Ex Parte Walker et alDownload PDFPatent Trials and Appeals BoardMay 10, 201914042451 - (D) (P.T.A.B. May. 10, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/042,451 09/30/2013 154508 7590 05/10/2019 MBHB - Physio-Control/Stryker 300 S. WACKER DRIVE 32NDFLOOR CHICAGO, IL 60606 FIRST NAMED INVENTOR Robert G. Walker 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 101752.000037/P39457.USI5 8993 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3792 MAIL DATE DELIVERY MODE 05/10/2019 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 PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT G. WALKER, FRED W. CHAPMAN, and ISABELLE BANVILLE Appeal2017-007574 Application 14/042,451 Technology Center 3700 Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert G. Walker et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-22, 35, and 36 in this application.2 The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 West Affum Holdings Corp. is the Applicant. See Replacement Filing Receipt (dated Apr. 17, 2015); 37 C.F.R. § 1.46. The Appeal Brief identifies Physio-Control, Inc. as the real party in interest. See Appeal Br. ( dated Jan. 6, 2017), 1. 2 Claims 23-34 have been withdrawn. See Final Act. (dated Apr. 12, 2016), 2; Appeal Br. 1. Appeal2017-007574 Application 14/042,451 HEARING A hearing was held on April 16, 2019, via videoconference with Appellant's representative Joseph A. Herndon, Esq. See Transcript (dated Apr. 29, 2019) ("Tr."). CLAIMED SUBJECT MATTER Claims 1 and 12 are the independent claims on appeal. Claim 1 recites: 1. An external defibrillator having a synchronous shock operating mode and an asynchronous shock operating mode, the defibrillator comprising: a manual mode controller configured to set the defibrillator in the synchronous shock operating mode or the asynchronous shock operating mode; an automatic mode controller configured to set the defibrillator in the synchronous shock operating mode or the asynchronous shock operating mode; a shock module configured to cause the defibrillator to deliver shock therapy to the patient according to the present operating mode of the defibrillator; a heart rhythm detector configured to detect a heart rhythm of the patient; and a mode assessment module configured to determine whether the present operating mode of the defibrillator is appropriate based on the detected heart rhythm of the patient. Appeal Br. 11 (Claims App.). Independent claim 12 is identical to claim 1, except that the final limitation of claim 1 ("a mode assessment module ... ") is replaced by "an energy adjustment recommendation module configured to determine whether an energy level of the shock should be adjusted based on the detected heart rhythm of the patient." Id. at 13 (Claims App.). 2 Appeal2017-007574 Application 14/042,451 REJECTIONS ON APPEAL Claims 1, 6-12, 17, 19, 21, 22, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Borgenicht (US 6,405,082 Bl, iss. June 11, 2002). Claims 2, 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Borgenicht and Patangay (US 2007/0066913 Al, pub. Mar. 22, 2007). Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Borgenicht, Patangay, and Dong (US 2010/0280841 A 1, pub. Nov. 4, 2010). Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Borgenicht and Elabbady (US 5,999,852, iss. Dec. 7, 1999). Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Borgenicht and Charbonnier (US 4,328,808, iss. May 11, 1982). OPINION A. Obviousness Over Borgenicht (claims 1, 6--12, 17, 19, 21, 22, 35, and 36) Claims l, 6--11, and 35 In rejecting independent claim 1, the Examiner finds Borgenicht discloses an external defibrillator (i.e., defibrillator system 10) comprising a manual mode controller (i.e., controller 20) configured to set the defibrillator in a synchronous shock operating mode or an asynchronous shock operating mode. Final Act. 6 (citing Borgenicht, Fig. 1, 1:6-20, 3:24-42). The 3 Appeal2017-007574 Application 14/042,451 Examiner finds Borgenicht' s defibrillator 10 also has a shock module and a heart rhythm detector, and a mode assessment module, all as recited in claim 1. Id. at 3, 6-7. Appellants do not challenge these findings. The Examiner next finds Borgenicht's defibrillator 10 does not have an automatic mode controller, as recited in claim 1. Id. at 7. The Examiner determines Borgenicht nonetheless "teaches that it is known to use" such an automatic mode controller, "without user input to reduce the risk of untrained individuals applying the wrong treatment." Id. at 2-3, 7 ( citing Borgenicht, Abstract, 1 :6-20). The Examiner determines it would have been obvious to modify Borgenicht' s defibrillator 10 to include such an automatic