Ex Parte Goetz et al

Patent Trial and Appeal Board

Jul 17, 2013

11119423 (P.T.A.B. Jul. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN M. GOETZ and DUANE BOURGET
____________________

Appeal 2011-006252
Application 11/119,423
Technology Center 3700
____________________

Before: JAMES P. CALVE, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006252
Application 11/119,423

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-5, 7-10, 12-14 and 16-18. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

CLAIMED SUBJECT MATTER
The claims are directed to a system and method for programming an
implantable medical device. Claims 1 and 10 are independent. Claim 1,
reproduced below (with indentation added), is illustrative of the claimed
subject matter:
1. A system for programming an implantable
medical device adapted to provide a therapeutic
output to a patient, said implantable medical
device being programmable through a telemetry
interface, comprising:
a telemetry head adapted for transcutaneous
communication with said implantable medical
device through said telemetry interface when said
telemetry head is positioned with respect to said
implantable medical device;
a computing device having computing
processing power and a user interface;
a communication link between said
telemetry head and said computing device;
said telemetry head being associated with
computing instructions related to programming of
said implantable medical device;
wherein said computing device processes
said computing instructions associated with said
implantable medical device;
wherein said computing device supplies said
user interface based, at least in part, on said
computing instructions associated with said
implantable medical device; and
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wherein said telemetry head receives
programming instructions from said computing
device and provides said programming instructions
to said implantable medical device using said
transcutaneous telemetry interface;
wherein said computing instructions are
contained within said telemetry head.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Causey
Lang
US 4,809,697
US 6,553,262 B1
Mar. 7, 1989
Apr. 22, 2003
Goetz US 2003/0174066 A1 Sep. 18, 2003

REJECTIONS
The Examiner made the following rejections:
I. Claims 1, 3-5, 7-10, 12-14 and 16-18 stand rejected under 35
U.S.C. §102(b) as being anticipated by, or in the alternative
under 35 U.S.C. §103(a) as unpatentable over Goetz. Ans. 3.
II. Claims 1 and 10 stand rejected under 35 U.S.C. §102(b) as
being anticipated by Causey. Ans. 5.
III. Claims 6 and 15 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Goetz and Lang. Ans. 7.

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Application 11/119,423

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ANALYSIS
I. Claims 1, 3-5, 7-10, 12-14 and 16-18 as anticipated by or
unpatentable over Goetz
Appellant argues claims 1, 3-5 and 7-9, and claims 10, 12-14 and 16-
18 as separate groups. App. Br. 12-16. We select claims 1 and 10 as
representative, treating claims 3-5, 7-9 and 12-14 and 16-18 as standing or
falling with representative claims 1 and 10, respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner found that Goetz discloses a system for programming
an implantable medical device 5 that includes a telemetry interface 31, 240,
a programmer (i.e. computing device 30), and a communications link 605,
such that the computing device processes the computing instructions
associated with the implantable device, the programmer supplies a user
interface based on the computing instructions, the telemetry head receives
the programming instructions from the computing device and provides the
programming instructions to the implantable medical device and the
computing instructions are contained within the telemetry head. Ans. 4,
citing Goetz paras. [0009], [0012], [0032], [0033], [0037], [0038], [0039],
[0042] and [0056]; figs. 1, 4 and 6.
Appellants argue that Goetz fails to disclose that the protocol drivers
725 (i.e. computing instructions) for interfacing with particular implantable
devices are stored in the telemetry module as recited in claims 1 and 10.
App. Br. 12, 16; Reply Br. 6-7. According to Appellants, Goetz discloses
that the platform software for operating the telemetry module generally
(without respect to any particular implantable device) is stored in the
telemetry module, and that the protocol drivers (computing instructions),
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that the telemetry module includes a protocol driver resident within memory
to control functionality of particular devices, and the telemetry module
memory software is subdivided into functions common across all uses of
telemetry module and functions that are specific to a particular protocol
driver. Ans. 8, citing Goetz para. [0042]. In response, Appellants explain
that paragraph [0042] of Goetz discloses that “the platform software 715 is
permanently resident, but the protocol drivers 725 are installable, i.e., they
are transmitted from host 603 as part of configuring telemetry module 240
(paragraphs [0048] and [0049]).” Reply Br. 6.
Appellants’ argument is not persuasive since the detailed protocol
driver installation process described in Figure 10 of Goetz discloses that the
host checks whether a protocol driver is already installed in the telemetry
module, since protocol drivers may be previously stored in the telemetry
module. See Goetz paras. [0048] – [0053], figs. 7, 9 and 10. Further,
Appellants’ contention that Goetz teaches that the protocol drivers are
installable in the telemetry module and not permanently resident is not
commensurate with the scope of claims 1 and 10, which recite “wherein said
computing instructions are contained within said telemetry head” and is
silent regarding whether the computing instructions are permanently
contained within the telemetry head.
In response to Appellants’ contention that Goetz fails to disclose that
the computing instructions start in the telemetry head and are transmitted to
the computing device, the Examiner also correctly pointed out that this
temporal limitation is not structurally recited in the claims. Ans. 8.
Appellants also agree that claims 1 and 10 do not expressly recite such a
temporal element. Reply Br. 6-7. We decline to read limitations from the
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Specification into the claims.1 Further, giving the claims the broadest
reasonable construction, the Examiner appropriately concluded that once
downloaded to the telemetry head from the host, the protocol driver is
contained within the telemetry head. Ans. 8.
Finally, Appellants contend that Goetz merely discloses installing the
protocol driver into the telemetry module, but does not disclose the
additional claims limitation that the host (computing device) processes the
protocol driver (computing instructions associated with said implantable
medical device) as required by claims 1 and 10. Reply Br. 6-8, citing Goetz
paras. [0049] and [0050]. This argument is not persuasive since Goetz also
discloses that the host “manages the various procedures for configuring the
telemetry module”, such as identifying the desired protocol driver from
several saved in memory, checking the integrity of the protocol driver,
communicating with the telemetry module, transferring the binary data that
comprises the protocol driver and verifying the integrity of the transfer. See
Goetz para. [0048], fig. 9. Again, giving claims 1 and 10 the broadest
reasonable construction, the various activities described with respect to
Figure 9 can reasonably be construed as a limitation that “the host processes
the computing instructions associated with said implantable medical device”.
Appellants arguments do not persuade us of error in the Examiner’s
findings that Goetz discloses a system for programming an implantable
medical device 5 that includes a telemetry interface, a computing device, and
a communications link 605, such that the computing device processes the

