Ex Parte Hartlaub

Board of Patent Appeals and Interferences

Nov 30, 2010

10002669 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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MEDTRONIC, INC.
7 10 MEDTRONIC PARKWAY NE
MINNEAPOLIS, MN 55432-9924
APPLICATION NO.
I EXAMINER I
NAJARIAN, LENA
101002,669 1013 11200 1 Jerome T. Hartlaub 11738.00046 5026
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
12/02/2010 ELECTRONIC
rs.docketingus @ medtronic.com
sso @cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JEROME T. HARTLAUB
Appeal 2010-00029 1
Application 101002,669
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-00029 1
Application 101002,669
Jerome T. Hartlaub (Appellant) seeks review under 35 U.S.C. 5 134
(2002) of a final rejection of claims 12-26 and 39-48, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellant invented an automated patient scheduling system and
method for implantable drug delivery devices. Specification ¶ 04.
An understanding of the invention can be derived from a reading of
exemplary claim 12, which is reproduced below [bracketed matter and some
paragraphing added].
12. An implantable drug delivery device for delivering at least
one drug to a patient comprising in combination:
(a) at least one reservoir each containing at least one drug;
(b) a drug scheduling module for determining whether the drug
should be replenished;
(c) an appointment scheduling module automatically initiated
by the drug scheduling module and without scheduling input
contemporaneously provided by the patient, for automatically
scheduling an appointment to replenish the drug in the device;
and
(d) a telemetry module providing bi-directional
communications with an external device for allowing the
appointment scheduling module to schedule the appointment,
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed March 24, 2009) and Reply Brief ("Reply Br.," filed August 3,
2009), and the Examiner's Answer ("Ans.," mailed June 3, 2009), and Final
Rejection ("Final Rej .," mailed October 10, 2008).
Appeal 2010-00029 1
Application 101002,669
wherein the drug scheduling module receives data about the
implantable drug delivery device, wherein the data is selected
from the group consisting of drug usage information and drug
management data.
The Examiner relies upon the following prior art:
Pilarczyk US 4,766,542 Aug. 23,1988
Aker s US 6,112,182 Aug. 29,2000
Cummings, Jr. US 6,345,620 B 1 Feb. 5,2002
Mayer US 200210010597 A1 Jan. 24,2002
Lebel US 200210016568 A1 Feb. 7,2002
Claims 12-15, 17-26, 39, and 44 stand rejected under 35 U.S.C. 5 103(a)
as unpatentable over Lebel and Pilarczyk.
Claims 40-41 and 45-46 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Lebel, Pilarczyk, and Mayer.
Claim 16 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over
Lebel, Pilarczyk, and Akers.
Claims 42-43 and 47-48 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Lebel, Pilarczyk, and Cummings.
ISSUES
The issue of whether the Examiner erred in rejecting claims 12-15, 17-
26, 39, and 44 under 35 U.S.C. 5 103(a) as unpatentable over Lebel and
Pilarczyk turns on whether Lebel and Pilarczyk describe limitation (c) and
limitation (h) of claims 12 and 21 respectively.
Appeal 2010-00029 1
Application 101002,669
The issue of whether the Examiner erred in rejecting claims 40-41 and
45-46 under 35 U.S.C. 5 103(a) as unpatentable over Lebel, Pilarczyk, and
Mayer turns on whether the Appellant's arguments in support claims 12 and
21 are found persuasive and whether a person with ordinary skill in the art
would have been motivated to combine Lebel, Pilarczyk, and Mayer.
The issue of whether the Examiner erred in rejecting claim 16 under 35
U.S.C. 5 103(a) as unpatentable over Lebel, Pilarczyk, and Akers turns on
whether the Appellant's arguments in support claims 12 and 21 are found
persuasive and whether a person with ordinary skill in the art would have
been motivated to combine Lebel, Pilarczyk, and Akers.
The issue of whether the Examiner erred in rejecting claims 42-43 and
47-48 under 35 U.S.C. 5 103(a) as unpatentable over Lebel, Pilarczyk, and
Cummings turns on whether the Appellant's arguments in support claims 12
and 21 are found persuasive.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Lebel
01. Lebel is directed to implantable infusion pumps and external
devices for communicating therewith. Lebel ¶ 0002. Lebel is
concerned providing a system that has enhanced operation
performance and user interface capabilities. Lebel ¶ 0009. Lebel
Appeal 2010-00029 1
Application 101002,669
describes an implantable device that records various events that
stop the delivery of insulin, such as alarms or refills. Lebel ¶
0180.
Pilarczyk
02. Pilarczyk is directed to hardware and software used in a
pharmacy to automatically contact customers whose prescriptions
need to be refilled. Pilarczyk 1 :7- 1 1. The system automatically
telephones each customer whose prescription needs refilling.
