Ex Parte Ali et al

Board of Patent Appeals and Interferences

Aug 20, 2010

10153263 (B.P.A.I. Aug. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMMAR AL ALI, DON CAROTHERS, DAVID DALKE,
MOHAMED K. DIAB, JULIAN M. GOLDMAN, MASSI E. KIANI,
MICHAEL LEE, JEROME NOVAK, ROBERT SMITH and VAL E.
VADEN
____________

Appeal 2010-0014124
Application 10/153,263
Technology Center 2600
____________

Before KENNETH W. HAIRSTON, MARC S. HOFF and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 25-27, 29-69 and 78-94. Appeal Brief 9. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

Claim 25, which further illustrates the invention, follows:

25. A portable medical device capable of determining one or more
physiological parameters of a patient and displaying indicia related to the
physiological parameters in at least two orientations, the portable medical
device comprising:
a housing adapted to accommodate components of a portable medical
device;
an input capable of receiving an output signal from a physiological sensor,
wherein the output signal includes information usable to determine one or
more physiological parameters of a patient;
a processor capable of receiving the output signal and determining display
indicia indicative of the one or more physiological parameters;
a display housed by said housing configured to present the display indicia in
at least two orientations with respect to the housing; and
a user input whose manual actuation cycles the display through the at least
two orientations.

The Rejections

1. Claims 25, 32-37, 39-41, 62, 63, 66, 67, 81, 82, 84, and 91-93 stand
rejected under 35 U.S.C. § 103(a), as being unpatentable over Halpern (U.S.
Patent 5,687,717, issued November 18, 1997) and Burrell (U.S. Patent
5,910,882, issued June 8, 1999).

2. Claims 64 and 68 stand rejected under 35 U.S.C. § 103 over Halpern and
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Burrell in further view of Register (U.S. Patent 5,661,632, issued August 26,
1997).

3. Claims 83 and 94 stand rejected under 35 U.S.C. § 103 over Halpern and
Burrell in further view of Posso (U.S. Patent 5,627,531, issued May 6,
1997).

4. Claims 26, 27, 29, 31, 38, 42-48, 50-61, 65, 69, 78-80 and 85-89 stand
rejected over 35 U.S.C. § 103 over Halpern and Burrell in further view of
Nakano (U.S. Patent 5,640,627, issued June 17, 1997).

5. Claims 30 and 49 under 35 U.S.C. § 103 stand rejected over Halpern,
Burrell and Nakano in further view of Lucente (U.S. Patent 5,566,098,
issued October 15, 1996).

6. Claim 90 under 35 U.S.C. § 103 stand rejected over Halpern, Burrell and
Nakano in further view of Posso.

7. Claims 25-27, 32-37, 39-41, 62-64, 66-68, 81-84, 92 and 94 under 35
U.S.C. § 103 stand rejected over Posso in view of Register.

8. Claims 29, 31, 38, 42-48, 50-61, 65, 69, 78, 79, 86, 88 and 90 under 35
U.S.C. § 103 stand rejected over Posso, Register and Nakano.

9. Claims 30 and 49 under 35 U.S.C. § 103 stand rejected over Posso,
Register, Nakano and Lucente.

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Rather than repeat Appellants’ arguments or the Examiner’s positions
in their entirety, we refer to the Appeal Brief (filed February 26, 2009),
Reply Brief (filed July 14, 2009) and the Answer (mailed May 15, 2009) for
their respective details. In this decision, we have considered only those
arguments actually made by Appellants. Arguments which Appellants could
have made but did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

FINDINGS OF FACTS
1. Figure 1 of Halpern is reproduced below:

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Figure 1 discloses the subsystem 11 which includes a portable computer 22
and docking station 20. The portable computer 22 includes a CRT-type
display 24 and a dedicated processor. (Column 5, lines 28-30).

