Ex Parte Piraino et al

Board of Patent Appeals and Interferences

Jan 11, 2012

11262369 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL W. PIRAINO,
RICHARD C. NOVA, and SHAWN R. BERTAGNOLE
__________

Appeal 2010-007595
Application 11/262,369
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 3-13, and 15-25. We have jurisdiction
under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A device capable of providing a user with instructions for
administering CPR, the device comprising:
an output device for communicating a prompt to the user;
a user input mechanism; and
a processing unit coupled to the output device and the user input
mechanism which directs the device to follow one of a first and a second
sequence of steps for treatment of an unconscious patient depending only on
the user‟s input in response to the prompt, wherein at least one of the first
and second sequence of steps includes providing instructions for delivery of
CPR.

The following grounds of rejection are before us for review:
I. Claim 1 stands rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim 60 of U.S.
Pat. No. 6,697,671 B1 (Nova et al., issued February 24, 2004).
II. Claim 1 stands rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim 17 of U.S.
Pat. No. 6,334,070 B1 (Nova et al., issued December 25, 2001).
III. Claims 1, 3, 4, 6, 7, 10-13, 15, 16, 19, 22, and 25 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Morgan.
1

IV. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Morgan and Brewer.
2

V. Claims 8, 9, 18, 20, 21, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by Morgan.

1
Morgan et al., US 4,619,265, issued Oct. 28, 1986.
2
Brewer et al., US 6,263,238 B1, issued Jul. 17, 2001.
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We reverse Rejections I and II, but affirm Rejections III-V.
ISSUE (Rejections I and II)
Does the preponderance of evidence of record support the Examiner‟s
conclusion that claim 1 is unpatentable on the ground of nonstatutory
obviousness-type double patenting?

FINDINGS OF FACT
FF1. In view of their brevity, the entirety of the obviousness-type double
patenting rejections are set forth below:
Claim 1 is rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claim 60 of U.S. Patent No. 6,697,671. Although the
conflicting claims are not identical, they are not patentably
distinct from each other because both claims are drawn to
obvious variations of providing a user with instructions for
administering CPR.
Claim 1 is rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claim 17 of U.S. Patent No. 6,334,070. Although the
conflicting claims are not identical, they are not patentably
distinct from each other because both claims are drawn to
obvious variations of providing a user with instructions for
administering CPR.

(Ans. 3.)

ANALYSIS
Appellants argue that the Examiner has merely set forth a conclusory
statement that the claims are obvious variations over the patented claims,
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and thus has failed to establish a prima facie case of double patenting (see
App. Br. 6-8). For example, Appellants assert:
Claim 1 requires “a processing unit coupled to the user input
mechanism which directs the device to follow one of a first and
a second sequence of steps for treatment of an unconscious
patient depending only on the user‟s input in response to the
prompt, wherein at least one of the first and second sequence of
steps includes providing instructions for delivery of CPR.”
Claim 60 of U.S. Patent No. 6,697,671 does not recite this
limitation of claim 1 of the present application. The Examiner
has identified no teaching or reason why it would have been
obvious to a person of ordinary skill to have modified the
device of claim 60 of U.S. Patent No. 6,697,671 to include this
feature of claim 1 of the present application. As such, the
Examiner has failed to establish that claim 1 is obvious over
claim 60 of U.S. Patent No. 6,697,671.

(Id. at 7; see also id. at 7-8 for a similar argument as to Patent No.
6,334,070).
We agree with Appellants, and reverse the obviousness-type double
patenting rejections.

CONCLUSION OF LAW
We conclude that the preponderance of evidence of record does not
support the Examiner‟s conclusion that claim 1 is unpatentable on the
ground of nonstatutory obviousness-type double patenting. We thus reverse
the rejection of claim 1 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claim 60 of U.S. Pat. No.
6,697,671; as well as the rejection of claim 1 on the ground of nonstatutory
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obviousness-type double patenting as being unpatentable over claim 17 of
U.S. Pat. No. 6,334,070.
ISSUE (Rejections III-V)
Does the preponderance of evidence of record support the Examiner‟s
conclusion that claim 1 is anticipated by Morgan?

FINDINGS OF FACT
FF2. According to the Specification:
This invention relates generally to devices for providing
therapy to a patient in a cardiac emergency, and more
specifically to portable, automated external defibrillators having
a user interface for providing visual and aural instructions for
performing emergency cardiopulmonary resuscitation and
defibrillation therapy.

