Ex Parte Torgerson et al

Board of Patent Appeals and Interferences

May 14, 2012

11184717 (B.P.A.I. May. 14, 2012)

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.
11/184,717 07/19/2005 Nathan A. Torgerson 151-P-21386USU2 9858
54228 7590 05/14/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
DIETRICH, JOSEPH M
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
05/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NATHAN A. TORGERSON, CHRISTOPHER M. ARNETT,
STEVEN J. NELSON, and ALLEN D. ALMENDINGER
__________

Appeal 2011-001333
Application 11/184,717
Technology Center 3700
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device communication system. The Examiner rejected the claims as obvious
and provisionally under the ground of nonstatutory obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
The Claims
Claims 1-23 are on appeal. Claim 1 is representative and reads as
follows:
1. A medical device communication system,
comprising:
an external device being configured to
transcutaneously send an identification command to at
least one of a plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command
with an uplink response in one of a plurality of uplink
time slots;
said external device being configured to receive
said uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication with only a selected one of said plurality
of implanted medical devices based, at least in part, upon
a signal strength of said uplink response of at least one of
said plurality of implanted medical devices.

The issues

A. The Examiner provisionally rejected claims 1-23 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-16 of copending Application No. 11/184,550 and Marsan
1
(Ans. 4-
5).

1
Marsan et al., US 6,570,861 B1, issued May 27, 2003.
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B. The Examiner provisionally rejected claims 1-23 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-25 of copending Application No. 11/184,718 and Marsan (Ans. 5-
6).
C. The Examiner rejected claims 1, 2, 8, 9, 13, 14, 20, and 21 under 35
U.S.C. § 103(a) as obvious over Haubrich
2
and Marsan (Ans. 6-8).
D. The Examiner rejected claims 10 and 22 under 35 U.S.C. § 103(a) as
obvious over Haubrich and Marsan (Ans. 8).
E. The Examiner rejected claims 3-6 and 16-19 under 35 U.S.C. § 103(a)
as obvious over Haubrich, Marsan, and Wu
3
(Ans. 8-11).
F. The Examiner rejected claims 7, 11, 12, and 23 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Snell
4
(Ans. 11-13).
A. & B Double Patenting
The Examiner finds the claims of copending Applications 11/184,550
and 11/184,718 “are not patentably distinct from each other because claim 1
of Application 11/184,550 comprises every limitation of those in claim 1 of
the instant application, except selecting a device based, at least in part, upon
signal strength” (Ans. 4, 5). The Examiner finds that “Marsan teaches that it
is known to have a plurality of remote devices respond to a single device in a
plurality time slots and arbitrate among individual ones of the devices by
establishing a telemetric communication . . . based, at least in part, upon a
signal strength of said uplink response” (id. at 4-5). The Examiner finds it

2
Haubrich et al., US 6,482,154 B1, issued Nov. 19, 2002.
3
Wu, C., US 6,836,469 B1, issued Dec. 28, 2004.
4
Snell, J., US 2003/0220673 A1, published Nov. 27, 2003.
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obvious “to modify the selection based [up]on user selection as taught by
Application No. 11/184,550 with [a] selection based on signal strength as
taught by Marsan, since such a modification would provide the predictable
results of allowing the device with the strongest telemetric signal to be
accessed” (Ans. 5).
Appellants contend that “neither of Application Nos. 11/184,550 nor
11/184,718 contains any claims making a selection based on signal strength”
(App. Br. 12). Appellants contend that “Marsan et al „861 does not show,
disclose or suggest the subject matter of an external device arbitrating and
establishing communication with a selected implantable medical device on
the basis of signal strength as it is defined by the claims” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that the claims of copending applications
11/184,550 and 11/184,718 in combination with Marsan render claim 1
obvious?
Findings of Fact
1. Claim 1 of copending application 11/184,718 is reproduced
below:
1. A medical device communication system,
comprising:
a plurality of implantable medical devices; and
an external device being configured to
transcutaneously send an identification command to at
least one of said plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command
with an uplink response in one of a plurality of uplink
time slots;
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said external device being configured to receive
said uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication only to a selected one of said plurality of
implanted medical devices based, at least in part, upon an
order in time of which said plurality of implanted
medical devices respond with said uplink response.

