Ex Parte Brooke et al

Patent Trial and Appeal Board

Sep 25, 2017

13869741 (P.T.A.B. Sep. 25, 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.
13/869,741 04/24/2013 M. Jason Brooke 279.N10US2 7316
45458 7590 09/27/2017
smwfPtMan t t tndrf.ro & wofnnnfr/rnf EXAMINER
PO BOX 2938 PORTER, JR, GARY A
MINNEAPOLIS, MN 55402
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte M. JASON BROOKE and ANDREA ACUNA
(APPLICANTS: CARDIAC PACEMAKERS)
Appeal 2016-006009
Application 13/869,7411
Technology Center 3700
Before DONALD E. ADAMS, TAWEN CHANG,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 21—23, 25—30,
32—35, 37-42, 44—50, 52—57, and 59—62 (App. Br. 1). Examiner entered
rejections under 35 U.S.C. § 101; 35 U.S.C. § 102(b) and (e); 35 U.S.C.
§103; and obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Cardiac Pacemakers, Inc.
[] a wholly-owned subsidiary of Boston Scientific Corp.” (App. Br. 2.)
Appeal 2016-006009
Application 13/869,741
STATEMENT OF THE CASE
Appellants’ disclosure “relates generally to cardiac devices and
methods [] and, more particularly, to selection of one or more electrode
combinations from a plurality of electrodes” (Spec. 1: 14—15). Claim 21 is
representative and reproduced below:
21. A method, comprising:
establishing a programmable parameter and a plurality of
values of the parameter to be compared;
enabling a module to perform a measurement for each of
the plurality of values and related to energy expenditure of a
battery of an implantable medical device operating according to
each of the plurality of values;
implementing a processor to compute an energy
expenditure for each of the plurality of values using the
measurements; and
generating a graphical user interface displaying
information corresponding to the computed energy expenditure
for the plurality of values.
(App. Br. 50.)
The claims stand rejected as follows:
Claims 21—23, 25—30, 32, 45—50, 52—57, and 59 stand rejected under
35U.S.C. § 101, as directed to non-statutory subject matter.2
2 Examiner did not include claims 33 and 60 in the statement of this
rejection (see Ans. 4—6). Therefore, we have not included claims 33 and 60
in our deliberations (cf Reply Br. 2 (“The Answer’s inclusion of claims 33
and 60 by reference in the discussion of the § 101 rejection[] is believed to
be in error”).
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Claims 21, 33, 45, 46, and 60 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Armstrong.3
Claims 21, 28—30, 32, 33, 40-42, 44, and 45 stand rejected under
35 U.S.C. § 102(b) as anticipated by North.4
Claims 21—23, 25, 33—35, 37, 45, 46, 48—50, 52, 60, and 62 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Russie.5
Claims 21, 27, 28, 33, 39, 40, 45^47, 54—57, and 59-61 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Armstrong and North.
Claims 26, 28, and 53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Russie and Freeberg.6 7 8
Claims 21-23, 25-30, 32-35, 37-A2, 4U-50, 52-57, and 59-62 stand
rejected under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over the claims of Brooke.7,8
Statutory Subject Matter.
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter?
3 Armstrong et al., US 2006/0025829 Al, published Feb. 2, 2006.
4 North et al., US 2005/0177206 Al, published Aug. 11, 2005.
5 Russie, US 2007/0179549 Al, published Aug. 2, 2007.
6 Freeberg, US 2006/0074454 Al, published Apr. 6, 2006.
7 Brooke et al., US 9,539,429 B2, issued Jan. 10, 2017.
8 Application No. 13/925,413 issued as Brooke, therefore, this rejection is no
longer provisional (see Ans. 3).
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FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Appellants’ claimed invention is “directed to an
abstract idea” (Ans. 4; see id. at 5 and 13—14).
FF 2. Examiner finds that Appellants’ independent
[cjlaims [] involve the steps of “establishing”, “enabling” and
“implementing” which can be broadly construed as steps of
making available or making capable. The step of “establishing
a programmable parameter” could simply be a mental,
intangible step of thinking of a parameter. The step of
“enabling a module to perform” could simply be making said
“module” available for potentially performing a measurement.
