Ex Parte Torgerson et al

Board of Patent Appeals and Interferences

May 15, 2012

11184550 (B.P.A.I. May. 15, 2012)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
11/184,550 07/19/2005 Torgerson, Nathan A.

EXAMINER
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS MN 55418
Dietrich, Joseph
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE

05/15/2012 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NATHAN A. TORGERSON, CHRISTOPHER M. ARNETT,
STEVEN J. NELSON, and ALLEN D. ALMENDINGER
__________

Appeal 2011-001635
Application 11/184,550
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device communication system. The Examiner rejected the claims as obvious
and provisionally on the ground of nonstatutory obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
The Claims
Claims 1-16 are on appeal. Claim 1 is representative and reads as
follows:
1. A medical device communication system,
comprising:
a plurality of implantable medical devices;
an external device being configured to
transcutaneously send an identification command to at
least one of said plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command
with an uplink response in one of a plurality of uplink
time slots;
said external device being configured to receive
said uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication with only a selected one of said plurality
of implanted medical devices based, at least in part, upon
a user selection of one of said plurality of implanted
medical devices.

The issues

A. The Examiner provisionally rejected claims 1-16 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-23 of copending Application No. 11/184,717 and Haubrich
1
(Ans.
4-5).

1
Haubrich et al., US 6,482,154 B1, issued Nov. 19, 2002.
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B. The Examiner provisionally rejected claims 1-16 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-25 of copending Application No. 11/184,718 and Haubrich (Ans. 5-
6).
C. The Examiner rejected claims 1 and 9 under 35 U.S.C. § 103(a) as
obvious over Haubrich and Marsan
2
(Ans. 6-7).
D. The Examiner rejected claims 2, 8, 10, and 16 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Olkkonen
3
(Ans. 7-8).
E. The Examiner rejected claims 3-6 and 11-14 under 35 U.S.C. § 103(a)
as obvious over Haubrich, Marsan, and Wu
4
(Ans. 9-11).
F. The Examiner rejected claims 7 and 15 under 35 U.S.C. § 103(a) as
obvious over Haubrich, Marsan, Wu, and Olkkonen (Ans. 11-12).
A. & B Double Patenting
The Examiner finds the claims of copending Applications 11/184,717
and 11/184,718 “are not patentably distinct . . . because claim 1 of
Application 11/184,717 [or 11/184,718] comprises every limitation of those
in claim 1 of the instant application, except selecting a device based, at least
in part, upon user selection” (Ans. 4, 5). The Examiner finds that “Haubrich
teaches it is known to use an external device being configured to arbitrate
among individual ones of said plurality medical devices by establishing
transcutaneous communication with only a selected one of said plurality…
based, at least in part, upon a user selection” (Ans. 4, 5). The Examiner

2
Marsan et al., US 6,570,861 B1, issued May 27, 2003.
3
Olkkonen et al., US 6,842,460 B1, issued Jan. 11, 2005.
4
Wu, C., US 6,836,469 B1, issued Dec. 28, 2004.
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finds it obvious “to modify the selection based upon signal strength as taught
by Application No. 11/184,717 [or to modify the selection based on an order
of time as taught by Application No. 11/184,718] with a selection based
upon user selection as taught by Haubrich, since such a modification would
provide the predictable results of allowing a physician to select the most
critical and/or easily accessible device to access” (Ans. 5).
Appellants contend that “neither of Application Nos. 11/184,717 nor
11/184,718 contains claims making a selection based on a user selection”
(App. Br. 11). Appellants contend that “Haubrich et al „154 does not show,
disclose or suggest the subject matter of a user selection as it is defined by
the claims” (App. Br. 11). As Appellants do not argue claims separately, we
select claim 1 as representative, and claims 2-16 therefore stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that the claims of copending applications
11/184,717 and 11/184,718 in combination with Haubrich render claim 1
obvious?
Findings of Fact
1. Claim 1 of copending application 11/184,718 is reproduced
below:
1. A medical device communication system,
comprising:
a plurality of implantable medical devices; and
an external device being configured to
transcutaneously send an identification command to at
least one of said plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command
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with an uplink response in one of a plurality of uplink
time slots;
said external device being configured to receive
said uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication only to a selected one of said plurality of
implanted medical devices based, at least in part, upon an
order in time of which said plurality of implanted
medical devices respond with said uplink response.

