Ex Parte Judkins et al

Patent Trial and Appeal Board

Apr 17, 2017

12893946 (P.T.A.B. Apr. 17, 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.
12/893,946 09/29/2010 James G. Judkins SPMOD-01002US1 5109
28554 7590 04/19/2017
Vierra Magen Marcus LLP
575 Market Street, Suite 3750
San Francisco, CA 94105
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
04/19/2017 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):
patents @ vierramagen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES G. JUDKINS and RICHARD W. O’CONNOR
Appeal 2015-007326
Application 12/893,946
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James G. Judkins and Richard W. O’Connor (Appellants)1 seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—
10 and 12—14, as set forth in the Final Action dated August 15, 2014 (“Final
Act.”).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Spinal Modulation, Inc. as the real party in interest.
Appeal Br. 3.
2 Claim 16 is canceled, and claims 11, 15, and 17—21 are withdrawn from
consideration. Id. at 27—29 (Claims App.).
Appeal 2015-007326
Application 12/893,946
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to devices “that are used to
communicate with pulse generators that are used to treat pain or
conditions,’ para 2 claims before us on appeal, claim 1 is
the sole independent claim and is reproduced below.
1. A handheld external programmer adapted to wirelessly
communicate with an implantable pulse generator (IPG)
implanted within a patient or an external pulse generator attached
to the patient,
the programmer having a predetermined intended
orientation that specifies how a person should handhold the
programmer so that the person can view and interact with a user
interface associated with a front surface of the programmer in a
predetermined intended manner,
wherein when the person handholds the programmer in its
predetermined intended orientation, the front surface of the
housing is positioned at any angle between and inclusive of the
front surface facing upward parallel to the earth’s surface and the
front surface facing sideways perpendicular to the earth’s
surface, which enables the person to view and interact with the
user interface of the programmer in the predetermined intended
manner,
the external programmer comprising:
a ground plane;
a power supply;
a telemetry transceiver powered by the power
supply and grounded by the ground plane; and
only a single antenna electrically connected to the
telemetry transceiver; wherein the single antenna is
positioned relative to the ground plane such that when the
person handholds the programmer in its predetermined
intended orientation a single radiation pattern produced by
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Application 12/893,946
the antenna has substantially maximum radio frequency
(RF) radiation generally directed toward the patient,
regardless whether the person that handholds the
programmer in its predetermined intended orientation is
the patient or another person located near and generally
facing the patient, and without requiring the programmer
be placed over the pulse generator.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1—6 and 12—14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goedeke (US 6,167,312, iss. Dec. 26, 2000) and
Flint (US 2003/0222823 Al, pub. Dec. 4, 2003).
2. Claims 7—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goedeke, Flint, and Schommer
(US 2005/0075692 Al, pub. Apr. 7, 2005).
ANALYSIS
First Ground of Rejection: Obviousness based on Goedeke and Flint
Independent claim 1 calls for “only a single antenna . . . positioned
relative to the ground plane such that when the person handholds the
programmer in its predetermined intended orientation a single radiation
pattern produced by the antenna has substantially maximum radio frequency
(RF) radiation generally directed toward the patient.” Appeal Br. 24 (Claims
App.).
The Examiner found that Goedeke discloses a handheld programmer,
substantially as claimed, including “an antenna electrically connected to the
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Application 12/893,946
telemetry transcei ver (Figures 1 A, 2), wherein the antenna is positioned such
that when a person handholds the programmer in its predetermined intended
orientation, a radiation pattern produced by the antenna has substantially
maximum RF radiation generally directed toward the patient.” Final Act. 4--
5; see also id. at 5 (the Examiner explaining that “Goedeke discloses
improving or optimizing the antenna radiation, and the orthogonal
configuration of the antennas cover multiple planes of radiation patterns”).
The Examiner acknowledged that “Goedeke does not explicitly disclose a
ground plane with the antennas.” Id. at 5. However, the Examiner found
that “Flint teaches antennas on portable computing devices with a ground
plane (Paragraphs 42, 45), the antennas in various configurations (Figures 1..
6) relative to the ground plane, in order to optimize the signal quality.” Id.
The Examiner determined that “it would have been obvious to one with
ordinary skill in the art at the time the invention was made to modify
Goedeke as taught by Flint to include a ground plane with antennas as
recited, in order to optimize the signal quality.” Id.
The Examiner further explained that, although “Goedeke discloses
three antennas within the housing, Goedeke also teaches that the signal
quality of the antennas can be monitored, and explicitly shows that a single
