Ex Parte Goetz et al

Patent Trial and Appeal Board

Oct 30, 2017

11800423 (P.T.A.B. Oct. 30, 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.
11/800,423 05/04/2007 Steven M. Goetz 1023-618US01 8257
71996 7590 11/01/2017
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
LEE, ERICA SHENGKAI
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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 STEVEN M. GOETZ, TOUBY A. DREW, and
EARLE T. ROBERTS1
Appeal 2016-002779
Application 11/800,423
Technology Center 3700
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
programming system, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
“[A] clinician may need to program or reprogram [an] implanted
medical device while the medical device is implanted in [a] patient,” and
“the implanted medical device may be equipped with one or more wireless
1 Appellants identify the Real Parties in Interest as Medtronic, Inc. of
Minneapolis, Minnesota and Medtronic pic of Dublin, Ireland. (Appeal Br.
3.)
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Application 11/800,423
communication[s] technologies to enable the clinician to program the
implanted medical device while the medical device remains implanted in the
patient.” (Spec. 3, 4.) “[T]he invention is directed to techniques for
automatically identifying medical devices using wireless communications in
order to communicate with the medical devices.” {Id. 15.)
Claims 19, 21—40, and 43—45 are on appeal. Claim 19 is illustrative
and reproduced below:
19. A programming system comprising:
a discovery service module that wirelessly broadcasts a
request for medical devices within range of the programming
system to identify themselves, and receives individual
responses to the request from each medical device in a set of
medical devices to discover each medical device in the set of
medical devices, the set of discovered medical devices
including at least two medical devices; and
a device discovery manager that applies one or more
search heuristics to the set of discovered medical devices to
identify a subset of one or more medical devices in the set,
identifies one of the medical devices from the subset, selects
one or more device interaction software applications, based on
the identification of the medical device from the subset, from
among a plurality of device interaction software applications,
and initiates a wireless communication session with the
identified one of the medical devices from the subset by
launching the selected one or more device interaction software
applications to facilitate user interaction with the identified
medical device via the programming system.
(Appeal Br. 16 (Claims App.).)
2
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Application 11/800,423
The Examiner rejects claims 19, 23, 27—33, 35—40, and 43—45 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Webb2 and
Haubrich.3 (Ans. 2.)
The Examiner rejects claim 21 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Webb, Haubrich, and Snell.4 (Ans. 6.)
The Examiner rejects claim 22 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Webb, Haubrich, and Sullivan.5 (Ans. 7.)
The Examiner rejects claims 24—26 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Webb, Haubrich, and Nova.6 (Ans. 8.)
The Examiner rejects claim 34 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Webb, Haubrich, and Haubrich ’885.7 (Ans. 9.)
DISCUSSION
Issue
The same issues are dispositive of each of the rejections cited above;
we thus discuss the rejections together. With regard to claim 19, the only
independent claim, the Examiner finds that Webb teaches the recited device
discovery manager but does not expressly disclose the recited discovery
service module. (Ans. 3.) The Examiner finds, however, that Haubrich
teaches the recited discovery service module. (Id.) The Examiner concludes
that
2 Webb et al., US 2002/0123673 Al, published Sept. 5, 2002.
3 Haubrich et al., US 6,482,154 Bl, issued Nov. 19, 2002.
4 Snell, US 2003/0220673 Al, published Nov. 27, 2003.
5 Sullivan et al., US 2005/0015115 Al, published Jan. 20, 2005.
6 Nova et al., US 2003/0212311 A1, published Nov. 13,2003.
7 Haubrich et al., US 2005/0113885 Al, published May 26, 2005.
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Application 11/800,423
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to modify Webb ... to
enable the programmer to issue a request for communication
and for the [implanted medical devices (IMDs)] in range of the
programmer to respond back with a unique identifier as taught
by Haubrich ... in order to better determine which IMDs the
[external medical device (EMD)] is able to communicate with
via long-range telemetry.
