Ex Parte Savage et alDownload PDFPatent Trial and Appeal BoardJan 22, 201814046892 (P.T.A.B. Jan. 22, 2018) 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. 14/046,892 10/04/2013 Walter T. Savage 377871-991102 9928 26379 7590 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PALO ALTO, CA 94303-2248 EXAMINER PATTON, AMANDA K ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): PatentDocketingU S -Palo Alto @ dlapiper. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WALTER T. SAVAGE, SHELLEY J. SAVAGE, WALTER N. MACLAY, DOUGLAS C. MORRISON, THOMAS K. GERATY, MARK D. BRINKERHOFF, RONALD S. BOEDER, TONY M. TON, and JEFFREY S. GREGER (APPLICANT: CardioThrive, Inc.) Appeal 2017-0011851 Application 14/046,8922 Technology Center 3700 Before DONALD E. ADAMS, ELIZABETH A. LaVIER, and JOHN E. SCHNEIDER, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. § 134(a) involves claims 1, 3, 4, 8, 10, 11, 17, 18, and 22-24 (Final Act.3 I).4 1 This Appeal is related to Appeal 2017-001165, Application 14/046,907 (see Ans. 2). 2 Applicant, CardioThrive, Inc., is the real party in interest (App. Br. 1). 3 Office Action mailed August 14, 2015. 4 Pending claims 2, 5-7, 9, 12-14, 16, and 19-21 stand objected to as depending upon a rejected base claim (see Final Act. 7 (emphasis omitted)). Because the objection is a petitionable rather than appealable matter, we will not further address these claims. Appeal 2017-001185 Application 14/046,892 Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellants’ disclosure “relates generally to methods and arrangements relating to cardiac medical devices” (Spec. 1: 8-9). Claims 1, 8, 15, and 24 are representative and reproduced below: 1. A portable defibrillator comprising: two pads electrically connected to each other, each pad including a defibrillator electrode; and an electrical system coupled with the two pads, the electrical system including at least a battery and a capacitor disposed in each of the pads, the battery arranged to charge the capacitor, the capacitor arranged to apply a voltage at the defibrillator electrodes, thereby delivering an electrical shock suitable for arresting a cardiac arrhythmia. (App. Br. 42 (emphasis added).) 8. A portable defibrillator comprising: two pads electrically connected directly to each other, each pad including a defibrillator electrode; and an electrical system coupled with the two pads, the electrical system including at least a battery and a capacitor disposed in each of the pads, the battery arranged to charge the capacitor, the capacitor arranged to apply a voltage at the defibrillator electrodes, thereby delivering an electrical shock suitable for arresting a cardiac arrhythmia. {Id. at 43 (emphasis added).) 15. A portable defibrillator comprising: two pads electrically connected to each other, each pad including a defibrillator electrode, the defibrillator electrode including a plurality of electrically conductive protrusions; and 2 Appeal 2017-001185 Application 14/046,892 an electrical system including at least a battery and a capacitor partially incorporated within each pad, the battery arranged to charge the capacitor, the capacitor arranged to apply a voltage at the defibrillator electrodes, thereby delivering an electrical shock suitable for arresting a cardiac arrhythmia. {Id. at 43 44 (emphasis added).) 24. A portable defibrillator comprising: two pads electrically connected to each other, each pad including a defibrillator electrode; and an electrical system including at least a battery and a capacitor partially incorporated within each pad, the battery arranged to charge the capacitor, the capacitor arranged to apply a voltage at the defibrillator electrodes, thereby delivering an electrical shock suitable for arresting a cardiac arrhythmia. {Id. at 45 (emphasis added).) The claims stand rejected as follows: Claims 1, 8, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kumar.5 Claims 3, 4, 10, 11, 17, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kumar and Martinez.6 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 5 Kumar, US 8,024,037 B2, issued Sept. 20, 2011. 6 Martinez, US 7,463,917 B2, issued Dec. 9, 2008. 3 Appeal 2017-001185 Application 14/046,892 FACTUAL FINDINGS (FF) FF 1. Kumar discloses that “[o]ne drawback of currently available wearable defibrillators ... is lack of patient compliance. Because of size, shape and weight of these wearable devices, patients are reluctant to wear them due to discomfort, their bulkiness under clothes or limitations in the devices themselves” (Kumar 2: 19-24; see generally Ans. 5). FF 2. Kumar “relates generally to external defibrillators. In particular, the invention relates to automatic external defibrillators that can be continuously and easily worn by a patient for an extended period of time” (Kumar 1: 22- 25 ; see Final Act. 4; Ans. 5). FF 3. Kumar’s “[djefibrillator [] has a design that distributes the weight of its components in order to make the device more comfortable to wear,” wherein the external defibrillator [has] a battery; a capacitor electrically communicable with the battery; at least two electrodes electrically communicable with the capacitor; a controller configured to charge the capacitor from the battery and to discharge the capacitor through the electrodes; and a support supporting the battery, capacitor, electrodes and controller in a deployment configuration, the defibrillator having a maximum thickness of 1 inch. (Kumar 3: 6-14, 4: 41^43; see generally Final Act. 4; Ans. 5-6). 4 Appeal 2017-001185 Application 14/046,892 FF 4. Kumar’s Figure 6 is reproduced below: t IK ) ( ____ v.«________________ * 40 \ A « > . 7 \ j 1 42 44 / FIG, 8 Kumar’s “FIG. 6 shows [an] external defibrillator according to . . . [an] embodiment of [Kumar’s] invention in place on a patient” (Kumar 4: 9-10 (emphasis removed); see generally Ans. 5). FF 5. Kumar’s Figure 6 is reproduced below: / 44, \ A / .a --A. 1/ i^/T“~—ih 46 ( '48 \ *4 jI FIG. 7 5 Appeal 2017-001185 Application 14/046,892 Kumar’s “FIG. 7 is a side view of the embodiment of [Kumar’s] FIG. 6 in place on a patient” (Kumar 4: 11-12 (emphasis omitted); see generally Ans. 5). FF 6. Kumar discloses: In FIGS. 6 and 7, the defibrillator 40 is supported by a strap support 42 that circumscribes the patient's torso and places 35 electrodes 44 and 46 on either side of the patient's torso. In this embodiment, the defibrillator’s battery, capacitor and control circuitry are within a housing 48 supporting electrode 44. Wires communicating electrode 46 with the remaining defibrillator components pass through or adjacent strap support 42. In some embodiments, each of the distributed components (with, the exception of the strap support 42) has a maximum weight per unit area of 0.1 lb/in2. (Kumar 5: 34^43 (emphasis omitted); see Final Act. 4-5; Ans. 5-6.) FF 7. Kumar’s Figure 10A is reproduced below: Kumar’s “FIG. 10A shows an external defibrillator [10] with an alternative capacitor [14] configuration” (Kumar 4: 17-18 (emphasis omitted); see Ans. 5). FF 8. Kumar discloses that “[t]he capacitor used in [Kumar’s] external defibrillators . . . may be long and wide with a narrow spacing to provide the required capacitance. Alternatively, the capacitor 14 may be formed as multiple capacitors connected in parallel; as shown in FIG. 10A, to provide the required capacitance” (Kumar 6: 14-18 (emphasis omitted); see Ans. 5). 6 Appeal 2017-001185 Application 14/046,892 FF 9. Kumar’s Figure 10B is reproduced below: Kumar’s “FIG. 10B shows an external defibrillator with an alternative battery configuration” (Kumar 4: 19-20 (emphasis omitted); see Ans. 5). FF 10. Kumar discloses that the battery used in [Kumar’s] external defibrillators . . . can be made thin and with a relatively large surface area. For example, battery 12 may be formed as multiple batteries connected in series to provide the required current and voltage to charge the capacitor, as shown in FIG. 10B. (Kumar 6: 19-23 (emphasis omitted); Ans. 5.) FF 11. Examiner finds that “Kumar does not disclose at least a battery and a capacitor disposed in each of the pads ... or partially incorporated within each pad” (Final Act. 4). FF 12. Martinez “relates to medical devices and, more particularly, to electrodes for medical devices” (Martinez 1: 6-7). FF 13. Martinez’s Figure 10 is reproduced below: FiG. 10 7 Appeal 2017-001185 Application 14/046,892 Martinez’s “FIG. 10 is a side view of a percutaneous electrode array according to an embodiment of the invention” (Martinez 3: 15-16 (emphasis omitted); see Final Act. 6). FF 14. Martinez’s Figure 11 is reproduced below: FIG. 11 Martinez’s “FIG. 11 is a plan view of a bottom side of the percutaneous electrode array of FIG. 10” (Martinez 3: 17-18 (emphasis omitted); see Final Act. 6). FF 15. Examiner finds that “Martinez teaches that it was known in the art of applying sustained delivery of energy to use an array of cylindrical microneedles for perforating the skin’s surface (e.g., electrode array 610 with needle-like extensions arranged to perforate and penetrate a layer of the skin” (Final Act. 6). ANALYSIS The rejection over Kumar. Kumar discloses an external defibrillator designed to “be continuously and easily worn by a patient for an extended period of time,” such that “the weight of its components [are distributed] in order to make the device more comfortable to wear” (FF 2-3). In this regard, Examiner finds that: 8 Appeal 2017-001185 Application 14/046,892 Kumar discloses the claimed portable defibrillator comprising: two pads electrically connected to one another and each including a defibrillator electrode covered in a protective housing (e.g. paddles 40 and 46 comprising electrodes 44 and 46 in protective housing 48); and an electrical system, the electrical system including a battery and a capacitor, the battery arranged to charge the capacitor, the capacitor arranged to apply a voltage at the defibrillator electrodes to facilitate delivering an electrical shock suitable for arresting a cardiac arrhythmia wherein a part of the electrical system is disposed within the housing of each paddle (e.g. battery and capacitor found in housing 48 and electrode and wires found in housing 46 that can be considered “electronics”. . .). (Final Act. 4; see FF 2-6.) Kumar discloses that the defibrillator’s “battery 12 may be formed as multiple batteries connected in series” and “capacitor 14 may be formed as multiple capacitors connected in parallel” (FF 7-10). Examiner recognizes, however, that “Kumar does not disclose at least a battery and a capacitor disposed in each of the pads ... or partially incorporated within each pad” (FF 11). To make up for this deficiency in Kumar, Examiner reasons: It would have been an obvious matter of design choice to a person of ordinary skill in the art to modify the electronics configuration as taught by Kumar with the design as taught by Applicant, because Applicant has not disclosed that including a battery and capacitor in each pad provides an advantage, is used for a particular purpose, or solves a stated problem. (Final Act. 4-5.) In this regard, Examiner finds that Appellants’ Specification “does not give any indication that having the battery and capacitor disposed in each of the pads provides a specific advantage or is used for a particular purpose,” but instead discloses that “the battery and capacitors may be arranged in ‘any suitable manner’ . . . [providing] no reasoning why placing a battery and a capacitor in each of the pads provides 9 Appeal 2017-001185 Application 14/046,892 any advantage to the disclosed invention” (Ans. 4 (citing Specification 23: 10-30)). See, e.g., In reKuhle, 526 F.2d 553, 555 (CCPA 1975) (“the particular placement of [an electrical] contact provides no novel or unexpected result”); see also id. (“Use of such a means of electrical connection in lieu of those used in the references solves no stated problem and would be an obvious matter of design choice within the skill of the art”). In the alternative, Examiner reasons that “it would have been obvious to try to place a battery and capacitor in each [of] the pads” (Final Act. 5). With regard to Examiner’s alternative rationale, Examiner asserts: At the time of [Appellants’] invention, there was a known problem of including all of the required electronics in a portable defibrillator in the smallest amount of space possible without causing detrimental interference between the parts. To do this, there is only a finite number of ways the parts can be placed together to solve that problem. [Thus,] [o]ne of ordinary skill could have used their knowledge to arrange the battery and capacitor in the system in the way [required by Appellants’ claims] . . . with a reasonable expectation of success, since there are limited pieces in a defibrillator. (Id.; see FF 1.) We find no error in Examiner’s rationale that a person of ordinary skill in this art would have found it prima facie obvious to separate, or divide, the multiple batteries and capacitors of Kumar’s device into separate pads to accomplish Kumar’s objective of distributing “the weight of its components in order to make the device more comfortable to wear” (see FF 3; see generally Ans. 5). See In re Dulberg, 289 F.2d 522, 523 (CCPA 1961) (making separable that which is integrated is an obvious design choice when, as here, there is a reason to do so); see also KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements 10 Appeal 2017-001185 Application 14/046,892 according to known methods is likely to be obvious when it does no more than yield predictable results”). Therefore, Examiner concludes that, at the time Appellants’ invention was made, Kumar makes obvious Appellants’ claimed invention. We find no error in Examiner’s prima facie case of obviousness. See KSR, 550 U.S. at 418 (It is proper to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Claim 1: Examiner makes clear that “Kumar discloses a defibrillator 40 that is supported by strap support 42,” “comprises electrodes 44 and 46 that are located on either side of the patient’s torso, with the electronics located within a housing 48 supporting electrode 44,” wherein “[wjires communicating electrode 46 with the remaining defibrillator components [including electrode 44] pass through or adjacent strap support 42” (Ans. 2 (alteration original); see FF 2-6). Therefore, we are not persuaded by Appellants’ contention that “none of the embodiments disclosed in Kumar are the electrodes electrically connected to each other” (App. Br. 13; Reply Br. 10). Kumar disclosure of an “automatic external defibrillator[] that can be continuously and easily worn by a patient for an extended period of time,” wherein the “design [] distributes the weight of its components in order to make the device more comfortable to wear,” and has “a maximum thickness of 1 inch” (FF 2-3). In this regard, Kumar discloses that a device within the scope of its disclosure, wherein size, weight distribution, and comfort are important features, Kumar discloses duplicate electrical components, which 11 Appeal 2017-001185 Application 14/046,892 are connected in parallel (see FF 7-10). Thus, we find that those of ordinary skill in this art, considering weight distribution and size, would have found it prima facie obvious to distribute components, including electrical components, such as batteries and capacitors, in both of Kumar’s pads (see e.g., 4-5; see App. Br. 13; Reply Br. 10). For the reasons set forth above, we are not persuaded by Appellants’ contention that a person of ordinary skill in this art would have had a reason to modify Kumar to include at least a battery and a capacitor in each of Kumar’s pads (App. Br. 14; Reply Br. 11). A fact-finder “need not seek out precise teachings directed to the specific subject matter of the challenged claim [in an analysis of obviousness], for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Further, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. For the same reasons, we are not persuaded by Appellants’ contention that “[t]he obvious to try argument is without merit because there is no motivation to modify Kumar as asserted by the [EJxaminer” (App. Br. 14; Reply Br. 11-12). For the reasons set forth above, we are not persuaded by Appellants’ contention that Examiner’s rationale is based on improper hindsight (see generally Ans. 5-6; cf. App. Br. 14; Reply Br. 11-12). 12 Appeal 2017-001185 Application 14/046,892 We agree with Examiner’s finding that Friedman7 “fails to outweigh [Examiner’s prima facie case of] . . . obviousness” (see Ans. 6; see also id. at 7-9). Friedman declares that “[t]he housing of the various electrical components [of a defibrillator] in a single housing is more efficient since duplicate electrical components are not needed, and such duplicate components would also add to the complexity and costs of manufacturing each unit,” “the typical external defibrillator is easier and cheaper to manufacture and also to shield against electromagnetic signal interference,” and “having all of the various high energy electrical components in a single shielded portion of the housing reduces the electrical noise on the ECG signal traces and other low energy wires that are used to connect the various other electrical components” (Friedman ^[ 11). For these reasons, Friedman “had doubts about why CardioThrive[, the real party in interest in this Appeal,] was proposing to manufacture and sell an external defibrillator device in which the various electrical components were split between the two paddles/pads,” because splitting the “capacitor and battery in each paddle/pad . . . seemed to be an unnecessary and costly duplication,” and “about the technical feasibility and likely commercial success of a product with the various electrical components split between the two paddles/pads and a capacitor and battery in each paddle/pad” {id. ^[ 12). Nevertheless, Friedman states that CardioThrive persuaded him that their product “provides a far more intuitive human factors design compared to all previous devices on the market” and “allows the size of the unit to be significantly reduced, from the mostly laptop sized community-focused devices currently 7 Declaration of Paul Friedman, MD, signed June 24, 2015. 13 Appeal 2017-001185 Application 14/046,892 on the market... to a simple, lightweight and completely mobile/ambulatory device with the same footprint as a cell phone and that is less tha[n] two inches in total thickness” (id. 13). Friedman makes reference to a “typical external defibrillator,” but fails to identify whether such a “typical external defibrillator” is intended to include Kumar’s defibrillator (see Friedman 11; cf. FF 2-6). To the contrary, Friedman’s reference to a “typical external defibrillator” appears to refer to “laptop sized community-focused devices currently on the market” (see Friedman 11; cf. id. 13). In doing so, Friedman does not appear to recognize Kumar’s disclosure of an “automatic external defibrillator[] that can be continuously and easily worn by a patient for an extended period of time,” wherein the “design [] distributes the weight of its components in order to make the device more comfortable to wear,” and has “a maximum thickness of 1 inch” (FF 2-3). As discussed above, in producing a device within the scope of Kumar’s disclosure, wherein size, weight distribution, and comfort are important features, Kumar discloses duplicate electrical components connected in parallel (see FF 7-10). Where, as here, the prior art suggests duplicating parts, we are not persuaded by Friedman’s statement that “duplicate electrical components are not needed,” in a device such as that disclosed by Kumar (Friedman 11). See In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“[i]t is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”). Friedman fails to identify an evidentiary basis to support the assertion that “duplicate components would [] add to the complexity” of Kumar’s device, or that Kumar’s disclosure fails to account for any such additional 14 Appeal 2017-001185 Application 14/046,892 complexity (see