Tsutomu WAKABAYASHI et at.

Patent Trials and Appeals Board

Feb 18, 2020

13034862 - (D) (P.T.A.B. Feb. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/034,862 02/25/2011 Tsutomu WAKABAYASHI Q123397 1646
65565 7590 02/18/2020
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
TANG, SON M
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte TSUTOMU WAKABAYASHI, SHINJI TEZUKA,
and TADASHI NAKAYAMA

Appeal 2018-005153
Application 13/034,862
Technology Center 2600

Before JOSEPH L. DIXON, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24, 26–29, and 31. Appeal Br. 16
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
On January 23, 2020, Appellant’s counsel presented arguments at an oral
hearing.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nihon
Kohden Corporation. Appeal Br. 2.
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Application 13/034,862

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We REVERSE.
CLAIMED SUBJECT MATTER
The claimed invention generally relates to a remote maintenance
system which checks and manages states of various medical devices such as
an automatic external defibrillator (AED). Spec. 1, 9. Remote installation
of such a system may make frequent battery replacement impractical. Id.
Appellant describes the claimed subject matter with reference to claims 1
and 24. Appeal Br. 4. Independent claim 1 is illustrative, with the disputed
portion of the claim italicized for emphasis:
1. A remote maintenance system comprising:
an external medical device which includes:
a first power source;
a first power source controller which controls an ON/OFF
operation of the first power source;
a checker which checks a check item; and
a first communicator which transmits first information
including a result of a check by the checker; and
a relay unit which includes:
a second power source;
a second power source controller which automatically controls
an ON/OFF operation of the second power source; and
a second communicator which communicates with the first
communicator and which receives the first information from the
first communicator,
wherein after the first communicator transmits the first
information to the second communicator, the first power source
controller turns OFF the first power source, in response to
receiving of the first information by the second communicator,
the second power source controller automatically turns OFF the
second power source,
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Application 13/034,862

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when the first power source is turned OFF, the first power
source does not provide power to the checker, and the checker
checks the check item using a power, the power supplied from
the first power source when the first power source controller
turns ON the first power source.
Appeal Br. 16–17 (Claims App.).
Independent claim 24 recites a system similar to that of claim 1 yet
narrower in some aspects. For example, the external medical device is an
automated external defibrillator (AED), the power sources are batteries, and
the checker checks the state of the first power source. Id. at 22–23.
Dependent claims 2–23, 26, 29, and 31 each incorporate the limitations of
their respective independent claims. Id. at 17–25.

REFERENCES
Name Reference Date
Bowman, IV et al.
(Bowman)
US 6,427,088 B1 July 30, 2002
Kobayashi US 2004/0239524 A1 Dec. 2, 2004
Von Arx et al.
(Von Arx)
US 6,993,393 B2 Jan. 31, 2006
LaLonde et al.
(LaLonde)
US 7,978,062 B2 July 12, 2011

REJECTIONS
Claims 1–3, 6–24, 26, 29, and 31 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of LaLonde, Bowman, and Kobayashi.
Claims 4, 5, 27, and 28 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of LaLonde,
Bowman, Kobayashi, and Von Arx.
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OPINION
Regarding claim 1, Appellant contends that the Examiner’s rejection
does not teach or suggest an “external medical device” that includes a
“checker which checks a check item,” such that “when the first power source
is turned OFF, the first power source does not provide power to the checker,
and the checker checks the check item using a power, the power supplied
from the first power source when the first power source controller turns ON
the first power source.” Appeal Br. 10.
The Examiner rejects claim 1 over the combination of LaLonde,
Bowman, and Kobayashi. The Examiner relies on LaLonde for the claimed
“external medical device” in the form of an Automatic External
Defibrillator. Final Act. 2 (citing LaLonde 9:64–10:17). The Examiner
relies on LaLonde for the claimed “checker which checks a check item” in
the form of a battery sensor. Id. (citing LaLonde 15:65–67, 30:50–56). The
Examiner relies on Bowman to teach turning off a power supply to an
external medical device such that no power is provided to the device’s
communicator. Id. at 4 (citing Bowman 43:15–35). The Examiner relies on
Kobayashi to teach turning off a power supply to an external monitoring
device such that no power is provided to the device’s communicator and/or
sensor. Id. (citing Kobayashi Fig. 1, ¶¶ 16, 44). The Examiner finds the
disputed claim limitations are met by modifying LaLonde’s medical device
by the teachings of Bowman and Kobayashi so as to turn off the power to
the medical device, thus advantageously extending the life of the device’s
power source. Id. at 4. The Examiner clarifies that the combination would
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Application 13/034,862

