13096756 (P.T.A.B. Sep. 15, 2017)

Ex Parte Ali et al

Patent Trial and Appeal BoardSep 15, 2017

13096756 (P.T.A.B. Sep. 15, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/096,756 04/28/2011 Irfan Z. Ali 1123-043US01/P0034608.00 5234 71996 7590 09/19/2017 SHUMAKER & SIEFFERT , P.A 1625 RADIO DRIVE , SUITE 100 WOODBURY, MN 55125 EXAMINER STILES, AMBER R. ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/19/2017 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): pairdocketing @ ssiplaw.com medtronic_neuro_docketing @ cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IRFAN Z. ALI, DONALD L. VILLALTA, and SCOTT A. SARKINEN Appeal 2016-005839 Application 13/096,7561 Technology Center 3700 Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and SCOTT B. HOWARD, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—54, the only claims pending in the application on appeal. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real parties in interest are Medtronic, Inc. and Medtronic pic. App. Br. 3. Appeal 2016-005839 Application 13/096,756 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to a method of providing a therapeutic agent to a patient by an infusion device where the device automatically provides a faction of the total dose over a period of time. Abstract. Claim 1, which is illustrative, reads as follows: 1. A method comprising: receiving a total dose of a therapeutic agent to be delivered to a patient by an infusion device over a total period of time; automatically dividing the total dose into a plurality of unit doses, each of which is equal to a fraction of the total dose configured to be delivered to the patient by the infusion device over a unit period of time equal to a fraction of the total period of time; automatically programming the infusion device to deliver to the patient one of the plurality of unit doses over its respective unit period of time; delivering to the patient, by the infusion device, the one unit dose; and determining whether an error has occurred in delivering the one unit dose to the patient. References The Examiner relies on the following prior art in rejecting the claims Mobergetal. US 2006/0184154 A1 (hereinafter “Moberg”) Aug. 17, 2006 Russell US 2006/0258985 Al Nov. 16, 2006 Zhao et al. (hereinafter “Zhao”) US 2009/0112155 Al Apr. 30, 2009 O’Connor US 2010/0081993 Al Apr. 1,2010 2 Appeal 2016-005839 Application 13/096,756 Spencer et al. US 2010/0094221 A1 Apr. 15, 2010 (hereinafter “Spencer”) Dobbles et al. WO 2009/048462 Al Apr. 16, 2009 (hereinafter “Dobbles”) Rejections Claims 1—5, 7—19, 28—30, 33—43, 53, and 54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Russell and Moberg. Final Act. 2—13. Claims 20, 26, 27, 44, and 50-52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Russell, Moberg, and Zhao. Id. at 13—16. Claims 21—25 and 45^49 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Russell, Moberg, Zhao, and O’Connor. Id. at 16—22. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Russell, Moberg, and Dobbles. Id. at 22. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Russell, Moberg, and Spencer. Id. at 22-23. Dispositive Issue on Appeal Did the Examiner err in finding that the combination of Russell and Moberg teaches or suggests “automatically dividing the total dose into a plurality of unit doses, each of which is equal to a fraction of the total dose configured to be delivered to the patient by the infusion device over a unit 3 Appeal 2016-005839 Application 13/096,756 period of time equal to a fraction of the total period of time,” as recited in claim 1 and similarly recited in independent claims 28, 53, and 54? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. Appellants’ arguments have persuaded us of error in the Examiner’s rejections of independent claims 1, 28, 53, and 54. In response to Appellants’ arguments, the Examiner finds Russell teaches an infusion system having a total volume to be administered to a patient (i.e., the volume to be infused (VTBI); that a clinician enters the rate at which the volume is to be infused; and then a controller calculates a dose based on the VTBI and the rate at which the volume is to be infused. Ans. 4—6 (citing Russell, Figs. 1, 5, 6,1 54). Based on these findings, the Examiner concludes Russell teaches or suggests the disputed limitation. Id. We have reviewed Russell and concur with Appellants. Each of the independent claims recites “automatically dividing a total does into a plurality of doses.” Russell teaches the infusion system is programmed with a VTBI of 500 mL for a drug “Heparin” with a concentration of 10 units/mL. Russell | 52. Russell further teaches the clinician likely enters the rate, 20 mE/h, at which the volume is to be infused and the controller calculates the dose, 18.18 unit/kg/h. Id. 53—54. Based on the particular variables discussed by Russell (e.g., rate, concentration, and patient weight), Russell teaches or suggests that the controller calculates the dose by dividing the product of the concentration and the rate by the patient weight and not by dividing a total dose into a plurality of unit doses as required by independent claims 1, 28, 53, and 54. 4 Appeal 2016-005839 Application 13/096,756 Because we find this issue to be dispositive as to the rejection of claims 1—54, we do not reach Appellants’ remaining contentions. Accordingly, we do not sustain the Examiner’s rejection of claims 1, 28, 53, and 54; and claims 2—27 and 29-52, which depend therefrom. DECISION We reverse the Examiner’s rejections of claims 1—54 under 35 U.S.C. § 103(a). REVERSED 5