Ex Parte KuhnDownload PDFPatent Trial and Appeal BoardJul 28, 201712182484 (P.T.A.B. Jul. 28, 2017) Copy Citation 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. 12/182,484 07/30/2008 Jonathan L. Kuhn P0028440.00/1111-052US01 3850 80584 7590 08/01/2017 Medtronic, Inc. 710 Medtronic Parkway MS: LC340 Minneapolis, MN 55432 EXAMINER TOWA, RENE T ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 08/01/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pairdocketing @ ssiplaw.com medtronic_crdm_docketing @ c ardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN L. KUHN Appeal 2015-007097 Application 12/182,484 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-007097 Application 12/182,484 STATEMENT OF THE CASE Appellant Jonathan L. Kuhn1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final Office Action dated September 18, 2014 (“Final Act.”) and the Advisory Action dated November 25, 2014 (“Adv. Act.”), rejecting claims 1—12, 15—25, 37, and 38.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The claims are directed to implantable “medical devices that monitor one or more physiological parameters of a patient.” Spec. 11. Claim 1, the sole independent claim, is reproduced below with disputed limitations italicized for emphasis: 1. An implantable medical system comprising: a light source that emits light; an implantable optically transmissive member optically coupled to the light source, the implantable optically transmissive member comprising a first segment and a second segment; a light dividing member that divides the light from the light source into at least a first portion and a second portion; a first sensing module optically coupled to the first and second segments of the optically transmissive member, wherein the first sensing module receives the first portion of light and 1 Appellant identifies Medtronic, Inc. and Medtronic, pic. as the real parties in interest. Appeal Brief, dated February 17, 2015, at 3 (“Appeal Br.”). 2 Claims 34—36, 39, and 40 are withdrawn from consideration. Final Act. 1 (Office Action Summary). Based upon the rejections of 1—12, 15—25, 37, and 38, we understand that the statement that these claims are “allowed” is a typographical error. Id. 2 Appeal 2015-007097 Application 12/182,484 generates a first optical signal, and wherein the light emitted by the light source propagates through the first segment prior to reception by the first sensing module; and a second sensing module optically coupled to the second segment of the optically transmissive member, wherein the second sensing module receives only the second portion of the light and generates a second optical signal, wherein the first sensing module and the second sensing module are configured to modulate one or more properties of the first and second portions of light as a function of one or more physiological parameters of a patient. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Cohen US 4,735,212 April 5, 1988 Weiner US 2002/0133211 A1 Sept. 19, 2002 Cantin US 2003/0231818 A1 Dec. 18, 2003 Youngner US 2004/0244502 A1 Dec. 9, 2004 Xia US 2009/0185772 A1 July 23, 2009 REJECTIONS3 The Examiner made the following rejections: 1. Claims 1—5, 11, 15—20, 23—25, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cantin and Weiner. 2. Claims 6—10 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cantin, Weiner, and Cohen. 3. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cantin, Weiner, and Youngner. 3 The rejection of claims 20 and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite (Final Act. 3—4) is withdrawn (Adv. Act. 1), and is not before us on appeal. 3 Appeal 2015-007097 Application 12/182,484 4. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Cantin, Weiner, and Xia. Appellant seeks our review of these rejections. DISCUSSION The Rejection of Claims 1—5, 11, 15—20, 23—25, and 38 As Unpatentable Over Cantin and Weiner Claims 1—4, 11, 18—20, 23—25, and 38 Appellant argues claims 1—4, 11, 18—20, 23—25, and 38 as a group. Appeal Br. 4—9. We select claim 1 as the representative claim, and claims 2— 4, 11, 18—20, 23—25, and 38 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claims 5 and 15—17 are addressed below. The Examiner finds, in part, that Cantin discloses light sensing modules (i.e., optical sensor 10, sensing area 26) (Final Act. 6; Adv. Act. 2), and both Cantin and Weiner disclose a light dividing member (i.e., cavities 28 in Cantin and beam splitters in Weiner) which direct light to peripherally- arranged light sensing modules, as recited in claim 1. Final Act. 4—10; Adv. Act. 2. The Examiner finds that Weiner’s beam splitters divide “light from a source into at least a first portion and a second