{Id. at 3—4, 12—13.) With regard to dependent claim 44, the Examiner finds
that Webb discloses the additional dependent claim limitations relating to
the search heuristics that are applied. {Id. at 6, 13.)
Appellants contend that the cited prior art does not disclose “a device
discovery manager that applies one or more search heuristics to fa] set of
discovered medical devices to identify a subset of one or more medical
devices in the set” and that “there is no apparent reason why it would have
been obvious to modify the disclosures of the applied references to arrive at
the subject matter of independent claim 19.” (Appeal Br. 7—10.) Appellants
additionally contend that the cited prior art does not disclose the search
heuristics specifically recited in claim 44. {Id. at 11.)
The issue with respect to each of the rejections is whether the cited art
renders obvious “a device discovery manager that applies one or more
search heuristics to [a] set of discovered medical devices to identify a subset
of one or more medical devices in the set”; if so, the additional issue with
respect to claim 44 is whether the cited art teaches that the one or more
search heuristics applied by the device discovery manager comprises a
telemetry device type.
4
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Application 11/800,423
Findings of Fact
1. The Specification states that,
[a]s used in this disclosure, a search heuristic may be a criterion
that concretely defines an order to and/or a subset of a search
space. For example, a search heuristic may sort or limit the
directed graph data structure based on whether or not devices
possess specific characteristics or a search heuristic may be a
criterion that sorts the directed graph data structure based on
probabilities. In this example, one of programming systems 4
may use the search heuristics to determine a short list of devices
in the directed graph data structure that are likely to be the
desired device. The programming system 4 may compare the
search heuristics to information received from the telemetry
devices 6 and IMDs 8 in their responses to the
querying/discovery process described above. Based on the
comparison, a subset of the discovered telemetry devices 6 or
IMDs 8 that are likely to be a medical device with which a user
desires to interact may be identified, e.g., telemetry devices and
IMDs that do not provide information matching the search
heuristics may be pruned from the directed graph data structure.
(Spec. 134.)
2. The Specification states that
the search heuristics may include “historical” search heuristics
or “current” search heuristics. Historical search heuristics are
search heuristics based on past experience or inputs. In other
words, historical search heuristics use probabilities based on
past results to sort the directed graph data structure. . . . The
programming system may use and/or prioritize these search
heuristics dynamically during the search process to prevent the
programming system from being slowed by required
user/patient response times. . . .
“Current” search heuristics are search heuristics based on
input provided prior to or during a search. One or more of
programming systems 4 or telemetry devices 6 may also present
a user interface to prompt a user (e.g., a programming clinician)
to optionally enter current search heuristics prior to beginning a
search for wireless devices. The current search heuristics may
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Application 11/800,423
include, but are not limited to, patient identification
information, implantable medical device information, . . . , a
name of a primary physician or clinic that implanted the device
or is treating the medical condition . . ., usage patterns of the
programming system with regard to a particular clinic’s set of
patients, a cache of previously established communication link
information related to the patient, device, clinician, or
programming equipment, and so on.
(Id. H50-51.)
3. Figure 3 of the Specification is reproduced below:
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FIG. 3
Figure 3 of the Specification, reproduced above, is “a screen illustration
showing an exemplary search interface 40 presented by one of programming
systems 4”:
As illustrated in the example of FIG. 3, interface 40 includes a
set of drop boxes 42 that allow a clinician to input four current
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Application 11/800,423
search heuristics (labeled "Search criteria" in search interface
40). These search heuristics allow a clinician to select a patient,
to select one of telemetry devices 6, to select a device type, and
to select a maximum number of remote hops.
{Id. 1 65.)
4. Haubrich teaches
[a]n improved, long range, telemetry system for uplink and
downlink telemetry transmission between an implantable
medical device (IMD) and an external medical device (EMD),
e.g. a programmer or monitor, specifically operable in
accordance with a method for ensuring that the telemetry link is
between an intended, rather than an un-intended, implantable
medical device and the external medical device.
(Haubrich Abstract.)
5. Haubrich teaches an exemplary embodiment that employs radio
frequency (RF) transmission. (Id. at 3:16—19.)
