Ex Parte Bornhoft et al

Patent Trial and Appeal Board

Jun 25, 2018

13016793 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/016,793
87562 7590
Medtronic - WK
P.O. Box 71355
FILING DATE
01/28/2011
06/27/2018
Marietta, GA 30007-1355
FIRST NAMED INVENTOR
Reid K. Bornhoft
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.
P0037960.00 5265
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
tina@witherskeys.com
jeramie@witherskeys.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte REID K. BORNHOFT, GARRETT R. SIPPLE,
andNATHAN A. TORGERSON 1
Appeal2017-007491
Application 13/016,793
Technology Center 3700
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party-in-interest is Medtronic, Inc. App. Br.
3.
Appeal2017-007491
Application 13/016,793
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-39 and 45--47, which stand rejected
as unpatentable under 35 U.S.C. § 101 as being directed to nonstatutory
subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to far field telemetry
communications conducted during recharge sessions between an external
device and an implantable medical device. Safeguards against establishment
of inadvertent programming sessions between the external device that has
conducted a recharge session and implantable medical devices that may or
may not be bonded to that external device are also claimed. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method of creating a recharging session between
an implantable medical device to be recharged and an external
device, comprising:
storing at the external device a programming session key
and an identifier of an implantable medical device that is
program bonded by the programming session key;
exchanging an identifier of the implantable medical device
to be recharged between the external device and the implantable
medical device to be recharged;
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Appeal2017-007491
Application 13/016,793
beginning a recharge session through a proximity wireless
recharge coupling between the external device and the
implantable medical device to be recharged;
exchanging information related to the recharge session
over a far field telemetry connection between the external device
and the implantable medical device to be recharged;
detecting whether the identifier of the implantable medical
device to be recharged matches the identifier of the program
bonded implantable medical device; and
if the identifier of the implantable medical device to be
recharged does not match the identifier of the program bonded
implantable medical device, then deleting the programming
session key stored at the external device.
App. Br. 14.
Issue
Appellants argue that the Examiner erred in finding that the claims are
directed to an abstract idea, and are thus unpatentable as being directed to
nonstatutory subject matter. App. Br. 7.
Analysis
The Examiner finds that claims 1-39 and 45--47 are directed to a
judicial exception (i.e., an abstract idea) without adding significantly more.
Final Act. 2. The Examiner finds that the
method includes steps which require storing and exchanging of
an identifier, providing an external annunciation, beginning a
recharge session, exchanging information related to the
recharge session, detecting whether the identifier matches, and
deleting the session key; however, these limitations do not
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Appeal2017-007491
Application 13/016,793
require additional elements beyond the abstract idea of creating
a recharging session.
Id. Therefore, finds the Examiner, the claims do not amount to more than
the abstract idea itself - rather, the claim appear to be directed to be simply a
programming function, similar to a mathematical calculation without any
additional elements to add significantly more to the judicial exception (i.e.,
any tangible result, problem solved, or end goal, etc.). Id.
We are not persuaded by the Examiner's findings, or by the
Examiner's conclusion that the claims are prima facie unpatentable under
35 U.S.C. § 101. Appellants' claims are directed to a method, i.e., a process,
and are patentable unless they fall into one of the judicially-created
exceptions to Section 101, i.e., "[L Jaws of nature, natural phenomena, or
abstract ideas." See Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589-90 (2013). The Supreme Court has set forth a framework
for distinguishing claims drawn to laws of nature, natural phenomena, and
abstract ideas from those claims which are directed to patent-eligible
applications of those concepts. See Mayo Collaborative Serv's v.
Prometheus Labs., Inc., 566 U.S. 66 (2012). First, we must determine
whether the claims at issue are directed to a patent-ineligible concept.
Mayo, 566 U.S. at 78. If the answer is yes, we next consider the elements of
each claim both individually and "as an ordered combination" to determine
whether additional elements "transform the nature of the claim" into a
patent-eligible application. Id. at 78-79. The Examiner concludes that the
claims are unpatentable because they are directed to an abstract idea, i.e.,
they meet the first step of the test. We disagree.
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Application 13/016,793
Appellants' claims are directed to initiating a recharging session
between an external device and an implantable medical device while
ensuring that the recharging session can occur only between devices that
recognize each other via identifiers and a session key. Specifically,
Appellants' claims recite the steps of: ( 1) storing at an external device a
programming session key and an identifier of an implantable medical
device; (2) exchanging an identifier of the implantable medical device to be
recharged between the external device and the implantable medical device to
be recharged; (3) beginning a recharge session through a proximity wireless
recharge coupling; ( 4) exchanging information related to the recharge
session over a far field telemetry connection between the devices; ( 5)
detecting whether the identifier of the implantable medical device to be
recharged matches the identifier of the program bonded implantable medical
device; and ( 6) deleting the programming session key stored at the external
device if the identifiers do not match.
"A principle, in the abstract, is a fundamental truth; an original cause;
a motive; these cannot be patented, as no one can claim in either of them an
exclusive right." Le Roy v. Tatham, 14 How. (55 U.S.) 156, 175 (1852).
Appellants' claims, however, recite a well-defined series of steps that
constitute a process. The claims on appeal involve, at least in part, an
algorithm, but they improve the way the physical process of recharging is
accomplished and do not seek to preempt the algorithms from any other use.
See Diamond v. Diehr, 450 U.S. 175, 187 (1981). Nor are Appellants'
claims directed to "fundamental economic and conventional business
practices" or to "well-understood, routine conventional activit[ies]," either
by requiring conventional computer activities or routine data-gathering
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steps. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) (collecting cases). More generally, we find that Appellants'
claims are not "directed to" an abstract idea, because they do not simply
state an abstract principle and then say "apply it." Mayo, 566 U.S. at 72.
Nor are we persuaded by the Examiner's finding that the process
could be performed on a generic computer. Implantable medical devices are
not generic computers, but battery-powered, highly-specialized medical
devices for, e.g., stimulation therapy for neurological or cardiac conditions,
providing drug delivery for various conditions such as pain management,
and/or may physiological monitoring. See Spec. i-f 2. External recharging
devices are designed to provide recharge energy over a proximity coupling,
which is typically inductive, to the implantable medical device. Id. at i-f 3.
All of these capabilities are well beyond the normal capacities of a generic
computer.
We consequently conclude that Appellants' claims are not directed to
an abstract idea (or to another of the judicially-created exceptions to Section
101 ). This stops our analysis at the first step of the Mayo test; we conclude
that the claims are not directed to nonstatutory subject matter and we reverse
the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims claims 1-39 and 45--47 as
unpatentable under 35 U.S.C. § 101 is reversed.
REVERSED
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