Ex Parte Smith et al

Board of Patent Appeals and Interferences

Aug 22, 2012

11131583 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH M. SMITH and
RICHARD MILON DUJMOVIC, JR.
____________

Appeal 2010-002986
Application 11/131,583
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
BRADFORD E. KILE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002986
Application 11/131,583

2
STATEMENT OF THE CASE
Joseph M. Smith and Richard Milon Dujmovic, Jr. (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
25-27 and 29-44. Claim 1-24 and 28 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to “modular implantable devices that are
configured to deliver an antitachyarrhythmia therapy.” Spec. 1, ll. 6-7.
Claim 25, the sole independent claim, is representative of the claimed
invention and reads as follows:
25. A modular implantable device comprising:
an implantable first defibrillation circuit
module configured to deliver a first defibrillation
shock;
an implantable second defibrillation circuit
module, physically separate from the first
defibrillation circuit module, configured to deliver
a second defibrillation shock coordinated with the
first defibrillation shock; and
a controller circuit configured to direct
coordinated delivery of the first and second
defibrillation shocks; and
a first sensing circuit, physically separate
from the first defibrillation circuit module and the
second defibrillation circuit module, the first
sensing circuit including a sensor configured to
sense a physiologic parameter and a wireless
transmitter circuit to send a wireless
communication to the controller circuit, and
wherein the first sensing circuit is shaped and
configured to be implanted within at least one of
the heart, or the vasculature.

Appeal 2010-002986
Application 11/131,583

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cox US 6,141,588 Oct. 31, 2000
Hartley US 6,351,669 B1 Feb. 26, 2002
Sweeney US 6,400,982 B2 Jun. 4, 2002

The following rejections are before us for review:
The Examiner rejected claims 25-27, 29, 30, 34, 36, and 38-43 under
35 U.S.C. § 102(b) as anticipated by Cox.
The Examiner rejected claims 31-33, 35, and 44 under 35 U.S.C.
§ 103(a) as unpatentable over Cox and Sweeney.
The Examiner rejected claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Cox and Hartley.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejection based upon Cox
Appellants argue that Cox fails to teach first and second defibrillation
circuit modules that: (1) are configured to deliver first and respectively,
second coordinated defibrillation shocks and (2) are physically separate from
“a first sensing circuit,” as called for by independent claim 25.

Appeal 2010-002986
Application 11/131,583

4
Appellants’ First Argument
Pointing to the electronic circuits in Figures 15 and 16 of Cox,
Appellants argue that:
One of ordinary skill would readily recognize that
Cox's limited peak voltage and limited stored
pacing energy prevent Cox's circuitry from
providing a "defibrillation shock" as explicitly
recited or incorporated in these claims of the
present patent application.

Br. 17. See also, Br. 15-16.
Thus, according to Appellants, satellites 200 of Cox “are configured to
deliver pacing electrostimulation therapy to a heart - not defibrillation
shocks.” Br. 15. Appellants further opine that:
One of ordinary skill in the art would distinguish
low energy pacing electrostimulation (such as for
inducing a local heart contraction) from a much
higher energy "defibrillation shock" (such as for
interrupting a tachyarrhythmia).

Br. 16.
We are not persuaded by Appellants’ position because, like the
Examiner, we find that the pacer network 80 of Cox “is used to implement a
suitable therapy to terminate fibrillation.” Ans. 6 (citing to Cox, col. 6, ll.
13-43; col. 7, ll. 8-11; and fig. 1). Emphasis added. Specifically, Cox
teaches that:
Pacer network 80 is particularly well –suited for
detecting cardiac arrhythmias, such as, bradycardia
(slow heart rate), tachycardia (fast heart rate), and
fibrillation (chaotic rate), and then implementing a
suitable pacing therapy to terminate the
arrhythmia.
Appeal 2010-002986
Application 11/131,583

5
Cox, col. 6, ll. 39-43. Emphasis added.
Although we appreciate that Cox does not teach a specific energy
level for the electrical pulses provided by pacer network 80, we note that
independent claim 25 does not require the defibrillation shock to have a
specific energy level. It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Independent claim 25 merely requires that the claimed
defibrillation circuit module be capable of delivering a defibrillation shock.
Since pacer network 80 of Cox is capable of terminating fibrillation, we
agree with the Examiner that satellites 200 of Cox’s pacer network “are
capable of delivering first and second coordinated-defibrillation shocks.”
See Ans. 6.
Thus, for the foregoing reasons, we agree with the Examiner that
Cox’s satellites 200 constitute first and second defibrillation circuit modules
that are configured to deliver first and respectively, second coordinated
defibrillation shocks, as called for by independent claim 25. See Ans. 3.