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not turn off power to the heart monitoring unit itself, but only to the battery
status monitoring unit and the communication unit of the device. Ans. 3.
Appellant argues that the Examiner has not shown LaLonde to teach
an external medical device that contains a battery sensor. Appeal Br. 10–12.
Specifically, Appellant argues that the portions of LaLonde relied upon for a
battery sensor relate only to an implantable medical device, not an external
medical device. Id. Appellant argues that LaLonde teaches both
implantable and external medical devices, but only the implantable medical
device is taught to have a battery sensor. Id. at 13; Reply Br. 5. Appellant
argues that the Examiner applied hindsight reconstruction in determining
LaLonde’s external medical device to contain a battery sensor (a “checker
which checks a check item”). Id.
We find Appellant’s argument persuasive. The Examiner has relied
on LaLonde’s external medical device teachings for the medical device, and
on LaLonde’s implantable medical device teachings for the battery sensor.
Final Act. 2. Although the inherent teachings of a prior art reference may be
relied upon, a characteristic must necessarily be present; the fact that a
certain characteristic may occur or be present in the prior art is not
sufficient. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Here, the
Examiner does not explain why LaLonde’s external medical device would
necessarily have the battery sensor discussed only for the implantable
medical device.
Alternatively, where different portions of a reference are combinable
to arrive at the claimed invention, that reference may be found to disclose
the claimed invention where it can be “at once envisaged” from the
disclosure. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
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1381 (Fed. Cir. 2015) (finding one skilled in the art would at once envisage
the claimed combination of a particular binder and a particular coating from
a disclosure of five binders and three coatings). Here, the Examiner does not
explain why one having ordinary skill in the art would readily envisage the
battery sensor (related only to LaLonde’s implantable medical device) as
being part of LaLonde’s external medical device. Unlike the short and well-
defined list of options in Kennametal, LaLonde provides a longer, wide
ranging list of potential devices, including physiologic sensors, ambient
and/or contextual sensors, implantable medical devices, and/or other
external systems or devices. In the absence of reasoning to the contrary, we
do not determine that one having ordinary skill in the art would have
immediately envisaged that the implantable medical device’s battery sensor
would be part of each of LaLonde’s large group of devices.
Furthermore, for an invention not identically disclosed in a single
prior art reference, 35 U.S.C. § 103(a) requires an Examiner to show that the
differences between the subject matter sought to be patented and the prior art
would have been obvious at the time of the invention. However, the
Examiner does not provide reasoning why one having ordinary skill in the
art would have found it obvious to use a battery sensor, as taught in
LaLonde’s implantable device, in LaLonde’s external medical device.
Accordingly, we are persuaded of error in the Examiner’s determination of
obviousness. See, e.g., In re Gates, 787 F. App’x 741 (Fed. Cir. 2019)
(finding the applied reference’s disclosure did not support the Examiner’s
determination that the reference disclosed a claimed limitation through
combination of features from separate embodiments, and reversing an
obviousness rejection that relied thereon).
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Although our determination above is dispositive as to the issue of
obviousness, we address Appellant’s other argument in the event that further
prosecution occurs. Appellant further argues that an implantable medical
device requires constant availability of battery sensor data in order to sense
and communicate life-threatening events such as the battery status.
Appellant contends that it would ignore the intended purpose of LaLonde to
modify its implantable device by turning off the power as taught by
Bowman and Kobayashi. Appeal Br. 12–13; Reply Br. 5.
We agree with the Examiner’s position that intermittently turning off
the power to a battery sensor and communication device, such as taught by
Bowman and Kobayashi, would not run counter to LaLonde’s intended
purpose. LaLonde discusses the desirability of conserving battery power to
its implantable device. LaLonde 59:61–67. LaLonde notes the desirability
of limiting patient interaction with the implantable device in non-critical
situation to conserve battery power. Id. at 60:25–40. LaLonde further
discusses the use of a “low power” mode for the implantable device, in
which the device listens to the controller rather than providing data to the
controller. Id. at 62:64–63:10. The implantable device may “wake up” once
every few hours to transmit a short duration message that the device has
“nothing to report” to the controller. Id. at 63:9–24. Consequently, the
disclosure of LaLonde contradicts Appellant’s argument that LaLonde
requires constant communication with its controller. Accordingly, we are
not persuaded by Appellant’s argument that an intermittent power-off
scheme, as taught by Bowman and Kobayashi, would not be obvious in a
medical device as taught by LaLonde.
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Application 13/034,862

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Consequently, we reverse the Examiner’s rejection of independent
claims 1 and 14 reciting the disputed limitations, and claims 2, 3, 6–23, 26,
29, and 31 dependent therefrom and rejected under the same grounds.
Claims 4, 5, 27, and 28 are dependent from either claim 1 or claim 14, and
are rejected under the base combination of LaLonde, Bowman, and
Kobayashi, further in view of Von Arx. For the reasons set forth supra, and
because the Examiner does not explain how Von Arx provides the missing
teachings, we reverse the Examiner’s rejection of claims 4, 5, 27, and 28.

CONCLUSION
For the above-described reasons, we reverse the Examiner’s rejection
of claims 1–24, 26–29, and 31 as being obvious under pre-AIA 35 U.S.C.
§ 103(a).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
1–3, 6–
24, 26,
29, 31
103(a) LaLonde, Bowman,
Kobayashi
1–3, 6–
24, 26,
29, 31
4, 5, 27,
28
103(a) LaLonde, Bowman,
Kobayashi, Von Arx
4, 5, 27,
28
Overall
Outcome
1–24, 26–
29, 31

REVERSED