2. Claim 4 copending application 11/184,718 is reproduced
below:
4. A medical device communication system as in claim 1
wherein said external device selects based, at least in part,
upon a signal strength of said uplink response of at least one
of said plurality of implanted medical devices.

3. Claim 1 copending application 11/184,550 is reproduced
below:
1. A medical device communication system, comprising:
a plurality of implantable medical devices;
an external device being configured to
transcutaneously send an identification command to at least
one of said plurality of implantable medical devices;
said plurality of implantable medical devices being
configured to respond to said identification command with
an uplink response in one of a plurality of uplink time slots;
said external device being configured to receive said
uplink response from each of said at least one of said
plurality of implanted medical devices;
said external device being configured to arbitrate
among individual ones of said plurality of implantable
medical devices by establishing transcutaneous
communication with only a selected one of said plurality of
implanted medical devices based, at least in part, upon a
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user selection of one of said plurality of implanted medical
devices.

4. Marsan teaches that the “communication system determines a
signal strength of a signal received from a user of the communication
resource and, based on the signal strength determination, assigns the user
one or more of the communication channels that are then available”
(Marsan, col. 2, ll. 27-31).
5. Marsan teaches that “the processor 204 assigns the time slot in
the highest signal strength set of the different sets of time slots (e.g., time
slot 433 would be assigned since it is in a higher signal strength set of time
slots than time slots 413 and 414)” (Marsan, col. 5, ll. 43-47).
Principles of Law
It is well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant‟s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
“Obviousness-type double patenting is a judicially created doctrine
intended to prevent improper timewise extension of the patent right by
prohibiting the issuance of claims in a second patent which are not
„patentably distinct‟ from the claims of a first patent.” In re Braat, 937 F.2d
589, 592 (Fed. Cir. 1991). “It is the claims, not the specification, that define
an invention…. And it is the claims that are compared when assessing
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double patenting.” Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 943
(Fed. Cir. 1992).
Analysis
Claim Interpretation
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, the limitation in claim 1 at issue is the requirement that
communication is “based, at least in part, upon a signal strength of said
uplink response” (Claim 1).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in light of the Specification. Therefore, we first turn to the Specification
to determine whether the phrase “based, at least in part, upon a signal
strength of said uplink response” has any specified definition.
The Specification teaches that “[o]ne of the plurality of implanted
medical devices to establish transcutaneous communication is selected
based, at least in part, upon a signal strength of the uplink response of at
least one of the plurality of implanted medical devices” (Spec. 2 ¶ 8). The
Specification is permissive that the device selection may be “based, at least
in part” on the “signal strength,” but may also be based on other criteria.
In light of Claim 1 and the Specification, the “based, at least in part,
upon a signal strength of said uplink response” requirement of claim 1 is
reasonably interpreted as simply requiring that some correlation exists
between the signal strength and the device with which communication is
desired. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring
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patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.”)
Provisional Double Patenting – copending application - 11/184,718
There is no dispute that claim 1 of copending application 11/184,718
teaches all of the limitations of the instant claim 1, differing only in
requiring that the criteria for selection is “based, at least in part, upon an
order in time,” rather than being based in part upon an order in time as in the
instant claim.
However, claim 4 of copending application 11/184,718, which
directly depends from claim 1 of copending application 11/184,718,
expressly teaches that the “external device selects based, at least in part,
upon a signal strength of said uplink response of at least one of said plurality
of implanted medical devices” (Claim 4 of copending application
11/184,718; FF 2).
This teaching of claim 4 of copending application 11/184,718
expressly suggests the use of the device based on “signal strength,” which is
reasonably interpreted as being based, at least in part, upon signal strength of
the uplink response.
In addition, Marsan teaches that the “communication system
determines a signal strength of a signal received from a user of the
communication resource and, based on the signal strength determination,
assigns the user one or more of the communication channels that are then
available” (Marsan, col. 2, ll. 27-31; FF 4). Marsan teaches that “the
processor 204 assigns the time slot in the highest signal strength set of the
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different sets of time slots (e.g., time slot 433 would be assigned since it is in
a higher signal strength set of time slots than time slots 413 and 414)”
(Marsan, col. 5, ll. 43-47; FF 5).
We therefore agree with the Examiner that it would have been
obvious over claims 1 and 4 of copending application 11/184,718 and
Marsan to base the selection of an implanted medical device for
communication, at least in part, upon signal strength since both claim 4 of
copending application 11/184,718 and Marsan teach the use of signal
strength to control the process by which devices are contacted (FF 2, 4, 5).
Provisional Double Patenting – copending application - 11/184,550
There is no dispute that claim 1 of copending application 11/184,550
teaches all of the limitations of the instant claim 1, differing only in
requiring that the criteria for selection is “based, at least in part, upon a user
selection” of the uplink, rather than being based in part upon an order in time
as in the instant claim (FF 3).
Marsan teaches that the “communication system determines a signal
strength of a signal received from a user of the communication resource and,
based on the signal strength determination, assigns the user one or more of
the communication channels that are then available” (Marsan, col. 2, ll. 27-
31; FF 4). Marsan teaches that “the processor 204 assigns the time slot in
the highest signal strength set of the different sets of time slots (e.g., time
slot 433 would be assigned since it is in a higher signal strength set of time
slots than time slots 413 and 414)” (Marsan, col. 5, ll. 43-47; FF 5).
We therefore agree with the Examiner that it would have been
obvious over claim 1 of copending application 11/184,550 and Marsan to
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base the selection of an implanted medical device for communication, at
least in part, upon signal strength since Marsan teaches the use of signal
strength to control the process by which devices are contacted (FF 3, 4, 5).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that the
claims of copending applications 11/184,550 and 11/184,718 in combination
with Marsan render claim 1 obvious.
C. & D. 35 U.S.C. § 103(a) over Haubrich and Marsan
The Examiner finds that
Haubrich discloses a system and method comprising: a
plurality of IMDs . . . an external device configured to
transcutaneously send an identification command and
receive a response . . . said plurality of IMDs configured to
respond to the command . . . in a plurality of channels . . .
said external device being configured to arbitrate among
individual ones of said plurality medical devices by
establishing transcutaneous communication with only a
selected one of said plurality