Pilarczyk 154-56. The system performs an ongoing review of
prescription activity prior to sending information to a schedule
file. Pilarczyk 6:15-17. The ongoing review is initiated by the
pharmacist. Pilarczyk 6: 29-30. The system calculates the refill
due date based on the daily prescription activity. Pilarczyk 6:46-
47. The pharmacist selects the time span over which he wishes to
review the schedule file for customers he wants to contact and the
time span of prescription refill due date to be notified. Pilarczyk
6:61-65 and 7:29-31. Once the period of due dates to be covered
is selected, the telephoning task is automatically undertaken.
Pilarczyk 7:33-35. The system then places an automated call to
the customer and uses a voice synthesizer to provide the customer
with a refill reminder. Pilarczyk 6:40-54 and 7: 1 1-34.
Akers
03. Akers is directed to data processing systems used to manage
delivery of health care services. Akers 1 :8- 10. Akers is
concerned with enabling patients to utilize supplemental
Appeal 2010-00029 1
Application 101002,669
healthcare services. Akers 1:46-52. Akers describes a system
where a pharmacist is triggered to take further action controlled by
a second process when the pharmacist dispenses drugs. Akers
153-58. Such a process includes scheduling an appointment for
monitoring lifestyle, health, or disease states. Akers 2: 1-8.
04. Mayer is directed to computerized tools for tracking,
maintaining, and managing various aspects of patients' healthcare.
Mayer ¶ 0003. Mayer is concerned with providing individuals
with a greater degree of control and direct involvement over one's
own healthcare. Mayer ¶ 0012. Mayer describes a set of software
tools that can be used by a consumer to store, maintain, and track
hislher own medical data. Mayer ¶ 00 13. One such tool is an
appointment making tool that automatically requests appointment
with physicians or health care providers and manages set
appointments. Mayer ¶ 0050.
Curnrnings
05. Cummings is directed to a scheduling interface for booking
appointments with a professional, such as a doctor, or a
professional service, such as a medical testing service, even when
scheduling details may contain sensitive or highly personal
information and when the office of the professional or
professional service is closed. Cummings 1 : 13-20. Cummings is
concerned with scheduling appointments with a professional when
the professional's office is unable to schedule appointments or
Appeal 2010-00029 1
Application 101002,669
office hours are closed. Cummings 1:39-47. Cummings describes
that a patient contacts a call center and the call center creates an
appointment for the patient. Cummings 75-10. The call center
accesses a master schedule database that includes all of the times
that a physician is willing to accept appointments. Cummings
8:l-10. The call center then sets the appointment. Cummings
8:20-22.
ANALYSIS
Claims 12-15, 17-26, 39, and 44 rejected under 35 U.S.C. § 103(a) as
unpatentable over Lebel and Pilarczyk
The Appellant contends that Pilarczyk fails to describe scheduling
limitation (c) of claim 12 and as described in limitation (h) of claim 21.
App. Br. 13-14. The Appellant specifically argues that Pilarczyk only
describes that a voice synthesizer reminds the customer to refill a
prescription and this is not the same as scheduling an appointment. App. Br.
14. We disagree with the Appellant. Limitation (c) and limitation (h) of
claims 12 and 21 require scheduling an appointment for a patient, without
receiving input provided by the patient, to replenish the drug in the device.
Lebel describes an implantable, telemetric device that records events, such
as the need to refill insulin. FF 01. Pilarczyk describes a tool in a pharmacy
that automatically contacts customers whose prescriptions need to be
refilled. FF 02. Pilarczyk specifically describes that a pharmacist designates
a time period for due dates to contact customers and the system
automatically contacts each customer that requires a refill for a prescription.
Appeal 2010-00029 1
Application 101002,669
FF 02. The system automatically dials the customer's phone numbers and
uses a voice synthesizer to communicate to the customer to refill a drug
prescription. FF 02. The Appellant agrees this is what is described by the
cited prior art and contends that this notification is not the same as
scheduling an appointment. App. Br. 13- 14. The term "appointment"
encompasses any meeting set for an understood time, place, or purpose.
Here, Pilarczyk describes a communication to a customer for a meeting with
a specific place, purpose, and a relatively time. Although Pilarczyk does not
use the exact term "appointment," Pilarczyk does functionally describe the
scheduling of an appointment. The Appellant fails to further provide any
rationale as to how the teachings of Pilarczyk are functionally distinguished
from scheduling an appointment. As such, the combination of Lebel and
Pilarczyk describes limitations (c) and limitation (h) of claims 12 and 21.
The Appellant further contends that there would have been no reason for
one of ordinary skill in the art to be motivated to provide an automatic
scheduling module automatically initiated by a drug scheduling module.
App. Br. 14- 15. We disagree with the Appellant. Lebel and Pilarczyk are
concerned with patient's use of prescribed medications. FF 01-02. Lebel
describes a device that alarms users when a drug refill is required. FF 01.
