Ex Parte Snyder

Patent Trial and Appeal Board

Jul 9, 2018

12096756 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/096,756 06/09/2008 David Snyder
28159 7590 07/11/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2005P03027WOUS 4437
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/11/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SNYDER
Appeal2017-007745
Application 12/096,756
Technology Center 3700
Before JOHN C. KERINS, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Snyder (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1 and 3---6. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-007745
Application 12/096,756
CLAIMED SUBJECT MATTER
Sole independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An automatic external defibrillator comprising:
a pair of electrode pads;
an ECG processor coupled to the electrode pads and
operable to analyze ECG signals to determine whether a shock is
advised;
a high voltage circuit coupled to the electrode pads for the
delivery of a biphasic defibrillation shock when a shock is
advised;
a treatment protocol store which stores one or more
treatment protocols including a single shock protocol by which
the AED is controlled to deliver a single biphasic defibrillation
shock that is always immediately followed by a CPR period
during which no defibrillation shock can be delivered; and
a controller coupled to the treatment protocol store which
operates to execute the single shock protocol, wherein the single
shock protocol is the default protocol for the AED.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Daynes
Powers
US 2003/0088284 Al May 8, 2003
US 2008/0215103 Al Sept. 4, 2008
REJECTIONS
Claims 1 and 3-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C.
112 (pre- AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1 and 3-6 are rejected under pre-AIA 35 U.S.C. I03(a) as
being unpatentable over Powers (US Publication 2008/0215103) in view of
Daynes et al (US Publication 2003/0088284).
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Appeal2017-007745
Application 12/096,756
DISCUSSION
Rejection I: Failure of Claims 1 and 3-6 to
Comply with the Written Description Requirement1
The Examiner determines that claim 1 does not comply with the
written description requirement because the Specification as originally filed
does not provide support for "a CPR period during which no defibrillation
shock can be delivered" as set forth in that claim. See Final Act. 6. In
support of this determination, the Examiner notes that "the basis in the
original disclosure is not tied to the current invention, but used in describing
background information on recent studies of how to make resuscitation more
effective." Id. at 7. The Examiner further notes that "the application does
not claim the provisional application and the disclosure does not incorporate
the reference." Id. Based on these observations, the Examiner determines
that "one skilled in the art would not recognize that this procedure would be
used in the description of the invention." Id.
Appellant reminds us of the test for compliance with the written
description requirement, stating that "the fundamental factual inquiry is
whether the specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, Appellant was in possession of the
1 In our prior Decision on Appeal dated September 24, 2015, we reversed the
Examiner's rejection of claims 1 and 3---6 under 35 U.S.C. § 112, first
paragraph for failure to comply with the written description requirement.
We note that the Examiner reopened prosecution of this rejection without
obtaining written authority of the Director as required by 37 C.F.R. § 1.198.
See Non-Final Act. 2--4 (April 12, 2016). Appellant, however, did not file a
Petition requesting Supervisory Review of the Examiner's action within the
time period set forth in 37 C.F .R. § 1.181 (i.e. two-months from the date of
the action or notice from which relief is requested). Accordingly, Appellant
has waived his right to have this action reviewed.
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Appeal2017-007745
Application 12/096,756
invention as now claimed." Appeal Br. 6 (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Appellant argues that,
in this case, the Specification provides the required support "at page 2 lines
15-17, and which points to a co-assigned reference that explicitly describes
an example of an uninterruptible CPR period." Id. Appellant further argues
that "[t]he Specification clearly ties the CPR period limitations of the
amended Claim 1 invention to the background CPR period ... [by]
repeatedly and explicitly describ[ing] that analysis [as] occur[ing] outside of
the CPR period. Id. at 7. Appellant provides numerous citations in support
of this position. See id. Based on this evidence, Appellant contends that
"[ o ]ne of ordinary skill in the art would recognize that the inventor
possessed the knowledge of such a CPR period at the time of filing, and also
that the inventor intended that such a CPR period be used in the amended
Claim 1 invention." Id.
The entire Specification, including the description of the prior art,
must be considered when determining whether or not the Specification
provides support for the claimed invention. In this case, the Specification
clearly shows that Appellant had knowledge of (i.e. possession of) "[r]escue
protocols which provide for an uninterruptible CPR period." Spec. 2: 15-17.
Furthermore, the Specification contemplates use of such protocols with the
claimed defibrillator. See, .e.g., id. at 3:5-7, 5:5-12, 10:13-15. Thus,
Appellant is correct that the Specification provides sufficient support for the
invention as claimed.
Accordingly, we do not sustain the Examiner's decision rejecting
claim 1, and claims 3---6, which depend therefrom, as failing to comply with
the written description requirement.
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Appeal2017-007745
Application 12/096,756
Rejection II: Obviousness of Claims 1 and 3-6
Based on Powers and Daynes
The Examiner finds, inter alia, that Powers discloses "a treatment
protocol store which stores one or more treatment protocols including a
single shock protocol by which the AED is controlled to deliver a single
biphasic defibrillation shock that is always immediately followed by a CPR
period during which no defibrillation shock can be delivered." Final Act. 8
( citations omitted). The Examiner determines that Powers fails to disclose
"delivering a biphasic shock protocol as the default protocol." Id. The
Examiner further finds that Daynes "teaches that it is known to use a single
biphasic shock protocol as the default protocol for the AED." Id. at 9.
Appellant contends that "[ n ]either Powers et al. nor Daynes et al.
disclose or fairly suggest the use of a single shock protocol by which the
AED is controlled to deliver a single biphasic defibrillation shock that is
always followed by a CPR period." Appeal Br. 9. Appellant is correct. As
noted by Appellant, Powers "consistently refer[ s] to shock sequences ...
This of course is different than a single shock protocol in which just a single
shock is delivered and then a CPR period always follows." Id. We further
note that the Examiner does not identify, nor do we discern, where Powers
discloses that the shock is always followed by a CPR period. Although,
Powers describes instances where this might be the case (see, e.g. Powers ,r,r
4--5), Powers does not disclose or suggest a protocol where "a single shock
protocol by which the AED is controlled to deliver a single biphasic
defibrillation shock that is always immediately followed by a CPR period
during which no defibrillation shock can be delivered" as required by claim
1. Appeal Br. 12 (Claims App.).
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Appeal2017-007745
Application 12/096,756
Daynes does not cure this deficiency in Powers. As noted by
Appellant, Daynes teaches "a defibrillating pulse, i.e. dosage, which is
followed by either pulse or a period of CPR, depending on whether the first
dosage was effective." Appeal Br. 10. Thus, we agree with Appellant that
"[t ]his condition cannot fulfill the Claim 1 limitation of a defibrillation
shock that is always and immediately followed by a CPR period during
which no defibrillation shock is delivered." Id.
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1, and claims 3-6, which depend therefrom, as unpatentable over the
combined teachings of Powers and Daynes.
DECISION
The Examiner's rejections of claims 1 and 3---6 are REVERSED.
REVERSED
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