Brian Case et al.

Patent Trials and Appeals Board

Mar 8, 2021

2019006673 (P.T.A.B. Mar. 8, 2021)

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.
13/209,161 08/12/2011 Brian C. Case F-6563 REG-2 9486
112722 7590 03/08/2021
Becker Patent Law, LLC
5424 W. Princeton Pines Ct.
Franklin, WI 53132
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
03/08/2021 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN C. CASE, JONATHAN PRENDERGAST,
JOHN W. BARRY JR., KYUNGYOON MIN, WILLIAM H. CORK,
DARYL RICHARD CALHOUN, and CHRISTINE M. LARSON
____________

Appeal 2019-006673
Application 13/209,161
Technology Center 3600
____________

Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1–33 and 38, which constitute all of the
claims pending in this application.1 Claims 34–37 are canceled. Non-Final
2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Fenwal
Inc., “the assignee of record, which is a subsidiary of Fresenius Kabi AG,
which is a subsidiary of Fresenius SE & Co. KGaA, Bad Homburg,
Germany.” Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant states that the invention “relates generally to methods,
systems, and apparatus to provide mobile applications for donors, blood
centers, and associated medical personnel.” Spec. ¶ 2.2 As described in the
Abstract,
[c]ertain examples provide systems, methods, and apparatus to
provide information regarding blood collection instruments via
a mobile device. An example method for blood collection
instrument management includes providing a graphical
representation of one or more blood collection instruments with
a visual indication of a status for each instrument. The
graphical representation is to visually convey information
regarding each of the one or more blood collection instruments
and is selectable by a user to provide additional information
regarding each of the one or more blood collection instruments.
The method includes facilitating access to troubleshoot and
interact with the one or more blood collection instruments via
the mobile device. The method includes dynamically updating
the status for each instrument via communication between the
mobile device and one or more blood collection facilities at
which the one or more blood collection instruments are located.

Abstract.

Illustrative Claim
Claims 1, 12, and 23 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:

2 Our Decision refers to the Non-Final Office Action mailed Aug. 24, 2018
(“Non-Final Act.”); Appellant’s Appeal Brief filed Jan. 29, 2019 (“Appeal
Br.”) and Reply Brief filed Sept. 9, 2019 (“Reply Br.”); the Examiner’s
Answer mailed July 9, 2019 (“Ans.”); and the original Specification filed
Aug. 12, 2011 (“Spec.”).
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1. A computer-implemented method for medical instrument
management using a handheld mobile device comprising a
phone, said method comprising:

providing on the handheld mobile device an application
downloaded and installed on the device by a customer, the
application causing the handheld mobile device to provide a
graphical representation of one or more medical instruments, at
least one of the medical instruments being configured to use a
needle in a procedure, with a visual indication of a status for
each instrument, the graphical representation visually
conveying information regarding each of the one or more
medical instruments and selectable by a user to provide
additional information regarding each of the one or more
medical instruments;

the application facilitating access to interact with the one
or more medical instruments via the handheld mobile device,
interaction between the handheld mobile device and the one
or more medical instruments to include access to medical
instrument controls via the handheld mobile device to interact
with an alarm feature which was triggered at each instrument
and a stop feature for each instrument; and

the application updating the visual indication of the status
for each instrument, the application configured to provide an
icon representative of the application on a main screen of the
phone in a location so as not to interfere with at least one other
main screen feature.

Appeal Br. 33 (Claims App.).
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Rejections on Appeal3
Claims 1, 2, 23, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamego et al. (WO 2012/075322 A2; published
June 7, 2012) (“Lamego”) in view of Roberts (US 2009/0156991 A1;
published June 18, 2009). Non-Final Act. 6–10.
Claims 3–11 and 24–33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamego, Roberts, and Ng et al. (US 2003/0040938
A1; published Feb. 27, 2003) (“Ng”). Non-Final Act. 10–19.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamaki et al. (US 2003/0093503 A1; published May 15,
2003) (“Yamaki”) and Friedman et al. (US 8,038,593 B2; issued Oct. 18,
2011) (“Friedman”). Non-Final Act. 19–21.
Claims 13–22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamaki, Friedman, and Ng. Non-Final Act. 21–25.
ANALYSIS
Based on Appellant’s arguments in the Briefs, the dispositive issues
before us are:
(1) whether the combination of Lamego and Roberts teaches or
suggests, “interaction between the handheld mobile device and the one or
more medical instruments to include access to medical instrument controls
via the handheld mobile device to interact with an alarm feature which was

3 Although the Examiner rejected claims 1–33 and 38 under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more,
the Examiner withdrew the § 101 rejection. See Non-Final Act. 3–5; Ans. 3.
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triggered at each instrument and a stop feature for each instrument,” as
recited in claims 1 and 23;4 and
(2) whether the combination of Yamaki and Friedman teaches or
suggests, “interaction between the mobile device and the one or more
medical instruments to include access to medical instrument controls via the
handheld mobile device to interact with an alarm feature for each instrument
and a stop feature for each instrument,” as recited in claim 12.
First Dispositive Issue
Regarding the first dispositive issue, in the Non-Final Office Action
the Examiner finds that Roberts teaches it was “well known in the art of
medical instrumentation at the time of the invention to facilitate access to
medical instrument controls to interact with a triggered alarm, stop features
and updating the visual indication of the status for each instrument.” Non-
Final Act. 7 (citing Roberts ¶¶ 69, 76, 78, 186, 247, 263, 276, Figs. 1 (pumps
104, 106, 108), 42, 49 (“error codes as packages” as item 4916), and 58). In
the Appeal Brief, Appellant argues that the Examiner erred in rejecting
claims 1 and 23 because none of Roberts’s figures or paragraphs cited by the
Examiner “disclose accessing the controls of the medical instrument to
interact with an alarm feature and a stop feature.” Appeal Br. 18–21.
In the Answer, the Examiner also finds that Roberts teaches
“[f]acilitating access to interact [with] the controls of the medical
instruments having a triggered alarm and stop feature [which] are one-way
communicated operations.” Ans. 3–4 (citing Roberts ¶¶ 238–241 (user

4 Appellant makes other arguments in the Briefs with respect to claims 1
and 23, but we do not address them because our decision of this issue is
dispositive with respect to these claims.
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interface 4500 allows system administrator to enter start time and end time),
247, 275–276 (change in pump parameters), Figs. 58 (pump parameters), 49
(item 4916). In response, Appellant analyzes the figures and paragraphs of
Roberts cited in the Examiner’s Answer and argues that “Roberts does not
teach that the user can use the medical device server to stop the medical
device.” Reply Br. 1–2.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s
burden of proving non-patentability is by a preponderance of the evidence.
See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of
the evidence is the standard that must be met by the PTO in making
rejections.”). “A rejection based on section 103 clearly must rest on a
factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” Id.
We determine the Examiner’s analysis fails to meet this standard
because the rejection is conclusory and does not provide a reasoned or
adequate explanation of how Roberts may teach or suggest the disputed
limitation of claims 1 and 23, either alone or in combination with Lamego.
In that regard, we agree with Appellant’s argument that the Examiner has
not shown or explained how Roberts teaches the user can access the medical
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instrument’s server (i.e., “controls”) to stop the medical device. See Reply
Br. 1–2.
Accordingly, on this record, we are constrained to find the Examiner
erred because the Examiner has not shown that the combination of Lamego
and Roberts teaches or suggests the disputed limitation of claims 1 and 23 by
a preponderance of the evidence. See Caveney, 761 F.2d at 674. Thus, we
do not sustain the Examiner’s rejection of claims 1 and 23, and dependent
claims 2–11, 24–33, and 38, for obviousness under § 103(a).
Second Dispositive Issue
Regarding the second dispositive issue, the Examiner finds that
Yamaki discloses the disputed limitation of claim 12. Non-Final Act. 12
(citing Yamaki ¶¶ 281, 714–715, 896). In response, Appellant argues that
Yamaki’s paragraphs 714 and 715 do not teach the disputed limitation.
Appeal Br. 30–31. According to Appellant, these disclosures concern
“priorities” given to pieces of equipment, which “relate to how the data is
communicated among devices,” and “there is no teaching of interacting with
an alarm feature, nor is there a teaching of accessing medical instrument
controls to interact with an alarm feature.” Id. at 31. As Appellant notes,
“[t]he Examiner’s Answer does not respond to this showing.” Reply Br. 6.
We determine the Examiner’s rejection with respect to claim 12 also
fails to meet the standard of providing a sufficient factual basis because the
rejection is conclusory and does not provide a reasoned explanation of how
Yamaki may teach or suggest the disputed limitation of claim 12, either
alone or in combination with Friedman. Accordingly, on this record, we are
constrained to find the Examiner erred because the Examiner has not shown
that the combination of Yamaki and Friedman teaches or suggests the
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disputed limitation of claim 12 by a preponderance of the evidence. See
Caveney, 761 F.2d at 674. Thus, we do not sustain the Examiner’s rejection
of claim 12, and dependent claims 13–22, for obviousness under § 103(a).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 23, 38 103(a) Lamego, Roberts 1, 2, 23, 38
3–11, 24–33 103(a) Lamego, Roberts, Ng 3–11, 24–
33
12 103(a) Yamaki, Friedman 12
13–22 103(a) Yamaki, Friedman,
Ng
13–22
Overall Outcome 1–33, 38

REVERSED