Ex Parte 7,506,390 B2 et al

Patent Trial and Appeal Board

Oct 14, 2014

95002053 (P.T.A.B. Oct. 14, 2014)

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.
95/002,053 07/20/2012 7,506,390 B2 7175-222139 3834
69781 7590 10/14/2014
Barnes & Thornburg LLP (Hill-Rom)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/14/2014 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
____________

STRYKER CORPORATION
Requester and Respondent

v.

HILL-ROM SERVICES, INC.
Patent Owner and Appellant
____________

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Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
ANDREW J. DILLON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject claims 1, 2, 13, 14, and 20 in the above-identified
inter partes reexamination of US 7,506,390 B2. The Board’s jurisdiction for this
appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm.

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I. BACKGROUND
The patent in dispute in this appeal is US 7,506,390 B2 (“the ’390 patent”)
which issued March 24, 2009. The Patent Owner and Appellant is Hill-Rom
Services, Inc. (“Hill-Rom”). Appeal Brief (“Appeal Br.”) 1, dated December 4,
2013.
A request for inter partes reexamination of the ’390 patent under 35 U.S.C.
§§ 311-318 and 37 C.F.R. §§ 1.902-1.997 was filed on July 20, 2012 (“Request”).
The Requester is Stryker Corporation (“Stryker”), who is also the Respondent in
this appeal. Respondent Brief (“Resp’t Br.”) 1, dated January 6, 2014.
Hill-Rom has disclosed there is pending litigation against Stryker in the
United States District Court for the Southern District of Indiana (Case No.1: 13-
CV -00765-JMS-DKL). Appeal Br. 2. Hill-Rom also discloses there are pending
reexaminations of related patents. Id. According to Hill-Rom, the district court
case has been stayed pending the outcome of the reexamination proceedings. Id.
An oral hearing in this appeal was held September 10, 2014. A transcript
will be entered into the record in due course.

II. THE CLAIMED INVENTION
The claimed invention is directed to a patient support apparatus (e.g., a
hospital bed) comprising a mattress with inflatable bladders, a pressure control
system to inflate and deflate the bladders, and a controller area network (CAN) that
communicates with the pressure control system. A CAN is a network that is used
to communicate with different modules in the system that control different bed
functions. ’390 patent, col. 29, ll. 45-col. 30, l. 4. The patent describes “one
illustrative embodiment” which uses a known “CAN specification 2.0B as
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specified in ISO 11898” for its network. Id. at col. 32, ll. 61-65. The ’390 patent
also utilizes CANopen (col. 33, ll. 13-20) for its CAN network, which is a CAN
protocol developed prior to the ’390 patent. See Zeltwanger 1999,1 p. 64.
Claim 1 is the only independent claim on appeal. Claim 1 reads as follows:
1. A patient support apparatus comprising:
a mattress having at least one inflatable bladder;
a pressure control system which is operable to inflate and
deflate the at least one inflatable bladder; and
a controller area network (CAN) communicating with the
pressure control system,
the CAN having a number of modules and a serial bus
connecting the modules such that the modules are in communication
with each other.

III. REJECTIONS
The claims stand rejected by the Examiner over Grounds A1-A9 & A15-
A19, B1-B9 & B15-B19, C1-C9 & C15-C19, D1-D9 & D15-D19, and E1-E9 &
E15-E19. Each of Grounds A through E involves a different primary reference,
but the same set of secondary references. (See Action Closing Prosecution mailed
April 10, 2013 (“ACP”), 3-32.) For the primary reference, Ground A cites
Kummer.2 Ground B cites Osborne.3 Ground C cites Total Care.4 Ground D cites
Travis.5 Ground E cites Weismiller.6

1 H. Zeltwanger, “Designing Devices Using CAN and CANopen Buses for
Networking,” Fall 1999.
2 U.S. Patent No. 5,771,511.
3 U.S. Patent No. 6,047,424,
4 A product service manual, published in January 2001 by Hill-Rom, for the
TotalCare Bed System. HR00036049-8181.
5 PCT Publication No. WO 94127544.
6 U.S. Pat. No. 6,163,903.
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The cited secondary references, and the corresponding rejections denoted by
the numerals 1-9 and 15-19 within each of Grounds A through E, are as follows:
(1) BOSCH CAN Specification Version 2.0;7 (2) Philips;8 (3) Nelisse;9 (4) Stare;10
(5) Heins;11 (6) CiA 1999;12 (7) Zeltwanger 1999; (8) Chatenever;13 (9) Zeltwanger
2002;14 and (15) Etschberger 2001.15 Rejections 15-19 further reject the claims
based on various combinations of the cited secondary references.

IV. GROUND A REJECTIONS
Claim 1 is drawn to a patient support apparatus comprising a mattress, a
pressure control system which is operable to inflate and deflate at least one
inflatable bladder, and a controller area network (CAN) communicating with the
pressure control system.
The Examiner found that Kummer teaches a patient support system (e.g., a
hospital bed) with a pressure control system and inflatable bladders. ACP 5;
Kummer, col. 7, ll. 56-60 (“Air supply module 1014 controls compressor 1046 to

7 Robert Bosch GmbH, “BOSCH CAN Specification Version 2.0,” 1991.
8 Philips, “Application of the P8xC592 microcontroller with CAN-interface,” July
2, 1992.
9 M. Nelisse, “A General-Purpose Integrated and Modular Architecture for the
Rehabilitation Environment,” 1995.
10 Z. Stare et al., “Automatic Data Acquisition and Control System,” 1995.
11 U.S. Patent No. 5,596,437.
12 CAN in Automation, “CAN Technology in Embedded Networks,” September
17,1999.
13 U.S. Patent No. 6,397,286
14 H. Zeltwanger, “Controller Area Network and CANopen Medical Equipment,”
June 2002.
15 K. Etschberger, Controller Area Network - Basics, Protocols, Chips and
Applications, 2001.
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inflate and deflate the mattress surface of the bed . . . .”). The Examiner cited
teachings in Kummer that its hospital bed comprises a “peer-to-peer
communication network configuration [that] enables any of the plurality of
modules to communicate directly with another module in the network.” Kummer,
col. 1, ll. 19-22. The Examiner also relied on Kummer’s teaching that the
“modules are configured to communicate with each other over the network cable
without the requirement of a master controller. Therefore, modules can be added
or removed from the network without the requirement of reprogramming or
redesigning a master controller.” Id. at col. 5, ll. 52-58.
The Examiner found that Kummer does not teach the claimed CAN network,
but cited a number of different publications for teaching CAN networks. ACP 5.
These publications include Heins, Chatenever, Zeltwanger 1999, Zeltwanger 2002,
and Etschberger 2001, each which were said by Requester to teach medical devices
comprising CAN networks. Request iv, 25, 28, 29, 30, and 32-33. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art to
modify Kummer “by substituting a CAN for the controller because it involves
substitution of one known controller for another known controller or/and
design/market incentives for a communication protocol that efficiently support
distributed real-time control with a very high safety level, which would predictably
result in the claimed invention.” ACP 5.

A. Issues
Hill-Rom challenges the Examiner’s obviousness determination. First,
Hill-Rom contends that there was no rational basis for combining Kummer with
any of the secondary publications. Appeal Br. 5. Second, Hill-Rom contends that
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modification of Kummer, or any of the primary references, to convert the control
architecture to CAN utilizing the teaching of” Bosch and the additionally cited
secondary references, “was beyond the level of ordinary skill in the art at the time
of the invention of the subject matter of the ’390 patent.” Id. at 7. Hill-Rom
argues that the Examiner relied “on the purported background knowledge of a
person of ordinary skill in the art, not the references. However, the level of
knowledge the Examiner imputes to the person of ordinary skill in the art far
exceeds that which could be expected to be known by the hypothetical person of
ordinary skill in the art.” Id.