An actual measurement is not required. The step of
“implementing a processor to compute” again could simply be
making a processor available so it could possibly compute. The
actual computing step is not required. Lastly, the generation of
a GUI could simply be intangible data since a GUI is not a
physical structure but a data construct implemented via
software.
(Ans. 13.)
FF 3. Examiner finds that the “establishing, enabling and implementing
[steps of Appellants’ claimed invention do] not require any actual steps to be
performed and can only involve simply making available the particular
structures of a module and a processor” (Ans. 4; see id. (explaining that
“[t]he module and processor do not perform any action but instead are made
available to potentially be able to perform an action” and “nothing is
transformed to a different state or thing”)).
FF 4. Examiner finds that “the processor and module, are generically
recited [in Appellants’ claims] such that they cover any machine capable of
performing the claimed steps” (Ans. 4; see id. at 5 (“the claims only require
a generic computer, i.e. processor, to perform generic computer functions,
i.e. processing”); see also id. at 13).
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FF 5. Examiner finds that “[determining energy expenditure values of an
implantable medical device from stored parameters does not inherently
improve any technological field or computer and only tangentially relates
the computation to implantable medical devices” (Ans. 5).
FF 6. Examiner finds that “[t]he generating step [of Appellants’ claims] is
merely a data gathering step which fails to amount to significantly more than
the abstract idea of the claim” (Ans. 4; see id. at 5—6 (“To add ‘significantly
more’, [Appellants’] claims must recite using th[e] computed data in an
active method step for a particular purpose other than generally displaying
data”); id. at 13 (“‘obtaining and comparing intangible data’, ‘collecting and
comparing known information’, ‘comparing new and stored information and
using rules to identify options’, and ‘data recognition and storage’ . . . [are]
abstract ideas”)).
ANALYSIS
The scope of 35 U.S.C. § 101 “is subject to an implicit exception for
Taws of nature, natural phenomena, and abstract ideas,’ which are not
patentable.” Intellectual Ventures ILLC v. Capital One Financial Corp.,
850 F.3d 1332, 1338 (Fed. Cir. 2017), citing Alice Corp. Pty. Ltd. v. CLS
Bank Inti, 134 S. Ct. 2347, 2355 (2014).
To determine whether the exception applies ... a court must
determine: (1) whether the claim is directed to a patent-
ineligible concept, i.e., a law of nature, a natural phenomenon,
or an abstract idea [(the “abstract idea” step)]; and if so, (2)
whether the elements of the claim, considered “both
individually and ‘as an ordered combination,”’ add enough to
‘“transform the nature of the claim’ into a patent-eligible
application [(the ‘inventive concept’ step)].”
(Intellectual Ventures, 850 F.3d at 1338, citing Alice Corp., 134 S. Ct. at
2355).
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With regard to the “abstract idea” step, we agree with Examiner’s
finding that Appellants’ claimed invention is “directed to an abstract idea”
(FF 1). Appellants claims require: performance of a measurement for each
of a plurality of values, computation of an energy expenditure for each of the
plurality of values, and display of information corresponding to the
computed energy expenditure for the plurality of values (see, e.g., App. Br.
50; see generally FF 1, 2, and 6). Stated differently, Appellants’ claims
involve the collection, manipulation, and display of data, which is an
abstract idea. See Intellectual Ventures, 850 F.3d at 1340 (“an invention
directed to collection, manipulation, and display of data was an abstract
process”); see generally id. at 1340-41. Thus, we find that Appellants’
claims are “directed to a patent-ineligible concept,” specifically an abstract
idea. For the foregoing reasons, we disagree with Appellants’ contention
that Examiner fails to articulate “what the alleged ‘abstract idea’ is” (App.
Br. 9; see id. at 9—12; see also Reply Br. 3). Cf. Intellectual Ventures, 850
F.3d at 1340-41; see also Ans. 13—14.
Similarly, we are not persuaded by Appellants’ contention that
Examiner failed “to articulate any reasons as to why the limitations in the
claims fail to amount to ‘significantly more’ than an abstract idea” (App. Br.