1 See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327
(Fed. Cir. 2003)(it is improper to read a limitation from the specification into
the claims).

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computing instructions associated with the implantable device, the
programmer supplies a user interface based on the computing instructions,
the telemetry head receives the programming instructions from the
computing device and provides the programming instructions to the
implantable medical device and the computing instructions are contained
within the telemetry head. As such we sustain the rejection of claim 1, 3-5,
7-10, 12-14 and 16-18 as anticipated by Goetz under 35 U.S.C. §102(b).
Because we sustain the rejection of claims 1, 3-5, 7-10, 12-14, and 16-
18 as anticipated by Goetz, we do not review the Examiner’s alternative
rejection of claims 1, 3-5, 7-10, 12-14 and 16-18 under 35 U.S.C. §103(a),
as obvious to one with ordinary skills in the art to position the computing
instruction from the computing device to the telemetry head (In re Japikse,
181 F.2d 1019 (CCPA1950)). Ans. 4.

II. Claims 1 and 10 anticipated by Causey
The Examiner found that Causey discloses a system for programming
an implantable medical device 20 that includes a telemetry interface 28, a
programmer 32, a communications link 31 and computing device, such that
the computing device processes the computing instructions associated with
the implantable device and supplies a user interface based in part on the
computing instructions, the telemetry head receives the programming
instructions from the computing device and the provides the programming
instructions to the implantable medical device using the telemetry interface
and the computing instructions are contained within the telemetry head.
Ans. 5-6, citing Causey, col. 1, ll. 7-17; col. 2, l. 52 – col. 3, l. 21; col. 9, ll.
29-39; col. 16, ll. 1-18; col. 18, ll. 1-16; figs. 1, 3. The Examiner also
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determined that it would have been obvious to position the computing
instructions from the computing device to the telemetry head. Ans. 9.
Appellants argue that Causey discloses that computing instructions
and programming instructions are stored in a programming device (APS-II
processing circuits 30) and/or program cartridge 40, and fails to disclose that
the telemetry module contains both computing instructions and
programming instructions as recited in claims 1 and 10. App. Br. 17-18.
The Examiner explained that when the programing instructions are
transmitted from the computing device (the programmer) to the telemetry
head, the claim limitation that the computing instructions are contained
within the telemetry head is met. Ans. 9, citing Causey col. 2, ll. 58-61. We
agree with Appellants that Causey discloses that the programming
instructions and not the computing instructions are transmitted from the
computing device to the telemetry module and forwarded to the implantable
device and does not disclose computing instructions contained in the
telemetry head as recited in claims 1 and 10. Reply Br. 10. We do not
consider whether it would have been obvious to position the computing
instructions from the computing device to the telemetry head as claims 1 and
10 are rejected as being anticipated by Causey.2
We do not sustain the rejection of claims 1 and 10.

2 See Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001) (a claim is anticipated if every element and limitation of a
claimed invention is found in a single prior art reference, arranged as in the
claim).
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III. Claims 6 and 15 as unpatentable over Goetz and Lang
The Examiner found that Lang teaches storing patient information in
an encrypted form and that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify Goetz by storing
patient information in an encrypted form as taught by Lang in order to
protect a patient's privacy or to prevent a non-authorized person from getting
hold of the information. Ans. 7, citing Lang co1.6, ll. 49-59.
Appellant argues that Lang does not remedy the deficiencies of Goetz,
regarding the computing instructions being contained within a telemetry
head, the telemetry head receiving programming instructions from the
computing device and transmitting the programming instructions to the
implantable medical device. App. Br. 18-19. The Examiner relied on Lang
to disclose the feature of claims 6 and 10 regarding storing patient
information in an encrypted form, and not to remedy any deficiency of
Goetz as to claims 1 or 10, from which claims 6 and 15 depend.
Appellants do not persuade us of error in the Examiner's findings or
conclusion that it would have been obvious to modify Goetz by storing
patient information in an encrypted form as taught by Lang in order to
protect patient's privacy or to prevent non-authorized persons from getting
hold of the information. We sustain the rejection of claims 6 and 15.

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DECISION
The rejection of claims 1, 3-5, 7-10, 12-14 and 16-18 as anticipated by
or obvious over Goetz is affirmed.
The rejection of claims 1 and 10 under 35 U.S.C. §102(b) over
Causey is reversed.
The rejection of claims 6 and 15 under 35 U.S.C. §103(a) over Goetz
and Lang is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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