Ex Parte Baker et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11524182 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLARK R. BAKER, JR. and JOSEPH DOUGLAS VANDINE
____________

Appeal 2010-004015
Application 11/524,182
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
EDWARD A. BROWN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004015
Application 11/524,182

2
STATEMENT OF THE CASE
Clark R. Baker, Jr. and Joseph Vandine (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a) claims 1-7 and 24-30 as unpatentable over Mondry (US 5,682,877,
issued Nov. 4, 1997) and Cho (US 2004/0134496 A1, published Jul. 15,
2004). Claims 8-23 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a gas supply device and method for
“closed-loop control of a medical device based on monitored physiologic
parameters” of a patient, e.g., blood oxygen saturation. Spec. 1, para. [0001]
and figs. 1-2.
Claims 1 and 24 are representative of the claimed invention and read
as follows:
1. A method for automatically controlling blood oxygen
saturation in a patient, comprising:
delivering a gas mixture to the patient;
monitoring at least one physiologic parameter of the
patient;
determining a physiologic delay between delivering the
gas mixture and detection of a corresponding response to
delivering the gas mixture; and
automatically controlling the delivery of the gas mixture
based at least in part upon the delay detected and based on a
value of the physiologic parameter.

24. A gas supply device for automatically controlling blood
oxygen saturation in a patient, comprising:
means for delivering a gas mixture to the patient;
Appeal 2010-004015
Application 11/524,182

3
means for monitoring at least one physiological
parameter of the patient;
means for determining a physiological delay between
delivering the gas mixture and detection of a corresponding
response to delivering the gas mixture; and
means for automatically controlling the delivery of the
gas mixture based at least in part upon the delay detected and
based on a value of the physiological parameter.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellants present essentially identical arguments with respect to the
rejection of independent claims 1 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Mondry and Cho. As such, the following analysis applies
equally to both independent claims.
Appellants argue that in contrast to independent claims 1 and 24,
neither Mondry nor Cho discloses (1) determining a physiological delay
between delivering the gas mixture and detection of a corresponding
response to delivering the gas mixture; and (2) automatically controlling the
delivery of the gas mixture based at least in part upon the delay detected and
based on a value of the physiological parameter. App. Br. 6 and 10. See
also App. Br., Claims Appendix.
Specifically, Appellants first argue that the circulation delay time
(Tcirc) of Mondry is “merely a correction factor that can be adjusted to
compensate for resonance, regardless of the cause of the resonance.” App.
Br. 7. As such, according to Appellants, the Tcirc (circulation delay time) of
Mondry is not directly related to an actual measurement of circulation delay.
Appeal 2010-004015
Application 11/524,182

4
Id. Thus, in contrast to claims 1 and 24 which require an automatic control
of gas delivery based upon a measured delay, in Mondry, delivery of the gas
mixtures is based upon merely adjusting the value of Tcirc to compensate
for resonance. App. Br. 8-9. Appellants also note that while the intravenous
ether measurement test of Mondry is an obsolete test for determining arm-to-
lung circulation time, it is “not equivalent to the presently recited features of
claim 24.” App. Br. 8.
Appellants further argue that the circulation delay time (CDT) of Cho,
which is the amount of time from the end of an apnea or hypopnea episode
or the beginning of a hyperpnea episode to the subsequent minimum in
oxygen saturation, is “not equivalent to determining a physiologic delay
between delivering the gas mixture and detection of a corresponding
response.” App. Br. 10.
In this case, the Examiner found, and we agree, that Mondry discloses
a gas delivery device monitoring at least one physiological parameter,
namely, blood oxygenation level, and using a microprocessor for controlling
the delivery of gas based on the at least one physiological parameter and the
circulation time delay (Tcirc). Ans. 3. Specifically, the Examiner found that
Mondry discloses: (1) the use of a pulse oximeter to measure blood
oxygenation level (Final Rejection 3, mailed Jun. 9, 2009); (2) that Tcirc
may be entered manually by an operator following an ether test1 (i.e., a test
to measure actual circulation time) (Ans. 4-6); and (3) that Tcirc (see step
406 of fig. 11a) is a factor used in the algorithm control logic of the

1 An “ether test” is an “obsolete test to determine arm-to-lung
circulation time in which diluted ether is injected intravenously and the end
point taken when the subject coughs or tastes ether or the observer smells
ether on the subject’s breath.” App. Br., Evidence Appendix, Exhibit A.
Appeal 2010-004015
Application 11/524,182

