Ex Parte Skelton et al

Patent Trial and Appeal Board

Mar 15, 2017

12433017 (P.T.A.B. Mar. 15, 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.
12/433,017 04/30/2009 Dennis M. Skelton P0032879.00/LG10137 8242
13582 7590
Medtronic Inc. (Neuro)
710 Medtronic Parkway NE
MS: LC340 Legal Patents
Minneapolis, MN 55432
EXAMINER
MAHMOOD, NADIA AHMAD
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
medtronic_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS M. SKELTON, JON P. DAVIS, and ERIC J. PANKEN
Appeal 2015-004066
Application 12/433,017
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dennis M. Skelton et al. (“Appellants”) seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated January 30, 2014 (“Final Act.”), and as further explained in the
Advisory Action dated April 23, 2014 (“Adv. Act.”), rejecting claims 1—57.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Medtronic, Inc. as the real party in interest.
Appeal Br. 3.
Appeal 2015-004066
Application 12/433,017
BACKGROUND
The disclosed subject matter “relates to posture detection techniques,
and more particularly, to medical devices that deliver therapy in response to
detection of posture states.” Spec. 1,11. 20-21. Claims 1, 2, 20, 33, 34, and
44 are independent. Claim 1 is reproduced below, with emphasis added:
1. A medical device system, comprising:
a sensor configured to sense at least one
signal indicative of a posture state of a living body;
posture state detection logic configured to
classify the living body as being in a posture state
based on the at least one signal and to determine
whether the living body is classified in the posture
state for at least a predetermined period of time; and
response logic configured to initiate a
response as a result of the living body being
classified in the posture state, the response being
initiated only after the living body has maintained
the classified posture state for at least the
predetermined period of time.
REJECTIONS
1. Claims 1-6, 8, 9, 13-17, 20-22, 25, 26, 29, 32-A1, and 4A-56
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miesel (US
7,313,440 B2, issued Dec. 25, 2007) and Florio (US 2004/0002742 Al,
published Jan. 1, 2004).
2. Claims 10—12, 18, 19, 27, 28, 42, and 43 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Miesel, Florio, and Koh (US
7,149,584 Bl, issued Dec. 12, 2006).
2
Appeal 2015-004066
Application 12/433,017
3. Claims 7, 23, 24, 30, 31, and 57 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Miesel, Florio, and Singhal (US
2005/0060001 Al, published Mar. 17, 2005).
DISCUSSION
Rejection 1 — The rejection of claims 1—6, 8, 9, 13—17, 20—22, 25,
26, 29, 32-41, and 44—56 under 35 U.S.C. § 103(a)
A. Claim 1
Independent claim 1 recites, inter alia, “response logic configured to
initiate a response as a result of the living body being classified in the
posture state.” Appeal Br. 50 (Claims App.). Appellants contend that “the
Examiner has failed to cite to anything in Miesel that discloses or suggests”
this limitation. Id. at 8. For the reasons below, we agree. We also agree
with Appellants’ summary of certain teachings in Miesel:
Miesel describes techniques for evaluating therapy that is
delivered by a medical device. According to these techniques,
while a therapy parameter set (e.g., comprising parameters such
as pulse amplitude, pulse width, etc.) is used to deliver therapy,
activity levels and postures of a patient may be determined and
recorded. From this recorded information, metric values may be
derived that may be used to determine the relative efficacy of
parameter sets.
Appeal Br. 9 (footnote omitted); see also Miesel, col. 1,1. 35 — col. 2,1. 10.
Although Miesel discloses that “[t]he therapy parameters may be changed
over time” (col. 1,11. 39-40), as argued by Appellants, Miesel “does not
teach any logic that initiates therapy changes based on a posture state
3
Appeal 2015-004066
Application 12/433,017
classification” as required by the limitation at issue. Appeal Br. 10
(emphasis added).2
As to the passages of Miesel cited by the Examiner to address the
limitation at issue—column 1, lines 35—44 and lines 54—57 as well as
column 2, lines 35—37 and lines 39-52 (see Final Act. 3-A; Ans. 13 (11))—
we agree with Appellants’ view of those passages (see Appeal Br. 10-11;
Reply Br. 4—6).3 To the extent the Examiner now also relies on Miesel,
column 1, lines 64—67 or Florio, paragraph 57 to address the limitation at
issue (see Ans. 13—14 (| 2)), we also agree with Appellants’ view of those
passages (see Reply Br. 9—10 (discussing Miesel); Appeal Br. 15 (“the cited