antenna receiving the best signal is selected.” Id. (citing Goedeke, abstract;
col. 4,11. 19—33). According to the Examiner, Goedeke’s “additional
antennas advantageously offer more flexibility and robustness in signal
reception, with the drawback of consuming more power and space,” and
“[tjherefore, the decision to employ only a single antenna (i.e. the
elimination of additional antenna elements with the subsequent loss of
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Application 12/893,946
function) would have been considered a matter of ob vious design 0110106.”
Id. at 5—6.
Appellants argue, inter alia, that the Examiner’s proposed
modification to use a single antenna would not have been obvious because
Goedeke and Flint teach away from using a single antenna, as called for in
claim 1. Appeal Br, 19—20; Reply Br. 4. In particular, Appellants assert that
“a sign ificant portion of Goedeke focuses on why it is superior to include an
array of multiple antennas, and why at least two of the multiple antennas
should be orthogonal to one another” (Appeal Br. 19), and “Flint teaches
improving wireless RF communication by including two or four antennas in
a laptop” (id. at 20). According to Appellants, “the prior art extols the
benefits and virtues of utilizing multiple antennas.” Reply Br. 4; see also id.
(asserting that “the prior art did not simply mention that its devices include
multiple antennas,” but, “[rjather, the prior art went to great lengths to
explain the superiority of its multiple antenna arrangements”). For the
reasons that follow, we agree with Appellants that the Examiner’s proposed
modification of the multi-antenna programmer based on the teachings of
Goedeke and Flint to include only a single antenna is not supported by
adequate reasoning with rational underpinning. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
Goedeke is directed to a programmer having “improved antenna
configurations . . . optimized to allow for reliable communication between
an implanted device and an external programmer or monitor which may be
spaced at least several feet from one another.” Goedeke, col. 1,11. 60-64.
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Goedeke discloses “a spatial diversity antenna array in order to facilitate
reception of signals from the implanted device and transmission of signals to
the implanted device, within a wide area surrounding the monitor or
programmer.” Id., col. 2,11. 2--5. “Antennas 12 and 13 may be, for
example, monopole antennas located relative to one another such that their
major axes are generally orthogonal to one another, with removably
mounted antenna 14 preferably having its major axis generally orthogonal to
antenna 13 when mounted to the housing 11.” Id., col. 3,11. 24—29.
Goedeke discloses that, “during receipt of transmissions from the associated
implanted device, the controller 46 may select which of the three antennas is
employed as a function of the amplitude of the received RF signal.” Id.,
col. 4,11. 23—26, In other words, Goedeke discloses improving wireless
communication between a programmer and an implanted medical device by
using an array of orthogonally-positioned antennae in the programmer, and
selecting the antenna with the strongest RF signal.
Flint “is directed to dual-band antennas that are embedded within
portable devices such as laptop computers.” Flint, para. 12. As correctly
noted by Appellants, “[i]n each of the embodiments described with reference
to FIGS. 3—6 and 14, Flint. . . teaches the inclusion of at least two antennas
(in the embodiment of FIG. 14 there are lour antennas).” Appeal Br. 11
(emphasis omitted). Flint also discloses that “[t]he use of two antennas (as
opposed to one antenna) will reduce the blockage caused by the display in
some directions and provide space diversity to the wireless communication
system.” Flint, para. 5. In other words, Flint discloses benefits of using two
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Application 12/893,946
antennae for wireless communication (i.e., reducing blockage and
space diversity).
Given that Goedeke and Flint specifically disclose the use of multiple
antennae arrangements to improve wireless communication, the Examiner’s
reasoning articulated in support of the conclusion of obviousness is not
based on rational underpinnings. Namely, the Examiner has not adequately
explained why one of ordinary skill in the art would have been led, as a
matter of design choice, to modify the multi-antenna programmer based on
the combined teachings of Goedeke and Flint to include only a single
antenna, as called for in claim 1. Accordingly, we do not sustain the
rejection of claim 1, and of dependent claims 2-6 and 12—14, under
35 U.S.C. § 103(a) as unpatentable over Goedeke and Flint.
Second Ground of Rejection: Obviousness based on Goedeke, Flint, and
Schommer
The rejection of claims 7—10 relies upon the same proposed
modification to the combined teachings of Goedeke and Flint that we found
deficient in the analysis of claim 1 discussed supra. See Final Act. 6—7. The
Examiner did not rely on any disclosure of Schommer, or articulate any
additional reasoning, that would remedy this deficiency. Accordingly, we
do not sustain the rejection of claims 7—10 under 35 U.S.C. § 103(a) as
over Goedeke, Flint, and Schommer.
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DECISION
The decision of the Examiner to reject claims 1—10 and 12—14 is
REVERSED.
REVERSED
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