6. Haubrich teaches that, as an initial matter,
[t]he external device preferably issues a request for
communication, which may be received by any of a population
of implantable devices that employ the inventive telemetry
system. Those devices within range of the external device may
in response send a telemetry transmission indicating that the
request for communication has been received. This
transmission preferably includes an identifier unique to the
implanted device.
{Id. at 1:63—2:3; see also id. at 6:28—35, Figs. 6 & 7, 11:47—12:13, 12:44—53,
15:8—17, claims 1, 10, 18, 24.)
7. Haubrich teaches that
[t]he EMD displays ... all IMD discovery signals that may be
elicited by the EMD discovery signal, including any identifying
data relative to the IMDs which transmitted the IMD discovery
signals. The operator may then select a desired one of the
IMDs having signals displayed ....
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Application 11/800,423
Following selection of an IMD . . . , the EMD initiates a
telemetry session with the selected IMD ... by means of a
downlink telemetry transmission to the selected IMD .... In
one embodiment, the initiation of a telemetry session could
include the generation by the IMD of some type of patient
stimuli to provide notification of the initiated session. . . .
(Id. at 12:44—60.)
8. Haubrich further teaches that
[a] separate mechanism is provided for activating only the
implantable device within a specific patient to send a telemetry
transmission including an event signal indicative that the
implanted device has been so activated. . . . The event signal
may also include an identifier unique to the implanted device.
The identifier may be used to subsequently communicate only
with the device implanted in the specified patient.
(Id. at 2:3—14; see also id. at 6:35—57, Figs. 6 & 7, 9:12—10:57 (describing
different methods of generating an event signal), 12:28—37, 44—53, 13:1—21,
25-51, 14:5-12, 29-33, 47-64, 15:26-33, 52-60, claims 1, 10, 18, 24.)
9. Webb teaches “a method and apparatus for remotely
programming implantable medical devices.” (Webb Abstract.)
10. Webb teaches a system having a remote data center, which is
connected via a bi-directional communications link to globally distributed
programmers that in turn manage a plurality of IMDs locally via, preferably,
a telemetric data transmission system. (Id. 138.)
11. Webb teaches that the data center may comprise a prescriptive
program module (PPM) that allows “remote installation of data that is in a
repository as part of a recommended medical upgrade or alterations to
IMDs.” (Id. H73, 84.)
8
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Application 11/800,423
12. Webb teaches that “[a] clinician may be responsible for the
treatment of a plurality of patients” and that there may be multiple devices in
a single patient. (Id. 10, 56, 91.)
13. Webb teaches an embodiment of its invention where,
after the physician notifies the patient of the need to install a
new program, the patient may initiate contact with PPM 104 to
transfer the recommended data. Accordingly, referring to FIG.
8B, the patient initiates contact under logic step 242. The
system authenticates the patient under logic step 244. Further
the system authenticates the one or more IMDs 10,10’, 10”
which may be implanted in the patient. The logic proceeds to
decision step 248 to determine if both the patient and the one or
more IMDs 10,10’, 10” are authenticated to access the specific
patient data and the relevant prescriptive program file. If such
is not the case, the system may alert the operator under logic
step 247 and deny access to the user. If, however, both the user
and the one or more IMDs 10,10’, 10” are substantially
authenticated, access to data repository may be allowed under
logic step 250. Prescriptive data may then be remotely
transferred under logic step 252. Further, successful
installation may be confirmed under step 254.
(Id. 1 87.)
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Application 11/800,423
14. Figure 10A of Webb is reproduced below:
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Figure 10A of Webb, reproduced above, depicts “a flow chart illustrating a
method of creating new programs for an IMD 10, 10’, 10” that may be
stored for a selected duration.” {Id. 192.)
15. Referring to Figure 10A, Webb teaches an embodiment of its
invention where
a clinician operating the programmer 20 may log in (at 330) to
the server 285 of the remote programming system 280. Using
any one of a variety of standard user-authentication or
password-protection schemes well known to those of ordinary
skill in the art, the server 285 may authorize (at 334) the
clinician to use the server 285. . . .