portion and the first portion of light is received by a first sensing module, and a second sensing module receiving only the second portion of the light.” Adv. Act. 2; see also Final Act. 7—8. The Examiner determines that it would have been obvious to [substitute] one known element (i.e. the cavities of the device of Cantin et al.) for another (i.e. the beam splitters of Weiner et al.) to obtain predictable results such as multiplexing a plurality of sensors signals to measure physiological parameters so as to get the optimum amount of light coupled from the fiber core to sensing area and from the sensing area back to the fiber core. 4 Appeal 2015-007097 Application 12/182,484 Final Act. 10; see also Ans. 5—8. Appellant asserts that the Examiner’s rejection is erroneous for several reasons. First, Appellant argues that modifying Cantin with the teaching of Weiner “would have rendered the Cantin sensor unsatisfactory for its intended purpose and changed the principle of its operation.” Appeal Br. 6 (footnote omitted). According to Appellant, “the replacement of the cavities 28 of Cantin with the beam splitters of Weiner would have resulted in an optical fiber unable to collect the measurements that Cantin indicates are the very purpose of its optical sensors on the sides of an optical fiber.” Id. at 7; see also Appeal Br. 6—8; Reply Brief, dated July 23, 2105 (“Reply Br.”), at 2—7, 8 (“Because the type of sensor and type of sensing occurring are different, the functions performed by the cavities and the beam splitters are also different and it is in error for the Examiner to assert that the substitution of Weiner’s beamsplitters for Cantin’s cavities would have been obvious.”). Appellant’s “incorporation” arguments are not persuasive. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference [,] . . . [rjather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, 5 Appeal 2015-007097 Application 12/182,484 using the technique is obvious unless its actual application is beyond his or her skill.”). Here, both Cantin and Weiner divide an incoming signal and direct the divided signals to multiple sensors to measure physiological parameters or signals. See, e.g., Cantin || 2, 3, 63; Weiner || 22, 28, 209- 210. Because the Examiner proposes substituting Weiner’s beam splitters for Cantin’s cavities to divide and direct light to Cantin’s sensing modules (i.e., optical sensor 10, sensing areas 26), not replacing Cantin’s sensors 10 with Weiner’s sensors 2045—2048 as addressed by Appellant (Reply Br. 3— 4), Appellant’s incorporation arguments (Appeal Br. 6—8; Reply Br. 3—7) do not address the rejection as articulated by the Examiner. Contrary to Appellant’s argument that a person of ordinary skill in the art would be unable to align Weiner’s beam splitters along an optical axis (Appeal Br. 7), Weiner discloses that beam splitters are aligned along the optical cable. See, e.g., Weiner 1210. Consequently, Appellant does not show that the Examiner’s proposed modification is beyond the skill of one skilled in the art. Thus, Appellant does not apprise us of error. Second, Appellant argues that the substitution of Cantin’s cavities and Weiner’s beam splitters requires “some nexus between the substitution and the asserted outcome.” Appeal Br. 8. According to Appellant, “for the substitution of the beamsplitters 2050—2052 of Weiner for the cavities 28 of Cantin to be predictable, the beamsplitters must at least provide the functionality of the cavities, i.e., multiplex a plurality of sensor signals.” Id. In response, the Examiner finds that both the [Cantin] cavities and [Weiner] beam splitters communicate multiple signals (i.e. one for each sensor) on the same fiber core or waveguide, respectively. Thus, the combination of the fiber core (or waveguide) and cavities (or 6 Appeal 2015-007097 Application 12/182,484 beam splitters) allow the system as [a] whole to communicate a plurality of signals to and/or from the various sensors down the same fiber core (or waveguide), which meets the very definition of multiplexing. Ans. 12. The Examiner’s findings are correct. Appellant also does not contest the Examiner’s findings. See Reply Br. 7—8. Appellant’s argument is not persuasive. Third, Appellant argues that [a]s the Examiner has failed to provide any rationale as to why one of ordinary skill in the art would look to Weiner (or any other reference) to solve a problem that has already been solved by. . . Cantin (the primary reference), any reliance upon multiplexing as a motivation to combine the references appears to be the result of the Examiner engaging in impermissible hindsight reconstruction of Appellant’s claimed invention. Appeal Br. 8—9. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The Supreme Court has clearly stated that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Here, the Examiner’s findings and articulated reasoning— “multiplexing a plurality of sensors signals to measure physiological parameters so as to get the optimum amount of light coupled from the fiber 7 Appeal 2015-007097 Application 12/182,484 core to sensing area and from the sensing area back to the fiber core” (Final Act. 10)—are supported by explicit teachings in Cantin and Weiner, not in Appellant’s Specification. See, e.g., Final Act. 9-10 (citing Cantin 146). Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See McLaughlin, 443 F.2d at 1395. Thus, Appellant does not apprise us of error. For the reasons discussed above, the rejection of claim 1 is sustained. Claims 2—4, 11, 18—20, 23—25, and 38 fall with claim 1. Claim 5 Claim 5 recites an “implantable medical system . . . further comprising a light deflection member that directs the first portion of the light from the optically transmissive member to the first sensing module.” Appellant argues that claim 5, which depends from claim 1, “is patentable on that basis for at least the reasons stated above with respect to [claim 1].” Appeal Br. 9. For the reasons discussed above, the Examiner’s rejection of claim 1 is sustained, and Appellant’s argument is not persuasive. Appellant also argues the “the Examiner characterized beam splitters 2050—2052 as Tight deflection member[s]’ that direct the first portion of light ‘to the first sensing module 2045—2047’” and “sensors 2045—2048 cannot reasonably be construed as a first sensing module.” Appeal Br. 9. Appellant’s characterization of the Examiner’s findings and proposed combination of Cantin and Weiner is incomplete and misleading. The Examiner finds that Cantin’s optical sensor 10/sensing area 26 is the recited 8 Appeal 2015-007097 Application 12/182,484 first sensing module (see, e.g., Final Act. 5), and proposes that Cantin’s “cavities that extend into the fiber core 18 and are solely tasked with optimally directing light to and from the sensing areas 26 of the device of Cantin would be replaced with similar elements such as the beam splitters 2051—2053 of Weiner, solely to perform said optimal directing of light to and from the sensing areas 26.” Ans. 8 (emphasis omitted); Cantin 138 (“The optical sensor 10 further includes a sensing material 24 extending in each of the cavities 28 for forming a sensing area 26.”). Appellant’s arguments do not address the rejection as articulated by the Examiner, and, thus, do not identify error by the Examiner. The rejection of claim 5 is sustained. Claims 15 and 16 Claim 15, which depends from claim 1, recites that “the light dividing member comprises a waveguide.” Claim 16, which depends from claim 15, recites that “the waveguide defines an optical path through which the light emitted by the light source propagates and a reflective surface partially occluding the optical path, wherein the reflective surface directs the first portion of the light to the first sensing module.” Appellant argues that claims 15 and 16 are patentable as depending from independent claim 1 for at least the reasons stated above with respect to claim 1. Appeal Br. 10. For the reasons discussed above, the Examiner’s rejection of claim 1 is sustained, and Appellant’s argument is not persuasive. Appellant also argues that Weiner does not have a waveguide as recited in claims 15 and 16. Appeal Br. 10. According to the Specification, the “light dividing member may include, for example, a waveguide 9 Appeal 2015-007097 Application 12/182,484 comprising a reflective surface or an optical beam splitter.” Spec. 1 5. The Examiner finds that Weiner discloses a light dividing member, i.e., a beamsplitter or waveguide 2054. Final Act. 7—8. The Examiner also finds that the beamsplitters 2050—2053 of Weiner meet the very definitions of the waveguide as claimed in claims 15—16 as the beamsplitters 2050—2053, like any known beamsplitter, includes a partially reflective (occlusive) surface that allows it to redirect light to the plurality of sensors while simultaneously allowing a different portion of light to cross therethrough. Ans. 13—14. Appellant does not contest the Examiner’s findings. The rejection of claims 15 and 16 is sustained. Claim 17 Claim 17 recites that “the reflective surface comprises a gold or aluminum surface.” Appellant does not contest the Examiner’s finding that “[g]old and [ajluminum are well-known in the art to be used to create fully or partially reflective surfaces.” Ans. 14; see also Final Act. 11. The rejection of claim 17 is sustained. The Rejection of Claims 6—10 and 12 As Unpatentable Over Cantin, Weiner, and Cohen Claims 6—8 and 10 Appellant argues claims 6—8 and 10 as a group. Appeal Br. 11—12. We select claim 6 as the representative claim, and claims 7, 8, and 10 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(l)(iv). Claims 9 and 12 are addressed below. 