Appellants’ Second Argument
Appellants note that because satellites 200 of Cox “combin[e] both
pacing and sensing capabilities,” the “sensing and pacing circuitry are
contained within each ‘satellite’.” Br. 18. Hence, according to Appellants,
Cox is in contrast with “a first sensing circuit physically separate from the
first defibrillation circuit module and the second defibrillation circuit
module,” as called for by independent claim 25. Id. See Br., Claims
Appendix. Emphasis added. Thus, Appellants argue that because satellites
200 of Cox include both sensing and pacing capabilities, satellites 200
Appeal 2010-002986
Application 11/131,583

6
cannot constitute a sensing module that is physically separate from a
defibrillation module.
In response, “the Examiner is interpreting the multiple sensing and
pacing satellites disclosed by Cox et al. as being the separate first and
second defibrillation circuits and separate sensing circuit.” Ans. 3-4. In
other words, the Examiner is taking the position that Cox teaches a first
defibrillation circuit module, i.e. a first satellite 200, a second defibrillation
circuit module, i.e. another, separate second satellite 200, and a physically
separate first sensing circuit, i.e., a third, separate satellite 200 that is
physically separate from the first and second satellites 200.
We are not persuaded by Appellants’ argument because it is not
commensurate with the scope of independent claim 25, which does not limit
the first and second defibrillation modules to components adapted to only
deliver coordinated defibrillation shocks and the first sensing circuit to a
component that only senses a physiological parameter and transmits a
wireless communication to the controller circuit. See Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term
of art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.). We must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
Appeal 2010-002986
Application 11/131,583

7
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) Thus,
because satellites 200 of Cox are physically separate and each satellite 200 is
adapted to: (1) deliver a defibrillation shock; (2) sense a physiological
parameter; and (3) transmit a wireless communication, we agree with the
Examiner that Cox teaches “a first sensing circuit . . . physically separate
from the first defibrillation circuit module and the second defibrillation
circuit module,” as called for by independent claim 25. See Ans. 3-4.
In conclusion, for the foregoing reasons, the rejection of independent
claim 25 under 35 U.S.C. § 102(b) as anticipated by Cox is sustained.
With respect to the rejection of claims 26, 27, 29, 30, 34, 36, and 38-
43, Appellants do not present any other substantive arguments. Br. 18-19.
Accordingly, we shall also sustain the rejection of claims 26, 27, 29, 30, 34,
36, and 38-43 as anticipated by Cox.

The obviousness rejection based upon Cox and Sweeney
Claim 31
Appellants first argue that “Cox’s modular system is not even directed
toward defibrillation at all” and “Sweeney’s heart sound sensor is physically
integrated with its defibrillation module.” Br. 20. We are not persuaded by
this argument because nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Second, Appellants argue that the Examiner has not provided an
adequate reasoning with rational underpinnings to combine the teachings of
Appeal 2010-002986
Application 11/131,583

8
Cox and Sweeney. Br. 21. According to Appellants, the Examiner only
arrives at the conclusion of obviousness due to impermissible hindsight. Br.
22.
The Examiner has provided a reason (using an acoustic sensor, a
respiration sensor, and/or a stroke volume sensor) with rational underpinning
(“providing predictable results,” i.e., “providing preventive therapy for
avoiding the predicted arrhythmia”). See Ans. 4 and 5; In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
The Examiner is merely including Sweeny’s acoustic sensor,
respiration sensor, and/or stroke volume sensor in the implantable device of
Cox, which would not have been uniquely challenging to a person of
ordinary skill in the art because it is no more than “the mere application of a
known technique to a piece of prior art ready for the improvement.” Id. at
417. An improvement that is nothing more than the predictable use of prior
art elements according to their established functions is likely to be obvious.
Id. Thus, Appellants have not persuasively argued that the Examiner’s
conclusion lacks rational underpinning.
In conclusion, for the foregoing reasons, the rejection of claim 31 over
the combined teachings of Cox and Sweeney is sustained.

Claims 32, 35, and 44
Appellants rely on the same arguments as presented above with
respect to the anticipation rejection of claim 25 over the teachings of Cox
Appeal 2010-002986
Application 11/131,583

9
and the obviousness rejection of claim 31 over the combined teachings of
Cox and Sweeney. Br. 21 and 22. Thus, for the reasons set forth supra, the
rejection of claims 32, 35, and 44 under 35 U.S.C. § 103(a) as unpatentable
over Cox and Sweeney is likewise sustained.

Claim 33
Appellants argue that the Examiner has not provided any evidence
that the combined teachings of Cox and Sweeney disclose a “diaphragm
stimulation circuit to deliver a diaphragmatic pacing pulse,” as called for by
claim 33. Br. 21-22. We agree with Appellants that the Examiner has not
made any findings with respect to the limitation of a “diaphragm stimulation
circuit to deliver a diaphragmatic pacing pulse,” as called for by claim 33.
Therefore, we cannot sustain the rejection of claim 33 over the combined
teachings of Cox and Sweeney.

The obviousness rejection based upon Cox and Hartley
With respect to the rejection of claim 37, Appellants rely on the same
arguments as presented above with respect to the anticipation rejection of
claim 25 over the teachings of Cox. Br. 22.
Accordingly, for the reasons set forth supra, we shall also sustain the
rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Cox and
Hartley.

SUMMARY
The decision of the Examiner is affirmed as to claims 25-27, 29-32,
and 34-44 and reversed as to claim 33.
Appeal 2010-002986
Application 11/131,583

10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Klh