Once the clinician has been authorized (at 334) to use the
server 285, the clinician may, in one embodiment, select (at
336) a patient. The patient may have one or more implanted
IMDs 10,10’, 10” that it may be desirable to program. Using
any one of a variety of standard user authentication or
password-protection schemes well known to those of ordinary
skill in the art, the server 285 may verify (at 340) that the
clinician has the correct privileges that may allow the clinician
to program the IMDs 10,10’, 10”. If the server 285 determines
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10
Appeal 2016-002779
Application 11/800,423
(at 340) that the clinician may not possess the privileges that
may allow the clinician to program the IMDs 10, 10’, 10”, the
server 285 may end (at 344) the session.
{Id. 1192-93.)
16. Referring to Figure 10B, Webb teaches an embodiment where a
remote monitor may interrogate nearby IMDs by, e.g., “scanning a range of
radio frequencies to detect signals that may be transmitted by the IMDs.”
{Id. 199.) Webb teaches that such interrogation may be initiated by a
clinician or a patient, or “performed automatically according to a
predetermined schedule.” {Id.) Webb teaches that, if the remote monitor
detects at least one IMD, the IMD may transmit a unique identification
number. {Id. 1100.) Webb teaches that the remote monitor may receive and
store the identification number and use it to check the server to determine
whether there are any programming requests pending for the IMD. {Id.)
17. Referring to Figure 10C, Webb teaches that the server may
check that the IMD identification number substantially matches the
programming request and, if so, send the programming request to the remote
monitor. {Id. ]Hf 101—102.) Webb further teaches that the remote monitor
may re-check the identification number attached to the pending request
transmitted by the server and, if it substantially matches, transmit the request
to the IMD. {Id. 103—105; see also Fig. 10B.)
18. Webb teaches that, “[i]n alternative embodiments, the steps
described in FIGS. 10A-C may occur in any desirable order or substantially
simultaneously.” {Id. 1106.)
19. Claim 18 of Webb depends indirectly from claim 16, which
recites a method comprising “programming at a first selected time at least
one request to modify the operation of an implantable medical device” and
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Application 11/800,423
“transmitting the request... to the implantable medical device,” and further
recites that the programming “further comprises selecting the implantable
medical device from among a plurality of implantable medical devices that
the clinician is authorized to program.” {Id. at claim 18.)
Analysis
Claim 19
We agree with the Examiner that the combination of Haubrich and
Webb renders claim 19 obvious. Haubrich teaches a long range telemetry
system for telemetry transmission between an external medical device
(EMD) and an implanted medical device (IMD) using radio frequency (i.e.,
wireless) transmission. (FF4, FF5.) Haubrich further teaches having the
EMD issue a request for communication to a population of IMDs employing
the telemetry system, whereby the IMDs within range indicates receipt of
the request through a telemetry transmission that includes an identifier
unique to the IMD. (FF6.) Accordingly, Haubrich teaches the claimed
discovery service module.8
We also find that Haubrich and Webb render obvious the claimed
“device discovery manager.” Haubrich teaches displaying all IMD
responses elicited by the EMD discovery signal and having the operator
select “a desired one of the IMDs” before initiating a telemetry session with
the selected IMD. (FF7.) Fikewise, Webb, which describes a method and
8 Although the Examiner finds that Webb does not explicitly teach a
discovery service module, we note that Webb does disclose a remote
monitor that interrogates nearby IMDs and receives unique identification
numbers from the IMDs. (FF16.) Because we find that the Examiner has
established a prima facie case of obviousness without relying on this
disclosure from Webb, we also do not rely on this disclosure in our decision.
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Application 11/800,423
apparatus for remotely programming IMDs wherein a remote data center is
linked to a plurality of IMDs (FF10; FF12), teaches (1) allowing an
authorized clinician to program IMDs of a particular patient by selecting that
patient (FF15; see also FF19 (selecting an IMD)), and (2) allowing
prescriptive data for an IMD to be remotely transferred to the IMD after the
patient and the IMD are authenticated by the system (FF13).
