; see also Final Act. 6. Accordingly, the
Examiner is correct that Arzoumanian is analogous art. See Ans. 3^4.
Moreover, we note that Appellants’ statement of the problem attempts to
focus the analysis not on the problem at issue, i.e., desired alarm volume at a
desired time, but on the specific application and setting identified in the
Specification—“medication infusion pumps used to deliver therapeutic
agents such as insulin.” Reply Br. 5; see also Spec., para. 2. This is more in
line with the “field of endeavor” prong, whereas the realm of analogous
prior art is not so limited, and includes art that is reasonably pertinent to the
problem faced by an inventor. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1,35 (1966) (rejecting the argument that the cited references
5
Appeal 2015-001923
Application 13/279,150
were not “pertinent prior art” and stating that “[t]he problems confronting
[the patentee] and the insecticide industry were not insecticide problems;
they were mechanical closure problems”).
Appellants also argue that “by distilling the Arzoumanian invention to
‘controlling the volume of an alarm based on the needs of the user’, the
Examiner improperly disregards the legal requirement of analyzing the
Arzoumanian subject matter ‘as a whole.’” Appeal Br. 7. This legal
requirement is in place to ensure that portions of a reference that might be
seen as teaching away from an Examiner’s proposed modification or
combination are considered as well. However, Appellants point to nothing
in Arzoumanian that might be regarded as such. The Examiner responds
that the rejection does not distill Arzoumanian down to a gist, but instead
relies on it for a specific teaching of alarm volume control during different
time periods of the day.” Ans. 4. Arzoumanian explicitly teaches using “a
low or high volume depending upon the light conditions.” Arzoumanian,
col. 2,11. 14—18; see also Ans. 4. We do not find error in the Examiner’s
reliance on a particular and explicit teaching in the Arzoumanian reference.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1, 4—10, 13—19, and 26—28 under 35 U.S.C. § 103(a) as being
unpatentable over Mann and Arzoumanian.
Claims 1, 10, 16, and 18—Obviousness—Lebel/Arzoumanian
Appellants’ arguments are based on the flawed premise that
Arzoumanian is nonanalogous art, which we address above in the analysis
directed to Mann and Arzoumanian. Appeal Br. 3—8. We are thus not
6
Appeal 2015-001923
Application 13/279,150
apprised of Examiner error in the rejection of claims 1, 10, 16, and 18 as
being unpatentable over Lebel and Arzoumanian. The rejection is sustained.
DECISION
The rejections of claims 1, 4—10, 13—19, and 26—28 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
7