Friedman 11). Therefore, we are not persuaded by Friedman’s contentions regarding complexity resulting from duplicate components. Similarly, Friedman fails to identify an evidentiary basis to support the assertion that “duplicate components would add to the costs of manufacturing each unit” relative to a “typical external defibrillator” (see Friedman ^ 11). In this regard, Friedman fails to explain whether any such additional costs would have been reasonable to those of ordinary skill in this art when manufacturing a device with the features disclosed by Kumar. Friedman fails to identify an evidentiary basis to support the conclusion that Kumar failed to properly shield its device, or that those of ordinary skill in this art seeking to attain a device having the features disclosed by Kumar, would not find such shielding obvious, and any additional costs, relative to the manufacturing costs associated with a typical, i.e. laptop sized, external defibrillator, reasonable to achieve the objectives set forth in Kumar (see Friedman 1 1; cf FF 1-10). Friedman fails to explain how CardioThrive’s device differs from Kumar, such that CardioThrive’s device “provides a far more intuitive human factors design compared to [Kumar]” and “allows the size of the unit to be significantly reduced,” relative to Kumar’s device (see Friedman ^ 13; cf. FF 1-10). For the foregoing reasons, we are not persuaded by Appellants’ contentions regarding Friedman (App. Br. 14-19; Reply Br. 12-16). Claim 8: Examiner finds that Kumar’s “‘[w]ires communicating electrode 46 with the remaining defibrillator components [including electrode 44] pass 15 Appeal 2017-001185 Application 14/046,892 through or adjacent strap support 42’ serve to directly electrically [] connect [Kumar’s] two electrode pads” (Ans. 3 (citing Kumar 5: 39-41); see FF 6). In this regard, we note that Kumar discloses that “the defibrillator’s battery, capacitor and control circuitry are within a housing 48 supporting electrode 44. Wires communicating electrode 46 with the remaining defibrillator components pass through or adjacent strap support 43” (FF 6). Appellants fail to explain how Kumar’s disclosure of a connection of a capacitor and control circuitry supporting electrode 44 and that “[wjires communicating electrode 46 with the remaining defibrillator components pass through or adjacent strap support 42,” fails to disclose that [Kumar’s] electrodes are electrically directly connected to each other” (App. Br. 20; see Reply Br. 18). For the reasons set forth above, we are not persuaded by Appellants’ contentions that a person of ordinary skill in this art would have no reason to modify Kumar as proposed by Examiner absent “the benefit of [Appellants’] [Specification,” “there is no motivation to modify Kumar as asserted by the [E]xaminer,” and that Friedman provides evidence of non-obviousness (App. Br. 20-26; see Reply Br. 16-24). Claim 24\ Examiner finds that “Appellants’ arguments regarding . . . claim 24 are substantially the same as the arguments made regarding the identical claim language in claim 1 [discussed] above” (Ans. 3). For the reasons set forth above, we are not persuaded by Appellants’ contentions that a person of ordinary skill in this art would have no reason to modify Kumar as proposed by Examiner absent “the benefit of [Appellants’] [Specification,” 16 Appeal 2017-001185 Application 14/046,892 “there is no motivation to modify Kumar as asserted by the [EJxaminer,” and that Friedman provides evidence of non-obviousness (App. Br. 26-32; Reply Br. 24-27). The rejection over the combination of Kumar and Martinez'. Based on the combination of Kumar and Martinez, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to include the microneedle array of Martinez in the defibrillator of Kumar [because] such a modification would provide the system with the predictable results of more reliable location of the electrode array and lowered impedance resulting in more effective transfer of defibrillation energy” (Final Act. 6). We find no error in Examiner’s prima facie case of obviousness. Having found no deficiency in Examiner’s reliance on Kumar, for the reasons set forth above, we find no error in Examiner’s reliance on Martinez to suggest the inclusion of a microneedle array in Kumar’s device to provide for a more effective transfer of defibrillation energy (see id.). Thus, we are not persuaded by Appellants’ contentions that Martinez fails to make up for Appellants’ alleged deficiencies in Kumar (see App. Br. 33^11). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claims 1, 8, and 24 under 35 U.S.C. § 103(a) as unpatentable over Kumar is affirmed. Claim 22 is not separately argued and falls with claim 1. 17 Appeal 2017-001185 Application 14/046,892 The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kumar and Martinez is affirmed. Claims 4, 10, 11, 17, 18, and 23 are not separately argued and fall with claim 3. 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 18 Copy with citationCopy as parenthetical citation