(Ans. 7). The Examiner finds that Haubrich “fails to explicitly say that the
channels are uplink time slots and that the arbitration is based on signal
strength” (id.).
The Examiner finds that Marsan teaches to “arbitrate among
individual ones of the devices by establishing a telemetric communication
with a selected one of the devices, based, at least in part, upon a signal
strength of said uplink response of at least one of said plurality of base
units” (id.). The Examiner finds it obvious to
modify the telemetry signal as taught by Haubrich with the
telemetric network using the time slots based on signal
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strength as taught by Marsan, since such a modification
would provide the predictable results of allowing the
plurality of IMDs to be sorted and chosen without
interference between the signals, and allow the most
prominent signal to be selected first.

(Ans. 7-8.)
Appellants contend that “Haubrich et al „154 does not show, disclose
or suggest that the external device arbitrates among the responding
implantable medical devices” (App. Br. 14). Appellants contend that “the
external device [of Haubrich] arbitrates, decides or determines nothing,
instead merely identifying a list of implantable medical devices which are
within communication range. A separate, manual event must be conducted
in order to identify the desired implantable medical device, which may then
be selected from the list” (id.).
Appellants contend that “Marsan et al „861 is only concerned with
facilitating communication, not with arbitrating among devices to establish
communication with one. Facilitating communication with any device and
arbitrating to decide on one device are fundamentally different” (id. at 15).
Appellants contend that the “Office Action provides no credible basis
for why a designer of an implantable medical device weighing a few ounces
and consuming a fraction of an ampere of current would adapt a design for a
cellular tower to enable the implantable device to communicate” (id. at 18).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Haubrich and Marsan render obvious
a device which is “configured to arbitrate” between medical devices based in
part “upon a signal strength of said uplink response” as required by claim 1?
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Findings of Fact
6. The Specification teaches that:
the user may look at the strength of the uplink signal from
each of the plurality of implanted medical devices. In this
exemplary embodiment, time-slot arbitration would be used
with many different time slots to minimize and, hopefully,
prevent uplink response collisions. The user may receive
uplink response from all of the implanted medical devices
using the arbitration techniques as described above in the
first exemplary technique and then look to see which
implanted medical device replied with the strongest uplink
signal. The user may then select the implanted device having
the strongest uplink response signal, which is usually the
implanted medical device that is closest to the external
device issuing the identification command.

