12351414 (B.P.A.I. Aug. 21, 2012)

Ex Parte Heruth et al

Board of Patent Appeals and InterferencesAug 21, 2012

12351414 (B.P.A.I. Aug. 21, 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 2011-009482 Application 12/351,414 Technology Center 3700 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134 involves claims 1, 3, 8, 12, and 17- 26 (App. Br. 3). 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 This Appeal is related to Appeal No. 2010-011478, wherein a Decision, entered March 14, 2012, affirmed the anticipation rejection of record in Application No. 11/081,857, now abandoned. 2 Pending claims 2, 4-7, 9-11, 13-16, and 27-38 stand “withdrawn due to restriction” (App. Br. 3). Appeal 2011-009482 Application 12/351,414 2 STATEMENT OF THE CASE The claims are directed to a medical system. Claim 1 3 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 3, 8, 12, and 17-26 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Stahmann. 4 We reverse. ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Stahmann teaches Appellants’ claimed invention? FACTUAL FINDINGS (FF) FF 1. Stahmann teaches “a medical device . . . that monitors . . . a plurality of physiological parameters . . . of a patient . . ., wherein the medical device includes at least one accelerometer” (Ans. 4). FF 2. Examiner finds that Stahmann’s medical device comprises a processor that, inter alia, “determines a value of at least one activity metric based on activity levels determined when the patient is not attempting to sleep (paragraph 42)” (id. at 5). FF 3. Stahmann teaches that A number of disorders, for example, sleep-disordered breathing and movement disorders such as PLMD, occur primarily while the patient is asleep. Information about the patient’s sleep stage may be used to enhance sleep monitoring and/or diagnosis of a variety of disorders. In addition, it may be useful to provide a first therapy while the patient is awake and a second therapy while the patient is asleep. Detection of 3 Claims 3, 8, 12, and 17-26 depend directly or indirectly from claim 1. 4 Stahmann et al., US 2005/0113710 A1, published May 26, 2005. Appeal 2011-009482 Application 12/351,414 3 muscle movement, such as indication by EMG, may be used to diagnose disorders as well as trigger the sleep-time therapy in a respiratory and/or cardiac device. Data acquired during sleep may assist in diagnosing various sleep-related disorders. The collected data may be stored, displayed, printed, or transmitted to a separate device. (Stahmann 3: ¶ [0042].) FF 4. Examiner finds that Stahmann is expressly concerned with providing cardiac rhythm management, i.e. “therapy”, to a patient based on the detection, monitoring, and processing of the signals. These functions must at least include “associating sleep quality metric values and activity levels determined when the patient is not attempting to sleep with one or more of the plurality of therapy parameter sets that were used by the medical device to deliver therapy when that value or level was determined” and “a representative value of a sleep quality metric and an activity metric for each of the plurality of therapy parameter sets”. (Ans. 18 (emphasis added).) FF 5. Stahmann’s Fig. 2 is reproduced below: “FIG. 2 is a flow chart illustrating an EMG based algorithm in accordance with embodiments of [Stahmann’s] . . . invention” (Stahmann 3: ¶ [0027].) Appeal 2011-009482 Application 12/351,414 4 ANALYSIS Appellants contend that Stahmann fails to teach a medical device comprising “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” (App. Br. 8). “Instead, the techniques disclosed by Stahmann merely include monitoring a patient while the patient is sleeping and distinguishing between when the patient is awake and when the patient is asleep” (id. at 9 (footnote omitted); FF 3 and 5; Cf. FF 2 and 4). As Appellants point out, “even if the device of Stahmann monitors movement information when the patient is awake, it does not necessarily follow that the processor determines a value of at least one activity metric based on activity levels determined when the patient is not attempting to sleep” (id.; Cf. FF 4). Stated differently, Examiner failed to establish an evidentiary basis on this record to support a finding that Stahmann teaches “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” (Reply Br. 4; Cf. FF 4). We recognize Examiner’s reliance on paragraph 42 of Stahmann, wherein Examiner appears to suggest that Stahmann inherently teaches 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 (FF 4). Examiner did not, however, explain how this teaching in Stahmann supports a conclusion of inherency or necessarily requires Stahmann’s processor to determine a value of at least one activity metric based on activity levels determined when the patient is not attempting to sleep as required by Appellants’ claims. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 Appeal 2011-009482 Application 12/351,414 5 (Fed. Cir. 2002) (“Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates”) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Stahmann teaches Appellants’ claimed invention. The rejection of claims 1, 3, 8, 12, and 17-26 under 35 U.S.C. § 102(e) as being anticipated by Stahmann is reversed. REVERSED cdc