2. Claim 1 of copending application 11/184,717 is reproduced
below:
1. A medical device communication system,
comprising:
an external device being configured to
transcutaneously send an identification command to at
least one of a plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command
with an uplink response in one of a plurality of uplink
time slots;
said external device being configured to receive
said uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication with only a selected one of said plurality
of implanted medical devices based, at least in part, upon
a signal strength of said uplink response of at least one of
said plurality of implanted medical devices.

3. Haubrich teaches that:

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If the external device receives an up-linked event signal, it is
displayed to the operator or triggers a signal indicating its
receipt. The operator may then determine whether the
received event signal correlates in time to the response-
provoking event. If so, the operator can conclude that the
device that transmitted the event signal is the device with
which communication is desired, and may initiate a
telemetry session with that implanted, device.

(Haubrich, col. 2, ll. 17-25).

Principles of Law
It is well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant‟s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
“Obviousness-type double patenting is a judicially created doctrine
intended to prevent improper timewise extension of the patent right by
prohibiting the issuance of claims in a second patent which are not
„patentably distinct‟ from the claims of a first patent.” In re Braat, 937 F.2d
589, 592-93 (Fed. Cir. 1991). “It is the claims, not the specification, that
define an invention…. And it is the claims that are compared when assessing
double patenting.” Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 943
(Fed. Cir. 1992).

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Analysis
Provisional Double Patenting – copending application - 11/184,718
There is no dispute that claim 1 of copending application 11/184,718
teaches all of the limitations of the instant claim 1, differing only in
requiring that the criteria for selection is “based, at least in part, upon an
order in time”, rather than being “based, at least in part, upon a user
selection” as in the instant claim.
Haubrich teaches that:

If the external device receives an up-linked event signal, it is
displayed to the operator or triggers a signal indicating its
receipt. The operator may then determine whether the
received event signal correlates in time to the response-
provoking event. If so, the operator can conclude that the
device that transmitted the event signal is the device with
which communication is desired, and may initiate a
telemetry session with that implanted, device.

(Haubrich, col. 2, ll. 17-25).

We therefore agree with the Examiner that it would have been
obvious over claim 1 of copending application 11/184,718 and Haubrich to
base the selection of an implanted medical device for communication, at
least in part, upon user selection since Haubrich expressly teaches that the
user may select the device with which to initiate a telemetry session based in
part, on the correlation in time with the event signal (FF 3).
Provisional Double Patenting – copending application - 11/184,717
There is no dispute that claim 1 of copending application 11/184,717
teaches all of the limitations of the instant claim 1, differing only in
requiring that the criteria for selection is “based, at least in part, upon a
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signal strength” of the uplink, rather than being “based, at least in part, upon
a user selection” as in the instant claim.
Haubrich teaches that:

If the external device receives an up-linked event signal, it is
displayed to the operator or triggers a signal indicating its
receipt. The operator may then determine whether the
received event signal correlates in time to the response-
provoking event. If so, the operator can conclude that the
device that transmitted the event signal is the device with
which communication is desired, and may initiate a
telemetry session with that implanted, device.

(Haubrich, col. 2, ll. 17-25).

We therefore agree with the Examiner that it would have been
obvious over claim 1 of copending application 11/184,717 and Haubrich to
base the selection of an implanted medical device for communication, at
least in part, upon user selection since Haubrich expressly teaches that the
user may select the device with which to initiate a telemetry session (FF 3).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that the
claims of copending applications 11/184,717 and 11/184,718 in combination
with Haubrich render claim 1 obvious.
C. 35 U.S.C. § 103(a) over Haubrich and Marsan
The Examiner finds that
Haubrich discloses a system and method comprising: a
plurality of IMDs . . . an external device configured to
transcutaneously send an identification command and
receive a response . . . said plurality of IMDs configured to
respond to the command . . . in a plurality of channels . . .
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said external device being configured to arbitrate among
individual ones of said plurality medical devices by
establishing transcutaneous communication with only a
selected one of said plurality… based, at least in part, upon a
user selection

