Ex Parte Williamson et al

Patent Trial and Appeal Board

Aug 8, 2016

12431601 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/431,601 04/28/2009
36802 7590 08/10/2016
PACESETTER, INC
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
Richard Williamson
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.
A09Pl023 5470
EXAMINER
BAYS,PAMELAM
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD WILLIAMSON, JOHAN DAHLGREN,
LEIF L YCHOU, and ALI DIANATY
Appeal2014-001980
Application 12/431,601
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision2 rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over Von Arx '898 (US 2003/0114898 Al; pub. June 19, 2003), Von Arx
'459 (US 2003/0149459 Al; pub. Aug. 7, 2003), and Pope (US
2007/0296701 Al; pub. Dec. 27, 2007). We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Pacesetter, Inc. Br. 3.
2 Appeal is taken from the Final Office Action dated January 18, 2013
("Final Act.").
Appeal2014-001980
Application 12/431,601
We AFFIRM and designate our affirmance as A NEW GROU-ND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
CLAIMED SUBJECT MATTER
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
reproduced below.
1. A method for power management comprising the
steps of:
receiving telemetry data transmitted from an implantable
medical device to an external device;
monitoring, by the external device, for a user input to the
external device;
determining, by the external device, a time lapse since
receiving an input from a user to the external device while
receiving the telemetry data; and
sending an instruction from the external device to the
implantable medical device to terminate the transmission of
telemetry data to the external device when the time lapse exceeds
a predetermined amount of time.
ANALYSIS
Regarding independent claims 1 and 15, the Examiner found, inter
alia, that Von Arx '898 discloses the claimed method and system, including
(i) timer 180B within external device 200 (Final Act. 3 (citing Von Arx '898
Fig. 1); Ans. 8 (citing Von Arx '898 i-f 27, Fig. 1)); and (ii) the step of
"monitoring by the external device for a user input to the external device"
(Final Act. 3 (citing Von Arx '898 i-fi-111, 63---64); Ans. 8 (citing Von Arx
'898 i-f 11, Fig. 1). The Examiner determined that Von Arx '898 does not
disclose "wherein the controller is configured to send an instruction from the
external device to the implantable medical device [ ("IMD") 3] to terminate
3 Spec. ,-r 2.
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Appeal2014-001980
Application 12/431,601
transmission of the telemetry data to the external device when the time lapse
exceeds a predetermined amount of time." Final Act. 3. The Examiner
relied on Von Arx '459 for disclosing a method and system wherein
controller 242 in external device 140 is configured to send an instruction
from external device 140 to IMD 110 to terminate transmission of telemetry
data 2510, 2520 to external device 140 "when a connection time lapse
exceeds a predetermined amount of time." Id. at 3--4 (citing Von Arx '459,
Abstract, i-fi-1 24, 25, 85, Figs. 24, 25). The Examiner reasoned that it would
have been obvious to configure the external device of Von Arx '898 as
taught by Von Arx '459 to immediately terminate the connection for
lessening battery consumption to the IMD, as taught by Von Arx '459. Id. at
4 (citing Von Arx '459 i1 85). The Examiner also determined that neither
Von Arx '898 nor Von Arx '459 discloses "a timer in an external device to
determine by the external device a time lapse since receiving an input from a
user at the external device," and the Examiner relied on Pope's external
wireless input device as comprising a timer to determine such time lapse. Id.
(citing Pope, Abstract, i-fi-13, 18, 44, 45, 54) (emphasis added). The
Examiner reasoned that it would have been obvious "to use a timer in the
external device to determine by the external device a time lapse since
receiving an input from a user at the external device as taught by Pope ... in
the system and method disclosed by [Von Arx '898] and [Von Arx '459], in
order to detect when the user last used the external device in order to reduce
power consumption after an idle period, as also taught by Pope." Id. at 4--5
(citing Pope i-fi-144, 45, 54).
First, Appellants argue that the Examiner erred by finding that Von
Arx '898 's step 400 (or the Start timer step) is performed by the external
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Application 12/431,601
device. Br. 6 (citing Von Arx '898, Fig. 7). Rather, Appellants submit that
the timer function of Von Arx '898 is performed by the IMD. Id. (citing,
e.g., Von Arx '898 i-fi-f 11, 64). Appellants explain that timer 180B of Von
Arx '898 is "used for a synchronized wakeup protocol between the external
and implanted devices to automatically initiate communication," but not for
use by the external device to determine a time lapse. Id. at 7.
We are not persuaded by Appellants' argument, which fails to address
the Examiner's rejection. The Examiner does not rely on Von Arx '898 for
disclosing an external device that sends an instruction to the IMD to
terminate telemetry data transmission when the time lapse since receiving an
input from a user to the external device exceeds a predetermined amount of
time. As stated supra, the Examiner relies on Von Arx '459 for disclosing
that external device 140 sends an instruction to IMD 110 when a time lapse
exceeds a predetermined amount of time (albeit the amount of time when no
data has been transmitted (see, e.g., Von Arx '459 i185)) and on Pope for
disclosing determination by an external device of a time lapse since
receiving an input from a user (see, e.g., Pope i13). See also Ans. 8-9. The
Examiner relies on Von Arx '898 for disclosing wakeup timer 180B within
external device 200, which is supported by Von Arx '898. See, e.g., Von
Arx i127, Fig. 1. Thus, Appellants' argument does not apprise us of error in
the Examiner's findings or reasons for modifying the protocol of Von Arx
'898 to use timer 180B within external device 200 as taught in Von Arx '459
and Pope.
Second, Appellants argue that the Examiner erred by finding that Von
Arx '898 discloses "monitoring, by the external device, for a user input to
the external device," as recited in claim 1, because Von Arx '898 "does not
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Appeal2014-001980
Application 12/431,601
teach or in any way suggest that the external device monitors for user input