Florio passage discloses detecting a patient state after some time period, but
does not teach initiating any response”)).
For these reasons, we do not sustain the rejection of claim 1.
B. Claims 2-6, 8, 9, 13-17, 47, 48, and 51-54
As with claim 1, independent claim 2 recites, inter alia, “response
logic configured to initiate a response as a result of the living body being
classified in the posture state.” Appeal Br. 50 (Claims App.). For claim 2
(and claims 3—6, 8, 9, 13—17, 47, 48, and 51—54, which depend from claim
2), the Examiner relies on the same deficient findings and conclusions with
regard to Miesel discussed above with regard to claim 1. See Final Act. 3—7.
2 The Examiner relies on a change in therapy as the “response” in the
limitation at issue. See Final Act. 4.
3 We add that, in column 1, lines 35—37, Miesel discloses that the
“techniques for evaluating a therapy delivered to a patient” are “based on
patient activity, posture, or both.” The “therapy” itself is not “based on
patient activity, posture, or both.”
4
Appeal 2015-004066
Application 12/433,017
Thus, for the same reasons discussed above, we also do not sustain the
rejection of claims 2—6, 8, 9, 13—17, 47, 48, and 51—54.
C. Claims 20—22, 25, 26, 29, 32, 45, and 46
Similar to claim 1, independent claim 20 recites, inter alia, “a therapy
module configured to control the therapy provided to the living body based
on the classification” of the posture state. Appeal Br. 53 (Claims App.). For
claim 20 (and claims 21, 22, 25, 26, 29, 32, 45, and 46, which depend from
claim 20), the Examiner relies on the same deficient findings and
conclusions with regard to Miesel discussed above with regard to claim 1.
See Final Act. 3—4, 6—8. Thus, for the same reasons discussed above, we
also do not sustain the rejection of claims 20-22, 25, 26, 29, 32, 45, and 46.
D. Claim 33
Similar to claim 1, independent claim 33 recites, inter alia,
“automatically initiating via a response module a response that is determined
based on the posture state.” Appeal Br. 55 (Claims App.). For claim 33, the
Examiner relies on the same deficient findings and conclusions with regard
to Miesel discussed above with regard to claim 1. Compare Final Act. 8—9,
with id. at 3^4. Thus, for the same reasons discussed above, we also do not
sustain the rejection of claim 33.
E. Claims 34^41, 49, 50, 55, and 56
Similar to claim 1, independent claim 34 recites, inter alia,
“automatically initiating via a response module a response that is determined
based on the posture state.” Appeal Br. 55 (Claims App.). For claim 34
(and claims 35-41, 49, 50, 55, and 56, which depend from claim 34), the
Examiner relies on the same deficient findings and conclusions with regard
to Miesel discussed above with regard to claim 1. See Final Act. 3—4, 7, 9—
5
Appeal 2015-004066
Application 12/433,017
11. Thus, for the same reasons discussed above, we also do not sustain the
rejection of claims 34-41, 49, 50, 55, and 56.
F. Claim 44
Similar to claim 1, independent claim 44 recites, inter alia,
“automatically initiate a response that is determined based on the posture
state.” Appeal Br. 56 (Claims App.). For claim 44, the Examiner relies on
the same deficient findings and conclusions with regard to Miesel discussed
above with regard to claim 1. Compare Final Act. 8—9, with id. at 3^4.
Thus, for the same reasons discussed above, we also do not sustain the
rejection of claim 44.
Rejection 2 — The rejection of claims 10—12, 18,
19, 27, 28, 42, and 43 under 35 U.S.C. § 103(a)
Claims 10-12, 18, and 19 depend from claim 2. Appeal Br. 51—52
(Claims App.). Claims 27 and 28 depend from claim 20. Id. at 53—54.
Claims 42 and 43 depend from claim 34. Id. at 56. The Examiner’s reliance
on Koh does not remedy the deficiencies in the combined teachings of
Miesel and Florio discussed above (see supra Rejection 1). Thus, for the
same reasons discussed above, we do not sustain the rejection of claims 10—
12, 18, 19, 27,28,42, and 43.
Rejection 3 — The rejection of claims 7, 23, 24,
30, 31, and 57 under 35 U.S.C. § 103(a)
Claim 7 depends from claim 2. Appeal Br. 51 (Claims App.). Claims
23, 24, 30, and 31 depend from claim 20. Id. at 53, 54. Claim 57 depends
from claim 34. Id. at 58. The Examiner’s reliance on Singhal does not
remedy the deficiencies in the combined teachings of Miesel and Florio
discussed above (see supra Rejection 1). Thus, for the same reasons
6
Appeal 2015-004066
Application 12/433,017
discussed above, we do not sustain the rejection of claims 7, 23, 24, 30, 31,
and 57.
DECISION
We REVERSE the decision to reject claims 1—57 under 35 U.S.C.
§ 103(a).
REVERSED
7