Ex Parte Kuhn

Patent Trial and Appeal Board

Jul 28, 2017

12182484 (P.T.A.B. Jul. 28, 2017)

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.
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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.
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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.
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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,
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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
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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
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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
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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
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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.
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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
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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.
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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.
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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
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