Ex Parte Sieracki et al

Patent Trial and Appeal Board

Mar 21, 2016

13015230 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/015,230 01127/2011
71996 7590 03/23/2016
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 300
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Jeffrey M. Sieracki
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.
1023-227US03/P0011555.09 2229
EXAMINER
D ABREU, MICHAEL JOSEPH
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
pairdocketing@ssiplaw.com
medtronic _neuro _ docketing@cardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY M. SIERACKI and RICHARD B. NOR TH1
Appeal2014-002018
Application 13/015,230
Technology Center 3700
Before HUBERT C. LORIN, ROBERT L. KINDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-12. 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.
Appeal2014-002018
Application 13/015,230
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention "relates to medical devices, and more
particularly, to programming of implantable medical devices" using failsafe
programming techniques. Spec. i-fi-12, 26.
Claims on Appeal
Claims 1, 6, and 102 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reads:
1. A method comprising:
sending programming signals via wireless telemetry to an
implantable medical device during a programming session,
wherein the programming signals are configured to affect
operation of the implantable medical device; and
sending stay-alive signals to a watchdog unit during the
programming session, wherein the stay-alive signals are
configured to reset a watchdog timer of the watchdog unit to
allow the watchdog unit to detect failure of a wireless telemetry
session between a programming device and the implantable
medical device during the programming session, wherein the
watchdog unit is configured to detect failure of the wireless
telemetry session based on whether the watchdog timer has
expired.
App. Br. 11 (Claims App'x).
2 Claim 10 recites in pertinent part: "A computer-readable storage medium
comprising instructions that cause a programmable processor to .... " App.
Br. 13 (Claims App'x). Should prosecution of this Application continue, the
Examiner may want to consider whether the scope of this claim includes
transitory signals, and if so, whether the claim complies with 35 U.S.C.
§ 101. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (holding recited machine-readable storage medium ineligible
under§ 101 because it encompasses transitory media).
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Application 13/015,230
Examiner's Rejection
The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) over
Lebel (US 2005/0010269 Al). Final Act. 2, 4 (mailed Jan. 17, 2013).
ANALYSIS
We affirm the Examiner's rejections of claims 1-12 under 35 U.S.C.
§ 103(a). We disagree with Appellants' contentions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the Final Office
Action and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief. See Final Act. 2-5. We
concur with the conclusions reached by the Examiner. We add the following
for emphasis.
Claim 1
Appellants contend "Lebel fails to disclose or suggest each and every
feature of independent claim 1 .... " App. Br. 5. Appellants provide a
general summary of certain paragraphs of Lebel (App. Br. at 6), and the
Examiner generally agrees with those characterizations (Ans. 2). The
Examiner determines, however, that Appellants' analysis of paragraphs 309
and 332 of Lebel is piecemeal and fails to consider the combination of those
paragraphs and other teachings of Lebel made pursuant to Section 103. Ans.
2. We agree with Examiner's general assessment.
Appellants' arguments (App. Br. 5-8) attack each paragraph of Lebel
individually without properly considering the Examiner's proposed
combination of each portion of Lebel. One cannot show nonobviousness by
attacking references, or portions of a single reference, individually where the
rejections are based on a combination of distinct portions of the same
reference. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). For example,
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Application 13/015,230
Appellants state "[n]either paragraph [0309] nor paragraph [0332] of Lebel
discloses stay-alive signals that are configured to reset a watchdog timer
.... " App. Br. 6-7. Appellants then discuss the alleged shortcomings of
each of paragraphs 309 and 332 individually, without proper consideration
of the combination. Appellants seem to generally recognize that "telemetry
messages" are taught in "paragraph [0309]" but then Appellants challenge
whether "paragraph [0332] ... disclose[s] a wireless telemetry session
between an external communication device and the implantable device .... "
Id. The Examiner relies on paragraph 309 for its disclosure of telemetry
messages3 to an implantable medical device concerning drug delivery,
including a data portion of a message with a bolus number similar to the
sequence number. Final Act. 2-3. See also Fig. 3. The Examiner finds that
it would have been obvious
to simply use the known element/technique of a watchdog timer
and substitute it as discussed in [332] of Lebel with the bolus
system as discussed in [309] in order to obtain the predictable
results of providing the device with another option for
communication failure detection between the implanted and
external/programming device.
Id. 3--4. We agree with this finding.
Appellants also contend Lebel fails to teach or suggest the
requirement "to reset a watchdog timer of the processor" and also to "detect
3 Indeed, sending programming signals via telemetry messages between an
implantable medical device and an external controller was well-known
according to the Examiner (Ans. 4) and Lebel. See, e.g., Lebel i-f 131
(referring to a patent application filed in 2001, "an implantable medical
device (e.g. infusion pump) and an external device that communicate with
one another via telemetry messages"), i-f 132 (similar telemetry
communications).
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Appeal2014-002018
Application 13/015,230
failure of a wireless telemetry session between a programming device and an