Pilarczyk also solves this problem by automatically notifying customers
when a prescription may need to be refilled. FF 02. A person with ordinary
skill in the art would have been motivated to combine Pilarczyk's
description of notifying and scheduling the refill of a prescribed drug to
Lebel's device in order for Lebel's implanted device to continue to provide
medication to the patient in a prescribed manner. Lebel and Pilarczyk are
concerned with the same problem and a person with ordinary skill in the art
Appeal 2010-00029 1
Application 101002,669
would have recognized to combine their teachings and this combination
would have rendered predictable results.
Claims 40-41 and 45-46 rejected under 35 U.S. C. § 103(a) as
unpatentable over Lebel, Pilarczyk, and Mayer
The Appellant contends that Mayer fails to cure the deficiencies argued
supra in support of claims 12 and 21. App. Br. 15. We disagree with the
Appellant. The Appellant's arguments in support of claims 12 and 21 were
not found persuasive supra, and are not found persuasive here for the same
reasons.
The Appellant also contends that a person with ordinary skill in the art
would not have been motivated to combine Lebel, Pilarczyk, and Mayer.
App. Br. 16. We disagree with the Appellant. As discussed supra, Lebel
and Pilarczyk are concerned with providing a patient with a prescribed drug.
FF 0 1-02. Mayer is also concerned providing a patient with increased
control over medical information and solves this concern by providing a tool
that enables patients to have better control over their medical information.
FF 04. Mayer provides a specific appointment making tool that
automatically sets and manages appointments for a patient. FF 04. Such a
tool increases the patient's ability to control medical appointments. A
person with ordinary skill in the art would have been motivated to combine
Mayer to Lebel and Pilarczyk in order to increase a patient's ability to
control and manage health care appointments. As such, a person with
ordinary skill in the art would have been lead to combine Lebel, Pilarczyk,
and Mayer.
Appeal 2010-00029 1
Application 101002,669
Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Lebel,
Pilarczyk, and Akers
The Appellant contends that Akers fails to cure the deficiencies argued
supra in support of claims 12 and 21. App. Br. 16. We disagree with the
Appellant. The Appellant's arguments in support of claims 12 and 21 were
not found persuasive supra, and are not found persuasive here for the same
reasons.
The Appellant also contends that a person with ordinary skill in the art
would not have been motivated to combine Lebel, Pilarczyk, and Akers.
App. Br. 16. We disagree with the Appellant. As discussed supra, Lebel
and Pilarczyk are concerned with providing a patient with a prescribed drug.
FF 01-02. Akers is also concerned with the delivery of healthcare to
patients. FF 03. Akers triggers a pharmacist to provide a patient with
further medical information including scheduling an appointment for
monitoring lifestyle and health or diseases states or conditions. FF 03. A
person with ordinary skill in the art would have been motivated to combine
Akers to Lebel and Pilarczyk in order to increase the medical options for a
patient and facilitate the scheduling of appointments to receive the other
medical options. As such, Lebel, Pilarczyk, and Mayer are concerned with
delivering healthcare to patients and scheduling appointments for healthcare
and a person with ordinary skill in the art would have been lead to combine
their teachings.
Appeal 2010-00029 1
Application 101002,669
Claims 42-43 and 47-48 rejected under 35 U.S. C. § 103(a) as
unpatentable over Lebel, Pilarczyk, and Curnrnings
The Appellant contends that Cummings fails to cure the deficiencies
argued supra in support of claims 12 and 2 1. App. Br. 16- 17. We disagree
with the Appellant. The Appellant's arguments in support of claims 12 and
21 were not found persuasive supra, and are not found persuasive here for
the same reasons.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 12-15, 17-26, 39, and 44
under 35 U.S.C. 5 103(a) as unpatentable over Lebel and Pilarczyk.
The Examiner did not err in rejecting claims 40-41 and 45-46 under 35
U.S.C. 5 103(a) as unpatentable over Lebel, Pilarczyk, and Mayer.
The Examiner did not err in rejecting claim 16 under 35 U.S.C. 5 103(a)
as unpatentable over Lebel, Pilarczyk, and Akers.
The Examiner did not err in rejecting claims 42-43 and 47-48 under 35
U.S.C. 5 103(a) as unpatentable over Lebel, Pilarczyk, and Cummings.
DECISION
To summarize, our decision is as follows.
The rejection of claims 12- 15, 17-26, 39, and 44 under 35 U.S.C.
5 103(a) as unpatentable over Lebel and Pilarczyk is sustained.
Appeal 2010-00029 1
Application 101002,669
The rejection of claims 40-41 and 45-46 under 35 U.S.C. 5 103(a) as
unpatentable over Lebel, Pilarczyk, and Mayer is sustained.
The rejection of claim 16 under 35 U.S.C. 5 103(a) as unpatentable
over Lebel, Pilarczyk, and Akers is sustained.
The rejection of claims 42-43 and 47-48 under 35 U.S.C. 5 103(a) as
unpatentable over Lebel, Pilarczyk, and Cummings is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
3 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
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MEDTRONIC, INC.
710 MEDTRONIC PARKWAY NE
MINNEAPOLIS MN 55432-9924