Ex Parte Holschbach et al

Patent Trial and Appeal Board

Oct 19, 2016

12263410 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/263,410 10/31/2008
27581 7590 10/21/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Jean M. Holschbach
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P003 2581.00/LGl 0126 8095
EXAMINER
MINCEY, JERMAINE A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN M. HOLSCHBACH, KEVIN M. JOHNSON,
MILES R. PORTER, KARL W. KNOBLAUCH,
and SUNIL S. BHUJLE
Appeal2015-004464
Application 12/263,410
Technology Center 2100
Before MATTHEW R. CLEMENTS, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 5-20, which constitute all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Medtronic, Inc. App.
Br. 3.
2 Claims 2--4 have been canceled. App. Br. 3.
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Application 12/263,410
INVENTION
Appellants' invention relates to a data transformation system and
method. Abstract. Claim 16 is illustrative and reads as follows, with
disputed limitations emphasized:
16. A method of transforming data from an implantable
medical device having a native format for a particular
manufacturer from among a plurality of manufacturers, the
method comprising:
receiving the data from the implantable medical device in
the native format;
checking through a device encyclopedia that comprises
information regarding data attributes about native formats of
respective devices and respective manufacturers of the
respective devices to compare the data from the implantable
medical device in the native format with the data attributes about
the native formats of the respective devices and the respective
manufacturers of the respective devices to determine the
particular manufacturer from among the respective
manufacturers;
categorizing at least some of the data from the native
format of the particular manufacturer into an object model
representation;
normalizing at least some of the data in the object model
representation; and
serializing the object model representation into an
extensible markup language file.
REJECTIONS
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hunt et al. (US 2004/0133848 Al; published July 8,
2004) ("Hunt") and Dicks et al. (US 2008/0215360 Al; published Sept. 4,
2008) ("Dicks").
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Application 12/263,410
Claims 1, 5-15, and 17-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hunt, Krichen et al. (US 6,250,309
B 1; issued June 26, 2001) ("Krichen") and Dicks.
ANALYSIS
We have considered Appellants' arguments, but do not find them
persuasive of error. Accordingly, we sustain the Examiner's rejections for
the reasons set forth in the Answer, which we incorporate herein by
reference, including the Examiner's responses to Appellants' arguments.
Appellants further explain their positions in a Reply Brief, which we find
unpersuasive for the following reasons.
Appellants contend the Examiner erred in finding that paragraphs 3 3
and 42 of Dicks teach or suggest the limitation "a device encyclopedia
that comprises information regarding data attributes about native formats of
respective devices and respective manufacturers of the respective devices,"
as recited in claim 16. App. Br. 12; Reply Br. 5. Appellants contend the
"set of known medical device data formats," taught in Dicks, does not teach
or suggest the disputed "device encyclopedia" limitation because Dicks's
teaching is "abstract and ambiguous." Reply Br. 5---6. Appellants also
contend that "this statement in Dicks is presented in the passive voice with
no identified subject," and, therefore, "does not clearly disclose a device or
system as opposed to potentially merely a user that might perform
'comparing it to a set of known medical device data formats." Id.
We are not persuaded of Examiner error. As an initial matter, claim
16 does not require "a device or system" to perform the claimed method
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step. Thus, even assuming that the cited portions of Dicks leave open the
possibility that a user is doing the comparing, that would still be sufficient to
teach this limitation of claim 16. Moreover, even if claim 16 required a
"device or system" to perform this step, Dicks would teach such a limitation
because it states that "the exemplary method in FIG. 1 may be practiced
manually by a human being, automatically by a device, or a combination of
the two" (emphasis added) and describes "[ e ]xemplary devices for
performing the method illustrated in FIG. 1." Dicks i-f 37. Also, we do not
agree with Appellants that Dicks' s description of "a set of known medical
device data formats" is "abstract and ambiguous." The Examiner found
Dicks teaches that a medical device can provide data in any format, and that
different medical devices from different manufacturers often use different
formats for providing data. Ans. 3--4 (citing Dicks i-f 42). Based on Dicks's
further teaching that a data format may be selected by analyzing the format
of the data received and comparing it to a set of known medical device data
formats, the Examiner found that the "set of known medical device data
formats" in Dicks teaches or suggests the "device encyclopedia" recited in
claim 16. Id. Beyond asserting that "set of known medical device formats"
is ambiguous, however, Appellants do not explain why such a set would not
"comprise[] information regarding data attributes about native formats of
respective devices and respective manufacturers of the respective devices,"
as claim 16 requires of the recited "device encyclopedia." As a result, we
are not persuaded that the Examiner erred in finding that Dicks teaches this
limitation.
Appellants next contend the Examiner erred in finding that Dicks
teaches or suggests the limitation "to compare the data from the implantable
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medical device in the native format with the data attributes about the native
formats of the respective devices," recited in claim 16. App. Br. 12-13;
Reply Br. 6. The Examiner found that comparing data to a set of known
medical device formats, as taught in Dicks, teaches this limitation. Ans. 5.
Appellants argue, in Reply, that "Dicks makes no mention of 'data
attributes' or of 'native formats."' Reply Br. 6.
We are not persuaded the Examiner erred. The Examiner does not
contend, nor is the Examiner required to demonstrate, that the identical text
or language of rejected claim 16 appears in the cited references. In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990). Appellants present no persuasive
explanation or evidence to rebut the Examiner's findings that ( 1) the medical
device identifier taught in Dicks may be used to determine a specific data
format used by a medical device (Ans. 3--4 (citing Dicks i-fi-133, 42)); (2)
attributes of the medical device identifier in Dicks teaches or suggests the
limitation "data attributes about native formats" (id. at 4); and (3) "analyzing
the format of the data received and comparing it to a set of known medical
device data formats," as taught by Dicks, also teaches this limitation (id).
Appellants further contend the Examiner erred in finding that Dicks
teaches or suggests the limitation "to determine the particular manufacturer,"
recited in claim 16. App. Br. 13-15; Reply Br. 7-8. In particular,
Appellants argue "the Examiner never actually cites any disclosure or
support from the applied references of how they might disclose or suggest"
the disputed limitation. Id. at 7. Appellants also argue that Dicks makes no
disclosure or suggestion of determining a particular manufacturer. Id.
We are unpersuaded of Examiner error. The Examiner is not required
to demonstrate that the identical text or language of rejected claim 16
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appears in the cited references. Bond, 910 F.2d at 832. Moreover, in light
of Dicks's teaching that "[d]ifferent medical devices from different
manufacturers often use different formats for providing data" (Dicks i-f 42)
and that "the format of the data received" from a medical device may be
"compar[ ed] to a set of known medical device data formats" (id.) we see no
error in the Examiner's finding (Ans. 6) that a person of ordinary skill in the
art would have understood that determining the format of the data received
to be one of a "known medical device data format" would also determine the
manufacturer of that medical device.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Hunt and Dicks teaches or suggests the
disputed limitations recited in claim 16.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 16, as well as the 35 U.S.C. § 103(a) rejection of
independent claim 1, which Appellants argue is patentable for similar
reasons. App. Br. 17 ("Claim 1 is not taught or suggested ... due at least to
analogous reasons as all of the reasons discussed above with reference to
claim 16."). We also sustain the Examiner's rejection of dependent claims
5-15 and 17-20, for which Appellants make no additional arguments. Id. at
17-18.
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DECISION
We affirm the decision of the Examiner rejecting claims 1 and 5-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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