Kidmose, Preben et al.

Patent Trials and Appeals Board

Dec 4, 2019

13335896 - (D) (P.T.A.B. Dec. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/335,896 12/22/2011 Preben Kidmose Q128115 6009
23373 7590 12/04/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
BERHANU, ETSUB D
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
12/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PREBEN KIDMOSE and SOREN ERIK WESTERMANN

Appeal 2019-001666
Application 13/335,896
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–7, 9–20, and 26–32. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(a) and identifies
assignee Widex A/S as the sole real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates to a portable [electro-
encephalogram (“EEG”)] monitoring apparatus adapted to be carried
continuously by a person” and “furthermore . . . to a method of presenting
messages” to the person. Spec. 1:10–14.
The Claims
Claims 1–7, 9–20, and 26–32 are rejected. Final Act. 1.2 Claims 1,
10, and 29 are independent. Claim 1 is illustrative and reproduced below.
1. A portable EEG monitoring apparatus, said
apparatus comprising:
an EEG pick-up component configured to measure at
least one EEG signal from a person carrying the apparatus,
a signal processor configured to analyze said at least one
EEG signal and to identify or predict predetermined biological
incidents in said person based on said analysis,
a decision component configured to decide when
information is to be presented to said person,
a message selector configured to select a voice message
providing said person with information, and
an acoustic transducer for presenting the selected voice
message to the person, where
said apparatus is adapted to present the voice message in
the ear of the person,
said apparatus further comprising an acknowledgement
component whereby the person carrying the apparatus can
acknowledge the presented spoken voice message, the spoken

2 The only other pending claim, claim 22, was also rejected in the Final
Action. See Final Act. 1, 6. However, the Examiner ultimately withdrew
that rejection. See Ans. 2 (“The rejection of claim 22 under pre-AIA 35
U.S.C. 103(a) has been withdrawn.”).
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voice message being repeated and the volume thereof increased
with each repetition until it is acknowledged.
Appeal Br. 12.
The Examiner’s Rejections
The rejections before us, all of which are pursuant to pre-AIA 35
U.S.C. § 103(a), are:
1. claims 1–4, 9–13, 16–18, 28, 29, 31, and 32 over Fischell3 and
Randlov4 (Final Act. 2);
2. claims 5 and 14 over Fischell, Randlov, and Heintzman5 (id. at
4);
3. claims 6 and 15 over Fischell, Randlov, and Shuttleworth6 (id.
at 5);
4. claim 7 over Fischell, Randlov, and Hood7 (id.);
5. claims 19 and 20 over Fischell, Randlov, Beck-Nielsen8, and
Dilorenzo9 (id. at 8);
6. claims 26 and 27 over Fischell, Randlov, and Luria10 or
Bowers11 (id. at 9); and
7. claim 30 over Fischell, Randlov, and Chittum12 (id.).

3 US 6,354,299 B1, issued Mar. 12, 2002 (“Fischell”).
4 US 2006/0281980 A1, published Dec. 14, 2006 (“Randlov”).
5 US 2005/0129252 A1, published June 16, 2005 (“Heintzman”).
6 US 2008/0069365 A1, published Mar. 20, 2008 (“Shuttleworth”).
7 US 2003/0050536 A1, published Mar. 13, 2003 (“Hood”).
8 US 2009/0062678 A1, published Mar. 5, 2009 (“Beck-Nielsen”).
9 US 2007/0287931 Al, published Dec. 13, 2007 (“Dilorenzo”).
10 US 2005/0085799 Al, published Apr. 21, 2005 (“Luria”).
11 US 2011/0130665 Al, published June 2, 2011 (“Bowers”).
12 US 5,577,510, issued Nov. 26, 1996 (“Chittum”).
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DISCUSSION
Rejection 1
Claims 1–4, 10–13, 16, 17, and 28
Appellant argues claims 1–4, 10–13, 16, 17, and 28 together. See
Appeal Br. 7–10. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner found that Fischell discloses all of the subject matter of
claim 1 “except for the spoken voice message being repeated and the volume
thereof being increased with each repetition until it is acknowledged.” Final
Act. 4. The Examiner found that Randlov “teaches increasing the volume of
an alarm until an acknowledgement of the alarm is received (page 8, section
[0120]).” Id. The Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the apparatus and method of
Fischell et al.'299 to include means for repeating the spoken
voice message with increasing volume until the voice message is
acknowledged by the person, as taught by Randlov et al.'980,
since repeatedly increasing the volume of the spoken voice
message would ensure that the spoken voice message is heard by
the person. Furthermore, it is officially noted that it is well
known in the art to raise the volume of a message presented to a
user until the user is able to hear the message. Therefore,
repeating the presented spoken voice message with increasing
volume until the person acknowledges the message would be an
obvious modification to make to the device and method of
Fischell et al.'299.
Id.
Appellant argues that claim 1 “requires multiple repetitions” of the
alarm “with increased volume of each repetition until acknowledged.”
Appeal Br. 7. Appellant argues that claim 1 is not satisfied by the rejection
because although Randlov teaches repeating an alarm at an increased
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volume after an initial alarm is not acknowledged, it does not teach further
repeating the alarm at a further increased volume if the repeated alarm is
likewise not acknowledged. Id. (citing Randlov ¶120).
The actual Randlov disclosure cited by the Examiner is reproduced
below:
In step 506, the process receives an acknowledgment from the
patient. For example, the patient may press a button on the
apparatus to stop the alarm. In some embodiments, if the process
does not receive an acknowledgment of the alarm in a
predetermined period of time, the process may increase the
severity of the alarm, e.g. by increasing the volume of the alarm
sound, by sending a control signal to a different device, e.g. in
order to invoke an alarm in a different room of the house, or by
causing a modem to dial a predetermined telephone number e.g.
of a hospital, or the like, in order provide help to the patient.
Randlov ¶120 (emphasis added).
Appellant does not apprise us of error in the rejection of claim 1. We
find Randlov’s teaching sufficient to support the rejection as articulated.
Although Randlov does not explicitly discuss a second, third, fourth, etc.
repetition of its alarm, Randlov’s teaching is not limited to a single
repetition, as characterized by Appellant. Rather, Randlov teaches that “if
the process does not receive an acknowledgment of the alarm in a
predetermined period of time” then “the process may increase the severity of
the alarm.” Id. ¶120. This condition precedent exists in the
Fischell/Randlov combination unless and until an alarm is acknowledged.
Thus, the teaching to “increase the severity of the alarm” likewise endures
unless and until an alarm is acknowledged.
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For the forgoing reasons, we affirm the rejection of claim 1, as well as
that of claims 2–4, 10–13, 16, 17, and 28, which fall therewith. See 37
C.F.R. § 41.37(c)(1)(iv).
Claims 9 and 18
Appellant argues claims 9 and 18 together, for which we select claim
9 as representative. See Appeal Br. 8; 37 C.F.R. § 41.37(c)(1)(iv).
Claim 9 recites: “The apparatus according to claim 1, further adapted
to present voice messages relating to the handling of the apparatus.” Appeal
Br. 13. Relevant to this limitation, Fischell states:
The ability to communicate with the patient from an
implantable device has applications beyond notification of
detected neurological events. Such communication can be
reminders to the patient to take medications, warnings that the
device battery is low and needs recharging or replacements or
just a daily notification that the system is functioning properly.
Fischell 38:55–61 (emphasis added). The Examiner found that Fischell’s
low battery warning constitutes a “message relating to the handling of the
apparatus.” Final Act. 3.
Appellant argues: “It is clear from the specification handling of the
apparatus means physically manipulating the apparatus, and a low battery
indicator does not tell one how to manipulate the apparatus, it just advises
that the battery is low.” Appeal Br. 8. However, Appellant does not cite any
portion of the Specification to support its construction. Id. The only portion
of the Specification that mentions “handling” states as follows:
According to yet another embodiment of the first aspect of the
invention, the apparatus is further adapted to present voice
messages relating to the handling of the apparatus. This aids the
person carrying the apparatus in the handling and use thereof,
e.g. when placing the apparatus in the ear.
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Spec. 4:22–26. This description does not define, or otherwise show,
“handling” as limited to physical manipulation. Accordingly, we agree with
the Examiner that “handling” of the apparatus means the management
thereof, which “includes making sure that the apparatus is functioning
properly [and that it is] properly powered.” Final Act. 13.
For the forgoing reasons, we affirm the rejection of claim 9, as well as
that of claim 18, which falls therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 29
Claim 29 is independent and of somewhat similar scope to claim 1,
with the most notable difference being that claim 29 recites “a user input by
which said person can adjust multiple criteria for presenting information to
said person.” Appeal Br. 17.
Relevant to this limitation, the Final Action cites an extensive
discussion of functions and parameters that are programmable in Fischell’s
device. Final Act. 3 (citing Fischell 4:66–5:25). Appellant does not dispute
that Fischell teaches such programmability. Appeal Br. 8. Appellant,
however, argues that Fischell’s device is not “programmable by the user.”
Id. Appellant argues that, per the claim language, the “user” refers to the
person whose EEG signals are measured by the EEG device, i.e., a patient.
Appeal Br. 9. We agree with Appellant on that point. However, we
disagree with Appellant’s conclusion that the user cannot be a physician.
See id. (“This is not and cannot be the physician making adjustments in
Fischell.”). Rather, we agree with the Examiner that the claim does “not
recite or require the user/person to be a non-medical professional.” Final
Act. 10. “When the portable EEG monitoring apparatus is used by the
physician, the physician is the user.” Id.
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For the forgoing reasons, we affirm the rejection of claim 29.
Claims 31 and 32
Appellant argues claims 31 and 32 together, for which we select claim
31 as representative. See Appeal Br. 8; 37 C.F.R. § 41.37(c)(1)(iv).
Claim 31 recites: “The apparatus according to claim 29, wherein said
multiple criteria include at least one time interval required between
successive messages of a given type.” Appeal Br. 17. To meet this
limitation, the Final Action cites Fischell’s disclosure that “the amplitude,
frequency and time duration of an acoustic, visual, or other sensory input
applied to the patient in response to the detection of a neurological event”
are programmable. Final Act. 3 (quoting Fischell 5:17–19). The Examiner
interprets this disclosure, stating: “The term ‘frequency’, given a reasonable
interpretation by one of ordinary skill in the art, refers to how often
something occurs. The frequency at which a message is presented relates to
how often the message is presented in a given time period, and this
inherently includes a time interval between messages.” Final Act. 11. We
disagree with the Examiner’s inherency conclusion.
A signal such as an acoustic signal propagates in a wave. The
frequency of the signal, when measured in hertz for example, refers to the
number of completed cycles (i.e., waves) per second. Although there is
inherently a time interval between the crests of successive waves, there is
not inherently a time interval between the end of one wave and the
beginning of the next.
For the forgoing reasons, we reverse the rejection of claim 31, as well
as that of claim 32, which stands therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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Rejections 2–7
In the remaining rejections, the Examiner rejected claims that
ultimately depend from either claim 1 or claim 29 over Fischell and Randlov
in view of one or more additional prior art references. Final Act. 4–10.
Appellant does not present arguments against these rejections beyond those
already considered and found unavailing above. Accordingly, for similar
reasons, we affirm Rejections 2 through 7.

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SUMMARY
Claims
Rejected
35 U.S.C. References Affirmed Reversed
1–4, 9–13,
16–18, 28,
29, 31, 32
§ 103(a) Fischell, Randlov 1–4, 9–13,
16–18, 28,
29
31, 32
5, 14 § 103(a) Fischell, Randlov,
Heintzman
5, 14
6, 15 § 103(a) Fischell, Randlov,
Shuttleworth
6, 15
7 § 103(a) Fischell, Randlov,
Hood
7
19, 20 § 103(a) Fischell, Randlov,
Beck-Nielsen,
Dilorenzo
19, 20
26, 27 § 103(a) Fischell, Randlov,
Luria or Bowers
26, 27
30 § 103(a) Fischell, Randlov,
Chittum
30
Overall
Outcome
1–7, 9–20,
26–30
31, 32

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

AFFIRMED IN PART