to the external device ... ; rather Von Arx ['898] teaches that the telemetry
session is initiated via a command from the user to the implanted device."
Br. 7. The Examiner responds that Von Arx '898 discloses that "a clinician
marks the beginning of a programming period by transmitting a near field
signal using a programmer wand" and that "inputting and transmitting a
command using the external device wand is considered by the Examiner to
be 'a user input"' as claimed. Ans. 8.
Although Von Arx '898 discloses that a known telemetry system may
include "[an] external programmer [ (or external device) that] transmits and
receives the radio signal with an antenna incorporated into a wand that can
be positioned in proximity to the [IMD]" (Von Arx '898 i-f 3), and that a
clinician transmits signals to the IMD using the wand (see id. at i-f 11 ), we
are persuaded by Appellants that Von Arx '898 fails to describe the
interaction between the user and the external device and wand, such that
Von Arx '898 supports the Examiner's finding that the external device
monitors for a user input.
Notwithstanding the failure of Von Arx '898 to expressly disclose
"monitoring, by the external device, for a user input to the external device,"
the Examiner relies on Pope for disclosing "a timer to determine a time lapse
... since receiving an input from a user at the external input device" and
reasons that it would have been obvious "to use a timer in the external
device [of Von Arx '898 as modified by Von Arx. '459] to determine by the
external device a time lapse since receiving an input from a user at the
external device as taught by Pope." Final Act. 4--5. Thus, the teaching that
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Appeal2014-001980
Application 12/431,601
a device monitors for user input is disclosed by Pope. See Pope, Abstract
(device monitors for input by a user via a key sensor).
Regarding independent claim 15, although Appellants submit that
"[ c ]laim 15 is an apparatus claim with similar limitations to those found in
claim 1, and is nonobvious for the same reasons as is claim 1," (Br. 10),
claim 15 does not recite structure similar to the claim limitation "monitoring,
by the external device, for a user input to the external device."
Third, Appellants argue that Pope is non-analogous art. Appellants
submit that "[t]he problem clearly identified in Appellants' [Specification]"
is an IMD "wasting limited battery power by transmitting real-time data that
is not being viewed by a user of an external device (e.g., the programmer)"
and that Pope "is concerned with conserving battery power of a wireless
keyboard when a user steps away from the wireless keyboard, or hasn't
pressed a key in some time." Br. 8-9 (citing Spec. i-f 7; In re Klein, 647 F.3d
1343 (Fed. Cir. 2011).
Appellants are correct that a reference qualifies as prior aii for an
obviousness analysis only when the prior art is analogous to the claimed
invention. See In re Klein, 647 F.3d at 1348. Prior art is analogous when
(1) the art is in the same field of endeavor regardless of the problem
addressed or (2) if not within the same field of endeavor is reasonably
pe1i.inent to a particular problem addressed by the inventor. Id. (citing In re
Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)). "A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
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Appeal2014-001980
Application 12/431,601
"If a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection." Id.
A problem identified in Appellants' Specification is "conserving the
battery life of an [HvID],'' especially during wireless data transmission, for
example, by radio frequency transmission or induction. Spec. ,-ri12, 3; see
also Spec. ~f 26 ("IMD 110 has a wireless telemetry capability that allows it
to communicate with an exten1al device."). Similarly, Pope addresses the
problem of reducing the depletion of batteries powering wireless input
devices, for example, keyboards and pointing devices, which transmit data
from the input devices to a computer. Pope, Abstract, i1,-r 2, 3. Thus, Pope is
reasonably pertinent to a problem addressed by the inventors and logically
would have commended itself to the inventors' attention. Therefore, Pope is
analogous prior art properly relied on by the Examiner.
Finally, Appellants argue that "the teaching of monitoring user usage
of one device, and powering down another device based on non-usage at
the first device, is not found in anv of the cited art- thus, even if the cited art . J .
is cornbined, none of the cited art teaches the fundamental aspect of
Appellants' claimed invention." Br. 9. \Ve disagree. The Examiner's
proposed combination modifies the exten1al device of Von Arx '898 in view
of (i) the disclosure in Von Arx '459 that an exten1al device may instruct the
1J\1D to terminate transmission (e.g., power down); and (ii) the disclosure in
Pope that such an instruction may be given when the external device
determines a time lapse since receiving a user input. Thus, the Examiner's
proposed combination renders obvious the subject matter as claimed, and
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Application 12/431,601
Appellants have not presented arguments challenging the Examiner's
reasoning. See Br. 5----10. ,___
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 15. Appellants chose not to present separate arguments for the
patentability of dependent claims 2-14 and 16-20 apart from the arguments
presented supra. Therefore, we also sustain the Examiner's rejection of
claims 2----14 and 16----20. Because we rely on a new finding with respect to
the rejection of independent claim 1, we designate our affirmance of claims
1----14 as a new ground of rejection.
DECISION
The Examiner's decision to reject claims 1-14 is AFFIRMED and we
designate our affirmance as a NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F.R. § 41.50(b).
The Examiner's decision to reject claims 15-20 is AFFIRMED.
The decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( l) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
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Appeal2014-001980
Application 12/431,601
rejected, or both, and have the matter reconsidered by the Examiner,
in which event the prosecution will be remanded to the Examiner. ..
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ...
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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