implantable medical device .... " App. Br. 6-7 (emphasis omitted), Reply
Br. 5. Appellants recognize "Lebel discloses a time-out period within which
a response from the monitor processor to an inter-processor message is sent
from the main processor of the implantable device," yet, Appellants contend
claim 1 is distinguishable because "the time-out period [of Lebel] relates to
communication between two processors of a single implantable device."
App. Br. 7 ("paragraph [0332] fails to disclose a wireless telemetry session
between an external communication device and the implantable device").
The Examiner responds to this contention by noting Appellants are
correct in that "inter-processor messages are designed for interprocessor
communication," however, the Examiner finds neither "the claims nor the
rejection are directed at the 'type' of message[] configuration[,] but rather a
simple 'watchdog timer."' Ans. 3. The Examiner finds that Lebel teaches
telemetry communications between internal and external devices (Lebel
i-f 309) as well as communication between processors (id. at i-f 332). Id. at 4.
The Examiner further finds it would have been a simple substitution to adopt
the described watchdog timer into the existing telemetry communication
network between internal and external devices. Id. The Examiner finds
Figure 5 and paragraph 127 of Lebel support this modification, because they
describe a processor used in both the implantable and external
communication device that may incorporate a watchdog module. Id. The
Examiner emphasizes this disclosure "highlights the well[-]known
incorporation of watchdog timers with processors that communicate data
between devices." Id. (also citing Lebel paragraph 276 for a discussion of
the function of watchdog units).
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Application 13/015,230
To the extent Appellants contend Lebel's watchdog module is distinct
because it is not described as specifically designed for detecting "failure of a
wireless telemetry session" (claim 1 ), we find this contention unpersuasive.
The Examiner has persuasively established it would have been a simple
modification to incorporate Lebel's watchdog timer (i-f 332) into the existing
wireless telemetry session also described in Lebel (i-f 309) for detecting the
failure of a wireless telemetry session. Indeed, Lebel' s main processor is
described as controlling implantable device telemetry operations, as well as
communicating with the monitor processor through inter-processor
messages, and sending an acknowledge message that may cause the
watchdog to be tripped. See, e.g., Lebel, i1i1215, 332, 393, 394. We agree
that this watchdog module could be integrated into the existing bolus type
communication structure as proposed by the Examiner and also be used to
detect the failure of a wireless telemetry session. Likewise, we agree that
once combined, as proposed by the Examiner, Lebel's disclosure teaches or
suggests the functions of the claimed watchdog unit such as "reset a
watchdog timer ... to detect failure of a wireless telemetry session between
a programming device and the implantable medical device during the
programming session," as required by claim 1. See id.
Appellants seem to acknowledge it would have been possible to make
the changes to Lebel, as proposed by the Examiner. See Reply Br. 4--5.
Appellants contend, however, it would not have been "a simple substitution"
to replace "the bolus system described at paragraph [0309] of Lebel with a
watchdog timer," and the combination lacks a rational underpinning. Id. at
5; see also App. Br. 8 (combination "lacks a rational underpinning" and "no
apparent reason to modify" the references). Appellants note the bolus
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Application 13/015,230
system has the capability to detect various medication delivery errors, yet,
the objective of the watchdog timer is simply determining communications
failure. Reply Br. 5. ("the bolus system allows the implanted and external
communication devices to detect a variety of errors other than failure of
communication therebetween"). Thus, according to Appellants, "the bolus
system may better avoid improper delivery of medication than a watchdog
timer." Id.
We do not view the Examiner's proposed combination as replacement
of one for the other. In fact, the Examiner finds the modification
(integrating the watchdog timer into the existing architecture of the bolus
system) would provide the device of Lebel "with another option for
communication failure detection between the implanted and
external/programming device." Final Act. 4. Thus, the bolus system could
function independently of the watchdog timer because the operation and
purpose of the watchdog timer is distinct from bolus error detection.
Further, even if the Examiner proposed to replace the existing bolus
number with the watchdog module message (using telemetry communication
between the implanted and external communication devices), the Examiner
has adequately shown that doing so has distinct advantages that would have
motivated a person of ordinary skill in the art to make the changes as
proposed. See Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.
8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.").
Specifically, the Examiner finds the proposed combination would "obtain
the predictable results of having a time based communication limit on
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Application 13/015,230
messages between the internal and external devices." Ans. 4. Likewise,
Appellants have not persuasively established that the proposed modification
would render the prior art invention being modified unsatisfactory for its
intended purpose. See In re Gordon, 733 F.2d 900 (Fed. Cir. 1984).
We therefore sustain the Examiner's rejection of claim 1, as well as
independent claims 6 and 10, and dependent claims 2-5, 7-9, 11, and 12,
which are not separately argued with specificity. See App. Br. 9, 10; Reply
Br. 6, 7.
DECISION
We AFFIRM the Examiner's rejection of claims 1-12.
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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