(Ans. 6-7). The Examiner finds that Haubrich “fails to explicitly say that the
channels are uplink time slots” (Ans. 7).
The Examiner finds that “Marsan teaches that it is known to have a
plurality of remote devices respond to a single device in a plurality time
slots” (Ans. 7). The Examiner finds it obvious to “modify the telemetry
signal as taught by Haubrich with the telemetric network using the time slots
as taught by Marsan, since such a modification would provide the
predictable results of allowing the plurality of IMDs to be sorted and chosen
without interference between the signals” (Ans. 7).
Appellants contend that “it is specifically the case that the external
device does not select the device to be communicated with. Rather, a signal
is transmitted, the implantable devices respond, and a user, independently,
provokes a response” (App. Br. 13).
Appellants contend that the “application of Marsan et al „861 to
medical device technology would mean equating a cellular antenna tower to
an implantable medical device” (App. Br. 13). Appellants contend that the
“Office Action provides no credible basis for why a designer of an
implantable medical device weighing a few ounces and consuming a fraction
of an ampere of current would adapt a design for a cellular tower to enable
the implantable device to communicate” (App. Br. 14).
Appellants contend that “there is no basis for asserting that there as
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articulable reason with a rational underpinning to combine a
communications system which manages communications from one device to
another device, as in Haubrich et al „154, with a communications system
which manages an array of communications among multiple transmitters and
multiple receivers, as in Marsan et al „861” (App. Br. 15).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Haubrich and Marsan render obvious
a device which is “configured to arbitrate” between medical devices based in
part “upon a user selection” as required by claim 1?
Findings of Fact
4. The Specification teaches that:
external device 15 must still determine which of the medical
devices 22 with which to establish communication. This can
be done by building a list of medical devices 22 responding
to the identification request and allowing a user of the
external device 15, e.g., a physician or the patient, to select
the appropriate medical device 22.

(Spec. 7 ¶ 37).
5. The Specification teaches that in a “first exemplary technique
implanted medical devices respond to an identification command (sent by an
external unit) with various random delays to prevent the uplink response
from multiple implanted medical devices from overlapping . . . The user
may select from the list of devices” (Spec. 8 ¶ 39).
6. The Specification teaches that a
second exemplary technique uses a pseudo-random system
that is based on downlink telemetry strength. . . . The user
can then select the implanted medical device that first
responds to the identification command . . . The arbitration
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is faster than the first exemplary technique, since it doesn't
need to find and identify every implanted medical device
within range, but only needs to find the closest implanted
medical device, which responds in one of the earliest
timeslots.

(Spec. 9 ¶ 41).
7. The Specification teaches that in a “third exemplary technique,
the user may look at the strength of the uplink signal from each of the
plurality of implanted medical devices. . . .The user may then select the
implanted device having the strongest uplink response signal” (Spec. 11 ¶
48).
8. Haubrich teaches
a telemetry system for communications between an
implanted medical device and an associated external medical
device located at a distance from the implanted device, the
present invention is intended to assure that there is no
ambiguity as to which implanted device is communicating
with the external device or as to which patient has the device
implanted.

(Haubrich, col. 1, ll. 52-58).
9. Haubrich teaches that the “external device preferably issues a
request for communication, which may be received by any of a population of
implantable devices that employ the inventive telemetry system” (Haubrich,
col. 1, ll. 63-66).
10. Haubrich teaches that “[t]hose devices within range of the
external device may in response send a telemetry transmission indicating
that the request for communication has been received” (Haubrich, col. 1, ll.
66 to col. 2, l. 1).
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11. Haubrich teaches that a “separate mechanism is provided for
activating only the implantable device within a specific patient to send a
telemetry transmission including an event signal indicative that the
implanted device has been so activated” (Haubrich, col. 2, ll. 3-7).
12. Haubrich teaches that “one or a number of communication
channels may be available” (Haubrich, col. 3, ll. 19-20).
13. Haubrich teaches that “even if a telemetry link is established
between the external device and an implanted device, there may still be
uncertainty as to which patient‟s device is communicating with the external
device” (Haubrich, col. 1, ll. 45-50; FF 16).
14. Marsan teaches that “a need exists for a method and apparatus
for assigning use of a radio frequency communication resource in a manner
such that ACCP [adjacent channel coupled power interference] is minimized
while all communication channels are utilized” (Marsan, col. 1, ll. 59-62).
15. Marsan teaches that the “communication system determines a
signal strength of a signal received from a user of the communication
resource and, based on the signal strength determination, assigns the user
one or more of the communication channels that are then available”
(Marsan, col. 2, ll. 27-31).
16. Marsan teaches that “the processor 204 assigns the time slot in
the highest signal strength set of the different sets of time slots (e.g., time
slot 433 would be assigned since it is in a higher signal strength set of time
slots than time slots 413 and 414)” (Marsan, col. 5, ll. 43-47).

