Ex Parte Haubrich et al

Patent Trial and Appeal Board

Mar 28, 2016

12182691 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/182,691 07/30/2008
27581 7590 03/30/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Gregory J. Haubrich
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.
P0029333.00/l l l l-034US01 4230
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. HAUBRICH and GARY KIVI
Appeal2014-000239
Application 12/182,691
Technology Center 3700
Before JENNIFER D. BAHR, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory J. Haubrich and Gary Kivi (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-25 and
27-32. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
Appeal2014-000239
Application 12/182,691
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method comprising:
monitoring, with a device configured to wirelessly
communicate with at least one implantable medical device
(IMD), an ambient noise on one or more communication
channels used for the wireless communication with the at least
one IMD; and
transmitting data corresponding to the monitored ambient
noise via a network to a data storage device remote from the
device configured to wirelessly communicate with the at least
one IMD.
REJECTIONS
I. Claims 1, 4--11, 14--19, 22-25, and 27-32 1 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Schmitt
(US 2007/0135865 Al, published June 14, 2007) and McAdams
(US 2006/0017575 Al, published January 26, 2006).
II. Claims 2, 3, 12, 13, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schmitt, McAdams, and Haubrich
(US 2007/0060053 Al, published March 15, 2007).
1 Final Office Action, paragraph 3, incorrectly includes cancelled claim 26
and inadvertently excludes claim 31. Final Act. 2. As is evident from the
explanation of the rejection, the Examiner rejected claim 31 as being
unpatentable over Schmitt and McAdams. Final Act. 5.
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Application 12/182,691
DISCUSSION
Rejection I: 35 U.S.C. § 103---Schmitt and McAdams
Claim 1 is a method claim which requires ( 1) monitoring, with a
device configured to wirelessly communicate with an IMD, an ambient noise
on one or more communication channels used for the communication, and
(2) transmitting to a storage device remote from said device data
corresponding to the monitored ambient noise. Appeal Br. 18 (Claims
App.). Claims 11 and 19 are directed to a device and system, respectively,
comprising structure configured to perform substantially the same
monitoring and transmitting called for in claim 1. Id. at 21, 24. Claim 30 is
directed to "[a] computer-readable storage medium comprising instructions
that cause a programmable processor to" perform the monitoring and
transmitting called for in claim 1. Id. at 27.
The Examiner found that Schmitt discloses "monitoring, with a device
configured to wirelessly communicate with at least one implantable medical
device (IMD), an ambient noise on one or more communication channels
used for wireless communication with the at least one IMD." Final Act. 3
(citing Schmitt i-fi-f 11-12). Appellants do not challenge this finding. See
Appeal Br. 5-10, 12-13, 14, 15. The Examiner found, however, that
Schmitt does "not disclose the step of transmitting data corresponding to the
monitored ambient noise via a network to a data storage device remote from
the device that wirelessly communicates with the at least one IMD." Final
Act. 3. The Examiner relies on McAdams to make up for this deficiency.
Final Act. 3--4 (citing McAdams, Fig. 1; i-fi-122-25). The Examiner explains:
The Examiner considers the monitor 26 disclosed by McAdams
as a device configured to wirelessly communicate with at least
one IMD that can be replace[d] with the external programmer
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Application 12/182,691
disclose[d] by Schmitt; additionally, the private network 27 and
patient management network 28 are characterized as the network
and data storage device configured to receive the data
corresponding to the monitored ambient noise.
Final Act. 4. The Examiner determined that it would have been obvious to
provide Schmitt's system and method "with a mean[ s] to store the monitored
data at a remote location as taught by McAdams" because both references
"are concerned with ... wireless communication between medical devices."
Id.
Appellants persuasively argue that "Schmitt in view of McAdams
fails to disclose or suggest transmitting data corresponding to monitored
ambient noise via a network to a data storage device remote from a device
configured to wirelessly communicate with at least one IMD." Appeal Br. 5.
According to Appellants, even if the teachings of Schmitt and McAdams
were combined in the manner proposed by the Examiner, the resulting
combination "would not include each and every feature of [Appellants'
claims]" (i.e., "transmitting data corresponding to monitored ambient noise
via a network to a data storage device remote from a device configured to
wirelessly communicate with at least one IMD"). Id. at 7.
Schmitt teaches that "[ n ]oise refers to any unwanted signal that
interferes with the transmission and processing of data signals in a
communications system" and that data transmitted from IMDs is "very
susceptible to interference from noise." Schmitt i-f 4. Schmitt discloses an
external programmer that transmits radio signals to and receives radio
signals from an IMD. Id. i-f 11. According to Schmitt, "[d]ata generated by
the implantable device is transmitted in the form of a carrier signal" and
"noise is removed from the samples by two filtering operations implemented
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Application 12/182,691
in the digital signal processor [component of the external programmer]." Id.
Schmitt fails to provide any disclosure, teaching, or suggestion that the
unwanted signals or data related to the unwanted signals are either stored or
transmitted to a remote location by the external programmer. Rather,
Schmitt suggests that the noise received by the external programmer, once
filtered, is removed and no longer available. See id. (disclosing determining
a detected noise spectrum by subtracting a template spectrum from the
detected power spectrum and using "[t]he detected noise spectrum[] to
synthesize the notch filters that remove the noise from the input signal"); see
also id. i-fl6 (disclosing "[t]he purpose of the notch filters is to remove
narrowband noise from the input signal samples"). Schmitt solves the noise
problem by filtering it out.
McAdams does not directly address ambient noise or interference
with the signal received from the IMD, but does teach that the signals from
the IMD once received by the monitor are filtered before transmission to the