The selection of a desired one of the IMD as described in Haubrich, or
the selection/authentication of a patient or device as described in Webb,
meets the limitation of a “search heuristic” applied to a set of medical
devices to identify a subset of devices and to further identify a device of
interest from the subset. (FF1 (a search heuristic “sort or limit” the set of
medical devices “based on whether or not devices possess specific
characteristics . . . or . . . based on probabilities); FF2 & FF3 (a search
heuristic may include patient identification information or IMD
information).) Haubrich also explicitly teaches that the selection of the
desired one of the IMD is from among the set of “discovered” medical
devices. (FF7 (operator selects desired IMD from IMDs that transmitted the
IMD discovery signals in response to the EMD discovery signal).)
Haubrich and Webb do not explicitly teach that the search heuristic is
applied by “a device discovery manager.” However, because Webb teaches
that multiple IMDs may be associated with a particular patient, we find that
Webb’s disclosure of the clinician selecting a patient suggests an automated
application of a search heuristic (i.e., patient identification information) to
identify a subset of one or more medical devices (i.e., IMDs associated with
the patient) within the set of available IMDs.
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Application 11/800,423
Moreover, our reviewing court stated in Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007) that a skilled artisan
would have found it obvious to update an old electromechanical device with
“modem electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost.” Id. at 1162. Even if Webb and
Haubrich merely teaches manual application of the search heuristic by the
operator or the clinician, we find that the claimed device discovery manager
is an obvious adaptation of an old idea or invention (i.e., using a search
heuristic to narrow a set of devices to those of interest) using “newer
technology that is commonly available and understood in the art” such as
modem electronic components. Id. at 1162.
Webb and Haubrich also disclose selecting one or more device
interaction software applications and initiating a wireless communication
session with a selected medical device. (FF7 (EMD initiating a telemetry
session with selected IMD); FF13 & FF15 (allowing clinician to program a
patient’s IMDs and remotely transferring the prescriptive data to the IMD
after patient and IMD authentication).) Finally, we agree with the Examiner
that a skilled artisan would have reason to combine the discovery service
module disclosed in Haubrich with the remaining disclosures in Haubrich
and Webb to arrive at the claimed invention. As the Examiner explained,
“enabl[ing] the programmer [in Webb] to issue a request for communication
and for the IMDs in range ... to respond back with a unique identifier as
taught by Haubrich” would allow “better determin[ation of] which IMDs the
EMD is able to communicate with via long-range telemetry.” (Ans. 3—4.)
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Application 11/800,423
Having found that a preponderance of the evidence of record supports
the Examiner’s finding that claim 19 is prima facie obvious over Webb and
Haubrich, we next turn to Appellants’ arguments. Appellants do not appear
to dispute that Webb teaches the application of a search heuristic. However,
Appellants argue that Webb does not disclose application of search heuristic
to a set of “discovered” medical devices, because “[t]he patient selection
steps disclosed by Webb . . . occur prior [to] the discovery of at least some
devices.” (Appeal Br. 8—10.) In particular, Appellants argue that Webb
“discloses selection of a remote monitor . .., which would be required to
form a connection with a device, after the user authentication steps disclosed
in Webb” and that the Examiner “has not asserted that Webb discloses any
connection to IMDs . . . , e.g., via a remote monitor . . . , at the time of the
user authentication steps disclosed by Webb.” {Id. at 9-10.) Appellants
further argue that, “[t]o the extent that the user authentication steps disclosed
in Webb . . . include selection of a patient, there is no apparent reason why it
would have been obvious to modify Webb such that the list of patients only
includes patients with devices that were discovered prior to the
authentication.” (Appeal Br. 9.)
