Ex Parte Lineaweaver

Patent Trial and Appeal Board

Jul 27, 2018

12557242 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/557,242 09/10/2009
110239 7590 07/31/2018
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Sean Lineaweaver
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.
3065.0178C 4038
EXAMINER
LEE, ERICA SHENG KAI
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN LINEA WEA VER
Appeal2017-006982
Application 12/557,242
Technology Center 3700
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
RYAN H. FLAX, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Sean Lineaweaver ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from a decision finally rejecting claims 1-25. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
According to Appellant, the claimed invention "relates generally to
stimulating medical devices, and more particularly, to fitting a stimulating
medical device." Spec. i-f l. The stimulating medical device may be, for
example, a hearing or cochlear prosthesis. Id. at i-f2.
1 The real party in interest is identified as Cochlear Limited. App. Br. 3.
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Application 12/557 ,242
Of the pending and finally rejected claims, claims 1, 19, 16, and 24
are independent. App. Br. 21-27. Claim 1 is representative and reads as
follows, with a limitation critical to this decision, in italics:
1. A method for fitting a stimulating medical device
to a recipient, comprising:
transmitting a signal to cause the stimulating medical
device to apply stimulation to the recipient;
displaying, to the recipient, a graphical user inteiface
configured for someone whose capacity for intuiting how to use
the graphical user interface is that of a person lacking
specialized training in the field of fitting stimulating medical
devices;
receiving a response to the applied stimulation from the
recipient via the graphical user interface;
determining a stimulation level parameter using the
recipient's response; and
transmitting the stimulation level parameter to the
stimulating medical device for use in applying stimulation to
the recipient.
Id. at 21.
The following rejections are before us for review:
(1) Claims 1-25 under 35 U.S.C. § 112 i-f2 as indefinite (Final
Act. 4);
(2) Claims 1-7, 9-14, 16-22, 24 and 25 under 35 U.S.C. §102(b)
as anticipated by Litvak2 or, alternatively, under 35 U.S.C. § 103(a) as
obvious over the same (Final Act. 5); and
(3) Claims 8, 15, and 23 under 35 U.S.C. § 103(a) as obvious over
Litvak and Wakefield3 (Final Act. 8).
2 US 2008/0033507 Al (published Feb. 7, 2008) ("Litvak").
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Application 12/557 ,242
DISCUSSION
Rejection 1
The Examiner rejected all claims under 35 U.S.C. § 112 i-f2 for failing
to particularly point out and distinctly claim the subject matter which
applicant regards as the invention. Final Act. 4.
For claims under examination, "a claim is indefinite when it contains
words or phrases whose meaning is unclear," i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir.
2014); see also MPEP § 2173.02(I) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate "after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear"). Moreover, "if a claim is amenable
to two or more plausible claim constructions, the US PTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207,
2008 WL 5105055, at *5 (BPAI 2008) (precedential).
The independent claims recite, and the dependent claims incorporate,
"a graphical user interface [GUI] configured for someone whose capacity for
intuiting how to use the graphical user interface is that of a person lacking
specialized training in the field of fitting stimulating medical devices." App.
Br. 21-27. The Examiner rejected the claims as indefinite "because it is
unclear to what degree 'specialized training' should entail for someone."
3 US 8,301,259 B2 (issued Oct. 30, 2012) ("Wakefield").
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Application 12/557 ,242
Final Act. 4. We agree, and conclude the claims are also indefinite for
further reasons, as discussed below.
Applicant does not substantively address Examiner's point regarding
the degree of "specialized training." See Final Act. 4. Instead, Applicant
asserts a binary universe of people: "namely: a first class of people, each of
whom 'lack[ s] specialized training in the field of fitting stimulating medical
devices;' and a second class of people, each of whom has received
specialized training in the field of fitting stimulating medical devices." App.