digital signal processor. McAdams, Fig. 3; i140 ("[s]hort-distance receiver
circuitry 90 amplifies, filters, and digitizes the received data signal before
transmitting it to [the digital signal processor]"). McAdams, like Schmitt,
makes no reference to "transmitting data corresponding to the monitored
ambient noise" to a remote location. McAdams teaches that the IMD
"records useful data such as, for example, without limitation, . . . device
performance and functionality and periodically provides information to care
giver C." Id. i123. McAdams also teaches that monitor 26 is capable of
receiving data from the IMD via telemetry and transmitting it "via phone
lines or other communication platforms to private network 27[,] which
transfers the data to patient management network 28." Id. i124.
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The Examiner reasons that it would have been obvious to use the
modified invention of Schmitt and McAdams "to transmit data related to
ambient noise" because "McAdams discloses the type of data that may be
transmit [sic], including data related to device performance and
functionality, which might include the ambient noise level since it would
affect the input signal's strength and accuracy." Ans. 5---6 (citing McAdams
i-f 23). However, paragraph 23 of McAdams refers to the performance and
functionality of the IMD, not monitored ambient noise on one or more
channels used for wireless communication with the IMD. See Reply. Br. 7
(contending that "ambient noise [on one or more communication channels
used for wireless communication with the at least one IMD] is completely
unrelated to and unaffected by the performance and functionality of the
device [i.e., the IMD]").
As addressed above, in both Schmitt and McAdams, the ambient noise
on the communication channels is removed by the filtering process, and
neither reference gives any hint of a reason to transmit data corresponding to
such ambient noise to a remote location. Accordingly, the Examiner's
proposed combination of McAdams' s monitor with Schmitt's external
programmer, described above, would not result in the claimed invention
(including, in pertinent part, transmitting to a storage device remote from
said device data corresponding to the monitored ambient noise).
For the above reasons, the Examiner fails to establish, by a
preponderance of the evidence, that claim 1 is unpatentable over Schmitt and
McAdams. Thus, we do not sustain the rejection of independent claims 1,
11, 19, and 30 or their dependent claims 4--10, 14--18, 22-25, 27-29, 31, and
32 under 35 U.S.C. § 103(a) as unpatentable over Schmitt and McAdams.
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Application 12/182,691
Rejection II:
35 U.S. C. § 103---Schmitt, McAdams, and Haubrich
The Examiner did not rely on any teaching in Haubrich that might
make up for the deficiency in Schmitt and McAdams. Thus, we do not
sustain the rejection of claims 2, 3, 12, 13, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Schmitt, McAdams, and Haubrich.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
30-32 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Claims 30-32 are directed to a "computer-readable storage medium
comprising instructions." Appeal Br. 27 (Claims App.).
Appellants' Specification discloses as follows:
1. "[A] computer-readable medium comprising instructions that cause
a programmable processor to monitor ... an ambient noise." Spec.
iT 10.
2. Each of programming devices 12 may comprise a general purpose
computing device ... that executes instruction, software, or a
computer program. Id. iT 21.
3. This general purpose computing device may also include
instructions, software, or a computer program. Id. f 24.
4. "Memory 38 may store instructions for execution by processor
32"; [ m ]emory 34 may include separate memories for storing
instructions"; and "instructions stored in memory 38 cause
processor 3 6 and IMD 16A to perform any of the functions
ascribed to them herein." Id. iT 66.
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5. "Memory 46 includes operation instructions for ... data
corresponding to ambient noise"; [t]he operational instructions in
memory cause processor 44 and programming device 12 to provide
the functionality ascribed to them herein"; and"[ m ]emory 46 may
comprise any one or more of random access memory (RAM),
read-only memory (ROM), electronically-erasable programmable
ROM (EEPROM), hard disk, CD-ROM or the like." Id. i-f 74.
Appellants' Specification does not define "computer-readable storage
medium" in any manner that would exclude a transitory propagating signal.
Accordingly, the claimed "computer-readable storage medium" of claims
30-32 is construed to encompass transitory propagating signals having
instructions embodied therein. Thus, claims 30-32 cover subject matter that
is not patent-eligible under 35 U.S.C. § 101. See Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PT AB 2013) (precedential) (holding recited machine-
readable storage medium ineligible under § 101 because it encompassed
transitory media); see also David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)
("The broadest reasonable interpretation of a claim drawn to a computer
readable medium ... typically covers forms of ... transitory propagating
signals"); In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (holding that
"transitory embodiments are not directed to statutory subject matter"). 2' 3
2 As noted in Subject Matter Eligibility of Computer Readable Media, "[a]
claim drawn to such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the claim to
cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101
by adding the limitation 'non-transitory' to the claim."
3 The Examiner implicitly withdrew a previous rejection of claims 30-32
under 35 U.S.C. § 101 (see Final Act., passim; Non-Final Act. 2) in response
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Application 12/182,691
DECISION
The Examiner's decision rejecting claims 1-25 and 27-32 under
35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 30-32 under
35 U.S.C. § 101.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE 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:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
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 ....
to Appellants' amendment adding the term "storage" between "computer-
readable" and "medium" (Amendment filed June 28, 2012) prior to the
issuance of the precedential opinion in Mewherter, which is binding and
controlling in this case.
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Application 12/182,691
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).
REVERSED; 37 C.F.R. § 41.50(b)
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