13; see id. at 13—15). According to Appellants, their
claim limitations recite a specific application, confined to a
particular technological environment, that improves the
functioning of an implantable device and a display device by
measuring and proving more meaningful device information
(e.g., energy expenditure information), such as to a clinician or
caregiver who is in a position to make informed programming
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decisions about the medical device system and a patient’s
health.
(App. Br. 14.) As Examiner explains, notwithstanding Appellants’
contention to the contrary, Appellants’ “claims themselves [do] not require
any use of [] data for a purpose that can be considered improving a
technological field”; to the contrary, an “improvement to [a technological]
field would not exist until the data is actually specifically applied to that
field” (Ans. 15). More specifically, Examiner finds that “[determining
energy expenditure values of an implantable medical device from stored
parameters does not inherently improve any technological field or computer
and only tangentially relates the computation to implantable medical
devices” (FF 5). See generally Intellectual Ventures, 850 F.3d at
1341-1342.
As Examiner explains, Appellants’ “claims only require a generic
computer, i.e. processor, to perform generic computer functions, i.e.
processing” (FF 4) and “nothing [in Appellants’ claims] is transformed to a
different state or thing” (FF 3). Thus, when the elements of Appellants’
claims are considered “both individually and ‘as an ordered combination,”’
the claim elements fail to add enough to “‘transform the nature of the claim’
into a patent-eligible application.” Intellectual Ventures, 850 F.3d at 1338;
see id. at 1341—1342.
For the foregoing reasons, we are not persuaded by Appellants’
contention that their claimed invention is directed to the “problem with
configuring an implantable device for delivery of electrical therapy[, which]
includes assessing the many electrode pairs that are available for therapy
delivery in a multi-electrode system, including determining one or more
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parameters that improve device longevity without sacrificing a therapy’s
efficacy” (App. Br. 12).
CONCLUSION OF LAW
The evidence of record supports Examiner’s finding that Appellants’
claimed invention is directed to non-statutory subject matter.
The rejection of claim 21 under 35U.S.C. § 101, as directed to non-
statutory subject matter. Claims 22, 23, 25—30, 32, 45—50, 52—57, and 59
fall with claim 21.9
Anticipation'.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Armstrong, North or Russie teaches Appellants’
claimed invention?
9 We recognize Appellants’ contention that “[cjlaims 45 and 46 include
recitations similar to those discussed with respect to claim 21,” but find that
Appellants’ contention merely points out what the claims recite and,
therefore, is not considered an argument for the separate patentability of
claims 45 and 46. App. Br. 14; see Manual of Patent Examining Procedure
§ 1205.02. Appellants’ Reply Brief, however, presents different arguments
relating to claims 45 and 46 (Reply Br. 2—3; see also id. at 4 (“The Answer
[] erroneously considers the independent claims as a group when, instead,
each of the independent claims has unique recitations and each of the
independent claims should be analyzed independently”)). We have not
considered the new arguments presented in Appellants’ Reply Brief. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(Appellants fail to “explain what ‘good cause’ there might be to consider the
new argument. On this record, [Appellants’] new argument is belated.”).
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Application 13/869,741
FACTUAL FINDINGS (FF)
FF 7. Armstrong “relates generally to implantable medical devices, and
more particularly to methods, apparatus, and systems for monitoring power
consumption and impedance characteristics relating to implantable medical
devices” (Armstrong 12).
FF 8. Armstrong’s Figure 7 is reproduced below:
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Armstrong’s “FIG. 7 [illustrates] a [] detailed flow chart depicting the
calculation of the time of the end of service (EOS) and/or elective
replacement indicator (ERI) signals, [for an implantable medical device]
. . (Armstrong 175; Ans. 6).
FF 9. Armstrong’s implantable medical device (IMD) “is programmed for
delivering to the patient electrical pulses having predetermined parameters
(step 710),” wherein the stimulation parameters may be changed, inter alia,
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“to optimize the therapy delivered by the IMD” (Armstrong 175; see Ans.
6).
