APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/958,191 10/04/2004 Ruth E. Bauhahn 151P11719USU1 1458

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/958,191 10/04/2004 Ruth E. Bauhahn 151P11719USU /25/2012 IPLM GROUP, P.A. POST OFFICE BOX MINNEAPOLIS, MN EXAMINER DIETRICH, JOSEPH M ART UNIT PAPER NUMBER 3762 MAIL DATE DELIVERY MODE 05/25/2012 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte RUTH E. BAUHAHN and MARK E. SCHOMMER Appeal Technology Center 3700 Before ERIC GRIMES, STEPHEN WALSH, and ERICA A. FRANKLIN, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. 134(a) from the rejection of claims directed to an implantable medical device system, and a method of providing therapeutic output to a patient. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. 6(b). We reverse.

3 STATEMENT OF THE CASE Claims 1-5 and are on appeal. Claim 1 is representative and reads as follows (emphasis added): 1. An implantable medical device system, comprising: an implantable medical device for providing a therapeutic output to a patient; an external patient control unit adapted to be operatively coupled with said implantable medical device allowing said patient to control said therapeutic output of said implantable medical device; and an external energy transfer unit adapted to be operatively coupled to said implantable medical device to transcutaneously transfer energy to said implantable medical device; said external patient control unit having a user interface operable by said patient, said user interface of said patient control unit having a first plurality of icons indicative of a status of operation of said patient control unit, each individual one of said first plurality of icons corresponding to an individual one of a plurality of patient control unit functions or statuses; said energy transfer unit having a user interface operable by said patient, said user interface of said energy transfer unit having a second plurality of icons indicative of a status of operation of said energy transfer unit, each individual one of said second plurality of icons corresponding to an individual one of a plurality of energy transfer unit functions or statuses; at least some of said second plurality of icons of said energy transfer unit being common with at least some of said patient controls and said first plurality of icons of said patient control unit. The Examiner rejected the claims as follows: claims 1, 2, 4, 5, 11, 12, 14, and 15 under 35 U.S.C. 103(a) as unpatentable over Meadows 1 and Causey III; 2 and claims 3 and 13 under 35 U.S.C. 103(a) as unpatentable over Meadows, Causey III, and Lee. 3 1 Paul Meadows et al., US 6,516,227 B1, issued Feb. 4, James D. Causey III et al., US 2002/ A1, published Jan. 3,

4 DISCUSSION The Examiner s position is that Meadows described an implantable medical device, an external patient control unit with a user interface, and an external energy transfer unit with a user interface. (Ans. 4.) The Examiner found that the user interface on the patient control unit had a plurality of display icons corresponding to a plurality of patient control unit functions or statuses. (Id.) The Examiner found that Causey III taught an external patient control unit with a user interface, and an energy transfer unit having a user interface, with at least some of a plurality of icons of the energy transfer unit being in common with at least some of the patient controls and a plurality of icons of the patient control unit. (Id.) The Examiner concluded: It would have been obvious to modify the user interfaces as taught by Meadows with the user interfaces having a plurality of icons in common with one another as taught by Causey, III, since such a modification would provide the predictable results of allowing a patient or physician to quickly and efficiently use either user interface without having to learn a new set of instructions and icons. (Id. at 4-5.) Appellants first contend that Meadows et al '227 does not show, disclose or suggest that the charging station user interface provides any of the same information as the handheld programmer does, such as battery recharge countdown numbers or a battery status icon. (App. Br. 12.) The Examiner responds that Causey, not Meadows, was relied upon to teach two different units having icons in common. (Ans. 7-8.) Thus, the Examiner 3 Michael T. Lee et al., US 2004/ A1, filed April 2,

5 and Appellants appear to agree on this point of difference between Meadows system and the claimed system. Appellants next contend that [a]ll Meadows et al 227 discloses is that the charging station displays an indication as to whether or not recharging is operating, which is merely a disclosure of energy transfer, not battery status. (App. Br. 12.) Appellants repeat their argument that Meadows gave no disclosed commonality whatsoever between the icons of the handheld programmer and the charging unit. (Id. at 15.) The Examiner does not respond directly to this point, but argues that because an icon is a picture, image or other representation, and because Causey s keys contain writing that represents a function, the icons on Causey s keys would be indicative of a status of operation. (Ans. 8.) However, Appellants have argued, the symbols on [Causey s] keypad 1024 are merely indicative of programming infusion device 1010, not of a status of operation of anything. (App. Br. 13.) We find Appellants argument persuasive. Claim 1 states that the first plurality of icons is indicative of a status of operation of the patient control unit, and the second plurality of icons is indicative of a status of operation of the energy transfer unit. While a person of ordinary skill in the art may view Meadows therapy delivery icons as indicative of a status of therapy delivery, and the icon representing battery power as indicative of the status of charge, there is no evidence that the key icons SEL, ACT, B, and T, on Causey s keypad 1024 could perform the two indicating functions indicative of a status of operation as claim 1 recites. Instead, according to Causey, the keys relate to the program capabilities available rather than performing the required indicating functions. (See Causey at 6, 0067.) Because the claim requires icons that perform a particular function, 4

6 we disagree with the Examiner s argument that this difference is merely one of printed matter that is not functionally related to the product (Answer 8). To be sure, claim 1 recites at least some of said second plurality of icons of said energy transfer unit being common with at least some of said patient controls. It may be that said patient control units was instead intended by the Applicants, as units would find antecedent basis, but the claim does not say this. Thus, Causey s programming keys are reasonably understood to be patient controls, as recited in claim 1. However, because the claim requires that the icons be indicative of a status of operation, we agree with Appellants contention that Causey does not show, disclose or suggest any other devices such as an external charging device which incorporates a plurality of icons at least some of which are in common with a plurality of icons on remote programmer (Id. at 14.) As the rejection of claim 1 did not account for all limitations of the claim, it is reversed. The rejection of claims 3 and 13 is reversed for the same reason. SUMMARY We reverse the rejection of claims 1, 2, 4, 5, 11, 12, 14, and 15 under 35 U.S.C. 103(a) as unpatentable over Meadows and Causey III. We reverse the rejection of claims 3 and 13 under 35 U.S.C. 103(a) as unpatentable over Meadows, Causey III, and Lee. lp REVERSED 5