(Spec. 12 ¶ 52.)
7. The Specification teaches that:
external device 15 must still determine which of the medical
devices 22 with which to establish communication. This can
be done by building a list of medical devices 22 responding
to the identification request and allowing a user of the
external device 15, e.g., a physician or the patient, to select
the appropriate medical device 22.

(Spec. 8 ¶ 41.)
8. The Specification teaches that in a “first exemplary technique
implanted medical devices respond to an identification command (sent by an
external unit) with various random delays to prevent the uplink response
from multiple implanted medical devices from overlapping . . . . The user
may select from the list of devices” (Spec. 8-9 ¶ 43).

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9. The Specification teaches that a
second exemplary technique uses a pseudo-random system
that is based on downlink telemetry strength. . . . The user
can then select the implanted medical device that first
responds to the identification command. . . . The arbitration
is faster than the first exemplary technique, since it doesn't
need to find and identify every implanted medical device
within range, but only needs to find the closest implanted
medical device, which responds in one of the earliest
timeslots.

(Spec. 9-10 ¶ 45.)
10. The Specification teaches that in a “third exemplary technique,
the user may look at the strength of the uplink signal from each of the
plurality of implanted medical devices. . . . The user may then select the
implanted device having the strongest uplink response signal” (Spec. 12 ¶
52).
11. Haubrich teaches
a telemetry system for communications between an
implanted medical device and an associated external medical
device located at a distance from the implanted device, the
present invention is intended to assure that there is no
ambiguity as to which implanted device is communicating
with the external device or as to which patient has the device
implanted.

(Haubrich, col. 1, ll. 52-58.)
12. Haubrich teaches that the “external device preferably issues a
request for communication, which may be received by any of a population of
implantable devices that employ the inventive telemetry system” (Haubrich,
col. 1, ll. 63-66).
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13. Haubrich teaches that “[t]hose devices within range of the
external device may in response send a telemetry transmission indicating
that the request for communication has been received” (Haubrich, col. 1, l.
66 to col. 2, l. 1).
14. Haubrich teaches that a “separate mechanism is provided for
activating only the implantable device within a specific patient to send a
telemetry transmission including an event signal indicative that the
implanted device has been so activated” (Haubrich, col. 2, ll. 3-7).
15. Haubrich teaches that “one or a number of communication
channels may be available” (Haubrich, col. 3, ll. 19-20).
16. Haubrich teaches that “even if a telemetry link is established
between the external device and an implanted device, there may still be
uncertainty as to which patient‟s device is communicating with the external
device” (Haubrich, col. 1, ll. 45-50).
17. Marsan teaches that “a need exists for a method and apparatus
for assigning use of a radio frequency communication resource in a manner
such that ACCP [adjacent channel coupled power interference] is minimized
while all communication channels are utilized” (Marsan, col. 1, ll. 59-62).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
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“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Claim Interpretation
We again begin with claim interpretation, and in particular, the phrase
“external device being configured to arbitrate” in Claim 1. As discussed
above, claim terms are given their broadest reasonable interpretation as they
would be understood by persons of ordinary skill in the art in the light of the
Specification. Therefore, we first turn to the Specification to determine
whether the phrase “external device being configured to arbitrate” has any
specified definition.
The Specification provides no specific definition for an “external
device being configured to arbitrate.” The phrase “being configured to
arbitrate” does not exclude the situation where the device presents a list of
implanted devices to a user for selection, since such a device is “configured
to arbitrate” with the assistance of the user.
The Specification provides three exemplary techniques, but in each
technique, the “external device being configured to arbitrate” functions to
obtain information after which the “user may select from the list of devices”
(Spec. 8-9 ¶ 43; FF 8); “[t]he user can then select the implanted medical
device that first responds to the identification command” (Spec. 9-10 ¶ 45;
FF 9); and “[t]he user may then select the implanted device having the
strongest uplink response signal” (Spec. 12 ¶ 52; FF 10).
Thus, in each case, the device obtains data which is subsequently used
by a user to perform the actual selection of the implanted medical device (FF
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8-10). Therefore, the phrase “external device being configured to arbitrate”
is most reasonably interpreted as a device which captures information from
implanted medical devices and presents it to a user who selects the desired
medical device using the external medical device, resulting in a selected
implanted medical device for connection.
Obviousness
Haubrich teaches
a telemetry system for communications between an
implanted medical device and an associated external medical
device located at a distance from the implanted device, the
present invention is intended to assure that there is no
ambiguity as to which implanted device is communicating
with the external device or as to which patient has the device
implanted.