FF 10. Armstrong discloses that
[w]hen a change in one or more stimulation parameter settings
is implemented (whether by programming or accessing data
from memory), the IMD [] and/or the external unit [] may
determine an updated stimulation period current usage rate rs
associated with the new parameter settings, and subsequent
updates to the total charge consumed will be based upon the
new stimulation period current usage rate (step 720).
(Armstrong 175; see Ans. 6.)
FF 11. Examiner finds that Armstrong discloses the transmission of
“information corresponding to the computed energy expenditure (such as
remaining charge, end of service or elective replacement indicators) for the
plurality of parameter values, wherein the data is presented to a user [],
which is commonly understood in the art of external programmers to be a
graphical display” (Ans. 6—7, citing Armstrong || 75 and 78).
FF 12. North “relates to implantable neurostimulators, and more particularly
to programming of implantable neurostimulators” (North 12).
FF 13. North’s implantable neurostimulator (INS) “delivers
neurostimulation according to a program,” which “may include values for a
number of parameters, and the parameter values define the neurostimulation
therapy delivered according to that program” (North 126; see Ans. 7).
FF 14. North’s INS is associated with a programming device comprising a
display that, inter alia, provides the user with a graphical user interface
(North 127; see id. H 21 and 47; see Ans. 7).
FF 15. North discloses that
[a] clinician [] may use [the] programming device [] to program
neurostimulation therapy for [a] patient[, wherein] [i]n some
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Application 13/869,741
embodiments, the clinician specifies programs by selecting
program parameter values, tests the specified programs on [a]
patient [], and receives feedback, e.g., rating information, for
each of the tested programs from the patient.
(North 128; see Ans. 7.)
FF 16. North discloses that the
programming device [] estimates a battery drain rate for each of
the programs tested based on the program parameters. In some
embodiments, programming device [] presents the estimated
battery drain rates for programs tested during the programming
session. In other embodiments, programming device [] further
estimates a battery longevity for each of the tested programs,
e.g., estimates a length of time that INS [] will be able to
deliver neurostimulation according to the program before INS []
must be explanted and replaced due to battery depletion. The
estimated battery longevity may be based on the estimated
battery drain rates. Programming device [] may present the
battery longevities to the clinician in addition to or instead of
presenting the battery drain rates. By presenting one or both of
the battery drain rates and longevities, programming device []
allows the clinician to consider battery longevity when
selecting one or more programs, and to select programs from
among those tested that provide favorable drain rates and
longevities. In this manner, the clinician may take into account
not only the efficacy and side effects associated with a
particular neurostimulation program, but also power
consumption.
(North 132; see also id. 147; see Ans. 7.)
FF 17. North discloses a
processor [that] alternatively or additionally estimates the load
based on device configuration information, such as an INS type,
lead type, and/or electrode locations. [The] [processor [] may
receive the device configuration information from the clinician
via user interface [], and may identify components of the total
load presented to the battery from look-up tables stored in
memory [] based on the received device configuration
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information. In other embodiments, to achieve greater accuracy
in the drain rate estimate, [the] processor [] may direct [the]
INS [] to measure, rather than estimate, the impedance
presented by each of electrodes [] coupled thereto, and receive
the measured impedance values via telemetry circuit []. [The]
[processor [] may then determine the load for a particular
program based on the measured impedances for the anodes and
cathodes selected for that program using the formula for
parallel loads illustrated above. In exemplary embodiments,
[the] processor [] directs [the] INS [] to measure impedances
before testing of programs [].
(North 145 ; see Ans. 19.)
FF 18. Russie “relates generally to systems and methods for monitoring,
configuring and managing implantable medical devices [(IMDs)], and more
particularly, to systems and methods for monitoring and managing battery
longevity of the [IMDs]” (Russie 12).
FF 19. Russie discloses “a method for monitoring and/or managing battery
longevity for an IMD battery . . . [, which] comprises the steps of[, inter
alia,] . . . displaying and/or analyzing IMD parameters or settings that may
be causing the sub-optimal longevity . . . and [] adjusting parameters to
perhaps improve the IMD battery longevity” (Russie 139; see id. 1140-50
(disclosing various calculations that may be involved in determining battery
longevity); see also Ans. 8 and 20-21).
FF 20. Russie discloses an IMD in association with a “user interface display
screen [that] shows additional detail about battery status,” such as “a
longevity calculator [] that can display (and modify) IMD parameters that
may affect battery longevity” (Russie 152; see generally Ans. 21).
FF 21. Russie discloses that a
physician and/or clinician can identify the parameters and use
the longevity calculator or other user interface to determine
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how best to optimize or improve remaining battery longevity.
That is, a physician can modify IMD parameter settings using
the longevity calculator or other interface to determine how
changing parameters will affect battery longevity.
(Russie 1 57; see generally Ans. 21.)
ANALYSIS
The rejection over Armstrong'.
Examiner finds that Armstrong anticipates Appellants’ claimed
invention (Ans. 6—7). Appellants contend, however, that Examiner failed to
establish that Armstrong teaches “a measurement of an ‘energy expenditure
of a battery for each of [a] plurality of values” or a “graphical user interface
for ‘displaying information corresponding to the computed energy
expenditure for the plurality of values’” (App. Br. 17 (emphasis removed);
see id. at 18—25).
In response, Examiner reasons that Armstrong’s disclosed method “is
certainly capable of and[,] therefore[,] enabled to perform measurements for
each of the plurality of values,” because, “z7? theory, Armstrong teaches a
device that can determine an energy expenditure for a plurality of values
assuming a plurality of different values are selected over the life of the
device” (Ans. 16 (emphasis added); FF 7—11). We are not persuaded.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). “The mere fact that a certain thing may result
from a given set of circumstances is not sufficient” to establish a prima facie
case of anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations and internal quotation marks omitted).
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The rejection over North'.
Examiner finds that North anticipates Appellants’ claimed invention
(Ans. 7). Appellants contend, however, that North, as relied upon by
Examiner, fails to
teach “enabling a module to perform a measurement for each of
the plurality of values and related to energy expenditure of a
battery of an implantable medical device operating according to
each of the plurality of values”, and “implementing a processor
to compute an energy expenditure for each of the plurality of
values using the measurements” ....
(App. Br. 27 (emphasis removed); see generally id. at 27—31.)
In response, Examiner asserts that
North discloses utilizing battery drain rates in estimating
battery longevity (par. [0032]) wherein the battery drain rates
are calculated using lead impedance measurements (par.
[0045]). Therefore[,] for each program that has a plurality of
values and electrode configurations, a lead impedance measure
is obtained and [used in the] calculation of battery drain rates,
which in turn is used to determine battery longevity.
(Ans. 19.) We are not persuaded. Examiner failed to establish that North
teaches the performance of a measurement for each of a plurality of values
and related energy expenditure of a battery of an implantable medical device
operating according to each of the plurality of values. At best, Examiner
established that North teaches the selection of a neurostimulation program
by selecting program parameter values, wherein the specified program is
tested, and a programming device estimates the battery drain rate for each of
the programs tested based on the program parameters, not each individual
parameter, selected for each program (FF 12—17).
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The rejection over Russie:
Examiner finds that Russie anticipates each of Appellants’
independent claims 21, 33, 45, 46, and 60 (Ans. 8; see generally FF 18—21).
Specifically, Examiner finds that
Russie discloses establishing, with a programmer, a plurality of
programmable parameter values (par. [0032-0033]); performing
a measurement for each of the values; calculating an energy
expenditure for each of the measured values (par. [0039-0049]);
and displaying the energy expenditure on a graphical user
interface (par. [0050]).
(Ans. 8 (alteration original).) In this regard, Examiner finds that “energy
expenditure and expected battery longevity are calculated by [Russie’s]
system using measured current values,” wherein
the algorithm for calculating battery longevity . . . can be used
iteratively as parameters are altered by an external programmer
[and] [a]s the parameters are altered, the calculations are
updated and displayed to a user []. [In] other words, the system
of Russie is capable of calculating energy expenditure for each
of a plurality of parameter sets.
(Ans. 21 (emphasis added); see also id. (“Russie discloses calculating
battery longevity for a parameter set [] and re-calculating battery longevity
when a single parameter is adjusted in order to determine how battery
longevity is affected” (emphasis added)).)
As Appellants explain, however, “[n]one of the cited portions of
Russie[, as relied upon by Examiner,] is understood to disclose [Appellants’]
claimed ‘measurement for each of the plurality of values’” (App. Br. 32; see
also id. at 32—35). Examiner has, at best, established that Russie discloses a
method wherein individual parameters of a parameter set may be adjusted to
determine how any such modification of a parameter set affects battery
longevity (see Ans. 21). Examiner has not, however, established that Russie
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teaches, inter alia, a “measurement for each of the plurality of values,” such
as each of the plurality of parameters in a parameter set (see App. Br. 32—35
(emphasis added)).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Armstrong, North or Russie teaches Appellants’
claimed invention.
The rejection of claims 21, 33, 45, 46, and 60 under 35 U.S.C.
§ 102(b) as anticipated by Armstrong is reversed.
The rejection of claims 21, 28—30, 32, 33, 40-42, 44, and 45 under
35 U.S.C. § 102(b) as anticipated by North is reversed.
The rejection of claims 21—23, 25, 33—35, 37, 45, 46, 48—50, 52, 60,
and 62 under 35 U.S.C. § 102(b) as anticipated by Russie is reversed.
Obviousness:
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 22. Examiner finds that Russie “fails to disclose automatically selecting
a pacing vector having a minimum capture threshold and therefore minimum
associated energy expenditure,” and relies on Freeberg to make up for this
deficiency in Russie (Ans. 12).
ANALYSIS
The combination of Armstrong and North'.
Based on the combination of Armstrong and North, Examiner
concludes that, at the time Appellants’ invention was made, it would have
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been prima facie obvious “to modify the device in the Armstrong reference
to include a GUI as the particular presentation means, as taught and
suggested by North, for the purpose of allowing a physician to select
parameters that provide lower drain rates and higher battery longevity” (Ans.
10-11; see generally id. at 10; FF 7—17). As Examiner makes clear,
Examiner’s sole reason for relying upon North is limited to North’s
disclosure of “a GUI as the particular presentation means” (Ans. 24).
Examiner’s rationale, however, fails to establish that the combination of
Armstrong and North makes up for the deficiencies in each reference as
discussed above. Therefore, we agree with Appellants’ contention that
“[njeither of Armstrong and/or North, alone or in combination, discloses all
elements of [Appellants’] claims” (App. Br. 40-41).
The combination of Russie and Tree berg:
Appellants’ claims 26, 38, and 53 ultimately depend from Appellants’
independent claims 21, 33, and 46, respectively.
Based on the combination of Russie and Freeberg, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to modify the device in [] Russie [] to include
automatically selecting the electrode combination exhibiting the lowest
capture threshold, as taught and suggested by Freeberg, for the purpose of
minimizing energy expenditure in the cardiac device” (Ans. 12; see FF 18—
22). Examiner, however, fails to establish that Freeberg makes up for the
deficiency in Russie as discussed above (see App. Br. 47-48 (“Freeberg fails
to remedy the deficiencies described [in the rejection under 25 U.S.C.
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§ 102(e)] with respect to Russie”)). To the contrary, “Examiner contends
[that] the previous response with respect to Russie under 35 U[.]S[.]C[.] [§]
102 address[es] [Appellants’] arguments” (Ans. 26). We are not persuaded
for the reasons set forth above.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 21, 27, 28, 33, 39, 40, 45^47, 54—57, and 59-
61 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Armstrong and North is reversed.
The rejection of claims 26, 28, and 53 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Russie and Freeberg is reversed.
Obviousness-type Double Patenting'.
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
ANALYSIS
Examiner finds that the claims on Appeal are not patentably distinct
from the claims of Brooke (Ans. 3). Appellants state that “[t]his rejection is
not being appealed” (App. Br. 48). Therefore, we summarily affirm the
rejection.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness-type double patenting. The rejection of claim 21
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over the claims of Brooke is affirmed. Claims 22, 23,
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Appeal 2016-006009
Application 13/869,741
25—30, 32—35, 37—42, 44—50, 52—57, and 59-62 are not separately argued
and fall with claim 21.
TIME PERIOD FOR RESPONSE
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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