ANALYSIS
Rejections based upon Halpern, Burrell, Nakano and Lucente
Appellants argue that in spite of their submission of an abundance of
strong objective evidence that a patient monitor with a multi-oriented
display is non-obvious over the cited art of record, including evidence of:
praise by others; long felt but unresolved needs; unexpected results;
copying of the invention by others, and commercial success, the claims in
the instant application were still found to be obvious. Appeal Brief 21-27.
Appellants’ evidence shows the impact of the actual use of the invention
by showing interaction with the medical community; however, we do not
find Appellants’ arguments to be persuasive because none of Appellants’
arguments or evidence accounts for the invention as it has been claimed.
Appellants assert that Halpern teaches away from a combination
with Burrell. Appeal Brief 28. Appellants argue that Halpern’s computer
22 with display 24 fails to meet the requirements of a patient monitoring
device, in spite of Appellants’ own acknowledgment of Halpern’s
disclosure of monitoring of patient data. See Appeal Brief 29. Appellants
further argue that any attempt to assert that Halpern’s computer could meet
the claim limitations requires Halpern’s computer 22 to be docked with the
large rolling chassis 12 and at least one docket monitor and, therefore, this
configuration teaches away from any potential for rotation because the
rotation of the large rolling chassis combined with the computer 22 and
module 16 is nonsensical. Id. Appellants’ assertion that the entire
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combination of Halpern must be rotated contradicts Halpern’s disclosure
because Halpern clearly discloses that the computer 22 is portable. See
FF1; Answer 14. Therefore we do not find Appellants’ arguments
persuasive.
Appellants argue that there is no motivation to combine Halpern and
Burrell because Halpern is specifically directed to medical devices while
Burrell and the GPS arts do not consider the needs of a medical device
designer such as the need to properly mount a myriad of medical devices in
an already crowded medical or emergency space. See Appeal Brief 30. The
Examiner asserted that it would have been obvious to modify the display of
Halpern’s portable computer 22 by incorporating Burrell’s at least two
orientations so as to present the information in an easily viewed manner.
See Answer 4. “Common 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.” KSR Int’l v. Teleflex Inc., 550 U.S. 398,
420 (2007). Both Halpern and Burrell rely upon displays to impart
information to the user and Burrell teaches that a display can be modified by
varying its orientation. Therefore, we do not find Appellants’ arguments that
there is no motivation to combine Halpern and Burrell to be persuasive.
Appellants argue that Halpern’s portable computer 22 is dependent
upon a substantially non-portable large chassis 12 and, therefore, in spite of
Burrell’s multiple orientations, the cumulative device would not teach a self-
contained portable medical device as recited in independent claims 25, 35,
62 and 66. See Appeal Brief 31. The Examiner asserts that the portable
device 22 of Halpern may be modified by the teachings of Burrell so that the
portable device of Halpern would be rotatable and the display indicia in the
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portable device 22 of Halpern (not the entire chassis as argued by the
Appellants) would have different orientations. See Answer 17. We agree
with the Examiner and do not find Appellants’ arguments persuasive
because the modification of Halpern is intended for the portable device 22,
and not the entire chassis.
Appellants argue that dependent claims 84, 91 and 93 are allowable
because the claims recite reorienting the display indicia based upon the
gravity-responsive sensor. Appeal Brief 33. However, we do not find the
Appellants’ arguments to be persuasive because dependent claims 84, 91,
and 93 are silent in regards to reorienting the display indicia based upon a
gravity-responsive sensor.
Appellants argue that dependent claims 64 and 68 are allowable
because the Final Office Action failed to provide a proper motivation to
combine Register’s disclosure of a soft key with the improper Halpern-
Burrell combination. See Appeal Brief 34. Appellants argue that Register
has nothing to do with the medical devices and does not teach space saving
at all. Id. We do not find Appellants’ arguments to be persuasive because
Register’s PDA soft-key is programmable to provide the flexibility needed
to conserve space. See Answer 18. See also KSR, 550 U.S. at 420.
Appellants argue that independent claims 42 and 55 are not obvious
in view of the cited prior art to Halpern, Burrell and Nakano because of the
abundance of secondary consideration evidence presented for similar
independent claims 25, 35, 62, and 66. See Appeal Brief 35. We do not
find Appellants’ arguments to be persuasive for the same reasons as we
stated above in the first paragraph of our analysis. Appellants further
argue that the Nakano invention has nothing to do with medical devices
and that one would not look to a camera for a gravity responsive sensor.
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See Appeal Brief 36. Again, we do not find Appellants’ arguments to be
persuasive for the same reasons as we have stated above. See KSR, 550
U.S. at 420.
Claims 26, 29, 31, 38, 43, 44, 46-48, 50-54, 56-61, 65, 69, 78, 83, 86,
90 and 94 fall with the independent claims from which they depend. See In
re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir. 1987) (dependent claims,
not argued separately, fall with the independent claim, even though the
dependent claims were rejected based on additional (or different)
references.).
Appellants argue that dependent claims 27 and 45 are allowable
because Nakano does not disclose a 270º orientation. See Appeal Brief 37.
The Examiner asserts that Figure 3 of Nakano shows that the device is
rotated 90º with respect to the device as shown in Figure 2 and, therefore, by
rotating the device 90º to the right from a first orientation is the same as
rotating the device 270º to the left from the same first rotation. See Answer
18-19. We agree with the Examiner and therefore we do not find
Appellants’ arguments persuasive because Nakano discloses rotating the
device 270º.
Appellants argue that dependent claims 79, 85, 87-89, 91 and 93 are
all allowable because they fail to disclose the invention as claimed. See
Appeal Brief 37-38. However, the Examiner has clearly shown that the
claimed limitations have been disclosed by the references in the manner in
which the invention was claimed. See Answer 19-20. Therefore, we do not
find Appellants’ arguments to be persuasive because Appellants are arguing
that the references do not disclose claim limitations which the Examiner has
clearly shown are disclosed by the references.

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Rejections based upon Posso, Register, Nakano and Lucente
Appellants argue that the rejection of independent claims 25, 35, 62,
and 66 under 35 U.S.C. § 103(a) over Posso and Register is improper
because Posso teaches away from the display screen of Register. See Appeal
Brief 40-42. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks
omitted). The Examiner asserts that Posso never discloses that its pulse
oximeter instrument cannot be rotated and that its display screen has a
different orientation. Answer 20. We agree. Other than Appellants’ own
rationale, Appellants have not shown that Posso teaches away from the
display screen of Register.
Claims 26, 27, 29, 31-34, 36-41, 43-48, 50-54, 56-61, 63, 65, 67, 69,
78, 81-83, 86, 90, 92 and 94 fall with independent claims from which they
depend. See In re Nielson at 1569, 1572 (dependent claims, not argued
separately, fall with the independent claim, even though the dependent
claims were rejected based on additional (or different) references.).
Appellants argue that the soft-key feature is not disclosed by Register.
See Appeal Brief 42-43. However, we do not find Appellants’ arguments to
be persuasive for the same reasons as we have stated above in regard to the
Register reference.
Appellants argue that claim 84 is allowable because it recites
reorienting the display according to the manual actuation (e.g., a user input
button) when the housing is not docketed to a docking station. See Appeal
Brief 43. The Examiner asserts that Register discloses in Figures 4 and 5
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that the display indicia with respect to housing for each manual actuation
perform the reorientation as claimed. See Answer 21. We agree with the
Examiner. Further, claim 84 recites “performing the reorientation when the
monitoring instrument housing is not docked to a docking station.”
Essentially, Appellants’ argument pertaining to the cited references failing to
disclose selecting the mode of operation based on the docking state of the
housing is without merit since the claim does not require such a correlation.
See Appeal Brief 43. We do not find Appellants’ arguments in regard to
claims 79 and 88 persuasive for the same reasons we stated for claim 84
since the dependent claims 79 and 88 do not require a docking station as
well. See Appeal Brief 44.
Appellants argue that the rejection of independent claims 42 and 55 is
improper because a prima facie case of obviousness has not been established
because of the improper combination of Posso, Register and Nakano. Id.
Appellants provide a rationale as to why the combination of Posso, Register,
and Nakano is not properly combined, however, we are not persuaded for
reasons we have stated above. See KSR, at 420.
Appellants argue that dependent claims 30 and 49 are allowable
because a prima facie case of obviousness has not been made by the
Examiner. See Appeal Brief 45. We do not find this argument persuasive
for the reason we have stated above.

DECISION
We affirm the Examiner’s 35 U.S.C. § 103(a) rejections of claims 25-
27, 29-69 and 78-94.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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