Ex Parte Heruth et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11081857 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH T. HERUTH and KEITH A. MIESEL
____________

Appeal 2010-011478
Application 11/081,857
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 2, 8-13, 16, and 17
(App. Br. 3).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a medical system. Claims 2, 12, 13, 16,
and 17 are representative and are reproduced in “APPENDIX A” of
Appellants‟ Brief (App. Br. 19-21).

1
Pending claims 1, 4-7, 14, and 15 stand withdrawn from consideration
(App. Br. 3).
Appeal 2010-011478
Application 11/081,857

2
Claims 2, 8-13, 16, and 17 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Ni.
2

We affirm.
ISSUE
Does the preponderance of evidence on this record support the
Examiner‟s finding that Ni teaches the claimed invention?

FACTUAL FINDINGS (FF)
FF 1. Ni teaches a medical system, comprising “a device . . . configured to
monitor a plurality of physiological parameters of a patient . . ., wherein the
plurality of physiological parameters includes at least one physiological
parameter indicative of patient physical activity” (Ans. 4).
FF 2. Ni‟s medical system also comprises
[A] processor . . . configured to communicate with the device . .
., determine when the patient is attempting to sleep (paragraphs
84-106), determine when the patient is asleep based on at least
one of the physiological parameters (paragraphs 84-106),
determine values of at least one metric (at least one of
impedance, respiration, and/or posture . . .) that is indicative of
sleep quality based on values of at least one of the physiological
parameters when the patient is attempting to sleep . . ., and
periodically determine an activity level of the patient based on
values of the at least one of the physiological parameters
indicative of patient physical activity when the patient is not
attempting to sleep.

(Ans. 4-5.)
FF 3. Ni teaches that “[i]f the accelerometer signal is less than or equal to
the adjusted sleep threshold . . . and if the patient is not currently in a sleep

2
Ni et al., US 2004/0111040 A1, issued Jun. 10, 2004.
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Application 11/081,857

3
state . . ., then the patient‟s heart rate is checked . . . to confirm the sleep
condition. . . . If the patient‟s heart rate is incompatible . . . with sleep, then
the patient‟s sleep-related signals continue to be monitored” (Ni 8: ¶ [0100];
see generally Ans. 4-5).
FF 4. Appellants‟ Specification discloses that “the invention may be
embodied in a trial neurostimulator, which is coupled to percutaneous leads
implanted within the patient to determine whether the patient is a candidate
for neurostimulation, and to evaluate prospective neurostimulation therapy
parameter sets” (Spec. 34-35: ¶ [0132]).
FF 5. Examiner finds Ni‟s medical system comprises an implantable
cardiac rhythm management device (e.g., a neurostimulator) that electrically
stimulates the heart via pacing leads (Ans. 6 and 11-12).
FF 6. Examiner finds that Ni‟s processor analyzes “the physiological
parameters with respect to the sleep threshold even when the patient has a
vertical posture” (Ans. 13).

ANALYSIS
Appellants provide separate arguments for the following groups of
claims: (I) claims 2 and 8-11; (II) claim 12; (III) claim 13; (IV) claim 16;
and (V) claim 17. Claims 2, 12, 13, 16, and 17 are representative. 37 C.F.R.
§ 41.37(c)(1)(vii).

Claim 2:
Appellants contend that “Ni only describes determining whether a
patient is sleeping” and “does not contemplate a processor configured to
both determine when a patient is attempting to sleep and determine when the
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patient is asleep based on at least one of a plurality of monitored
physiological parameters” (App. Br. 12; see also Reply Br. 4-5). We are not
persuaded. Ni expressly teaches monitoring a patient to determine whether
an individual is asleep or not, and if not, the individual‟s sleep-related
signals continue to be monitored (see FF 2-3). Thus, in the process of
determining whether an individual is asleep, Ni‟s system and device
implicitly determine whether the individual is attempting to sleep (id.).

Claim 12:
Appellants‟ claim 12 depends from and further limits the device of
claim 2 to comprise “at least one of a trial neurostimulator and a trial pump”
(Claim 12). Appellants contend that their Specification describes an
embodiment, wherein their “invention may be embodied in a trial
neurostimulator, which is coupled to percutaneous leads implanted within
the patient to determine whether the patient is a candidate for
neurostimulation, and to evaluate prospective neurostimulation therapy
parameter sets” (FF 4; App. Br. 14; Reply Br. 5-6). Therefore, Appellants
contend that Ni‟s cardiac rhythm management system is not a trial
neurostimulator, as required by claim 12 (App. Br. 14; Reply Br. 6). We are
not persuaded.
As Examiner explains “[w]hether or not the device is employed full-
time or in a „trial‟,[ Ni‟s] . . . device and [Appellants‟ claimed device] . . .
appear to be structural equivalents” (Ans. 11; see FF 5). Appellants fail to
provide persuasive evidence or argument to establish that there is a structural
difference between the cardiac rhythm management system of Ni and the
claimed neurostimulator.
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Claim 13:
Appellants contentions relating to determining values when a patient
is attempting to sleep are substantially the same as those presented for claim
2 above (see App. Br. 15-17; Reply Br. 6). We are not persuaded for the
reasons set forth above with respect to claim 2.
We recognize Appellants contentions regarding the “means for”
limitation of claim 13, and statement that “a means may comprise one or
more corresponding structures that individually or collectively perform the
recited function or functions” (App. Br. 17). Appellants do not, however,
provide persuasive evidence or argument to establish that there is a structural
difference between Ni and the medical system of Appellants‟ claim 13.

Claims 16 and 17:
Appellants‟ claim 16 depends from and further limits the processor of
claim 2 to one that “determines a value of at least one activity metric based
on activity levels determined when the patient is not attempting to sleep”
(Claim 16). Appellants contend that “[a]lthough Ni describes monitoring an
activity signal to detect sleep onset, Ni does not disclose or suggest a
processor that determines a value of at least one activity metric based on
activity levels determined when the patient is not attempting to sleep, as
required by claim 16” (App. Br. 14; Reply Br. 7). We are not persuaded.
Ni‟s processor analyzes “the physiological parameters with respect to
the sleep threshold even when the patient has a vertical posture” (FF 6).
Appellants fail to provide persuasive evidence or argument to establish that a
processor that determines the value of at least one physiological parameter
when an individual is in a vertical position does not read on Appellants‟
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claimed invention, regardless of whether the particular parameter is
overridden “if the posture sensor indicates a vertical posture” or not (Cf.
Reply Br. 7).
For the same reasons, we are not persuaded by Appellants contentions
with regard to claim 17 (App. Br. 17-18; Reply Br. 7-8).

CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner‟s finding that Ni teaches the claimed invention. The rejection of
claims 2, 12, 13, 16, and 17 under 35 U.S.C. § 102(e) as being anticipated by
Ni is affirmed. Because they are not separately argued claims 8-11 fall
together with claim 2. 37 C.F.R. § 41.37(c)(1)(vii).

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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