mode controller, to "provide the predictable results of determination of shock type without user input to reduce the risk of untrained individuals applying the wrong treatment."3 Id. at 7; Adv. Act. (dated July 21, 2016), 2- 3. Appellants argue in response that "there are two main types of defibrillators, manual and automatic." Appeal Br. 4. Appellants equate a "manual" defibrillator to the "defibrillator-monitor" described in their Specification, and an "automatic" defibrillator to the "Automated External Defibrillator" or "AED" described in their Specification. Id. ( citing Spec. Fig. 2). Appellants contend Borgenicht merely "provid[ es] either a manual 3 The Examiner "[ a ]dditionally" relies on case law for obviousness, namely Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) and St. Regis Paper Co. v. Bemis Co., 549 F.2d 833 (7th Cir. 1977). Final Act. 3, 7-8. Appellants dispute the applicability of those decisions to the facts presented here. See Appeal Br. 6-7; Tr. 7:1-9:3. We do not rely on the Examiner's analysis in these regards as a basis for affirming the Examiner's rejection. 4 Appeal2017-007574 Application 14/042,451 defibrillator or an AED with an audible prompt that alerts the user to the current therapy mode, synchronous or asynchronous, to avoid the application of an incorrect shock." Id. at 6 ( citing Borgenicht, 2:5-12, 2:20-36, 5: 1- 23). Thus, Appellants fault Borgenicht for failing to disclose or to suggest "a defibrillator, manual or an AED, having an automatic mode controller and a manual mode controller as set forth in claim l ." Id. Appellants contend the Examiner's stated motivation for modifying Borgenicht's defibrillator 10, to include an automatic mode controller in addition to manual mode controller 20, "is made up of whole cloth as the Examiner fails to cite to any evidence in support thereof." Id. at 6-8. According to Appellants, the only evidence that supports the Examiner's stated motivation is Appellants' own Specification, so the rejection is tainted by improper hindsight. Id. at 8 ( citing Spec. 4:27-29). The Examiner answers that "Borgenicht suggest[ s] the use of two or more controllers in a single defibrillator," because Borgenicht states "[t]he defibrillators of the invention are manual defibrillators, but could also include automatic or semi-automatic external defibrillators (AEDs)." Ans. 2 ( quoting Borgenicht, 1: 11-16); see also Borgenicht, 5: 15-18 ("Where the AED is semi-automatic, a shock is delivered to the patient through the electrodes if a shock is advised and if a shock button is actuated by a user.") ( emphasis added). The Examiner further finds a person of skill in the art would have appreciated that an "AED delivers the shock as advised by the detected rhythm" ( citing Borgenicht, 5:3-6, 5: 15-23), so modifying Borgenicht' s defibrillator 10 to include an automatic mode controller would advantageously "reduce the risk of untrained individuals applying the wrong treatment [because they can then use the automatic mode controller], while 5 Appeal2017-007574 Application 14/042,451 allowing trained individuals to enter the appropriate therapy [by using the manual mode controller]." Ans. 2-3.4 Appellants maintain, in reply, that "[t]here is no teaching or suggestion in Borgenicht that would have resulted in the claimed defibrillator" ( emphasis added), because Borgenicht' s disclosure is limited to "either a manual defibrillator or an AED or a semi-automatic defibrillator." Reply Br. 3. Appellants contend that "because an AED and a manual defibrillator each independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better defibrillator, would have had no reason to combine the features of both devices into a single device." Id. at 4 ( citing Kinetic Concepts, Inc. v. Bluesky Med Corp., 688 F.3d 1342 (Fed. Cir. 2012)). Appellants additionally assert the Examiner's stated motivation for modifying Borgenicht's manual defibrillator to include an automatic mode controller "lacks logic," because "only trained persons would have access to a manual defibrillator" and "an untrained person would only have access to an AED," 4 Appellants assert, in reply, that the Answer offers a new theory of obviousness as to claim 1 in these regards. See Reply Br. 1-3. We disagree. We conclude the Answer simply and properly adds context to the rejection of claim 1 set forth in the Final Office Action. Compare Ans. 2-3 with Final Act. 2-3, 6-7. As a first example, Appellants mis-quote the statement in the Final Office Action that "the current embodiment of Borgenicht does not disclose an automatic mode controller" as stating "Borgenicht does not disclose an automatic mode controller." Compare Final Act. 7 with Reply Br. 2 ( emphases added). This incorrect quotation materially mischaracterizes the findings in the Final Office Action. As a second example, the Borgenicht disclosure at column 1, lines 11-16, is cited in both the Final Office Action and in the Answer, so it is not "newly cited" in the Answer as Appellants contend. See Reply Br. 3; Final Act. 2-3, 7; Ans. 2. 6 Appeal2017-007574 Application 14/042,451 so there would have been no benefit to modifying Borgenicht's manual defibrillator to include an automatic mode controller for use by untrained persons. Id. After considering the foregoing contentions and evidence, we discern no error in the Examiner's rejection of claim 1 as having been obvious over Borgenicht. It is undisputed that Borgenicht' s defibrillator 10 (illustrated in Figure 1) includes each and every claim limitation, including manual mode controller 20, except for an automatic mode controller. It is additionally undisputed that Borgenicht discloses that while defibrillator 10 is a "manual" defibrillator, Borgenicht's invention "could also include automatic or semi-automatic external defibrillators (AEDS)" and "could be applied towards AEDs without departing from the scope of the invention." Borgenicht, 1 :6-16, 3: 11-14. Thus, it is undisputed that Borgenicht discloses both manual mode controller 20 to be used in manual defibrillator 10, and an automatic mode controller to be used in an automatic defibrillator such as an AED. The only disputed issue to be decided, then, is whether the Examiner errs in determining it would have been obvious to modify Borgenicht' s manual defibrillator 10 to include an automatic mode controller such as known to be used in AEDs, in addition to manual mode controller 20. We determine a preponderance of the evidence supports the Examiner's determination of obviousness. In this regard, the Examiner has satisfied the burden to provide a rational underpinning sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). We agree with the Examiner's finding that a 7 Appeal2017-007574 Application 14/042,451 person of ordinary skill in the art would have appreciated that providing an automatic mode controller within Borgenicht' s manual defibrillator 10 would have increased the usefulness of defibrillator 10. See Final Act. 7; Ans. 2-3. Namely, the addition of an automatic mode controller would have allowed defibrillator 10 to be used by persons trained to use the existing manual mode controller 20 (with the associated benefits of such manual control by trained individuals), and by persons who lack such training. See Final Act. 7; Ans. 2-3. Obviousness does not require that the cited prior art teach, suggest, or motivate the claimed combination of elements. KSR v. Teleflex, 550 U.S. at 407 ( describing the "teaching, suggestion, or motivation" test), 415-18 ("rejecting the rigid approach" of that test). Instead, we "look to interrelated teachings of [the prior art]; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Id. at 418. Applying that test here, we agree with the Examiner's finding that the background knowledge possessed by a person of ordinary skill in the art would have included the benefits provided by an automatic mode controller such as previously known to be used in AEDs. Further, such a person would have appreciated that modifying Borgenicht' s manual defibrillator 10 to include an automatic mode controller would have increased the usefulness of defibrillator 10, allowing it to be used by trained professionals (in manual mode) and by untrained persons (in automatic mode). 8 Appeal2017-007574 Application 14/042,451 For the foregoing reasons, we sustain the rejection of claim 1 as being obvious over Borgenicht. Appellants do not argue for the patentability of dependent claims 6-11 and 3 5 separately from claim 1, so we likewise sustain the rejection of those claims. See Appeal Br. 8; 37 C.F.R. § 41.37(c)(l)(iv). Claims 12, 17, 19, 21, 22, and 36 In rejecting independent claim 12, the Examiner finds Borgenicht's defibrillator 10 has "an energy adjustment recommendation module configured to determine whether an energy level of the shock should be adjusted based on the detected heart rhythm of the patient." Final Act. 6-7 ( emphasis added). In support, the Examiner cites the Borgenicht disclosure at column 2, lines 20-21, and column 5, lines 14-15, as disclosing that "the defibrillator analyzes the (heart) rhythm and determines the appropriate therapy." Id. at 7 (emphasis added). Appellants argue, in response, that the cited Borgenicht disclosures "refer[] to determining whether asynchronous therapy or synchronous therapy is appropriate," and "say[] nothing