Ex Parte Dewing et al

Board of Patent Appeals and Interferences

Jul 2, 2012

11206654 (B.P.A.I. Jul. 2, 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.
11/206,654 08/18/2005 Wende L. Dewing 151-P-22343US01 5006
54228 7590 07/02/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
PATEL, NATASHA
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
07/02/2012 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 WENDE L. DEWING, DALE R. ULBRICH,
and PAVANKUMAR DADLANI
____________

Appeal 2010-007561
Application 11/206,654
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Wende L. Dewing et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1, 3-6, 8, 10-13, 15
and 17-21. Appellants cancelled claims 2, 7, 9, 14 and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-007561
Application 11/206,654

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The Invention
The claims on appeal relate to “interfaces for implantable medical
device systems that are programmable by a medical professional.” Spec. 1.
Claim 1, reproduced below, with emphasis added, is illustrative of the
subject matter on appeal.
1. A system capable of delivering a
therapeutic output to a patient, comprising:
an implantable medical device capable of
delivering said therapeutic output to said patient;
and
a controller, programmable by a medical
professional, operatively coupled to said
implantable medical device, to specify, at least in
part, said therapeutic output to be delivered to said
patient in a series of discrete time intervals over a
time period;
said controller having an interface allowing
said medical professional to graphically select a
graphical representation indicative of one of a
plurality of positive amounts of said therapeutic
output to be delivered to said patient in at least one
of said series of discrete time intervals; and
wherein said interface of said controller
allows said medical professional to graphically
modify said one of a plurality of positive amounts
of said therapeutic output to be delivered to said
patient by graphically dragging a portion of said
graphical representation.

The Rejections
Claims 1, 3-6, 8, 10-13, 15 and 17-21 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Nappholz (US
5,713,937, iss. Feb. 3, 1998) and Yanz (US 2004/0071304 A1, pub. Apr. 15,
2004).
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Application 11/206,654

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Claims 1, 3, 4, 8, 10, 11, 13, 15, 17, 18, 20 and 21 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Snell (US 5,724,985, iss. Mar. 10, 1998) and Yanz.