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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Analysis
Claim Interpretation
We begin with claim interpretation, and in particular, the phrase
“external device being configured to arbitrate” in claim 1. Claim terms are
given their broadest reasonable interpretation as they would be understood
by persons of ordinary skill in the art in the light of the Specification.
Therefore, we first turn to the Specification to determine whether the phrase
“external device being configured to arbitrate” has any specified definition.
The Specification provides no specific definition for an “external
device being configured to arbitrate”. The phrase “being configured to
arbitrate” does not exclude the situation where the device presents a list of
implanted devices to a user for selection, since such a device is “configured
to arbitrate” with the assistance of the user.
The Specification provides three exemplary techniques, but in each
technique, the “external device being configured to arbitrate” functions to
obtain information after which the “user may select from the list of devices”
(Spec. 8 ¶ 39; FF 5); “[t]he user can then select the implanted medical
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device that first responds to the identification command” (Spec. 9 ¶ 41; FF
6); and “[t]he user may then select the implanted device having the strongest
uplink response signal” (Spec. 11 ¶ 48; FF 7).
Thus, in each case, the device obtains data which is subsequently used
by a user to perform the actual selection of the implanted medical device (FF
4-7). Therefore, the phrase “external device being configured to arbitrate” is
most reasonably interpreted as a device which captures information from
implanted medical devices and presents it to a user who selects the desired
medical device using the external medical device, resulting in a selected
implanted medical device for connection. See In re Zletz, 893 F.2d 319, 322
(Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”)
Obviousness
Haubrich teaches
a telemetry system for communications between an
implanted medical device and an associated external medical
device located at a distance from the implanted device, the
present invention is intended to assure that there is no
ambiguity as to which implanted device is communicating
with the external device or as to which patient has the device
implanted.

(Haubrich, col. 1, ll. 52-58; FF 8). Haubrich teaches that the “external
device preferably issues a request for communication, which may be
received by any of a population of implantable devices that employ the
inventive telemetry system” (Haubrich, col. 1, ll. 63-66; FF 9).

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Haubrich teaches that:

The operator may then determine whether the received event
signal correlates in time to the response-provoking event. If
so, the operator can conclude that the device that transmitted
the event signal is the device with which communication is
desired, and may initiate a telemetry session with that
implanted, device.

(Haubrich, col. 2, ll. 17-25; FF 3).

