Ex Parte SnyderDownload PDFPatent Trial and Appeal BoardJul 9, 201812096756 (P.T.A.B. Jul. 9, 2018) Copy Citation 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). 2 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. 3 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. 4 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.). 5 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 6 Copy with citationCopy as parenthetical citation