OPINION
Obviousness based on Nappholz and Yanz
Appellants present identical arguments with respect to the rejection of
claims 1, 8, 15, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Nappholz and Yanz. See App. Br. 21-22. As such, the following analysis
applies equally to claims 1, 8, 15, and 21 rejected over the combined
teachings of Nappholz and Yanz.
The Examiner found that Nappholz discloses all of the limitations of
independent claims 1, 8, 15 and 21 except for “graphically selecting a
graphical representation indicative of one of a plurality of positive amounts
of therapeutic output.” Ans. 4. The Examiner further found that Yanz
discloses “a draggable slider for setting parameters of hearing aid therapy.”
Ans. 4 (citing to Yanz, p. 5, para. [0047]). In other words, instead of typing
in the parameter values and constantly having to refer back to them through
the input means, utilizing Yanz’s sliders allows for the values to be
constantly presented visually.” Id. The Examiner concluded that “it would
have been obvious to one of ordinary skill in the art at the time of the
invention to use the sliders in Nappholz’s invention because Yanz teaches
that doing so provides a visual representation of all parameters and a
straightforward means for selecting appropriate parameters for the therapy.”
Id.
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Appellants argue that Nappholz fails to disclose an interface allowing
a user to graphically select a graphical representation indicative of one of a
plurality of positive amounts of therapeutic output in at least one of a series
of discrete time intervals nor to modify the positive amount of therapeutic
output by graphically dragging the graphical representation. App. Br. 17.
Appellants further argue that Yanz fails to disclose graphically selecting a
graphical representation indicative of one of a plurality of positive amounts
of therapeutic output. App. Br. 18.
We find these arguments unpersuasive because one cannot show
nonobviousness by attacking references individually where the rejections are
based on a combination of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants also argue that the Examiner did not rely on the
Examination Guidelines for Determining Obviousness in view of KSR v.
Teleflex Inc., 550 U.S. 398 (2007), apparently referring to the Manual of
Patent Examining Procedure (MPEP) § 2141. App. Br. 20-21. Appellants’
argument is not indicative of any error on the part of the Examiner, because
there is no requirement that the Examiner rely on one of the particular
rationales as set forth in MPEP § 2141to support an obviousness rejection.
Here, the Examiner’s analysis articulates a reason with rational underpinning
as to why the combined teachings of Nappholz and Yanz render claim 1
obvious. See KSR at 418 (holding that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). Thus, Appellants have failed to point
out any flaw in the Examiner’s rejection.
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For the foregoing reasons, we are not persuaded of any error in the
Examiner’s determination of obviousness of the subject matter of
independent claims 1, 8, 15, and 21 in view of the combined teachings of
Nappholz and Yanz. With respect to dependent claims 3-6, 10-13, and 17-
20, although Appellants state that these claims “further recite additional
patentable subject matter” (App. Br. 22), Appellants’ mere statements do not
amount to separate arguments for patentability of these dependent claims.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
Accordingly, we shall sustain the rejection of independent claims 1, 8,
15, and 21, and claims 3-6, 8, 10-13, 15 and 17-21 dependent thereon, under
35 U.S.C. § 103(a) as unpatentable over Nappholz and Yanz.
Obviousness based on Snell and Yanz
Appellants substantially present identical arguments with respect to
the rejection of claims 1, 8, 15, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Snell and Yanz. See App. Br. 23-24. As such, the
following analysis applies equally to claims 1, 8, 15, and 21 rejected over
the combined teachings of Snell and Yanz.
The Examiner found that Snell discloses all of the limitations of
independent claims 1, 8, 15 and 21 except for “graphically selecting a
graphical representation indicative of one of a plurality of positive amounts
of therapeutic output.” Ans. 6. The Examiner further found that Yanz
discloses “a draggable slider for setting parameters of hearing aid therapy.”
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Application 11/206,654

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Ans. 6 (citing to Yanz, p. 5, para. [0047]). In other words, instead of typing
in the parameter values and constantly having to refer back to them through
the input means, utilizing Yanz’s sliders allows for the values to be
constantly presented visually.” Id. The Examiner concluded that “it would
have been obvious to one of ordinary skill in the art at the time of the
invention to use the sliders in Snell’s invention because Yanz teaches that
doing so provides a visual representation of all parameters and a
straightforward means for selecting appropriate parameters for the therapy.”
Id.
Appellants argue that Snell fails to disclose an interface allowing a
user to graphically select a graphical representation indicative of one of a
plurality of positive amounts of therapeutic output in at least one of a series
of discrete time intervals nor to modify the positive amount of therapeutic
output by graphically dragging the graphical representation. App. Br. 23.
Appellants further argue that Yanz fails to disclose graphically selecting a
graphical representation indicative of one of a plurality of positive amounts
of therapeutic output. App. Br. 24.
We find these arguments to be attacking references individually and
thus, unpersuasive for the reasons discussed supra.
Appellants argue that the Examiner did not rely on the Examination
Guidelines for Determining Obviousness in view of KSR, apparently
referring to the Manual of Patent Examining Procedure (MPEP) § 2141.
App. Br. 25-26. We find this argument unpersuasive for the reasons
discussed supra.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s determination of obviousness of the subject matter of
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independent claims 1, 8, 15, and 21 in view of the combined teachings of
Snell and Yanz. With respect to dependent claims 3, 4, 10, 11, 13, 15, 17,
18 and 20, although Appellants state that these claims “further recite
additional patentable subject matter” (App. Br. 27), Appellants’ mere
statements do not amount to separate arguments for patentability of these
dependent claims as discussed supra.
Accordingly, we shall also sustain the rejection of independent claims
1, 8, 15, and 21, and claims 3, 4, 10, 11, 13, 17, 18 and 21 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Snell and Yanz.

DECISION
We affirm the Examiner’s decision to reject claims 1, 3-6, 8, 10-13,
15 and 17-21.
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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