Ex Parte Min et al

Patent Trials and Appeals Board

Feb 28, 2019

14503799 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/503,799 10/01/2014
94678 7590 03/04/2019
Armstrong Teasdale LLP (32736)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
XiaoyiMin
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.
CD-650USD2 3487
EXAMINER
EISEMAN, ADAM JARED
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
USpatents@armstrongteasdale.com
ASJM_Patents@abbott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOYI MIN, STUART ROSENBERG, and
GABRIEL MO UCHA WAR 1
Appeal2018-005687
Application 14/503,799
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 St. Jude Medical, Inc. ("Appellant"), is the applicant as provided under 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Brief 1
("Appeal Br."), filed Feb. 14, 2018.
Appeal2018-005687
Application 14/503,799
CLAIMED SUBJECT MATTER
The claimed subject matter "relates [to] neural signal detection
methods, systems, and apparatus that utilize a circuit to measure and record
the amplitude of nerve firings along the spinal cord and peripheral nerves."
Spec. ,r 2, Figs. 1-5. Claims 1 and 11 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A neural signal detector comprising:
a rectifier circuit configured to receive a time varying
neural signal having a first frequency from a neural sensor and
output a rectified signal corresponding to the received signal; and
a peak detector circuit operatively connected to the
rectifier circuit to receive the rectified signal and configured to
provide an output signal comprising a positive square wave
having a peak magnitude proportional to a peak magnitude of the
rectified signal and having a second frequency less than the first
frequency of the neural signal.
THE REJECTIONS
I. Claims 1 and 11-16 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Swanson (US 5,876,336, issued Mar. 2, 1999).
II. Claims 2--4 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Swanson and Ferro (US 3,909,700, issued Sept. 30, 1975).
III. Claims 5 and 6 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Swanson and Huey (US 6,421,558 Bl, issued July 16,
2002).
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Application 14/503,799
IV. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swanson and Zweifel2 (US 5,365,783, issued Nov. 22,
1994).
V. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swanson and Miyata (US 4,254,779, issued Mar. 10,
1981 ).
ANALYSIS
Rejection I -Anticipation by Swanson
The Examiner finds that Swanson discloses a peak detector circuit
( element 78) that is operatively connected to the rectifier circuit to receive a
rectified signal and is configured to provide an output signal comprising a
positive square wave having a peak magnitude proportional to a peak
magnitude of the rectified signal and having a second frequency less than the
first frequency of the neural signal. Final Act. 3. According to the
Examiner, the sampling frequency of Swanson's sample and hold element
80 "which produces the output signal having the peak magnitude is set by
the host processor element 60 and is configured and capable of being set to
a sampling frequency that produces an output signal having a frequency less
than the first frequency." Final Act. 3 (emphasis added); see also id. at 4;
Ans. 9-10. 3
2 In a typographical error in the header of the rejection, the Examiner identifies
this reference as "Sweifel." Final Office Action 6 ("Final Act."), dated Oct.
16, 2017.
3 Examiner's Answer ("Ans."), dated Apr. 5, 2018.
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Application 14/503,799
The Examiner points out the Specification discloses that "[r]ectifier
circuit 108 and peak detector circuit 110 may include any circuits and/ or
components suitable for operation as described herein." Ans. 11 ( citing
Spec. ,r 27) ( emphasis omitted). The Examiner explains that because of this
disclosure, it is proper for the Examiner to "interpret[] the peak detector
circuit [as claimed] to comprise the peak detector element 78 and the sample
and hold element 80." Id. at 10. The Examiner takes the position that as
"the peak detector circuit [ of Swanson] would identify the peak magnitude
of the rectified signal[,] which would [be] sampled by the sample and hold
element [80] at a sufficiently low sampling frequency for output," the result
would be "a square wave having a magnitude proportional to the peak
magnitude of the input signal and at a frequency lower than the input
signal." Id. at 12.
In other words, the Examiner finds that Swanson inherently discloses
structure that is capable of producing "an output signal comprising a positive
square wave having a peak magnitude proportional to a peak magnitude of
the rectified signal and having a second frequency less than the first
frequency of the neural signal," as claimed because Swanson discloses that
"the host processor 60 can set the sampling rate of the sample and hold
element 80" Ans. 9-10; (Swanson 9: 17-19).
Appellant contends that "Swanson is silent regarding an output with a
reduced frequency (less than the frequency of an input signal)." Appeal Br.
4. Appellant further contends that "[t]he output of a circuit element ( e.g., the
detector 78) is not defined by how that output is interpreted by another
downstream circuit element ( e.g., the sample and hold element 80)-the
output is defined by the characteristics of the output signal itself from that
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Application 14/503,799
circuit element." Appeal Br. 5. According to Appellant, "even if such an
interpretation were used, ... Swanson is silent regarding the shape and/or
frequency of an output signal from the purported combination of peak
