Ex Parte Stubbs et al

Patent Trial and Appeal Board

Oct 19, 2017

12969014 (P.T.A.B. Oct. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/969,014 12/15/2010 Scott R. Stubbs 115.0153USU1 (09-106) 3433
62058 7590 10/23/2017
PAULY, DEVRIES SMITH & DEFFNER, L.L.C.
Suite 900
121 South 8th Street
MINNEAPOLIS, MN 55402-2481
EXAMINER
KYLE, TAMARA TESLOVICH
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
docketing@pdsdlaw.com
kds@pdsdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT R. STUBBS and HITEN J. DOSHI
Appeal 2017-002685
Application 12/969,0141
Technology Center 2400
Before LARRY J. HUME, CARL L. SILVERMAN, and
MELISSA A. HAAPALA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—11 and 13—20, which are all pending claims in the
application. Appellants have canceled claim 12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Cardiac Pacemakers,
Inc. App. Br. 3.
Appeal 2017-002685
Application 12/969,014
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to medical devices and, more particularly, to medical systems and
methods for controlling authorization of restricted functionality, amongst
other things." Spec. 1,11. 9-11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A medical system comprising:
an external medical device programmer comprising
control circuitry and a wireless communications module for
sending instructions selected from a set of instructions
wirelessly to a specific implanted medical device, the set of
instructions comprising restricted and nonrestricted
instructions;
a remote key authority comprising a processor;
the external medical device programmer configured to
receive input from a system user regarding which instructions
from the set of instructions are to be delivered to the specific
implanted medical device;
the external medical device programmer configured to
determine if the user input directs delivery of restricted
instructions to the specific implanted medical device and to
initiate a transfer of verifying data to a remote key authority
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 24, 2016); Reply Brief ("Reply Br.," filed Dec. 6, 2016); Examiner's
Answer ("Ans.," mailed Oct. 6, 2016); Final Office Action ("Final Act.,"
mailed Oct. 13, 2015); and the original Specification ("Spec.," filed
Dec. 15,2010).
2
Appeal 2017-002685
Application 12/969,014
requesting permission if the user input directs delivery of
restricted instructions to the specific implanted medical device,
the verifying data including information regarding the specific
implanted medical device;
the remote key authority configured to evaluate the
request for permission received from the external medical
device authority and either grant or deny the request to
implement the restricted instructions; and
the external medical device programmer configured to
receive a digital key from the remote key authority ifpermission
is granted, the digital key effective to allow the external
programmer to send restricted instructions to the specific
implanted device, wherein the digital key is effective for a
limited period of time.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Quiles US 2006/0030904 A1 Feb. 9, 2006
Gerber et al. ("Gerber") US 2006/0190051 A1 Aug. 24, 2006
Rejection on AppeaP
Claims 1—11 and 13—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Quiles and Gerber. Final Act. 5;
see also Ans. 2.3 4
3 We note Appellants also respond to an anticipation rejection in their Brief.
App. Br. 11—15. However, the anticipation rejection was previously
withdrawn by the Examiner and is not on appeal. See Ans. 2.
4 In the event of further prosecution, we invite the Examiner's attention to
determine whether distinction between the recitation of "a remote key
authority comprising a processor," and "the external medical device
3
Appeal 2017-002685
Application 12/969,014
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 16—21), we decide the
appeal of the obviousness rejection of claims 1—11 and 13—20 on the basis of
representative claim l.* * * * 5
ISSUE
Appellants argue (App. Br. 16—21; Reply Br. 2—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Quiles and Gerber is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] medical system" that includes, inter alia, the limitations of
"an external medical device programmer" and "a remote key authority,"
wherein "the remote key authority [is] configured to evaluate the request for
permission received from the external medical device authority and either
grant or deny the request to implement the restricted instructions" and "the
external medical device programmer [is] configured to receive a digital key
programmer configured ... to initiate a transfer ... to a remote key
authority requesting permission ..." in claim 1 (emphasis added) is required.
It appears the second occurrence of the highlighted phrase should recite "the
remote key authority." If such is not the case, review for definiteness under
35 U.S.C. § 112(b) may be warranted.
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4
Appeal 2017-002685
Application 12/969,014
from the remote key authority if permission is granted," as recited in
claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—11
and 13—20 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Appellants contend the Examiner erred because "Quiles Fails to Teach
or Suggest a 'Remote Key Authority' and the Selective Use of the Remote
Key Authority ... as required by claims 1,11, and 17." App. Br. 16
(emphasis omitted). Additionally,
Appellant respectfully asserts that the Examiner is
incorrect in equating the server disclosed in Quiles to the
remote key authority that is disclosed and claimed in the
present invention. Quiles provides no further information on
what is meant when it says that "the credentials are enforced".
Indeed, the word "enforce" does not appear again in the
disclosure of Quiles. Quiles provides no indication of what the
server is actually doing to "enforce" credentials. For this reason,
and the reasons noted above in the discussion of the rejection
under 35 U.S.C. § 102, Appellant respectfully submits that
5
Appeal 2017-002685
Application 12/969,014
Quiles fails to teach or suggest a "remote key authority" as
required by claims 1, 11, and 17.
App. Br. 16—17.
First, the Examiner responds by noting Appellants' description for the
claimed "remote key authority"
amounts to little more than a specialized processer configured
to evaluate a request for permission and grant or deny the
request to implement restricted instructions. Despite Appellant's
attempts to distinguish his invention from the prior art based on
the alleged specialized nature and functionality of his remote
key authority, the claims as filed fail to support more than a
mere recitation of a processer configured to evaluate requests
for permission, and to provide a digital key to an external
medical device programmer if the request is granted (see claim
1 for example). At no point does Appellant claim how the
decision is to be made by this remote key authority or how the
keys are to be generated - or even if the remote key authority is
the one responsible for their generation. The Examiner requests
that the Board not assign to Appellant's remote key authority
specificity that Appellant himself has failed to claim.
Ans. 3.
Under the broadest reasonable interpretation standard, we agree with
Examiner's findings in this regard.6
6 "In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
6
Appeal 2017-002685
Application 12/969,014
We also agree with the Examiner's detailed findings that the recited
"remote key authority" and its claimed functionality reads on Quiles'
disclosure of credential enforcement and access authorization for
implantable medical devices. Ans. 3—7 (citing Quiles 144 and related table;
1 54, and H 85—87). Appellants’ cursory arguments, which essentially
amount to no more than reciting the disputed limitation and generally
alleging the cited prior art is deficient, are insufficient substantive argument
to persuade us of error. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Appellants also argue, "[t]he mere fact that Gerber recites that 'it will
be desirable to obtain clinician approval prior to downloading or inputting
stimulation parameter adjustments into neurostimulator 12' is simply not
adequate to meet the limitations [i.e., "the remote key authority configured
to evaluate the request for permission received from the external medical
device authority and either grant or deny the request to implement the
restricted instructions"] of the present claims." App. Br. 18 (citing Gerber
129).
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted). We note Appellants have not cited to a
definition of "remote key authority" in the Specification that would preclude
the Examiner's broader reading.
7
Appeal 2017-002685
Application 12/969,014
In response to Appellants' arguments against the teachings of Gerber
(App. Br. 18), we disagree.1 * * * * * 7 We disagree because, under the broadest
reasonable interpretation standard (see n.6), we find Gerber's disclosure of a
Clinician Terminal and its disclosed functionality (see Gerber Fig. 1 and
126; see also Ans. 8) teaches or at least suggests "either granting] or
denying] the request to implement the restricted instructions," as recited in
claim 1.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2—11 and 13—20 which fall therewith. See
Claim Grouping, supra.
1 With respect to the teachings and suggestions of Gerber, the Examiner
finds:
Gerber was brought in by the Examiner for its disclosure of
implantable medical devices which include a set of instructions
comprising both restricted and non-restricted instructions (par
29), a remote authority configured to evaluate requests for
permission received from the external device programmer (see
Clinician Terminal in figure 1 and paragraph 26) whereby the
external medical device programmer is configured to receive
input from a system user regarding which instructions from the
set of instructions are to be delivered to the specific implanted
medical device (par 25).
Ans. 8.
8
Appeal 2017-002685
Application 12/969,014
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1—11 and 13—20 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—11 and 13—20.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
9