Ex Parte Higley

Patent Trial and Appeal Board

May 23, 2018

13877672 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/877,672 04/04/2013 Virginia Higley
24737 7590 05/25/2018
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.
2010P01111WOUS 1070
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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 VIRGINIA HIGLEY
Appeal2017-004061
Application 13/877,672
Technology Center 3700
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's decision to reject claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1-9 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows:
1 Appellant identifies the real party in interest as Koninklijke
Philips Electronics N. V. Br. 1.
Appeal2017-004061
Application 13/877 ,672
1. A medical device for treating time-critical cardiac
arrhythmias, comprising:
a rotatable mode selector switch having at least three
positions including;
an off position which inactivates the device from
electrotherapy and monitoring;
a first position for a first electrotherapy mode of
operation immediately adjacent to the off position; and
a second position for a cardiac monitoring mode of
operation not immediately adjacent to the off position in which
the device analyzes an elec[t]rocardiogram (ECG) and the
device issues a visual or aural alert if the device detects a
deterioration or instability in the ECG, but wherein the
electrotherapy is inactivated.
Br. 16, Claims Appendix (formatting added).
Appellant requests review of the following grounds of rejection made
by the Examiner:
I. Claims 1and2 under 35 U.S.C. § 102(b) as being anticipated by Lin. 2
II. Claims 3-5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Lin.
III. Claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Lin in
view of Elghazzawi. 3
I. Anticipation by Lin
The issue is: Does the defibrillator of Lin when rotated into the
disarm position maintain a monitoring function that meets the claimed
second position element?
2 Lin et al., US 6,289,243 Bl, issued Sept. 11, 2001 ("Lin").
3 Elghazzawi et al., US 2011/0130798 Al, publ. June 2, 2011
("Elghazzawi").
2
Appeal2017-004061
Application 13/877 ,672
Findings of Fact
FF 1. Figure 1 of Lin is reproduced below:
90A 33 10 1,.2 1;4 32 / i4 I 31.31A
_// 3,0,30A / / / / ~-··,/· ~4 j
~:»»7'='=~::;/''""" '/- , ..> 7·~ ";;;~;s.~~~~J._ ..... ,.:~~>/ ... ,// 72
•i c;;~iJ ... / / ,/. '"""'·""""''_ /....... ,-~~ ....-
~e l --~<~:~~=1~::::;·:~~~~ .. ~;-~~S2~~~,-~:·~~~--
"' :: 'l" i$,"""' 1. ,,,.,,.,.,. ~·'.i'72 [;;[,~~ """"'' : 28
" i /1 '3)-.. ' (fr\ ~ l&l••" ' ,. - <$"-f'Z~ . i
i -11-·rtr·)~ (;;'·: l .:l .... /.y::.,.J...>..J~}:\\_.. .. ---i·./
:~ l, , l~ (.._ , ~ ~r~f\ ~ //,{::// / ~INJ~, ""i··~\ i
::. t; \\ /1 <_... ~ ! ~ I • l ~ I . ' ''"""" _,,,,:~; .·~ ··1 :
\ '\ \ "-~~~'"" 1 ..........., ~'7)#"'"'Y .,,......,,,,,.,,-"} "" . /;/' ll· ~ i 37
38 36 FIG. 1
"FIG. 1 shows a defibrillator 10 having a housing 12 with a front face
14 on which a plurality of controls and indicating elements are
provided." Lin 5: 13-15. The defibrillator has a display and a control
knob. "The display [24] is used to provide information to the
clinician related to the operation of the defibrillator 10, the status of
the patient, etc." Lin 5:27-29.
The knob 28 has several positions defining modes
of operation, such as: Off, Auto/advisory, Disarm and
energy selection in Manual mode. In the Off position,
the defibrillator is deactivated. In the auto/advisory
position, the defibrillator monitors the patient and can
apply shocks using a preselected therapy. In the disarm
position, an internal capacitor (not shown) is discharged
to ensure that the defibrillator does not apply a shock
accidentally. Finally, in an energy selection position, the
defibrillator may be used to apply a shock to a patient at
the selected energy level.
Lin 5:38-47.
3
Appeal2017-004061
Application 13/877 ,672
FF2. Fig. 9 of Lin is reproduced below:
18
MONITOR. . 150 DISCHARGE
..--- PATlENrs .,.............~~~---~~C.APACITO: •R.·:
N
HEART . ,..
152
154
ISSUE • · 158
.ISUAUORAl
WA.RNINGS
CHARGE ._1BO
CAPACITOR
y
! ISSUE 164 READY
. SIGNAL& ...
~~.,.,.,.,.......---170
ATTEMPT 1----------.
SYNC
CHECK
PAT!ENrs . 180
HEART
Figure 9 shows a flow chart for operating the defibrillator of Lin. Lin
4:59---60. Lin discloses that in the initialization (or set up) process of
the ECG "the attendant is asked to select a mode of operation (i.e.,
automatic or advisory)." Lin 8:10-13, see step 122 of Fig. 6 (not
shown). "The operation of the defibrillator in the advisory mode is
very similar to the automatic mode in that the same algorithm is used
4
Appeal2017-004061
Application 13/877 ,672
to detect shockable rhythms." Lin 3:8-10. "At any time during the
process described so far, an attendant can disable the automatic or
advisory mode by moving the knob 28 to the disarm or an energy
selection position." Lin 9:59---62. "If the process described above is
halted at any time, for example, by turning knob 28 to the disarm or
manual position as set forth above in step 166, then the capacitor 84A
associated with the defibrillation pulse generator 84 is discharged
internally." Lin 10:32-36.
Principle of Law
"Description for the purposes of anticipation can be by drawings alone
as well as by words." In re Eager, 47 F.2d 951, 953 (CCPA 1931).
Analysis
The Examiner finds that Lin teaches a defibrillator having a rotatable
mode selector switch 28 with at least three positions. These positions
include: an off position, a first position (auto/advisory) for delivering
electrotherapy, and a second position (disarm) that results in cardiac
monitoring but not delivering therapy. Final Act. 3; FPL The Examiner
considers the "Disarm" position of Lin to meet the claimed second position;
this is the position in which the defibrillator does not apply in any shock.
Final Act. 4. The Examiner finds that Lin describes that once the
defibrillator is turned on and the initialization steps are completed, the
defibrillator performs the process steps as set out figure 9. Final Act. 4; FF2.
In the initialization step, Lin describes selecting between auto and advisory
mode. FF2. After the initialization step is completed and the "Disarm"
5
Appeal2017-004061
Application 13/877 ,672
position is selected during operation, the defibrillator discharges the
capacitor to ensure that electrotherapy would not activate. See Ans. 6;
see FF2. The Examiner explains that when the defibrillator knob is in the
disarm position, the defibrillator is not in an off position and still collects
data.
As shown in Fig. 9 [(FF2)] the defibrillator detects the
knob 28 being turned to the disarm position, the process of
auto/advisory mode is halted from proceeding to the
defibrillating steps (i.e. steps 170-182) and instead discharge
the capacitor to ensure that the defibrillator would not apply a
shock (i.e. step 186), and return to monitoring the patient (i.e.
step 150). This function is performed without mention of
returning the knob 28 back to the "automatic/advisory" position
as implied by the Appellant.
The Examiner further submits that the interpretation
presented by the Appellant would not be logical, since if the
"disarm" position would terminate or stop the
automatic/advisory mode of operation completely, then it
would have the exact same function as the "off' position.
Ans. 6.
Appellant acknowledges that "[ t ]he Lin reference discloses a medical
defibrillator having a rotatable mode selector switch 28 with an OFF
position, an 'Auto/Advisory' position adjacent to the OFF position, and a
'Disarm' position that is not adjacent to the OFF position." Br. 8.
Appellant contends that "Lin explicitly discloses '[i]f the process described
above ... is halted at any time, for example, by turning knob 28 [i.e.,
rotatable mode selector switch 28] to the disarm ... position as set forth
above in step 166, then the capacitor 84A associated with the defibrillation
pulse generator 84 is discharged internally." Id. at 9--10. Appellant
contends that "the act of moving [] the rotatable mode selector switch 28 to
6
Appeal2017-004061
Application 13/877 ,672
the disarm position in Lin renders the automatic mode disabled" and
inoperative. Id. at 11.
On this record we find that the Examiner has the better position.
Here, the Examiner is relying on the disclosure of Lin's figure 9 to establish
the process steps used by the defibrillator after the initiation process has
been completed. FF2. These steps include monitoring the condition of a
patient's heart, determining whether there is a shockable rhythm detected,
categorizing the condition, providing visual or oral warnings if needed,
charging the capacitor, and once the charge is complete checking whether
the defibrillator has been disarmed at any point during this process. See
FF2. Figure 9 further shows that once the capacitor has been discharged at
step 186, monitoring the patient's heart at step 150 continues. FF2. We
agree with the Examiner that Lin's figure 9 sufficiently establishes that the
defibrillator continues to monitor the patient after the rotatable mode
selector switch 28 has been moved into the disarm position. See Ans. 6; see
Eager, 47 F.2d at 953. The defibrillator of Lin in the "Disarm" position
continues to collect the patient's heart rhythm information because after
discharging the capacitor the flow chart indicates that monitoring continues.
See FF2 (showing flow from step 186 to step 150). The automatic and
advisory mode in Lin both use visual and aural warnings. FF2; see Lin 3:8-
12 (The operation of the defibrillator in the advisory mode is very similar to
the automatic mode .... However, in this [advisory] mode, a visual and
aural indication is provided when the defibrillator is ready to apply
shocks."). We agree with the Examiner that Lin reasonably establishes that
monitoring continues while in the defibrillator is in the "Disarm" position.
We also agree with the Examiner that it would not be logical "if the 'disarm'
7
Appeal2017-004061
Application 13/877 ,672
position would terminate or stop the automatic/advisory mode of operation
completely, [because] then it would have the exact same function as the 'off
position." Ans. 6.
Appellant contends that "halted" means to discontinue or to terminate,
and therefore, moving switch 28 to the disarm position terminates or stops
the automatic or advisory mode operation of Lin. Br. 11. Appellant
contends that only by rotating the mode selector back to the automatic
advisory position does the operation of the defibrillator continue. Id.
We are not persuaded by Appellant's position that "halted" means to
discontinue or to terminate. The arguments of counsel cannot take the place
of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965); In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("An assertion of what
seems to follow from common experience is just attorney argument and not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness."). Appellant has not provided an evidentiary basis to support
the position that it was known in the art that disarming a defibrillator means
that the defibrillator is turned off and that in this position the apparatus
discontinues collecting data. The evidence relied on by the Examiner
sufficiently supports the position that monitoring continues even though the
system discharges the capacitor in step 186 when in the disarm position. See
FF2.
We conclude that the evidence cited by the Examiner supports a prima
facie case of anticipation with respect to claim 1. Appellant does not
persuade us that the Examiner's interpretation of Lin's teaching is an error.
See Ans. 2-7; see Final Act. 2-3; see FF1-FF2. Accordingly, we affirm the
rejection of claim 1under35 U.S.C. § 102(b) as anticipated Lin. As
8
Appeal2017-004061
Application 13/877 ,672
Appellant does not argue the claims separately, claim 2 falls with claim 1.
37 C.F.R. § 41.37 (c)(l)(iv).
II. Obviousness over Lin
With respect to the obviousness rejection based on Lin, Appellant
contends that "Lin fails to disclose the recited limitation of a second switch
position having a cardiac monitoring mode of operation [that is] not
immediately adjacent to the off position in which the device analyzes an
electrocardiogram (ECG)." Br. 13. Appellant contends that Lin does not
recognize the problem solved by claim 1 and because there is no recognition
in Lin that there is a problem Lin cannot render the claims obvious. Id.
With respect to this rejection, Appellant relies on the same arguments
relied upon with respect to claim 1, discussed above. See Br. 13-14. Thus,
for the reasons discussed above and those provided by the Examiner in the
Answer, we find that the Examiner has established a prima facie showing of
obviousness with respect to claims 3-5, 8, and 9, which Appellant has failed
to rebut. Accordingly, we affirm the rejection of these claims.
III. Obviousness over Lin and Elghazzawi
Appellant contends "Elghazzawi fails to teach or suggest the position
arrangement that is recited in independent Claim 1." Br. 14.
Having found no error with the Examiner's reliance on the teachings
of Lin we are not persuaded by Appellant's intimation that the combination
of Lin and Elghazzawi fails to make up for any alleged deficiency in Lin.
Accordingly, we affirm the rejection of claims 6 and 7 based on the
combination Lin and Elghazzawi.
9
Appeal2017-004061
Application 13/877 ,672
We affirm all rejections.
SUMMARY
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
10