5
controller (i.e., microprocessor 364) for automatically controlling gas
delivery (Ans. 6). See also Mondry, col. 11, l. 18 and ll. 47-60, col. 14, ll.
19-26 and figs. 1 and 11a. The Examiner further found that Mondry fails to
disclose determining a physiologic delay such that the delivery of gas is
automatically controlled based in part on the delay detected. Ans. 3. As
such, the Examiner then turned to Cho for disclosing an automatic
determination of CDT (circulation delay time) (i.e., Tcirc) through the use of
a pulse oximeter. Ans. 4 and 6. See also Cho, para. [0012]. Therefore, the
Examiner concluded that it would have been obvious for a person of
ordinary skill in the art to determine the circulation time as taught by Cho in
the device and method of Mondry because “it would have allowed an
accurate determination of circulatory delay time without need for performing
an invasive intravenous ether test.” Ans. 4.
Although we appreciate Appellants’ position that Mondry discloses
that Tcirc may be a factor that is continually adjusted by an operator or by
the system to eliminate resonance, we note that this is not the only way in
which Tcirc is determined by Mondry’s system. Like the Examiner, we find
that Mondry also discloses an alternative way, namely, to determine Tcirc
from an ether test (which measures an actual Tcirc value, see fn [1]) and
manually entering the determined value into Mondry’s system.
Furthermore, Cho specifically discloses automatic determination of CDT
(i.e., Tcirc) through the use of a pulse oximeter, which Mondry’s system
already has for measuring blood oxygenation levels.
As such, Appellants’ claimed gas delivery device and method is
nothing more than using the oximeter in Mondry’s system to automatically
determine Tcirc (i.e., the circulation delay time/ physiological delay) as
Appeal 2010-004015
Application 11/524,182

6
taught by Cho. We do not find that such a modification would have been
uniquely challenging to a person of ordinary skill in the art, because it is “the
mere application of a known technique to a piece of prior art ready for the
improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007).
The modification appears to be the product not of innovation but of ordinary
skill and common sense. Moreover, as acknowledged by Appellants, the
ether test “is an obsolete test for determining arm-to-lung circulation time.”
See App. Br. 8. Emphasis added. As such, we agree with the Examiner that
substitution of the automatic pulse oximetry of Cho for the manual ether test
of Mondry is merely an obvious update in technology in order to gain the
commonly understood benefits of accurate and quick determination of Tcirc
without having to do an invasive measurement (e.g., via an ether test). Ans.
4 and 6. Final Rejection 3. See also Leapfrog Enterprises, Inc. v. Fisher
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“one of ordinary skill in
the art . . . would have found it obvious to combine the Bevan device with
the SSR to update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost”.)
Appellants further argue that combining Mondry and Cho would teach
away from the claimed invention because the devices of the Mondry and
Cho references are based on different principles of operation. App. Br. 12.
See also, Reply Br. 6. According to Appellants, because Mondry relates to
adjustments based on resonance, whereas Cho relates to relative differences
between apnea, hypopnea, and hyperpnea episodes, combining the Cho
reference with the Mondry reference would destroy the principle of
operation of the Mondry reference. App. Br. 12. See also Reply Br. 6.
Appeal 2010-004015
Application 11/524,182

7
Appellants further argue that adjusting a value of the Tcirc factor based on
resonance, as disclosed in Mondry, teaches away from the claimed
invention. App. Br. 12-13
We are not persuaded by Appellants’ teaching away argument
because differences between two references are alone insufficient to
establish that such references “teach away” from any combination thereof.
See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). As noted above,
Mondry’s adjustments of Tcirc based on resonance is not the only way in
which Tcirc is determined by Mondry’s system. As such, we fail to see how
determining Tcirc automatically via a pulse oximeter, as taught by Cho,
would alter the principle of operation of Mondry, when Mondry already
includes pulse oximetry. Appellants do not point to any passage in Mondry
that "criticize[s], discredit[s] or otherwise discourage[s]" using pulse
oximetry to determine Tcirc. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (prior art does not teach away from claimed subject matter merely
by disclosing a different solution to a similar problem unless the prior art
also criticizes, discredits or otherwise discourages the solution claimed).
In conclusion, for the foregoing reasons, we shall sustain the rejection
of independent claims 1 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Mondry and Cho. With respect to dependent claims 2-7 and 25-30,
Appellants do not present additional arguments. App. Br. 13. Accordingly,
the rejection of claims 2-7 and 25-30 is likewise sustained.

DECISION
The Examiner’s decision to reject claims 1-7 and 24-30 is affirmed.
Appeal 2010-004015
Application 11/524,182

8
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls