Ex Parte 7318892 et al

Patent Trial and Appeal Board

Sep 27, 2013

95001063 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,063 07/28/2008 7318892 0106415.00124US1 1912
24395 7590 09/27/2013
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006
EXAMINER
TURNER, SHARON L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/27/2013 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
____________

FRESENIUS MEDICALCARE NORTH AMERICA
Requester

v.

BAXTER INTERNATIONAL, INC.
Patent Owner and Appellant
____________

Appeal 2013-003508
Reexamination Control 95/001,063
Patent 7,318,892 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner Baxter International, Inc. (“Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject
claims 1-7.1 Third-Party Requester Fresenius Medical Care North America
(hereinafter “Requester”) urges that the Examiner’s decision must be
affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We
affirm the Examiner’s decision to reject claims 1-7.

STATEMENT OF THE CASE
United States Patent 7,318,892 B2 (hereinafter “the ‘892 Patent”),
which is the subject of the current inter partes reexamination, issued to Mark
E. Connell et al. on January 15, 2008, from Application 11/175,072, filed on
July 5, 2005, which is related through a series of continuation applications to
Application 08/479,688 filed on June 7, 1995, now United States Patent
5,744,027, which is said to be a divisional of Application 08/122,047, filed
on September 14, 1993, now United States Patent 5,486,286, which, in turn,
is a divisional of Application 07/688,174, filed on April 19, 1991, now
United States Patent 5,247,434 (hereinafter “the ‘434 Patent.”). The ‘434
Patent was the subject of Reexamination Control 90/007,751 (Appeal No.
2009-006493) in which the Board issued a decision on March 18, 2010
affirming the Examiner’s decision that claims 26-31 are obvious over the
cited prior art. Patent Owner appealed the Board’s Decision to the Court of

1 See Patent Owner’s Appeal Brief 6-7 (filed June 14, 2011) (hereinafter
“PO App. Br.”); Examiner’s Answer 5, 16-17 (mailed June 5, 2012)
(hereinafter “Ans.”); Right of Appeal Notice 5-6 (mailed February 9, 2011)
(hereinafter “RAN.”).
2 See Requester’s Respondent Brief (filed July 14, 2011) (hereinafter “Req.
Resp. Br.”).
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Appeals for the Federal Circuit, and the Federal Circuit affirmed the Board’s
Decision. In re Baxter Int’l Inc., 678 F.3d 1357, 1364-65 (Fed. Cir. 2012),
reh’g denied, 698 F.3d 1349 (Fed. Cir. October 26, 2012) (en banc).
The Examiner (Ans. 2) also identifies a related United States Patent
6,284,131, which is the subject of Reexamination Control 90/007,730
(Appeal No. 2009-006498), in which the Board issued a decision on March
18, 2010 affirming the Examiner’s rejections of claims 4-12 and 17-25, and
dismissed the appeal as to claims 1-3 and 13-16, which were invalidated by
the Federal Circuit in Fresenius USA, Inc. v. Baxter International, Inc., 582
F.3d 1288 (Fed. Cir. 2009).
Patent Owner identifies a related appeal in inter partes reexamination
of U.S. Patent No. 7,303,680, assigned Reexamination Control No.
95/001,170, which shares common ancestor application 09/711,240, in
which a Reexamination Certificate issued on October 26, 2012 cancelling
claims 1-19.
Patent Owner identifies another related case in the inter partes
reexamination of U.S. Patent No. 7,351,340, assigned Rexamination Control
No. 95/001,195, which shares common ancestor application 09/711,240.
Patent Owner identifies another related case as the ex parte
reexamination of U.S. Patent No. 5,744,027, assigned Reexamination
Control No. 90/008,602 (Appeal No. 2012-010783), in which the Board
issued a decision on March 21, 2013 affirming-in-part the Examiner’s
rejections of claims 17-30, 32, 34, 35, 38, and 40-56.
Patent Owner additionally states that in the related Application
09/711,240, Appeal No. 2003-0235, the Board issued an opinion on August
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28, 2003. Another related application is 09/067,922, Appeal No. 2001-0178.
An order dismissing the appeal was mailed on December 8, 2000.

THE INVENTION
The ‘892 Patent relates to improvements to kidney dialysis machines.
(Col. 1, ll. 23-24.) Claim 1, which is illustrative of the appealed subject
matter, reads as follows (with added paragraphing for clarity):
1. A hemodialysis apparatus, comprising:
(a) means for delivering extracorporeal blood to a
hemodialyzer and for monitoring or controlling (i) blood-flow
rate, (ii) arterial pressure, (iii) venous pressure, and (iv)
anticoagulant delivery to the extracorporeal blood; and
(b) a user/machine interface operably connected to said
means for delivering extracorporeal blood, the user/machine
interface comprising a touch screen adapted to display an
indicium corresponding to a parameter pertinent to operation of
the hemodialysis machine and to permit the user, by touching
the indicium, to cause a change in the parameter, the touch
screen also adapted to display a time-variable profile of the
parameter,
the profile being representable as a plot of coordinates,
the plot being with respect to an ordinate of values of the
parameter and a time-based abscissa, the touch screen being
further adapted to distinguish past from future time intervals of
the parameter during treatment by coloring the past and future
time intervals within the plot of the time-variable profile
differently.

(PO App. Br. 25 Claims App’x.)

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THE REJECTIONS
Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1-6 under 35 U.S.C. § 103(a) as obvious over the CMS-
08 Handbook published by Fresenius AG (1988) (“CMS08
Handbook”) in combination with the CMS08 Brochure
(“CMS08 Brochure”), the Fresenius A2008 Hemodialysis
Operator Instructions A2008D Operator Instructions
(Seratronics, Inc., 1987) (“A2008”), Sarns 9000 Perfusion
System Operators Manual, 3M, 1989 (“Sarns Manual”), Rau,
Ergonomics and Aspects of its Application in Medicine (1989),
and Thull, "Approach to a dialogue manager for an intensive
care information system," Research Report 1989/90,
Helmholtz-Institute; and
II. Claim 7 under 35 U.S.C. § 103(a) as obvious over the above
combination, and further in view of Kerns U.S. Patent No.
4,756,706 (July 12, 1988), Rubalcaba U.S. Patent No.
4,898,578 (Feb. 6, 1990), and Elo Demo Users Manual, 1987-
1990 (“Elo Manual’).

CLAIM INTERPRETATION
Each of the independent claims on appeal recites a touch screen that is
adapted to display a time variable profile of the parameter and that the touch
screen is further adapted to distinguish past from future time intervals of the
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parameter during treatment. Claims 1 and 3 further specify that the past and
future claim intervals are colored differently. With respect to the color
limitation, the ‘892 Patent Specification states: “Bars corresponding to past
time intervals reflect treatment history and cannot be changed. To readily
distinguish past from future, the bars corresponding to each are displayed in
different colors.” (Col. 11, ll. 6-9.) Thus, while the claims specify that the
touch screen is adapted to display the time variable parameter, that recitation
merely relates to the appearance of the display. As a result, we conclude
that the claims describe the appearance or content of the display, which does
not affect the function of the hemodialysis apparatus. Therefore, the
limitations recite non-functional descriptive matter that do not patentably
distinguish the claims from the prior art. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); see also Ex Parte Nehls, 88 USPQ2d 1883, 1887-89
(BPAI 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material).

ISSUES
Patent Owner contends that the progress bar of the CMS Handbook,
which was relied on by the Examiner in order to satisfy the limitation in the
claims “to distinguish past from future time intervals of the parameter during
treatment by coloring the past and future time intervals within the plot of the
time-variable profile differently,” is not “within the plot” as recited in claim
1. (PO App. Br. 14-15.) Patent Owner argues that the Examiner’s
interpretation of the term “within the plot” is too broad to include a progress
bar below the x-axis and outside the profile plot. (PO App. Br. 15-16.)
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Patent Owner further argues that the supporting parts of the Specification of
the ‘892 Patent refer to the plotted data points as changing in color within
the plot, whereas in the CMS Handbook, the plotted data does not change
color. (PO App. Br. 15-16.)
Patent Owner also contends that even when the prior art cited is
considered in combination, it still fails to disclose the past versus future time
intervals of the operational parameter. (PO App. Br. 18-19.) Patent Owner
argues that the CMS08 Handbook does not solve the same problem, and one
of ordinary skill in the art would have been discouraged from combining the
CMS08 Handbook with a touch screen, because the protocols disclosed in
the Handbook are not necessarily compatible with a touch screen. (PO App.
Br. 20.) In addition, Patent Owner contends that Rau does not provide any
guidance for combining a hemodialysis apparatus with a touch screen in the
matter claimed. (PO App. Br. 20-21.)
Regarding claim 7, Patent Owner argues that the prior art does not
teach a touch screen that is responsive to an operator touching an indicum.
(PO App. Br. 21-24.)
Accordingly, the issues on appeal are:
I. Is the limitation directed to a touch screen that is “adapted to
display a time-variable profile of the parameter” and that the touch screen is
“further adapted to distinguish past from future time intervals of the
parameter during treatment” recited in the independent claims entitled to
patentable weight, and, if so, did the Examiner err in concluding that the
limitations would have been obvious to one of ordinary skill in the art in
view of the cited prior art of record?
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II. Would one of ordinary skill in the art have had sufficient reason to
have combined the references of record in the manner suggested by the
Examiner to render the claims obvious?
III. Would claim 7 have been obvious to one of ordinary skill in the
art in view of the references of record?

DISCUSSION
I. Display Distinguishing Past and from Future Time Intervals
In light of the claim construction discussed above, we do not find
Patent Owner’s arguments persuasive. The combination of the CMS08
references with A2008, Sarns, Rau, and Thull reasonably suggests a
hemodialysis apparatus having a touch screen adapted to display a time-
variable profile of the parameter, and which also distinguishes past and
future time intervals. (Ans. 7-11; see CMS08 Handbook, Fig. 3.2.2; CMS08
Brochure [F310410].) The particular appearance of the displayed time-
variable profile in distinguishing between past and future time intervals that
is claimed is non-functional descriptive material, and does not serve to
distinguish the claims on appeal from the combination of prior art applied to
the claims. The cited prior art provides evidence that it is well known in the
art to distinguishes past and future time intervals in time variable profiles
(e.g., Ans. 7). A difference in the way this information is displayed on the
touch screen is not a proper basis for asserting patentability over the prior
art.

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II. Reason to Combine
Regarding Patent Owner’s argument that one of ordinary skill in the
art would not have combined CMS08 with a touch screen as disclosed in
other prior art references of record, such as Rau, this question has been
previously answered by the Federal Circuit in Fresenius v. Baxter. There,
the court held that it would have been obvious to combine the hemodialysis
apparatus disclosed in CMS08 with a touch screen in view of Rau because
Rau contained an explicit suggestion to combine a touch screen with a
hemodialysis machine. 582 F.3d at 1301-1302. As no additional persuasive
evidence has been added, we see no reason to revisit that issue here.
Accordingly, we affirm the Examiner’s rejection of claims 1-6 as
obvious over the prior art of record.

III. Claim 7
Claim 7 depends on independent claim 5 and further recites “the touch
screen, responsive to an operator touching the indicium, is operable to
display a numerical keypad that is touchable by the operator in performing
the procedure for changing the setting of the parameter.”
The Examiner concluded that the limitations of claim 7 would have
been obvious to one of ordinary skill in the art at the time of the invention
because an indicium that is responsive to an operator touching the indicium
would have been a mere design choice. (Ans. 17-19.) We agree with the
Examiner. Patent Owner’s arguments that each of the prior art references
fails to disclose the limitations of claim 7 fails to take into account the level
of skill in the art as set forth in the Examiner’s rationale. Specifically, the
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Examiner stated that, in view of Kerns, Rubalcaba, and the Elo Manual,
which disclose numeric keypads on a touch screen display, “it would have
been obvious to provide numeric input through a touch-screen enabled
keyboard that appeared only when necessary to input numeric data.” (Ans.
17-18.) In view of the evidence cited by the Examiner, we agree that one of
ordinary skill in the art would have been capable of modifying the prior art
in the manner suggested by the Examiner. We have not been directed to
sufficient evidence that the suggested modification was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enterprises, Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 418-419 (2007).
Thus, we are not persuaded by Patent Owner’s arguments.

DECISION
The Examiner’s decision to reject claims 1-7 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
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section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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PATENT OWNER:
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006

THIRD-PARTY REQUESTER:
FISH & RICHARDSON, PC
P.O.BOX 1022
MINNEAPOLIS, MN 55440-102

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