(Haubrich, col. 1, ll. 52-58; FF 11.) Haubrich teaches that the “external
device preferably issues a request for communication, which may be
received by any of a population of implantable devices that employ the
inventive telemetry system” (Haubrich, col. 1, ll. 63-66; FF 12). Haubrich
teaches that a “separate mechanism is provided for activating only the
implantable device within a specific patient to send a telemetry transmission
including an event signal indicative that the implanted device has been so
activated” (Haubrich, col. 2, ll. 3-7; FF 14). The Examiner acknowledges
that Haubrich does not teach arbitration using signal strength (Ans. 7).
Marsan teaches that the “communication system determines a signal
strength of a signal received from a user of the communication resource and,
based on the signal strength determination, assigns the user one or more of
the communication channels that are then available” (Marsan, col. 2, ll. 27-
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31; FF 4). Marsan teaches a radio communication system where a “processor
204 assigns the time slot in the highest signal strength set of the different
sets of time slots (e.g., time slot 433 would be assigned since it is in a higher
signal strength set of time slots than time slots 413 and 414)” (Marsan, col.
5, ll. 43-47; FF 5).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found that
Haubrich and Marsan render obvious a medical communication system with
an external device which communicates to and receives responses from a
plurality of implanted medical devices (FF 11-15) where the external device
establishes communication based in part upon the signal strength of the
implanted medical device response (FF 4-5). Such a combination is merely
a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Appellants contend that “Haubrich et al „154 does not show, disclose
or suggest that the external device arbitrates among the responding
implantable medical devices” (App. Br. 14). Appellants contend that “the
external device [of Haubrich] arbitrates, decides or determines nothing,
instead merely identifying a list of implantable medical devices which are
within communication range. A separate, manual event must be conducted
in order to identify the desired implantable medical device, which may then
be selected from the list” (id.).
We are not persuaded. Appellants wish to interpret “arbitrate” so that
the external device selects the implantable medical device with which to
communicate without any input from the user. However, this interpretation
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is not consistent with the Specification, as we discussed above in our claim
interpretation, which not only permits interaction of a user for the selection,
but each and every example requires user participation (FF 8-10). In
addition, Haubrich teaches that the “operator may then determine whether
the received event signal correlates in time to the response-provoking event.
If so, the operator can conclude that the device that transmitted the event
signal is the device with which communication is desired, and may initiate a
telemetry session with that implanted, device” (Haubrich, col. 2, ll. 20-25;
FF 6). The teaching that the selection is based upon whether a signal
“correlates in time” is reasonably interpreted as arbitrating, by use of the
external device which of the implanted devices will receive communication
based in part upon the order in time with which the devices contact the
external device (FF 11-15).
Appellants contend that “Marsan et al „861 is only concerned with
facilitating communication, not with arbitrating among devices to establish
communication with one. Facilitating communication with any device and
arbitrating to decide on one device are fundamentally different” (App. Br.
15).
While we agree that Marsan is not utilizing signal strength to establish
whether or not to communicate with a device, Marsan clearly teaches the use
of signal strength to assign communication with devices (FF 4-5). More
importantly, Marsan teaches that the processor itself performs the selection
without user input (FF 5), so that even if the claim was interpreted to require
the device to “arbitrate” without any user or other input, Marsan teaches the
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use of processors to perform selection of communication channels based
upon input criteria such as signal strength (FF 4-5).
Appellants contend that the “Office Action provides no credible basis
for why a designer of an implantable medical device weighing a few ounces
and consuming a fraction of an ampere of current would adapt a design for a
cellular tower to enable the implantable device to communicate” (App. Br.
18).
We are not persuaded. The test for non-analogous art is first whether
the art is within the field of the inventor‟s endeavor and, if not, whether it is
“reasonably pertinent to the particular problem with which the inventor was
involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field” of
endeavor, it logically would have commended itself to an inventor's
attention in considering his problem “because of the matter with which it
deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Haubrich teaches that the “external device preferably issues a request
for communication, which may be received by any of a population of
implantable devices that employ the inventive telemetry system” (Haubrich,
col. 1, ll. 63-66; FF 12). Haubrich is concerned with medical telemetry, in
particular concerned that “even if a telemetry link is established between the
external device and an implanted device, there may still be uncertainty as to
which patient‟s device is communicating with the external device”
(Haubrich, col. 1, ll. 45-50; FF 16).
Marsan teaches that “a need exists for a method and apparatus for
assigning use of a radio frequency communication resource in a manner such
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that ACCP [adjacent channel coupled power interference] is minimized
while all communication channels are utilized” (Marsan, col. 1, ll. 59-62; FF
17). Haubrich shares Marsan‟s interest in minimizing interference between
radio frequency devices which communicate with a base device since
Haubrich‟s medical telemetry system involves radio frequency devices
which communicate with an external base device (FF 12-16). Consequently,
Marsan‟s teachings on minimizing radio frequency interference on radio
frequency devices is reasonably found to be pertinent to Haubrich‟s radio
frequency devices.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Haubrich and Marsan render obvious a device which is “configured to
arbitrate” between medical devices based in part “upon a signal strength of
said uplink response” as required by claim 1.
E. 35 U.S.C. § 103(a) over Haubrich, Marsan, and Wu
The Examiner finds that “Wu teaches that it is known to instruct
medical devices to cease responding to the identification command if at least
two of the medical devices respond with an uplink signal in one of the
uplink time slots and to repeat sending the identification command and to
repeat receiving the uplink signal” (Ans. 9). The Examiner finds it obvious
to “modify the invention as taught by Haubrich in view of Marsan with the
command as taught by Wu, since such a modification would provide the
predictable results of allowing further communications with base sites
(implantable medical devices) even when interference occurs between two
or more of the devices” (id.).
Appeal 2011-001333
Application 11/184,717

21
The Examiner provides sound fact-based reasoning for combining Wu
with Haubrich and Marsan. We adopt the fact finding and analysis of the
Examiner as our own. Appellants argue the underlying obviousness
rejection, but Appellants do not identify any material defect in the
Examiner‟s reasoning for combining Haubrich and Marsan with Wu. Since
Appellants only argue the underlying rejection which we affirmed above, we
affirm this rejection for the reasons stated by the Examiner.
F. 35 U.S.C. § 103(a) over Haubrich, Marsan, and Snell
The Examiner finds that “Snell teaches that it is known that the
external device is configured to select based upon, at least in part, upon
which of said plurality of implanted medical devices are first to respond with
said uplink response” (Ans. 11). The Examiner finds it obvious to “modify
the system and method as taught by Haubrich in view of Marsan with the
command as taught by Snell, since such a modification would provide the
Predictable results [sic] of optimizing response time to the first signal” (id. at
11-12).
The Examiner provides sound fact-based reasoning for combining
Snell with Haubrich and Marsan. We adopt the fact finding and analysis of
the Examiner as our own. Appellants argue the underlying obviousness
rejection, but Appellants do not identify any material defect in the
Examiner‟s reasoning for combining Haubrich and Marsan with Snell. Since
Appellants only argue the underlying rejection which we affirmed above, we
affirm this rejection for the reasons stated by the Examiner.

Appeal 2011-001333
Application 11/184,717

22
SUMMARY
In summary, we affirm the provisional rejection of claims 1-23 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-16 of copending Application No. 11/184,550 and
Marsan.
We affirm the provisional rejection of claims 1-23 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-25 of copending Application No. 11/184,718 and Marsan.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Haubrich and Marsan. Pursuant to 37 C.F.R. § 41.37(c)(1), we
also affirm the rejection of claims 2, 8, 9, 13, 14, 20, and 21 as these claims
were not argued separately.
We affirm the rejection of claims 10 and 22 under 35 U.S.C. § 103(a)
as obvious over Haubrich and Marsan.
We affirm the rejection of claims 3-6 and 16-19 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Wu.
We affirm the rejection of claims 7, 11, 12, and 23 under 35 U.S.C. §
103(a) as obvious over Haubrich, Marsan, and Snell.

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

AFFIRMED

cdc