(Spec. ¶0002.)
FF3. The Specification teaches further that “[i]n another aspect, the
defibrillator further includes electrodes which sense the patient‟s ECG
signal, and one of the first and second sequences includes a prompt for
analysis of the patient‟s ECG” (id. at ¶0022).
FF4. The Examiner‟s statement of the anticipation rejection is found at
pages 3-4 of the Answer. We adopt the Examiner‟s findings as our own.
FF5. Morgan “provides a personal defibrillator that is portable, easy to use,
and comparatively inexpensive” (Morgan, col. 1, ll. 51-53).
FF6. According to Morgan:
If the patient is unconscious, or becomes unconscious,
then the operator pushes the YES switch (FIG. 3c), and the
instrument enters a detection mode in which the message shown
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in FIG. 3e is displayed. In this mode, electrocardiogram (ECG)
and transthoracic impedance data is obtained directly from the
patient via electrodes 30 and 36 (FIG. 2). The resulting data is
used, together with information supplied by the operator (e.g.,
subject unconscious), to determine whether a defibrillation
shock is medically appropriate. During collection of data, the
instrument looks for transthoracic impedance data that would
indicate motion of the patient. If motion is detected, then the
message shown in FIG. 3f is displayed, and the data collection
is restarted.
If the ECG data indicates that a defibrillation shock is not
appropriate, then the message of FIG. 3d is briefly displayed,
and the defibrillator then returns to the state corresponding to
FIG. 3b. If the instrument determines that a shock is medically
appropriate, then the message of FIG. 3g is displayed, advising
the operator to proceed by pushing the SHOCK switch. If the
SHOCK switch is then pushed, the instrument displays the
message shown in FIG. 3h and then delivers a defibrillation
shock to the patient. After the shock has been delivered, the
instrument returns to the state corresponding to FIG. 3b. The
cycle beginning at FIG. 3b and ending at FIG. 3h may be
repeated for a maximum of two additional times, if the patient
remains unconscious.

(Id. at col. 5, ll. 23-51.)
FF7. Figures 3b- 3g, referenced in the above passage, showing views of the
defibrillator display, are reproduced below:

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ANALYSIS
Appellants argue that “claim 1 requires the „device to follow one of a
first and a second sequence of steps for treatment of an unconscious patient
depending only on the user‟s input in response to the prompt, wherein at
least one of the first and second sequence of steps includes providing
instructions for delivery of CPR” (App. Br. 10 (emphasis in original)).
According to Appellants, that as can be seen from FIGS. 7B and 7C of
Morgan, “the arrival at step 318 from step 330 depends on more than only
the user‟s input in response to the prompt at 330,” but also “requires
acquisition of transthoracic impedance (TTI) data as a precursor for
attempted ECG analysis and defibrillation” (id. at 10-11).
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Appellants‟ arguments are not convincing. During prosecution before
the Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. In re American Academy Of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1, which is drawn to a device,
requires “a processing unit coupled to the output device and the user input
mechanism which directs the device to follow one of a first and a second
sequence of steps for treatment of an unconscious patient depending only on
the user‟s input in response to the prompt, wherein at least one of the first
and second sequence of steps includes providing instructions for delivery of
CPR.” We interpret the phrase of directing “the device to follow one of a
first and a second sequence of steps for treatment of an unconscious patient
depending only on the user‟s input in response to the prompt” as only
requiring a response to a prompt by a user, where the device is in a mode
that provides at least two sequences of steps, one of which is a sequence of
steps that includes instructions for delivery of CPR. We do not interpret the
phrase as excluding a device that can perform additional data collecting
steps, such as acquisition of TTI data, after the response to the prompt has
been entered by the user. That interpretation is consistent with the teachings
of the Specification, as the Specification teaches that the device may also
include electrodes, and thus would receive additional data other than that
provided by the user of the device.
Morgan teaches a device that prompts the user for a response, in this
case, a response as to whether the patient is unconscious. Solely upon
response to that prompt, the device of Morgan allows for two separate
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sequences, one in which a shock is administered, and one in which it is not.
Given our construction of claim 1, it is irrelevant that after the user responds
to the prompt of whether the patient is unconscious that the device collects
additional data in determining whether a shock should be administered, or if
only CPR should be administered.
We thus agree with the Examiner that Morgan anticipates claim 1. As
claims 3, 4, 6, 7, 10-13 were not argued separately, we affirm the rejection
as to those claims as well. 37 C.F.R. § 41.37(c)(1)(vii).
As to claim 15, 16, 19, 22, and 25, Appellants essentially reiterate the
arguments made with respect to claim 1 (App. Br. 11). Moreover, as to the
obviousness rejections, Appellants again reiterate the arguments made with
respect to claim 1 (id. at 12). Those arguments are not found to be
convincing for the reasons set forth above with respect to claim 1.

CONCLUSION OF LAW
We conclude that the preponderance of evidence of record supports
the Examiner‟s conclusion that claim 1 is anticipated by Morgan. We thus
affirm the rejection of claims 1, 3, 4, 6, 7, 10-13, 15, 16, 19, 22, and 25
under 35 U.S.C. § 102(b) as being anticipated by Morgan. For the reasons
set forth above also, we also affirm the rejection of claims 5 and 17 under 35
U.S.C. § 103(a) as being rendered obvious by the combination of Morgan
and Brewer, as well as the rejection of claims 8, 9, 18, 20, 21, 23, and 24
under 35 U.S.C. § 103(a) as being rendered obvious by Morgan.

Appeal 2010-007595
Application 11/262,369

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TIME PERIOD FOR RESPONSE
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

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