10 Appeal 2015-007097 Application 12/182,484 Appellant argues that claim 6, which depends from claim 1, “is patentable for at least the reasons claim 1 is patentable” and “Cohen fails to overcome the deficiencies of Cantin and Weiner as discussed [above] with respect to independent claim 1.” Appeal Br. 11. For the reasons discussed above, the combination of Cantin and Weiner do not have any deficiencies, and the Examiner’s rejection of claim 1 is sustained. Appellant’s argument is not persuasive. The Examiner determines that it would have been obvious to modify Cantin in view of Weiner and Cohen since such a modification would amount to applying a known technique (i.e. as taught by Cohen) to a known device (i.e. as taught by Cantin et al.) ready for improvement to achieve a predictable result such as providing each transducer site with light wavelength dependent means for modulating light at a particular wavelength different from that of the other transducers. Final Act. 13. In response, Appellant repeats the argument that substituting Cantin’s cavities with Weiner’s beamsplitters would render the device inoperable. Appeal Br. 12. For the reasons discussed above with respect to claim 1, Appellant’s argument is not persuasive. The rejection of claim 6 is sustained. Claims 7, 8, and 10 fall with claim 6. Claim 9 Claim 9 recites that “at least one of the first or second light filters comprises a diffuse reflective surface.” Neither Appellant nor the Examiner define “diffuse” reflection. According to one dictionary, an ordinary meaning of “diffuse reflection is 11 Appeal 2015-007097 Application 12/182,484 the reflection of light from a surface such that an incident ray is reflected at many angles rather than at just one angle as in the case of specular reflection.” Defmitions.net, http://www.definitions.net/defmition/Diffuse%20reflection (last visited July 22, 2017). The Examiner’s finding that “the reflective surfaces of light filters 52B and 52C of Cohen are diffuse in that they are formed by coating, spreading, or scattering material around . . .; thus, whether such coating results in a diffuse or specular reflection is immaterial” (Ans. 14—15 (citing Cohen 6:28—37)) is unsupported by Cohen. Cohen does not explicitly disclose that the wavebands are reflected at many angles rather than just one angle. The rejection of claim 9 is not sustained. Claim 12 Appellant argues that claim 12, which depends from claims 1 and 11, “is patentable for at least the reasons claim 1 is patentable” and “Cohen fails to overcome the deficiencies of Cantin in view of Weiner as discussed [above] with respect to independent claim 1.” Appeal Br. 13. For the reasons discussed above, the combination of Cantin and Weiner do not have any deficiencies, and the Examiner’s rejection of claim 1 is sustained. Appellant’s argument is not persuasive. The rejection of claim 12 is sustained. 12 Appeal 2015-007097 Application 12/182,484 The Rejection of Claims 21 and 22 as Unpatentable Over Cantin, Weiner, and Youngner Appellant argues that claims 21 and 22, which depend from claim 1, “is patentable for at least the reasons claim 1 is patentable” and “Younger fails to overcome the deficiencies of Cantin in view of Weiner as discussed [above] with respect to independent claim 1.” Appeal Br. 14. For the reasons discussed above, the combination of Cantin and Weiner does not have any deficiencies, and the Examiner’s rejection of claim 1 is sustained. Appellant’s argument is not persuasive. The rejection of claims 21 and 22 is sustained. The Rejection of Claim 3 7 as Unpatentable Over Cantin, Weiner, andXia Appellant argues that claim 37, which depends from claim 1, “is patentable for at least the reasons claim 1 is patentable” and “Xia fails to overcome the deficiencies of Cantin in view of Weiner as discussed [above] with respect to independent claim 1.” Appeal Br. 14. For the reasons discussed above, the combination of Cantin and Weiner does not have any deficiencies, and the Examiner’s rejection of claim 1 is sustained. Appellant’s argument is not persuasive. The rejection of claim 37 is sustained. DECISION For the above reasons, the Examiner’s rejections of claims 1—8, 10— 12, 15-25, 37, and 38 are AFFIRMED. The Examiner’s rejection of claim 9 is REVERSED. 13 Appeal 2015-007097 Application 12/182,484 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 14 Copy with citationCopy as parenthetical citation