We are not persuaded. As the Examiner points out and as discussed
above, the Examiner relies on Haubrich to disclose the limitation relating to
the discovery of a set of medical devices within range of the external
programming system, and the combination of Webb and Haubrich suggest
the limitation of applying search heuristic(s) to a set of “discovered” medical
devices. (Ans. 12.) “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . .. [The reference] must be read, not in isolation,
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but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Neither are we persuaded by Appellants’ arguments that there is no
reason for a skilled artisan to modify Webb so that the search heuristic is
applied only to a set of devices that was previously discovered. As the
Examiner points out, modifying Webb to include Haubrich’s mechanism for
discovering IMDs allows Webb’s system to determine with which IMDs the
remote data center can communicate via telemetry and thus, to which IMDs
prescriptive data may be transferred. (Ans. 3^4 (citing Haubrich 1:52—62).)
We are similarly unpersuaded by Appellants’ argument in the Reply
Brief that modification of Webb by Haubrich would not lead to the invention
of claim 19. (Reply Br. 6—7.) Appellants argue, as they do above, that
Webb teaches establishing a connection and interrogating IMDs (in order to
determine whether a programming request is pending) only after a clinician
has selected a patient and uploaded a programming request. {Id. at 6—7.)
Appellants argue that, because of this, even if a skilled artisan modified
Webb’s system with the teachings of Haubrich, “the alleged discovery of the
IMDs would still occur after the selection of the patient... in accordance
with the remote IMD programming techniques of Webb.” {Id. at 7.)
As an initial matter, Webb explicitly teaches that the steps of
authenticating the clinician, selecting a patient, and interrogating nearby
IMDs (i.e., the steps described in Figs. 10A-C of Webb) “may occur in any
desirable order or substantially simultaneously.” (FF15— FF18.) Thus, we
are not persuaded that the device discovery step in Webb may only occur
after the clinician has already selected a patient and been authenticated, as
Appellants appear to suggest. More importantly, Haubrich teaches
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Application 11/800,423
discovering the IMDs before selection of an IMD by an operator. (FF7.)
We therefore find that the combination of Haubrich and Webb disclose
applying a search heuristic (e.g., patient identification information) to a set
of “discovered” medical devices.
Finally, Appellants argue that,
[t]o the extent that the Examiner interprets the “plurality of
patients” described by Webb to be “a set of medical devices,”
as recited in claim 19, a person of ordinary skill in the art would
recognize that the clinician would already be aware of the
“plurality of patients” that he was treating.0 He would not use
an “external device” that discovers “those devices within range
of the external device,” as described by Haubrich, to discover
the “plurality of patients” that he is treating.0 Thus, the system
of Webb as modified by the cited portions of Haubrich does not
disclose or suggest “a device discovery manager that applies
one or more search heuristics to the set of discovered medical
devices to identify a subset of one or more medical devices in
the set,” as set forth by claim 19.
(Reply Br. 7—8 (footnotes omitted).)9
We are not persuaded. We agree with the Examiner that Webb
discloses a set of medical devices at least because it discloses that a clinician
may treat a plurality of patients, each of whom may further have multiple
IMDs. (FF12.) While a clinician using Webb’s system may indeed be
aware of the identity of patients he is treating, modifying Webb’s system
with Haubrich’s device discovery mechanism allows a clinician to easily
9 Appellants argue that, contrary to the Examiner’s argument, the limitation
“device discovery manager that. . . identifies one of the medical devices
from the subset” is not redundant and should be given patentable weight.
(Reply Br. 8—9.) On this point we agree with Appellants. However, we find
that the prior art suggests this limitation for the reasons discussed above.
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find IMDs associated with his or her patients that may also be remotely
programmed via telemetry.
Accordingly, we affirm the Examiner’s rejection of claim 19. Claims
23, 27—33, 35—40, 43, and 45, which are not separately argued, fall with
claim 19. 37 C.F.R. § 41.37(c)(l)(iv). With respect to the rejections of
claims 21, 22, 24—26, and 34 over the combination of Webb, Haubrich, and
additional prior art, Appellants argue only that the claims are patentable over
the cited references for the same reason as independent claim 19.10 We are
not persuaded for the same reasons already discussed with respect to claim
19 and affirm the Examiner’s rejections of claims 21, 22, 24—26, and 34 for
those reasons.