Br. 9-10. Applicant argues that "the first class includes people who receive
the stimulating medical devices, i.e., people to whom the devices are fitted,
namely the recipients; and the second class includes people who are trained
to fit stimulating medical devices to the recipients, for example, clinicians,
e.g., an audiologist." Id. at 10 (emphasis added). By Applicant's own
argument, and in particular Applicant's open-ended description of the
purported two classes of people using the word "includes," Applicant
concedes the indefinite scope of the claims.
Further, Applicant concedes that it is not enough to identify a person
as a clinician (or not) because not all clinicians will necessarily have
"specialized training." Id. ("[T]he adjective 'specialized' modifying the
phrase 'training in the field of fitting stimulating medical devices'
[describes] training (in the field of fitting stimulating medical devices) that
would typically have been provided to members of the second class
(clinicians, etc.) and not to members of the first class (recipients)."
( emphasis added)).
We see no error in the Examiner's rejection of the claims as
indefinite.
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Application 12/557 ,242
Moreover, the claims are indefinite for a further reason. That is, even
if it were clear who is "a person lacking specialized training in the field of
fitting stimulating medical devices," it would nonetheless be unclear to the
skilled artisan, as it is to us, the meets and bounds of "a graphical user
interface configured for someone whose capacity for intuiting how to use the
graphical user interface is that of' that person, as recited in the independent
claims. In that regard, it is unclear how a graphical user interface
configuration would be different for a person having specializing training in
the recited field than for a person lacking such training. For example, any
person can press or slide his or her finger against a touchscreen, such as the
one disclosed in Litvak Figure 12 and asserted by Examiner (see infra),
regardless of his or her training or lack thereof. 4 The claim language is
ambiguous.
The Examiner's rejection of claims 1-25 under 35 U.S.C. § 112 i-f2 is
affirmed.
Rejection 2
The Examiner rejected claims 1-7, 9-14, 16-22, 24, and 25 under 35
U.S.C. § 102(b) as anticipated by Litvak or, alternatively, under 35 U.S.C.
§ 103(a) as obvious over the same prior art. Final Act. 5.
As determined by the Examiner, Litvak discloses systems and
methods "for fitting an implantable cochlear stimulator to a patient include
4 To the extent that such a difference in configuration would be based on the
technical level of the information communicated by the GUI, such
information likely would constitute "printed matter," namely, "matter
claimed for what it communicates." In re Distefano, 808 F.3d 845, 850
(Fed. Cir. 2015). Thus, such information would not necessarily be entitled
to any weight for patentability purposes. Id.
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Appeal2017-006982
Application 12/557 ,242
an interface unit configured to display a graphical representation of an
implant fitting line as part of a graphical user interface." Litvak i-f57; see
also Final Act. 5. The Examiner explained how Litvak discloses the subject
matter and each element of claims 1-7, 9-14, 16-22, 24, and 25 under 3 5.
Final Act. 5-8. We discern no error is the Examiner's determinations.
In its Appeal, Applicant argues purported error only in Examiner's
finding that Litvak discloses the limitation we concluded above to be
indefinite, namely "a graphical user interface configured for someone whose
capacity for intuiting how to use the graphical user interface is that of a
person lacking specialized training in the field of fitting stimulating medical
devices." App. Br. 9, 18. Although this limitation is ambiguous, for the
sake of complete examination in view of the prior art, we understand that a
patient, as opposed to a clinician, would fall within its scope of "a person
lacking specialized training .... "
Against that limitation, the Examiner mapped Litvak' s graphical user
interface 170, which is described in paragraph 61 and illustrated in Figure 12
of Litvak. See Final Act. 2-3 (citing Litvak i-f61 and Fig. 12), 5---6 (same).
The Examiner pointed out that Litvak discloses that "the GUI is used by a
clinician or a patient." Id. at 2 ( citing Litvak i-f 61 ). Litvak paragraph 61
indeed describes this, stating:
The slope and/or the position of the fitting line (161; FIG. 8)
may be adjusted by the cochlear implant patient, by a clinician,
or by any other person using a variety of different control
interfaces. For example, FIG. 12 illustrates an exemplary
graphical user interface (GUI) (170) that may be used to adjust
the slope and/or the position of the fitting line (161). The GUI
(170) may include a graphical depiction (177) of the fitting line
(161 ). The graphical depiction (177) may be configured to
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Appeal2017-006982
Application 12/557 ,242
update automatically to reflect any change made by the patient
or clinician in slope and/ or position of the fitting line ( 161 ).
Litvak i-f6 l ( emphasis added).
Notwithstanding this disclosure, Applicant argues there are "many
aspects [of] GUI 170 that would not have been understood by the layman
which are determinative of whether GUI 170 as a whole is NOT configured
for the layman but instead is configured for the clinician." App. Br. 11.
Applicant concludes that the Examiner "has erred by focusing incorrectly on
the few 'layman-intelligible' aspects [of Litvak's GUI] rather than [its]
many 'layman-unintelligible' aspects. Id. These arguments are not
persuasive.
Applicant's argument belies explicit description and illustration set
forth in Litvak. Litvak states that its control interfaces may be used not only
by a clinician, but also by a "cochlear implant patient" and even "any other
person." Litvak i-f6I. Further, at Figure 12, reproduced below, Litvak
illustrates a GUI that is consistent with that description:
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FIG. 12
Appeal2017-006982
Application 12/557 ,242
Figure 12, reproduced above, "illustrates an exemplary graphical user
interface that may be used to adjust the slope and/or the position of the
fitting line according to principles described [in Litvak]." Litvak i-fl9. It has
simple labeled slider bars 171 and 172 and labeled buttons 173-176, none of
which are labeled with technical jargon. Id. at i-f 61 ("A first sliding bar (171)
may be included to allow the user of the GUI (170) to adjust the slope of the
fitting line ( 161 ). A second sliding bar ( 172) may also be included to allow
the user to adjust the X-axis intercept or position of the fitting line (161).
The GUI (170) may also include buttons (173, 175), the selection of which
plays a musical tune or a sound used in determining whether the slope and
position of the fitting line (160) are correct. The GUI (170) may further
include buttons ( 17 4, 176) configured to allow the user to select a musical
tune from a list of available tunes and/or a sound from a list of available
sounds.").
Applicant's ultimate argument is that "a person lacking specialized
training in the field of fitting stimulating medical devices" would not
understand and be able to interface with each and every aspect of Litvak's
GUI 170. App. Br. 11-19. For example, Applicant argues that "Litvak's
statement in paragraph [0061] that GUI 170 could be used by the layman is
DIFFERENT than disclosing that GUI 170 is configured specifically for the
layman." Id. at 14 (emphasis added). Applicant's argument is not
commensurate with the scope of the claims ( as best we can discern their
indefinite scope) and is not persuasive, in any event. The claims recite "a
graphical user interface configured for someone whose capacity for intuiting
how to use the graphical user interface is that of a person lacking specialized
training in the field of fitting stimulating medical devices." The claims do
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Application 12/557 ,242
not recite that the GUI is configured specifically or exclusively for that
person.
The Examiner's rejection of claims 1-7, 9-14, 16-22, 24, and 25
under 35 U.S.C. §102(b) as anticipated by Litvak or, alternatively, under 35
U.S.C. § 103(a) as obvious over the same, is affirmed.
Rejection 3
The Examiner rejected claims 8, 15, and 23 under 35 U.S.C. § 103(a)
as obvious over Litvak and Wakefield. Final Act. 8.
The only purported error identified by Applicant in this rejection is
that the Examiner erred in rejecting the claims from which claims 8, 15, and
23 depend. App. Br. 19-20.
We disagree in that respect, as discussed above. Accordingly, the
Examiner's rejection of claims 8, 15, and 23 is also affirmed.
SUMMARY
For the reasons discussed, we affirm each of the Examiner's
rejections.
TIME PERIOD
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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