Ex Parte Lebel et al

Board of Patent Appeals and Interferences

Mar 24, 2011

09768196 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/768,196 01/22/2001 Ronald J. Lebel 047711-0221 1919
90319 7590 03/24/2011
Foley & Lardner LLP
555 South Flower Street
Suite 3500
Los Angeles, CA 90071-2411
EXAMINER
DESANTO, MATTHEW F
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
03/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD J. LEBEL, VARAZ SHAHMIRIAN, DANIEL H.
VILLEGAS, DAVID Y. CHOY, PHILIP T. WEISS, and
PAUL M. MEADOWS
____________

Appeal 2009-010118
Application 09/768,196
Technology Center 3700
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 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 2009-010118
Application 09/768,196

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STATEMENT OF THE CASE
Ronald J. Lebel et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 6-10
and 12-29 as unpatentable over Tune (US 5,630,710, issued May 20, 1997),
Goedeke (US 5,904,708, issued May 18, 1999), and Moon (US 6,211,858
B1, issued Apr. 3, 2001); claim 11 as unpatentable over Tune, Goedeke,
Moon, and Er (US 6,185,461 B1, issued Feb. 6, 2001); and claims 6-29 as
unpatentable over Causey (US 6,641,533 B2, issued Nov. 4, 2003) and
Moon. Claims 1-5 have been canceled.
Appellants’ representative presented oral argument on March 8, 2011.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a medical system including a medical
device 2 and a communication device 32 having programming and
communication features. Spec. 1, ll. 11-15 and figs. 1A and 2.
Claim 12 is representative of the claimed invention and reads as
follows:
12. A medical system, comprising:
a) an ambulatory medical device (MD) comprising MD
electronic control circuitry that further comprises at least one MD
telemetry system and at least one MD processor that controls, at least
in part, operation of the MD telemetry system and operation of the
medical device, wherein the medical device is configured to provide a
treatment to a body of a patient or to monitor a selected state of the
body; and
b) a communication device (CD) comprising CD electronic
control circuitry that further comprises at least one CD telemetry
system and at least one CD processor that controls, at least in part,
operation of the CD telemetry system and operation of the
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communication device, wherein the CD telemetry system sends
messages to or receives messages from the MD telemetry system
using RF transmissions,
wherein the CD display is controlled to depict a plurality of
patient programmable options on at least one first menu and wherein
at least one of the patient programmable options may be enabled and
disabled at different times from a second menu such that when
disabled the at least one patient programmable option is no longer
displayed on the at least one first menu as an option while at least one
enabled option is displayed on the at least one first menu.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The obviousness rejection over Tune, Goedeke, and Moon
The Examiner found that the combined teachings of Tune and
Goedeke disclose all the limitations of independent claims 12 and 29 with
the exception of a display that depicts a plurality of patient programmable
options on a first menu (as per claim 12) or a first display screen (as per
claim 29) where the at least one of the patient programmable options may be
enabled or disabled at different times from a second menu (second display
screen)2 such that when disabled it is no longer displayed on the first menu
(first display screen) while at least one enabled option is displayed on the
first menu (first display screen). App. Br., Claims Appendix. The
Examiner further found that Moon discloses a screen display for a PDA
system that permits a user, in a first screen, to remove or add certain

