Ex Parte Haubrich et alDownload PDFPatent Trial and Appeal BoardMar 28, 201612182691 (P.T.A.B. Mar. 28, 2016) Copy Citation 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. 2 Appeal2014-000239 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 3 Appeal2014-000239 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 4 Appeal2014-000239 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. 5 Appeal2014-000239 Application 12/182,691 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. 6 Appeal2014-000239 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. 7 Appeal2014-000239 Application 12/182,691 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 8 Appeal2014-000239 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. 9 Appeal2014-000239 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) 10 Copy with citationCopy as parenthetical citation