Ex Parte Von Arx et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10943627 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY A. VON ARX, SCOTT T. MAZAR,
and ABHI CHAVAN
__________

Appeal 2010-008767
Application 10/943,627
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims directed to a system for deriving relative physiologic
measurement values. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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STATEMENT OF THE CASE
Claims 1, 4-7, 13-22, 24-29, and 34-44 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A system for deriving relative physiologic measurement values,
comprising:
an implantable medical device ("IMD") operable to determine an
absolute physiologic parameter value within a patient's body and
communicate the absolute physiologic parameter value outside the patient's
body, the IMD including a main body and a remote sensor system adapted to
be implanted in the patient's body, the main body including a receiver in
acoustic communication with the remote sensor system, the remote sensor
system operable to measure an absolute physiologic parameter value within
the patient's body and including a transmitter adapted to acoustically
communicate the absolute physiologic parameter value to the receiver;
an external computing device including communication circuitry
configured to wirelessly receive the absolute physiologic parameter value
and an integral sensor configured to sense an ambient condition value
outside the patient's body, the external computing device comprising a single
device operable to both:
wirelessly receive the absolute physiologic parameter value
from the IMD; and
sense an ambient condition value outside the patient's body
related to the absolute physiologic parameter value;
the external computing device or a backend computing system
operable to:
calculate a relative physiologic parameter value from the
ambient condition value and the absolute physiologic parameter value;
and
store the calculated relative physiologic parameter value.
(Emphasis added.)

The Examiner rejected claims 1, 4-7, 13-22, 24-29, and 34-44 under
35 U.S.C. § 103(a) as unpatentable over Christopherson and Cox.

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OBVIOUSNESS
The Issue
The Examiner’s position is that Christopherson described a system
having the features of Appellants’ system with one difference:
Christopherson used leads to connect the main body and remote sensor of its
implantable device, rather than using acoustic communication between the
two as detailed in Appellants’ claim 1. The Examiner concluded that
adapting Christopherson’s lead-based system to a wireless system would
have been obvious, given Cox’s teachings to reduce or eliminate leads in
implanted cardiac monitoring systems by using wireless communication.
The rejection included a finding that Christopherson’s IRM (information
remote monitor 24 in Figure 1) and EPR (external pressure reference 20 in
figure 1) constituted the “external computing device” defined in claim 1.
However, the Examiner alternatively concluded that if Christopherson’s
IRM and EPR were not properly deemed to be claim 1’s “external
computing device,” it would have been obvious to make the two components
“integral” to “provide a single device for in home use that would prevent a
costly replacement in the event the EPR was lost.” (Ans. 4.)
Appellants contend that replacing the electrodes in Christopherson’s
system with Cox’s system “would require a separate power support to power
the sensor as well as additional communications circuitry to wirelessly
communicate sensed data,” and therefore disagree that the replacement
would have been obvious. (App. Br. 15.) Appellants also dispute that
Christopherson’s IRM (information remote monitor 24 in Figure 1) and EPR
(external pressure reference 20 in figure 1) comprised a “single device” as
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defined in claim 1 (id. at 7-11), and dispute that it would have been obvious
to make the two components integral (id. at 11-13).
The issues on appeal are:
(a) whether the rejection reasonably concluded it would have been
obvious to replace Christopherson’s electrodes or lead-connections between
the main body of the implanted device and the implanted remote sensors
with wireless connections described by Cox;
(b) whether Christopherson’s IRM (information remote monitor 24 in
Figure 1) and EPR (external pressure reference 20 in figure 1) comprised a
“single device” as defined in claim 1; and
(c) if Christopherson’s IRM and EPR do not comprise a “single device”
as defined in claim 1, whether the rejection established that it would have
been prima facie obvious to convert them to a single device.
Findings of Fact
1. Appellants rely on a “Declaration of Keith R. Maile,” dated July 27,
2009.
2. With regard to the obviousness of replacing Christopherson’s lead-
based remote sensors with wireless sensors, the Maile Declaration
states:
[m]odifying the pace/sense electrodes in Christopherson with remote
sensors would require a separate power supply to power the sensors as
well as additional communications circuitry to communicate sensed
data. For remote sensors implanted in a body lumen such as a vessel
or artery, for example, there are often limitations on the overall size
and power requirements of the device that are not necessarily present
in lead-based sensor systems. The use of a remote sensor in lieu of a
lead-based sensor may also require other modifications such as the
addition of a fixation mechanism to secure the remote sensor in the
body. The presence of the fixation mechanism in the body often leads
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to tissue growth over the mechanism after a certain period of time
(e.g., after a period of several weeks), making explantation of the
device more difficult.