Claim 44
Claim 44 depends from claim 19 and further requires that the search
heuristics comprise at least one or more of the following: “a telemetry
device type; a telemetry device configuration; telemetry devices to use for
communication; probabilities based on past results; whether additional
10 In the Reply Brief, Appellants argue for the first time that claim 22 is
patentable over Webb, Haubrich, and Sullivan for the additional reason that
the cited art does not disclose the limitation, “wherein the device discovery
manager applies one or more of the search heuristics to already discovered
medical devices in the set while the discovery service module is discovering
additional medical devices in the set,” as recited in claim 21 from which
claim 22 depends. (Reply Br. 14.) We will not consider this argument
because Appellants have not presented any good cause why this argument
could not have been presented in the Appeal Brief, and we lack the benefit
of the Examiner’s expertise in addressing the argument. See Ex parte
Nakashima, 93 USPQ2d 1834, 1835 (BPAI 2010) (“[A]ny argument not
timely presented in the [Principal Brief, will not be considered when filed in
a Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief.”).
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Application 11/800,423
actions need to be performed in order to establish a connection; and a
maximum number of hops to follow in a mesh network for establishing a
connection.”
The Examiner initially cites to paragraph 93 of Webb as disclosing
that “the one or more search heuristics applied by the device discovery
manager to identify a subset of one or more medical devices in the set
comprises a telemetry device type.” (Ans. 6.) In particular, the Examiner
finds that “Para. [0093] of Webb et al. details authentication and verification
techniques a physician must undergo in order to communicate with a
selected IMD” and that, “[i]n doing so, Webb et al. meets the broad
limitation of ‘telemetry device type’.” (Final Act. 3.) In response to
Appellants’ arguments in the Appeal Brief, the Examiner further states that,
[w]hen a prescriptive program is determined to be needed based
on performance history of the IMD ([0086]), a search heuristic
based on telemetry device configuration is applied to determine
a subset of one or more medical devices in the set. When a
prescriptive program [is] for a particular IMD within the
patient, each IMD being different types of devices (cardiac,
nerve stimulation, drug delivery [0056]) but ah capable of
telemetry communication, and the specific IMD device is
authenticated ([0087]), a search heuristic based on telemetry
device type, telemetry device configuration, and whether
additional actions need to be performed in order to establish a
connection is applied to determine a subset of one or more
medical devices in the set.
{Id. at 13.) Appellants contend that none of the passages of Webb cited by
the Examiner suggests applying the particular search heuristics recited in
claim 44.
On balance, we find that Appellants have the better argument. None
of the passages in Webb cited by the Examiner explicitly teach that Webb’s
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processes for authentication or for providing a prescriptive program based
on IMD performance history involve applying search heuristics comprising a
telemetry device type, telemetry device configuration, and/or whether
additional actions need to be performed in order to establish a connection.11
Neither has the Examiner adequately shown that applying such search
heuristics would be inherent to Webb’s authentication process or process for
providing a prescriptive program (i.e., that these processes necessarily
involve application of such search heuristics). See In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (inherency may not be established by probabilities or
possibilities).
Accordingly, we reverse the Examiner’s rejection of claim 44.
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 19, 21—40, 43, and 45. We reverse the Examiner’s decision rejecting
claim 44.
11 To the extent the Examiner is suggesting that “telemetry device type” may
simply mean functional types of IMD such as “cardiac, nerve stimulation,
[or] drug delivery” devices (Ans. 13), we note that the Specification appears
to distinguish between an IMD and a telemetry device. (Spec. 117 (stating
that “[tjelemetry devices . . . may be . . . any device capable of
communicating with a medical device, e.g., any device capable of telemetric
communication with an IMD”); see also id. 1 82 (providing examples of
telemetry device types such as, e.g., “[wjireless patient programming device
(bonded to IMD)”).) The Examiner has not adequately shown that, when
viewed in light of the Specification, a skilled artisan would interpret
“telemetry device type” to encompass different functional types of IMDs.
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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-IN-PART
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