2 Non-parenthetical nomenclature refers to the language of claim 12,
whereas the parenthetical nomenclature refers to the language of claim 29.
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applications (meters) that are to be shown in a second screen. Ans. 9.
Hence, according to the Examiner, Moon discloses a second menu that
controls the “meters” displayed on a first menu. Ans. 10.
Appellants first argue that neither Tune nor Goedeke discloses a
second menu for enabling or disabling at least one of a plurality of
programmable options displayed on a first menu. App. Br. 5. Appellants
further argue that, “the rotating display of meters [in Moon] is not a menu of
patient programmable options” because “[t]he term ‘menu’ necessitates an
ability to select menu item[s].” App. Br. 8. See also, Reply Br. 3, 4. With
respect to the teachings of Moon, Appellants also argue that although in
Moon a meter is removed from the display, it is not disabled, as required by
independent claims 12 and 29, because Moon specifically teaches that the
meter continues to run in the background. App. Br. 8. See also, Moon, col.
2, ll. 40-43.
At the outset, we find Appellants’ arguments unpersuasive because
Appellants’ contentions appear to attack the teachings of Tune, Goedeke,
and Moon individually, rather than the combination of Tune, Goedeke, and
Moon. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, the Examiner found, and we agree, that Tune discloses a
programmable infusion pump in which a user can program a plurality of
infusion parameters (programmable options) such as reservoir volume,
concentration, KVO Rate, PCA dose, etc. Ans. 5. See also, Tune, col. 3, ll.
29-44 and figs. 25-30. We further agree with the Examiner that Moon
discloses a first window that displays information, i.e., meters, and a second
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window for customizing the information that appears in the first window.
Ans. 10. See also, Moon, col. 6, ll. 50-55; col. 7, ll. 42-65; and figs. 5 and
7.
We find that if a person of ordinary skill in the art were to implement
the customization window of Moon in the programmable infusion pump of
Tune, such a person would have added a customization window to the set-up
screen 520 of Tune so as to permit a user to add or remove at least one of a
plurality of infusion parameters (programmable options) such as reservoir
volume, concentration, KVO Rate, PCA dose, etc. See KSR Int'l. Co. v.
Teleflex lnc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). We further find that
when a user would use the screen of Moon to remove at least one of a
plurality of the infusion parameters (programmable options) of Tune, since
the removed infusion parameter would not appear on the set-up screen 520
of Tune, the user would not be able to program the removed infusion
parameter, and as such the removed infusion parameter would be
“disabled3,” as called for by claims 12 and 29.
Moreover, we note that the combination of Tune and Moon does not
remove the programmable infusion parameters of Tune, but rather adds the
customization window of Moon, and thus implementation of Moon’s
teaching to use a customization window in the programmable infusion pump
of Tune, meets the limitations of a display that depicts a plurality of patient
programmable options on a first menu (first display screen) where the at

3 An ordinary and customary meaning of the term “disable” is “to make
incapable or ineffective.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
(10th Ed. 1997).

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least one of the patient programmable options may be enabled or disabled at
different times from a second menu (second display screen) such that when
disabled it is no longer displayed on the first menu (first display screen)
while at least one enabled option is displayed on the first menu (first display
screen).
Finally, Appellants appear to argue that it would not have been
obvious to combine the display screen of Moon’s PDA system with Tune
and Goedeke because they are from different technologies. App. Br. 9. This
argument is not persuasive. “When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
at 417. The Examiner reasons that such combination would have been
obvious “to delete any unused or unwanted options on the screen since this
‘clogs’ the screen.” Ans. 6. Appellants have not explained why any
differences in technologies between Moon, Tune, and Goedeke are of such a
nature as to have dissuaded a person of ordinary skill in the art at the time of
Appellants’ invention from providing the customization display screen of
Moon’s PDA system to the programmable infusion pump of Tune and
Goedeke, as reasoned by the Examiner.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claims 12 and 29 over the combined teachings of Tune, Goedeke, and
Moon.
With respect to the rejection of claims 6-10 and 13-28 over the
combined teachings of Tune, Goedeke, and Moon, Appellants do not present
any additional arguments. App. Br. 9, 10. Accordingly, the rejection of
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claims 6-10 and 13-28 over the combined teachings of Tune, Goedeke, and
Moon is likewise sustained.

The obviousness rejection over Tune, Goedeke, Moon, and Er
Regarding the rejection of claim 11 over the combined teachings of
Tune, Goedeke, Moon, and Er, Appellants do not present any additional
arguments. App. Br. 10. Accordingly, we shall also sustain the rejection of
claim 11 over the combined teachings of Tune, Goedeke, Moon, and Er.

The obviousness rejection over Causey and Moon
Regarding the rejection of claim 6-29 over the combined teachings of
Causey and Moon, Appellants make similar arguments as those presented
with respect to the rejection of independent claims 12 and 29 over the
teachings of Tune, Goedeke, and Moon. App. Br. 10, 11. Accordingly, for
the reasons set forth supra, we shall likewise sustain the rejection of claims
6-29 over the combined teachings of Causey and Moon.

SUMMARY
The decision of the Examiner to reject claims 6-29 is 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)(1)(iv).

AFFIRMED

Appeal 2009-010118
Application 09/768,196

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