about determining whether an energy level of the chosen shock therapy should be adjusted." Appeal Br. 8- 9 ( emphases added). The Examiner answers that it is "well known that synchronous shocks are relatively low energy shocks" and "that asynchronous shocks are relatively high in energy." Ans. 4-5 (citing Tice5, pg. 189). From this, the 5 Matthew R. Tice et al., Unsynchronized Cardioversion (Defibrillation), in Atlas of Emergency Medicine Procedures 189-192 (2016). Although not addressed by Appellants, we note the present application was filed on 9 Appeal2017-007574 Application 14/042,451 Examiner determines that "since Borgenicht teaches determining the appropriate therapy between synchronous shock (low energy) [versus] asynchronous shock (high energy) the prior art is teaching determining whether an energy level of the shock should be adjusted based on the detected heart rhythm of the patient." Id. at 5. In reply, during the hearing, Appellants argued that "picking a synchronous or asynchronous" shock mode in Borgenicht is "not picking the energy level" in Borgenicht, because Borgenicht discloses different inputs for selecting a synchronous or an asynchronous shock, and for selecting the energy level of the shock. 6 Tr. 13:4-14:2 (citing Borgenicht, Fig. 3). We agree with Appellants. The Examiner's rejection is premised upon a finding that Borgenicht discloses adjusting a shock energy level when the defibrillator determines whether to apply a synchronous shock or an asynchronous shock. See Final Act. 6-7; Ans. 4-5 (citing Tice as evidentiary support for this finding as to what is disclosed by Borgenicht). This finding is inconsistent with Borgenicht's disclosure, which is that the user selects the synchronous / asynchronous mode separately from selecting the energy level of the shock to be delivered, regardless of whether it is synchronous or asynchronous. See Borgenicht, Fig. 3 (illustrating separate September 30, 2013, well before the publication of Tice in 2016, so it appears that Tice is not prior art to the claimed invention. 6 This argument was presented for the first time at the hearing. Our Rules provide: "At the oral hearing, appellant may only ... present argument that has been relied upon in the [ appeal] brief or reply brief' unless "good cause" is shown. 37 C.F.R. § 41.47(e). We determine such good cause is present in this case, because the Examiner cited Tice for the first time in the Answer. 10 Appeal2017-007574 Application 14/042,451 synchronized shock input 142, unsynchronized shock input 144, and energy selection input 140), 5:24-32. Thus, we do not sustain the rejection of claim 12, or of claims 17, 19, 21, 22, and 36 which depend from claim 12, as having been obvious over Borgenicht. B. Obviousness Over Borgenicht and one or more of Patangay, Dong, Elabbady, and Charbonnier (claims 2-5, 13-16, 18, and 20) Appellants do not argue for the patentability of claims 2-5 separately from their common parent independent claim 1. See Appeal Br. 9. Therefore, for the reasons provided above, we sustain the rejections of claims 2-5. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner's additional consideration of claims 13-16, 18, and 20, and of Patangay, Elabbady, and Charbonnier, does not cure the deficiency noted above with respect to their common parent independent claim 12 and Borgenicht. See Final Act. 12-16 (pertinently citing Patangay ,i 79; Elabbady, 3 :62-64; and Charbonnier, 1 :56-59). Patangay refers to "changing one or more therapy parameters," whereas claim 12 is specifically directed to the "energy level of the shock," which is not addressed in Patangay. Patangay ,i 79; Appeal Br. 13 (Claims App.). Elabbady discloses an "alarm notif1ying] the operator of the need to increase the selected amount of energy," but that determination is made based on "the patient's actual transthoracic impedance," whereas claim 12 is directed to adjusting the energy "based on the detected heart rhythm." Elabbady, 3:57-64; Appeal Br. 13 (Claims App.). Charbonnier discloses "measur[ing] and display[ing] the transthoracic resistance of a patient during a defibrillation 11 Appeal2017-007574 Application 14/042,451 pulse, and the energy actually delivered to the patient through the defibrillator paddles," whereas claim 12 is directed to recommending whether the energy level of the shock should be adjusted. Charbonnier, 1:56-59 (emphases added); Appeal Br. 13 (Claims App.) (emphasis added). Thus, we do not sustain the rejections of claims 13-16, 18, and 20. DECISION We AFFIRM the rejections of claims 1-11 and 3 5. We REVERSE the rejections of claims 12-22 and 36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation