Ex Parte Bauhahn et al

Board of Patent Appeals and Interferences

May 25, 2012

10958191 (B.P.A.I. May. 25, 2012)

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.
10/958,191 10/04/2004 Ruth E. Bauhahn 151P11719USU1 1458
54228 7590 05/25/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
DIETRICH, JOSEPH M
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
05/25/2012 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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RUTH E. BAUHAHN and MARK E. SCHOMMER
__________

Appeal 2011-002263
Application 10/958,191
Technology Center 3700
__________

Before ERIC GRIMES, STEPHEN WALSH, and ERICA A. FRANKLIN,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an implantable medical device system, and a method of
providing therapeutic output to a patient. The Patent Examiner rejected the
claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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Application 10/958,191

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STATEMENT OF THE CASE
Claims 1-5 and 11-15 are on appeal. Claim 1 is representative and
reads as follows (emphasis added):
1. An implantable medical device system, comprising:
an implantable medical device for providing a therapeutic output to a
patient;
an external patient control unit adapted to be operatively coupled with
said implantable medical device allowing said patient to control said
therapeutic output of said implantable medical device; and
an external energy transfer unit adapted to be operatively coupled to
said implantable medical device to transcutaneously transfer energy to said
implantable medical device;
said external patient control unit having a user interface operable by
said patient, said user interface of said patient control unit having a first
plurality of icons indicative of a status of operation of said patient control
unit, each individual one of said first plurality of icons corresponding to an
individual one of a plurality of patient control unit functions or statuses;
said energy transfer unit having a user interface operable by said
patient, said user interface of said energy transfer unit having a second
plurality of icons indicative of a status of operation of said energy transfer
unit, each individual one of said second plurality of icons corresponding to
an individual one of a plurality of energy transfer unit functions or statuses;
at least some of said second plurality of icons of said energy transfer
unit being common with at least some of said patient controls and said first
plurality of icons of said patient control unit.

The Examiner rejected the claims as follows:
 claims 1, 2, 4, 5, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Meadows1 and Causey III;2 and
 claims 3 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Meadows, Causey III, and Lee.3

1 Paul Meadows et al., US 6,516,227 B1, issued Feb. 4, 2003.
2 James D. Causey III et al., US 2002/0002326 A1, published Jan. 3, 2002.
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Application 10/958,191

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DISCUSSION
The Examiner’s position is that Meadows described an implantable
medical device, an external patient control unit with a user interface, and an
external energy transfer unit with a user interface. (Ans. 4.) The Examiner
found that the user interface on the patient control unit had a “plurality of
display icons corresponding to a plurality of patient control unit functions or
statuses.” (Id.) The Examiner found that Causey III taught an external
patient control unit with a user interface, and an energy transfer unit having
a user interface, with “at least some of a plurality of icons of the energy
transfer unit being in common with at least some of the patient controls and
a plurality of icons of the patient control unit.” (Id.) The Examiner
concluded: “It would have been obvious to modify the user interfaces as
taught by Meadows with the user interfaces having a plurality of icons in
common with one another as taught by Causey, III, since such a
modification would provide the predictable results of allowing a patient or
physician to quickly and efficiently use either user interface without having
to learn a new set of instructions and icons.” (Id. at 4-5.)
Appellants first contend that “Meadows et al '227 does not show,
disclose or suggest that the charging station user interface provides any of
the same information as the handheld programmer does, such as battery
recharge countdown numbers or a battery status icon.” (App. Br. 12.) The
Examiner responds that Causey, not Meadows, was relied upon to teach two
different units having icons in common. (Ans. 7-8.) Thus, the Examiner

3 Michael T. Lee et al., US 2004/0199217 A1, filed April 2, 2003.
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Application 10/958,191

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and Appellants appear to agree on this point of difference between
Meadows’ system and the claimed system.
Appellants next contend that “[a]ll Meadows et al ‘227 discloses is
that the charging station displays an indication as to whether or not
recharging is operating, which is merely a disclosure of energy transfer, not
battery status.” (App. Br. 12.) Appellants repeat their argument that
Meadows gave “no disclosed commonality whatsoever between the icons of
the handheld programmer and the charging unit.” (Id. at 15.) The Examiner
does not respond directly to this point, but argues that because an icon is “a
picture, image or other representation,” and because Causey’s keys “contain
writing that represents a function,” the icons on Causey’s keys “would be
indicative of a status of operation.” (Ans. 8.) However, Appellants have
argued, “the symbols on [Causey’s] keypad 1024 are merely indicative of
programming infusion device 1010, not of a status of operation of anything.”
(App. Br. 13.) We find Appellants’ argument persuasive. Claim 1 states
that the first plurality of icons is indicative of a status of operation of the
patient control unit, and the second plurality of icons is indicative of a status
of operation of the energy transfer unit. While a person of ordinary skill in
the art may view Meadows’ therapy delivery icons as indicative of a status
of therapy delivery, and the icon representing battery power as indicative of
the status of charge, there is no evidence that the key icons “SEL,” “ACT,”
“B,” and “T,” on Causey’s keypad 1024 could perform the two indicating
functions “indicative of a status of operation” as claim 1 recites. Instead,
according to Causey, the keys relate to the program capabilities available
rather than performing the required indicating functions. (See Causey at 6, ¶
0067.) Because the claim requires icons that perform a particular function,
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Application 10/958,191

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we disagree with the Examiner’s argument that this difference is merely one
of “printed matter that is not functionally related to the product” (Answer 8).
To be sure, claim 1 recites “at least some of said second plurality of
icons of said energy transfer unit being common with at least some of said
patient controls.” It may be that “said patient control units” was instead
intended by the Applicants, as “units” would find antecedent basis, but the
claim does not say this. Thus, Causey’s programming keys are reasonably
understood to be “patient controls,” as recited in claim 1. However, because
the claim requires that the icons be “indicative of a status of operation,” we
agree with Appellants’ contention that Causey “does not show, disclose or
suggest any other devices such as an external charging device which
incorporates a plurality of icons at least some of which are in common with
a plurality of icons on remote programmer 1012.” (Id. at 14.)
As the rejection of claim 1 did not account for all limitations of the
claim, it is reversed. The rejection of claims 3 and 13 is reversed for the
same reason.

SUMMARY
We reverse the rejection of claims 1, 2, 4, 5, 11, 12, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Meadows and Causey III.
We reverse the rejection of claims 3 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Meadows, Causey III, and Lee.

REVERSED
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