detector element 78 and sample and hold element 80." Id. at 6.
From our review of Appellant's disclosure, we construe the claim
term "circuit" as a single circuit that comprises amplifiers, diodes having
anodes and cathodes, resistors, or capacitors-rather than multiple and
distinct circuits-such as rectifier circuit 108 or peak detector circuit 110
and another circuit that may belong to controller 106 or processor 116 as
shown in Figure 1 of the Specification. See e.g., Spec. ,r,r 23, 26, 28, 31, 32,
34, Figs. 1, 2, 5. Paragraph 27 of the Specification, at best, discloses that the
peak detector 110 may comprise any type of circuit that is suitable for its
operation.
In stating that Swanson's host processor 60 is required to affect the
sampling frequency of sample and hold element 80, the Examiner effectively
considers the circuit of host processor 60 as corresponding to part of the
claimed peak detector circuit. See Final Act. 3--4; see also Ans. 9-10.
However, the Examiner does not adequately explain what particular
elements make up Swanson's sample and hold element 80 in order to
achieve this correspondence, i.e., whether the sample and hold element 80
comprises amplifiers, diodes having anodes and cathodes, resistors, or
capacitors, as the term "circuit" is described in the Specification. In light of
Appellant's disclosure, we agree with Appellant that a skilled artisan would
not consider Swanson's sample and hold element 80 and/or host processor
60 in conjunction with its peak detector 78 as corresponding to the claimed
"peak detector circuit." See Appeal Br. 5.
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Further, Appellant is correct in stating that "Swanson is silent
regarding an output with a reduced frequency (less than the frequency of an
input signal)" (Appeal Br. 4), because Swanson only discloses that "the host
processor 60 can set the sampling rate of the sample and hold element 80."
Swanson 9: 17-19 ( emphasis added). In this case, the Examiner does not
explain sufficiently how a "low sampling rate of an analog signal would
result in loss of signal data via aliasing[,] thus resulting in an output signal
having a reduced frequency" for Swanson's sample and hold element 80.
See Ans. 9. Even at a lower sampling rate set by Swanson's host processor
60, it appears that the output signal from Swanson's peak detector 78 or
from the sample and hold element 80 could still be at the same frequency as
compared to its input signal.
In addition, we note the Examiner finds that "the sampling frequency
of element 80 which produces the output signal having the peak magnitude
is set by the host processor element 60 and is configured and capable of
being set to a sampling frequency that produces an output signal having a
frequency less than the first frequency." Final Act. 3 (emphasis added).
Claims 1 and 11, however, recite a peak detector circuit "configured to"
provide/generate an output signal. Appeal Br. 10, 11, Claims App.
The term "configured to" does not necessarily equate to the term
"capable of." Our reviewing court, has, at least in the context of structural
limitations, found that "configured to" can have a meaning narrower than
"capable of' based on the way the term is used. See Aspex Eyewear, Inc. v.
Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (In construing
"adapted to," adopting the "narrower definition" of "configured to" instead
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Application 14/503,799
of the "broader sense" of "capable of."); see also In re Giannelli, 739 F.3d
1375, 1379 (Fed. Cir. 2014) (discussing the distinction identified inAspex).
Moreover, even if sample and hold element 80 and/or host processor
60 of Swanson may be capable of being modified ( e.g., programmed) to
perform the functions of the peak detector circuit recited in the claims, this
fails to satisfy the "capable of' test, which requires that the prior art
structure be capable of performing the function without further
programming. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)).
In this case, the Examiner does not establish by a preponderance of
the evidence that sample and hold element 80 and/or host processor 60 of
Swanson would have programming or structure required to operate the
device of Swanson to provide an output signal comprising a positive square
wave having a peak magnitude proportional to a peak magnitude of the
rectified signal and having a second frequency less than the first frequency
of the neural signal, as claimed.
For these reasons, we do not sustain the Examiner's rejection of
claims 1 and 11 and claims 12-16 depending therefrom, as anticipated by
Swanson.
Rejection II- V- Obviousness over Swanson and any of Ferro, Huey,
Zweifel, or Miyata
Claims 2-10 depend from claim 1. Appeal Br. 10-11, Claims App.
The Examiner's rejections of claims 2--4 as unpatentable over Swanson and
Ferro, of claims 5 and 6 as unpatentable over Swanson and Huey, of claims
7 and 8 as unpatentable over Swanson and Zweifel, and of claims 9 and 10
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as unpatentable over Swanson and Miyata, are each based on the same
unsupported findings in Swanson discussed above with respect to claim 1.
See Final Act. 5-8. The Examiner does not rely on Ferro, Huey, Zweifel, or
Miyata in any manner that remedies the deficiencies of Swanson.
Accordingly, for reasons similar to those discussed above for claim 1, we do
not sustain the Examiner's obviousness rejections of claims 2-10.
DECISION
We REVERSE the decision of the Examiner to reject claims 1 and
11-16 under 35 U.S.C. § 102(b) and claims 2-10 under 35 U.S.C. § 103(a).
REVERSED
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