(Maile Declaration ¶ 9.)
3. In reviewing Christopherson, one would understand that the IRM is a
separate device from the EPR used to obtain external pressure
measurements. Christopherson teaches that the IRM is to be used for
in-home/room use, and includes ergonomic features that make it
highly compatible for in-home use by a patient. In contrast,
Christopherson teaches that the EPR is designed specifically to be
carried by or worn by the patient, and includes an interface (e.g., an
RS232 serial port) that enables the EPR, to communicate with the
IRM once plugged into a slot on the top of the IRM.

(Maile Declaration ¶ 7.)
Principles of Law
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Issue (a)
We agree with the Examiner that replacing Christopherson’s
electrodes or lead-connections between the main body of the implanted
device and the implanted remote sensors with wireless connections
described by Cox would have been obvious. Cox described its system as a
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solution to problems associated with using leads (e.g., Cox at cols. 2-3), thus
providing a reason for using wireless connections. Appellants point out
some of the concerns in a wireless system, such as power requirements, but
do not allege that a person of ordinary skill in the art would not have had a
reasonable expectation of success in adapting Christopherson’s system to
wireless, Cox-type connections. The Maile Declaration provides similar
observations, but does not allege that a person of ordinary skill could not
have used the Cox system. (FF 2.)
Issue (b)
We agree with Appellants that Christopherson’s IRM (information
remote monitor 24 in Figure 1) and EPR (external pressure reference 20 in
figure 1) did not comprise a “single device” as defined in claim 1, for the
reasons given in the Appeal Brief and in the Maile Declaration. (See Appeal
Br. 9-10; Maile Declaration ¶ 7.)
Issue (c)
The rejection concluded that it would have been obvious to make
Christopherson’s IRM and EPR “integral” for two reasons. First, “since it
has been held that forming in one piece an article which has formerly been
formed in two pieces and put together involves only routine skill in the art,”
and second, “such a modification would provide a single device for in home
use that would prevent a costly replacement in the event the EPR was lost.”
(Ans. 4.) The first is unpersuasive because it is only an observation that in
other cases, on different facts, there may have been a reason to alter a prior
art device, and the desired alteration was within the skill in the art. The
second is unpersuasive because it lacks an evidentiary foundation that losing
the proposed single device would avoid a costly replacement. The proposed
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integral device would necessarily be more complex, and there is no evidence
that it would be more economical to replace the more complex integral
device than the separate EPR. We conclude that the reasons given were
insufficient to establish a prima facie case for the obviousness of combining
Christopherson’s IRM and EPR into a “single device” as defined in claim 1.
See Kahn, 441 F.3d at 988; KSR, 550 U.S. at 418.
Appellants presented separate arguments for claims 22, and 43, but
the method of claim 22 and the system of claim 43 also require an external
device defined as a single, integral device. The rejection of claims 22 and
43 is reversed for the same reason the rejection of claim 1 is reversed.
SUMMARY
We reverse the rejection of claims 1, 4-7, 13-22, 24-29, and 34-44
under 35 U.S.C. § 103(a) as unpatentable over Christopherson and Cox.

REVERSED

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