B. Basis for combining Kummer with CAN publications
In KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the Supreme
Court wrote that “[n]either the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need for caution in
granting a patent based on the combination of elements found in the prior art.”
The Court held that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. To make this determination, the Court explained “it will be
necessary . . . to look to interrelated teachings of multiple patents . . . and the
background knowledge possessed by a person having ordinary skill in the art, all in
order to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418. The Court
further instructed:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
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obvious unless its actual application is beyond his or her skill . . . a
court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.
Id. at 417 (internal citation omitted).
The Court recognized that “[c]ommon sense teaches, however, that familiar
items may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420.
In this case, the evidence of record establishes that CAN networks were
“familiar elements” known to have been used in the medical device industry, the
same field of invention as the claimed subject matter. As summarized by Stryker:
Heins discloses a medical X-ray device with modules controlling
device operations, including adjustment of a patient table, and
communicating over a CAN.
Zeltwanger (1999) describes how “[m]any European medical
device manufacturers have developed CAN interfaces.”
Zeltwanger (2002) explains that “[s]ince 1992, [CAN] has been
implemented as an embedded network in different medical
equipment.”
Etschberger (2001) describes how “CAN predominates in
embedded control systems for machines, medical devices, domestic
appliances, and many other applications.”
Resp’t Br. 2.
As the above-identified prior art publications demonstrate, CAN networks
were known to have been used in medical devices. The implementation of CAN in
Kummer’s networked bed is no more than utilizing CAN for its “established
function” (KSR, 550 U.S. at 417) as a “serial bus system dedicated for embedded
distributed control system” which “supports the concept of modular electronics and
also allows multiple reception (broadcast, multicast) and synchronization of
distributed processes.” Request 27-28 (quoting from Zeltwanger 1999, pp. 64, 66).
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See also Request 29-30 for teachings from other CAN publications. The CAN
networked functioned in the bed as expected. In sum, the evidence supports the
Examiner’s position that it would have been obvious to one of ordinary skill the art
to have implemented CAN in Kummer’s hospital bed for its known and expected
function.
Hill-Rom contends there is “insufficient evidence in the record and no
evidence whatsoever in the references themselves that support the conclusion that
a person of skill in the art would view the possibility of achieving [the benefits of
CAN] as having enough potential upside to justify attempting to conquer the truly
daunting, and perhaps insurmountable, technical challenges that CAN implicated.”
Appeal Br. 5 (emphasis added). Hill-Rom continues that the person of ordinary
skill in the art “saddled with the challenges outlined in the declaration of inventor
Steve A. Dixon, would not have been motivated to implement CAN when the
Kummer reference was available to guide their implementation to a fully
functional system, without modification.” Id.
Hill-Rom’s argument is flawed. First, the evidence to support combining
known elements does not have to come from the references, themselves. In KSR,
the Court specifically acknowledged that the reason to combine elements from
different publications does not have to be explicitly disclosed.
The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents. . . . In many fields it may be that there is
little discussion of obvious techniques or combinations, and it often
may be the case that market demand, rather than scientific literature,
will drive design trends.
KSR, at 419.
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Second, as argued by Stryker, there is considerable evidence that the
advantages of CAN had been recognized in the medical device industry. Heins, for
example, implemented CAN in an X-ray device, teaching that CAN enabled “the
number of components provided with a data transmission node or the spatial
position of individual components [to] . . . be changed in a simple manner while a
high data transmission speed is maintained.” Heins, col. 2, ll. 8-29. In an
extensive review of CAN and its advantages, Etschberger 2001 writes that “CAN
predominates in embedded control systems for machines, medical devices,
domestic appliances and many other applications.” Etschberger 2001, p. IV.
Zeltwanger 1999 teaches that CAN has been used as an embedded network in
medical devices since 1992 and that a “medical special interest group” was
established to develop CAN interfaces and protocols. Zeltwanger 1999, p. 64.
Zeltwanger 1999’s article “examines how CAN functions and how designers can
implement this technology to develop devices that can be networked using a
standardized protocol.” Id. Zeltwanger 1999 specifically describes
implementation of CAN in an X-ray system. Id. at 70. Zeltwanger 1999 concludes
that “[n]etworking medical devices is becoming more important to end-users,”
making CAN advantageous because it provides “a standardized protocol [that]
enables manufacturers to develop devices that can be easily linked to other
systems. CAN is a data-link protocol that allows manufacturers to specify
application layers and communication profiles.” Id. at 71. The Examiner’s
position that it would have been obvious to have implemented CAN in a networked
hospital bed is thus supported by a preponderance of the evidence in this record.
Hill-Rom’s position that CAN would not have been implanted in Kummer’s
bed by one of ordinary skill in the art because of the difficulty involved is not
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supported by the weight of the evidence. Although it is true that “a reasonable
expectation of success” is necessary to establish the obviousness of an invention,
Hill-Rom has not provide adequate evidence to rebut the Examiner’s finding that
the skilled worker would have reasonably expected CAN to work in a hospital bed.
Hill-Rom relies on two declarations to support its position.
Hill-Rom provided a declaration by João P. Hespanha who holds a Ph.D. in
Electrical Engineering and is a professor of electrical and computer engineering at
University of California, Santa Barbara, CA. Hespanha Decl. ¶¶ 2, 4. Dr.
Hespanha testified in his declaration that he has experience in communication
networks, including CAN. Id. at ¶¶ 5, 6, 8. Dr. Hespanha testified that in his
“expert opinion, a person of ordinary skill in the art at the time of the inventions
(the 2000 timeframe) would not have found implementing CAN on a hospital bed
to be ‘straightforward,’ nor would the results of implementing CAN on a hospital
bed have been ‘predictable.’” Id. at ¶ 14. Dr. Hespanha identified a number of
different factors that he testified would require re-design, testing, and validation
when using CAN in a hospital bed, including bandwidth, priority-based arbitration,
and physical network layout. Id. at ¶¶ 17-29.
A declaration by Steve A. Dixon was also provided by Hill-Rom. Mr.
Dixon has a Bachelor’s Degree in Science and Electrical Engineering Technology.
Dixon Decl. ¶ 3. Mr. Dixon has been employed by Hill-Rom since 1997 as an
electrical engineer, and testified that he worked on the hospital bed project in
which CAN was implemented as the network controller. Id. at ¶¶ 4-6. Mr. Dixon
testified he and the Hill-Rom team “could not have predicted whether or not CAN
would work for a hospital bed. As we discussed in some of our early
brainstorming sessions related to CAN, there were ‘A lot of unknowns in this area’
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and there was ‘Lots of software to be written!’” Id. at ¶ 8. The declaration
identified a number of different factors to be considered when implementing CAN
and how designing such a network for a hospital bed was not “just building
‘stuff,’” but required the “meticulous” process of selecting, testing, and verifying.
Id. at ¶ 11. Mr. Dixon acknowledged that a Bosch CAN specification existed at
the time, but stated that there were unique “design challenges that come from the
constraints of CAN abutting the bed design.” Id. at ¶ 12. In paragraph ¶¶ 17-34,
Mr. Dixon addressed issues relating to the “difficult and unique” problems
encountered when implementing CAN in a hospital bed, identifying design
considerations and challenges in the application of CAN. Mr. Dixon concluded
that the “undertaking involved with creating the CAN network on the VersaCare
bed was neither simple nor predictable.” Id. at ¶ 35. Mr. Dixon testified that the
team comprised at least eight engineers and “every decision we made relating to
things such as processor selection, message timing, message priority, message
types, number of messages, number of ‘responders,’ bus speed, length of cables,
etc. affects critical network parameters. It was not an easy task to balance all of
the competing considerations and, at the time, not apparent whether we would be
able to balance them at all or not.” Id.
The testimony by Dr. Hespanha and Mr. Dixon does not convince us that it
would not have been reasonably expected that CAN could be successfully
implemented in a hospital bed. Neither declarant addressed the full scope and
content of the prior art cited in the rejections. For example, as discussed above,
there are numerous publications cited in this record which teach how to apply CAN
to devices, including medical devices. Specifically, Zeltwanger 1999 discusses
medical devices, mentions a CANopen application for operating theaters and
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integrated intensive-care units, and provides instruction to designers on how to
“implement this technology to develop devices that can be networked using a
standardized protocol.” Zeltwanger, p. 64. Etschberger 2001 is a book, which is
said by the author “to provide a well-founded introduction for developers and users
into data communication systems based on CAN.” Etschberger 2001, p. I.
Etschberger 2001 teaches that CAN has been used in medical devices (id. at IV),
providing a reasonable expectation that CAN could be implemented successfully in
other medical devices, such as hospital beds. Neither Dr. Hespanha nor Mr. Dixon
persuasively identified a shortcoming in the teachings of Zeltwanger 1999 and
Etschberger 2001 that would have dissuaded one of ordinary skill from using CAN
in a hospital bed, when it had been used in other medical devices, including an X-
ray apparatus. It was reasonable for the Examiner to find that the teachings in both
these publications, as well as in Heins (X-ray device), Chatenever (endoscopy unit;
col. 7, ll. 8-22), and Zeltwanger 2002 (medical applications, X-ray device), would
have guided one of ordinary skill in the art to have implemented CAN in
Kummer’s hospital bed.
Both Dr. Hespanha and Mr. Dixon had the opportunity to address
Zeltwanger 1999, Etschberger 2001, Heins, etc., and explain why these references
did not enable CAN to be implemented in a hospital bed, but they did not. We
acknowledge that the declarants identified factors to be considered when adopting
CAN to a hospital bed, but in view of the guidance in the cited publications and the
failure of the declarants to persuasively address such guidance, we do not find their
testimony to outweigh the Examiner’s fact-based findings to the contrary.
Stryker provided its own declarations by Mr. Michael Hayes and Dr. Philip
Koopman to establish the conventionality of adapting CAN to hospital beds. Mr.
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Hayes has a Bachelor’s degree in Electrical and Electronic Technology, is
employed by Stryker, was the production supervisor for hospital beds at Stryker,
and worked on implementing CAN in Stryker’s beds. Hayes Decl. ¶¶ 3, 6, 25. Dr.
Koopman is an associate professor of Electrical and Computer Engineering at
Carnegie Mellon University and holds a Ph.D. in Computer Engineering.
Koopman Decl. ¶ 2. Dr. Koopman testified that he has significant experience in
embedded networks, including CAN. Id. at ¶¶ 2, 3, 5, 6. Both declarants’
testimony is consistent with it being routine to implement CAM in a hospital bed.
In the Response dated November 14, 2012, Hill-Rom argued that the
“chance of success” of the cited combinations of prior art “would be considered
speculative in light of Tran (1999), Bello and Mirabella (2001), Rufino et al.
(1998), and Pinho and Vasques (2001).” Response to Non-Final Office Action 14.
According to Hill-Rom, “[t]here was every chance that there would be too many
multi-bit errors and too many EMC problems as suggested by Tran (1999) and
there would be too many problems of the type mentioned in Bello and Mirabella
(2001), Rufino et al. (1998), and Pinho and Vasques (2001).” Id. at 15.
Dr. Koopman addressed each of these publications. Dr. Koopman
acknowledged that the cited publications identified “potential challenges with
CAN,” but Dr. Koopman opined that the alleged challenges did “not outweigh the
substantial body of literature and experience with CAN affirming the benefits and
utility of CAN across a wide range of applications, including medical devices.”
Koopman Decl. 38. With respect to Tran (1999), Dr. Koopman testified that Tran
disclosed a method to address undetected two-bit errors, alleviating concern with
this potential issue. Id. at ¶ 40. With respect to the reliability issues said to be
raised by Bello and Mirabella (2001); Rufino et al. (1998); and Pinho and Vasques
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(2001), Dr. Koopman discussed each publication and concluded that the ordinary
skilled worker would not have shied away from using CAN based on these
publications because the publications “show how to effectively exploit the special
features of CAN that, if needed by an application, make it attractive compared to
other protocols.” Id. at ¶ 44. Hill-Rom did not persuasively rebut Dr. Koopman’s
testimony.

C. Ordinary level of skill in the art
The question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the claimed invention and the
prior art; and (4) secondary considerations of nonobviousness, if any. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). Hill-Rom contends that “a person of
ordinary skill in the art would require more information than that provided in the
secondary references and . . . their own knowledge to implement CAN in a patient
support apparatus.” Rebuttal Br. 4. Hill-Rom argues that the Examiner relied
upon the knowledge of the person of ordinary skill in the art to fill the gaps in the
cited combinations. Id. at 5. Hill-Rom contends that the Examiner did not identify
“any reasonably articulable standard for the level of ordinary skill in the art.” Id.
C. 1. Legal principles
The “person of ordinary skill in the art” in § 103 is a “theoretical construct
… and is not descriptive of some particular individual.” Endress + Hauser, Inc. v.
Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997). “The
person of ordinary skill is a hypothetical person who is presumed to be aware of all
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the pertinent prior art.” Custom Accessories Inc. v. Jeffrey-Allan Industries Inc.,
807 F.2d 955, 962 (Fed. Cir. 1986).
“Factors that may be considered in determining level of ordinary skill
in the art include: (1) the educational level of the inventor; (2) type of
problems encountered in the art; (3) prior art solutions to those
problems; (4) rapidity with which innovations are made; (5)
sophistication of the technology; and (6) educational level of active
workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d
693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All
Orthopedic Appliances, Inc., 707 F.3d 1376, 1381-82 (Fed. Cir.
1983)). These factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art.
Daiichi Sankyo Co. v. Apotex Inc., 501 F3d 1254, 1256 (Fed. Cir. 2007).
In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988), the Federal Circuit
approved the Board’s attributing “to the ‘hypothetical person’ knowledge of all
prior art in the field of the inventor’s endeavor and of prior art solutions for a
common problem even if outside that field,” as “a pragmatic approach to applying
the standard of patentability created by Congress.”
The determination of the hypothetical ordinary skilled person is important
since, to be patentable, an invention must not be obvious to the hypothetical person
at the time of the invention. Mitsubishi Electric Corp. v. Amex Corp., 51 USPQ.2d
1910, 1916 (Fed. Cir. 1999).

C2. The hypothetical person of ordinary skill in the art
The Examiner made specific findings regarding the ordinary level of skill in
the art.
In the ACP, the Examiner found:
The “hypothetical ‘person having ordinary skill in the art’ to which
the claimed subject matter pertains would, of necessity, have the
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capability of understanding the scientific and engineering principles
applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393,
1394 (Bd. Pat. App. & Inter. 1988). The record is clear that hospital
beds are complex systems that would involve complicated problems,
and one of ordinary skill in this art would have high educational
and/or experience levels. See the disclosure of the ’390 patent as well
as the other hospital bed patents of record. See also the educational
and experience level of the declarants and authors of non-patent
literature of record.
ACP 35.
In the RAN, the Examiner further found:
More importantly, the analysis centers on the knowledge and skill
level of an ordinary artisan and not on the number of years of
experience or the degrees held. Additionally, a person of ordinary
skill in this art is not confined to knowledge of systems existing in just
hospital beds or even medical systems, but would have knowledge of
communication networks in other art areas. See page 6 of the June
10, 2013 comments. See, e.g., also paragraphs 2-12 of the Hespanha
declaration, submitted November 14, 2012 and paragraphs 6, 7, & 12
of the Dixon declaration, submitted November 14, 2012, which
conveys that at least one of the inventors had knowledge of CAN and
Echelon LONTalk networks that were used in other art areas.
RAN 6.
The Examiner recognized that the field of the invention was
multidisciplinary, spanning the fields of medical devices and communication
networks. The Examiner also referred to the experience and education levels of
the inventors, the declarants, and the author of the non-patent literature
publications cited in the rejections. We, therefore, do not agree with Hill-Rom that
the Examiner did not articulate a meaningful standard for the level of skill in the
art possessed by the hypothetical person.
In making the determination of the level of skill in the art, the specific art or
field of invention must be ascertained. In this case, it is evident that the field of
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invention is multidisciplinary, broadly comprising the field of medical devices and
communication networks. The evidence of multidiscipline nature of the field of
invention is reflected in publications, such as Etschberger 2001, which is a book
entirely on controlled area communication networks for various industries, naming
industries as disparate as the auto industry and medical systems. Etschberger
2001, p. IV.
The ’390 patent has not defined a new discipline, but rather there is
considerable factual and uncontroverted evidence that communication networks
had been applied to medical devices and specifically to hospital beds. The
hypothetical person of ordinary skill in the art was not simply a medical device
designer, but a person with knowledge of network communication systems. As
explained in more detail below, the education level of the inventors and those
active in the field of invention reflect the multidisciplinary nature of this field of
invention.
The education of the inventors is one of the factors to be considered when
determining the appropriate level of skill of the hypothetical person. The first
named inventor of the ’390 patent is Steven A. Dixon, who has a Bachelor of
Science and Electrical Engineering Technology. Dixon Decl. ¶ 3. Mr. Dixon did
not identify how many years of experience he had nor his familiarity with
communication networks. However, Mr. Dixon acknowledged that certain serial
protocols would have been easy to implement since they were known for hospital
bed (id. at ¶ 13), indicating his familiarity with communication networks. There
are other inventors of the ’390 patent, but we have not been directed to evidence of
their education level nor experience.
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There is also evidence of the “(6) educational level of active workers in the
field.” Daiichi Sankyo Co., 501 F3d at 1256 (quoting Envtl. Designs Ltd., 713
F.2d at 696). We focus particularly on Mr. Michael Hayes, an employee of
Stryker, since he was involved in the development of networked hospital beds in
the medical device industry and is therefore an active worker in the relevant field.
Mr. Hayes, like Mr. Dixon, is an electrical engineer with a Bachelor’s degree in
Electrical and Electronic Technology. Hayes Dec. ¶ 3. Because both of the active
workers in the field of invention – Mr. Dixon and Mr. Hayes – have a Bachelor
degree in electrical engineering, it is reasonable to find that the hypothetical person
has at least a Bachelor degree in electrical engineering.
Mr. Hayes also testified that that he had prior experience, before joining
Stryker, in designing and developing control panels that used communication
networks to communication between panels. Hayes Decl. ¶ 4. Eventually, as an
electrical engineer at Stryker, Mr. Hayes applied this knowledge to the
development of hospital beds with communication networks. Id. at ¶¶ 6-8. Mr.
Hayes testified that he regularly reviewed journals in various fields, including in
electrical engineering and medical devices. Id. at ¶ 12. Mr. Hayes further testified
that as part of his responsibilities at Stryker, he “attended several meetings of the
group CAN in Automation (CiA), which is directed to the implementation of
controller area networks (“CAN”) in a variety of applications.” Id.
Mr. Hayes’ testimony about having knowledge of communication networks,
including CAN, is consistent with Heins, Chatenever, Zeltwanger 1999, and
Etschberger 2001, each of which described the application of CAN to medical
devices. This evidence reinforces the finding that the field of the invention is
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multidisciplinary, where the hypothetical worker is familiar with both medical
devices and communication networks.
The “(2) type of problems encountered in the art [and] (3) prior art solutions
to those problems” are other factors to be considered when determining the level of
skill of the hypothetical person. Daiichi Sankyo Co., 501 F3d at 1256 (quoting
Envtl. Designs Ltd., 713 F.2d at 696). There is adequate evidence in this record
that CAN was routinely applied to the challenges of implementing communication
networks in medical devices. CAN is a serial communication network that
“efficiently supports distributed realtime control with a very high level of
security.” Bosch, p. 4. It is described as a cost effective and efficient solution that
meets the “requirements that the assignment of message identifiers to
communication functions be standardized for certain applications.” Id. at 1. At
least five publications have been cited in which CAN is implemented in medical
devices (Heins, Zeltwanger 1999, Zeltwanger 2002, Etschberger 2001,
Chatenever), providing sufficient evidence that it was considered by the
hypothetical person of ordinary skill in the art to address communication network
problems encountered with medical devices.
The hypothetical ordinary skilled worker at the time of the invention, based
on this evidence, is a person with at least a Bachelor’s degree in Electrical
Engineering who worked in the multidisciplinary field of medical devices and
communication networks. This hypothetical person was familiar with CAN
networks and knew that the CAN could be successfully adapted to the challenges
posed by medical devices.

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C3. Hypothetical person had knowledge to implement CAN in a hospital
bed
The question in dispute is whether the hypothetical person would have had
the knowledge to implement CAN in a hospital bed. A preponderance of the
evidence supports the finding that the hypothetical person was familiar with using
CAN networks in medical devices. Testimony by Hill-Rom’s declarant’s Dr.
Hespanha and Mr. Dixon indicate that implementation of CAN in a hospital bed
required consideration of numerous factors and was not simply a matter of
substituting an off-the-shelf CAN system for the communication network in
Kummer’s hospital bed. Stryker did not dispute that implementing CAN required
consideration of a number of factors, but took the position that it was routine and
within the level of ordinary skill in the art to have done so.
In support of their position that the ordinary skilled worker could not have
implemented CAN in Kummer’s hospital bed, Hill-Rom cited Mr. Hayes’s
testimony that “Stryker worked with a third party design firm to assist in the design
and implementation of the CAN network on our hospital beds,” a firm with
“extensive experience designing and implementing CAN networks across
numerous industries.” Hayes ¶ 27. Because Mr. Hayes retained a third party
design firm to implement CAN, Hill-Rom contends implementation was beyond
his skill and “he required persons of extra-ordinary skill in CAN to assist with
implementing CAN on his products.” Appeal Br. 10.
Hill-Rom’s contention is inconsistent with the evidence that CAN had been
implemented in X-ray devices (e.g., Heins and Zeltwanger 1999) and other
medical devices. Hill-Rom did not persuasively show that X-ray device
implementation was so different from implementation in a hospital bed that the
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hypothetical person could implement one, but not the other. Dr. Hespanha testified
that “[c]hanging the communication network protocol in any system involves
significant re-design, testing, and validation of both hardware and software
elements” (Hespanha Decl. ¶ 15), but given that CAN was implemented in X-ray
devices as taught by Heins and Zeltwanger 1999, the skilled worker clearly knew
how to re-design, test, and validate CAN for medical devices. Mr. Dixon’s
testimony about the specific functional requirements of a bed (Dixon Decl. ¶¶ 12,
14, 18) is simply a recitation of the functional modules, but does not explain how
implementing them with CAN, or CANopen, would be any different than the
functional modules in other medical devices or products in other industries.
The fact that Mr. Hayes consulted with a third party design firm is not
inconsistent with it being within his skill to have implemented CAN on his own.
Mr. Hayes specifically states that the reason he turned to a design firm with
expertise in CAN was to save Stryker “time and money.” Hayes Decl. ¶ 27. Mr.
Hayes declaration provides evidence that the hypothetical person did not limit
himself to the medical field, but routinely consulted the scientific literature and
attended conferences, meetings, and trade shows, in fields of “electrical
engineering, component engineering, industrial controls, software development,
system architecture, [and] medical devices,” evidence of the multidisciplinary
nature of the field. Id. at ¶ 12. Mr. Hayes’ consultation with a design firm with
CAN expertise is of the same type of activities as reading scientific journals and
attending meetings and conferences, because each are sources of the hypothetical
person’s knowledge.

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C4. Simple substitution
Hill-Rom argues that substituting CAN for the network in Kummer was not
“simple substitution of a single element,” but required more than routine
engineering work. Rebuttal Br. 7. However, Hill-Rom, despite making these
arguments, has not identified a specific deficiency in the prior art.
Claim 1 recites “a controller area network (CAN) communicating with the
pressure control system, the CAN having a number of modules and a serial bus
connecting the modules such that the modules are in communication with each
other.” The Examiner specifically identified these features in the prior art.
Hill-Rom identified factors that would have to be considered when utilizing CAN
in Kummer’s hospital bed, but did not address the fact that numerous secondary
publications were cited in the rejections which provided guidance in how to
implement CAN in a medical device.
Hill-Rom also contends:
The Examiner fails to appreciate the ’390 patent’s significant
discussion of the implementation of the specific CAN hardware and
the communications between various modules. (See e.g. ’390 patent,
cl. 29, l. 45 to cl. 30, l. 60 describing the interaction of modules; cl.
32, l. 62 to cl. 33, l. 10 describing the pertinent hardware; cl. 33, l. 11
to cl. 35, ll. 16, describing the operation of application layer and
communications). In the context of the ’390 patent, it is these details
that teach one of ordinary skill in the art, who otherwise lacks this
knowledge, how CAN is implemented in the particular environment
of the claimed apparatus.
Appeal Br. 7.
However, as pointed out by the Examiner (RAN 7, 10), this disclosure does
not appear to go beyond what is disclosed in the cited prior art. At column 29, line
53, the ’390 patent refers to a serial bus and modules, elements said by the
Examiner to be disclosed in Bosch CAN Specification (ACP 5) and other
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secondary references. Columns 29-30 refer to various modules, but claim 1 does
not require the presence of these specific modules. Thus, Hill-Rom is pointing to
elements that do not appear in the claim. Similarly, the disclosure at columns 32-
33 pointed to by Hill-Rom involves hardware that is not specifically recited in
claim 1. The ’390 patent disclosure at columns 33 to column 35 describes
interface and protocol software, but – as pointed out by the Requester (Rebuttal Br.
9) – the patent expressly refers to CANopen for this implementation (‘390 patent,
col. 33, ll. 14-18), which was known in the prior art and cited in the rejections.

C4. Did the worker have the skill to implement CAN in a hospital bed?
In KSR, 550 U.S. at 417, the Court invoked the skill of the hypothetical
worker in determining whether a variation was patentable under § 103. (“If a
person of ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.”) Having determined that the hypothetical worker in this case had
skill in both medical devices and communication networks, the next step is to
determine whether such a worker had the skill to implement CAN in a hospital
bed. The Examiner did not simply rely on the knowledge of the person of ordinary
skill to fill the alleged “gaps” in the Examiner’s factual analysis as stated by
Hill-Rom. Appeal Br. 5. Rather, the Examiner properly cited prior art
publications that described the only expressly recited CAN limitations in claim 1
of “a number of modules and a serial bus connecting the modules such that the
modules are in communication with each other.” The hypothetical worker is
presumed to be aware of all the prior art. Custom Accessories, 807 F.2d at 962.
For instance, the Examiner found:
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1. “Bosch CAN Specification teaches a CAN that meets the claimed
limitations, such as a serial bus connecting modules (see, e.g., Part A pages 5-8).”
ACP 5
2. “Zeltwanger (1999), like Bosch CAN Specification, teaches a CAN
having a serial bus connecting modules (see, e.g., pages 64, 66, 67, 70, and 71).
ACP 8.
Hill’s Rom’s analysis mistakenly faults the Examiner for relying on the level
of skill to meet gaps in the factual analysis. To the contrary, as shown above, the
Examiner specifically identified the claimed limitations of CAN in the prior art and
properly imputed such knowledge to the hypothetical worker.
For the foregoing reasons, we conclude that the Examiner’s determination
that claim 1 is obvious in view of Kummer and the cited secondary publications is
supported by a preponderance of the evidence. Claims 2, 13, 14, and 20 were not
separately argued and fall with claim 1.

REJECTIONS B-E
Hill-Rom asserts that Osborne, Total care, Travis, and Weismiller are
cumulative to Kummer. Appeal Br. 24-25. Hill-Rom relied on the same
unpersuasive arguments for Grounds B-E as they did for Ground A. Id. at 25-29.
We therefore conclude that the Examiner’s determination that claim 1 is obvious as
set forth in Grounds B-E is supported by a preponderance of the evidence. Claims
2, 13, 14, and 20 were not separately argued and fall with claim 1.

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TIME PERIOD FOR RESPONSE
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 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).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED

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peb

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BARNES & THORNBURG LLP (HILL-ROM)
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