Marsan teaches that the “communication system determines a signal
strength of a signal received from a user of the communication resource and,
based on the signal strength determination, assigns the user one or more of
the communication channels that are then available” (Marsan, col. 2, ll. 27-
31; FF 15). Marsan teaches a radio communication system where a
“processor 204 assigns the time slot in the highest signal strength set of the
different sets of time slots (e.g., time slot 433 would be assigned since it is in
a higher signal strength set of time slots than time slots 413 and 414)”
(Marsan, col. 5, ll. 43-47; FF 16).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found that
Haubrich and Marsan render obvious a medical communication system with
an external device which communicates to and receives responses from a
plurality of implanted medical devices (FF 8-16) where the external device
establishes communication based in part upon assignment by the user (FF
3). Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “it is specifically the case that the external
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device does not select the device to be communicated with. Rather, a signal
is transmitted, the implantable devices respond, and a user, independently,
provokes a response” (App. Br. 13).
We are not persuaded. Claim 1 requires the interaction of both the
external device and selection based, at least in part, upon a user selection
(see Claim 1). Both Haubrich and Marsan teach external devices (FF 9, 15)
and Haubrich expressly teaches that “the operator can conclude that the
device that transmitted the event signal is the device with which
communication is desired, and may initiate a telemetry session with that
implanted, device” (Haubrich, col. 2, ll. 17-25; FF 3).
Appellants contend that the “application of Marsan et al „861 to
medical device technology would mean equating a cellular antenna tower to
an implantable medical device” (App. Br. 13). Appellants contend that the
“Office Action provides no credible basis for why a designer of an
implantable medical device weighing a few ounces and consuming a fraction
of an ampere of current would adapt a design for a cellular tower to enable
the implantable device to communicate” (App. Br. 14).
We are not persuaded. The test for non-analogous art is first whether
the art is within the field of the inventor‟s endeavor and, if not, whether it is
“reasonably pertinent to the particular problem with which the inventor was
involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field” of
endeavor, it logically would have commended itself to an inventor's
attention in considering his problem “because of the matter with which it
deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
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Haubrich teaches that the “external device preferably issues a request
for communication, which may be received by any of a population of
implantable devices that employ the inventive telemetry system” (Haubrich,
col. 1, ll. 63-66; FF 9). Haubrich is concerned with medical telemetry, in
particular concerned that “even if a telemetry link is established between the
external device and an implanted device, there may still be uncertainty as to
which patient‟s device is communicating with the external device”
(Haubrich, col. 1, ll. 45-50; FF 13).
Marsan teaches that “a need exists for a method and apparatus for
assigning use of a radio frequency communication resource in a manner such
that ACCP [adjacent channel coupled power interference] is minimized
while all communication channels are utilized” (Marsan, col. 1, ll. 59-62; FF
14). Haubrich shares Marsan‟s interest in minimizing interference between
radio frequency devices which communicate with a base device since
Haubrich‟s medical telemetry system involves radio frequency devices
which communicate with an external base device (FF 8-13). Consequently,
Marsan‟s teachings on minimizing radio frequency interference on radio
frequency devices is reasonably found to be pertinent to Haubrich‟s radio
frequency devices.
Appellants contend that “there is no basis for asserting that there as
articulable reason with a rational underpinning to combine a
communications system which manages communications from one device to
another device, as in Haubrich et al „154, with a communications system
which manages an array of communications among multiple transmitters and
multiple receivers, as in Marsan et al „861” (App. Br. 15).
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We are not persuaded. Both Marsan and Haubrich are interested in
managing communications where a plurality of radio frequency devices
communicate with a single base device which must determine the status of
the radio frequency devices and determine whether and how to communicate
with the radio frequency devices (FF 8-15). We agree with the Examiner‟s
articulated reason that it would have been obvious “to modify the telemetry
signal as taught by Haubrich with the telemetric network using the time slots
as taught by Marsan, since such a modification would provide the
predictable results of allowing the plurality of IMDs to be sorted and chosen
without interference between the signals” (Ans. 7).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Haubrich and Marsan render obvious a device which is “configured to
arbitrate” between medical devices based in part “upon a user selection” as
required by claim 1.
D. 35 U.S.C. § 103(a) over Haubrich, Marsan, and Olkkonen
The Examiner finds that “Haubrich in view of Marsan discloses the
claimed invention except for developing a list of the IMDs” (Ans. 7). The
Examiner finds that “Olkkonen teaches that it is known to develop a list of
the plurality of devices responding with said uplink response, to supply the
list to the user; and to establish transcutaneous communication with one of
the devices selected by the user” (Ans. 7-8).
The Examiner finds it obvious to “modify the selection of a device as
taught by Haubrich in view of Marsan with the list as taught by Olkkonen,
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since such a modification would provide the predictable results of allowing a
trained physician to quickly pick the device of highest priority” (Ans. 8).
Appellants contend that “Olkkonen et al „406 [sic, „460] does not
show, disclose or suggest that slave device 100 is configured to arbitrate by
establishing communication with only a selected one of the information
providers 106, 116. Rather, the slave device 100 would be establishing
communication with all of the devices in ad hoc network 102, 112” (App.
Br. 17).
Appellants contend that “Olkkonen et al „460 discloses precisely the
opposite of the subject matter of claims 1 and 9, and in fact teaches away
from the presently claimed invention. Further, Olkkonen et al '460 discloses
a user selection adding an arriving device to the network, not establishing
communication between the master device and the slave device” (App. Br.
18).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Haubrich, Marsan, and Olkkonen
render obvious a device which is “configured to develop a list” and “to
establish transcutaneous communication with one of said plurality of
implanted medical devices selected from said list by said user”?
Findings of Fact
17. Olkkonen teaches that the “network discovery menu lists the
characteristics of the ad hoc networks within its range. When the user selects
an entry from the menu, the arriving device automatically joins the selected
ad hoc network” (Olkkonen, col. 46, ll. 29-33).

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Analysis
Haubrich and Marsan teach the limitations of claim 1 for the reasons
discussed above, and Haubrich teaches an external device where “the
operator can conclude that the device that transmitted the event signal is the
device with which communication is desired, and may initiate a telemetry
session with that implanted, device” (Haubrich, col. 2, ll. 22-25; FF 3).
Olkkonen teaches that the “network discovery menu lists the
characteristics of the ad hoc networks within its range. When the user selects
an entry from the menu, the arriving device automatically joins the selected
ad hoc network” (Olkkonen, col. 46, ll. 29-33; FF 17).
Consistent with KSR, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” 550 U.S. at 421. We agree with the
Examiner that the person of ordinary creativity, informed by Olkkonen to
make lists of detected devices, would have incorporated this feature into the
communication system of Haubrich and Marsan to form a list of the
implanted medical devices in the external device from which the doctor
could choose the correct implanted medical device for communication (FF 3,
8-13, 17).
Appellants contend that “Olkkonen et al „406 [sic, „460] does not
show, disclose or suggest that slave device 100 is configured to arbitrate by
establishing communication with only a selected one of the information
providers 106, 116. Rather, the slave device 100 would be establishing
communication with all of the devices in ad hoc network 102, 112” (App.
Br. 17).
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We are not persuaded. Olkkonen was cited to demonstrate that the
concept of forming lists of connected devices, whether for networks or
implanted medical devices, would permit selection of the desired device by a
user (FF 3, 17). Appellants have provided no reason why this result would
differ simply because Olkkonen uses a different communication device. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art”.)
Appellants contend that “Olkkonen et al „460 discloses precisely the
opposite of the subject matter of claims 1 and 9, and in fact teaches away
from the presently claimed invention. Further, Olkkonen et al „460 discloses
a user selection adding an arriving device to the network, not establishing
communication between the master device and the slave device” (App. Br.
18).
We are not persuaded. Appellants do not specifically identify, and we
do not find, any teaching in Olkkonen which teaches away from the use of a
list in the communication system of Haubrich and Marsan. Like our
appellate reviewing court, “[w]e will not read into a reference a teaching
away from a process where no such language exists.” DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).

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22

Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Haubrich, Marsan, and Olkkonen render obvious a device which is
“configured to develop a list” and “to establish transcutaneous
communication with one of said plurality of implanted medical devices
selected from said list by said user”.
E. 35 U.S.C. § 103(a) over Haubrich, Marsan, and Wu
The Examiner finds that “Wu teaches that it is known to instruct
medical devices to cease responding to the identification command if at least
two of the medical devices respond with an uplink signal in one of the
uplink time slots and to repeat sending the identification command and to
repeat receiving the uplink signal” (Ans. 9). The Examiner finds it obvious
to “modify the invention as taught by Haubrich in view of Marsan with the
command as taught by Wu, since such a modification would provide the
predictable results of allowing further communications with base sites
(implantable medical devices) even when interference occurs between two
or more of the devices” (Ans. 9).
The Examiner provides sound fact-based reasoning for combining Wu
with Haubrich and Marsan. We adopt the fact finding and analysis of the
Examiner as our own. Appellants argue the underlying obviousness
rejection, but Appellants do not identify any material defect in the
Examiner‟s reasoning for combining Haubrich and Marsan with Wu. Since
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23
Appellants only argue the underlying rejection which we affirmed above, we
affirm this rejection for the reasons stated by the Examiner.
F. 35 U.S.C. § 103(a) over Haubrich, Marsan, Wu, and Olkkonen
The Examiner finds that “Olkkonen teaches that it is known to
develop a list” (Ans. 11). The Examiner finds it obvious to “modify the
selection of a device as taught by Haubrich in view of Marsan and Wu with
the list as taught by Olkkonen, since such a modification would provide the
predictable results of allowing a trained physician to quickly pick the device
of highest priority” (Ans. 11).
The Examiner provides sound fact-based reasoning for combining
Olkkonen with Haubrich, Marsan, and Wu. We adopt the fact finding and
analysis of the Examiner as our own. Appellants argue the underlying
obviousness rejection, but Appellants do not identify any material defect in
the Examiner‟s reasoning for combining Haubrich, Marsan, Wu with
Olkkonen. Since Appellants only argue the underlying rejection which we
affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
SUMMARY
In summary, we affirm the provisional rejection of claims 1-16 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-23 of copending Application No. 11/184,717 and
Haubrich.
We affirm the provisional rejection of claims 1-16 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-25 of copending Application No. 11/184,718 and Haubrich.
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We affirm the rejection of claims 1 and 9 under 35 U.S.C. § 103(a) as
obvious over Haubrich and Marsan.
We affirm the rejection of claims 2, 8, 10, and 16 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Olkkonen.
We affirm the rejection of claims 3-6 and 11-14 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Wu.
We affirm the rejection of claims 7 and 15 under 35 U.S.C. § 103(a)
as obvious over Haubrich, Marsan, Wu, and Olkkonen.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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