Ex Parte Baker et al

Patent Trial and Appeal Board

Aug 21, 2017

12165241 (P.T.A.B. Aug. 21, 2017)

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.
12/165,241 06/30/2008 Clark R. Baker H-NE-00215/TYHO:0042 1613
52144 7590
Covidien LP
ATTN: IP Legal
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
FOREMAN, JONATHAN M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARK R. BAKER and DARYL BORDON
Appeal 2016-0055611
Application 12/165,241
Technology Center 3700
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a
physiological monitor and a system that includes that monitor. The
Examiner rejected the claims as anticipated and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1—5, 7, 10, 12, 13, 24, 26, 28, and 29, under 35 U.S.C.
§ 102(b), as anticipated by Nagashimada2 (Final Action 2—3 (entered May
27,2014));
1 Appellant identifies Covidien LP, as the real party in interest. Appeal Br.
2.
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Application 12/165,241
(2) Claim 6, under 35 U.S.C. § 103(a), for obviousness over
Nagashimada and Uenishi2 3 (Final Action 3 4);
(3) Claims 1—4 and 7—13, under 35 U.S.C. § 103(a), for obviousness
over Cho4 and Nagashimada (id. at 4—5); and
(4) Claims 1—4, 7, 8, 10, 12, 13, 22, and 24—27, under 35 U.S.C.
§ 103(a), for obviousness over Fox5 and Nagashimada (id. at 5—6).
Claims 1 and 10, the sole independent claims on appeal, are
representative and read as follows (Appeal Br. 21, 22 (some indentation
added)):
1. A physiological monitor comprising:
a display; and
a processor configured to cause display of a progress
indication indicative of a time remaining before a physiological
parameter is initially displayed on the display prior to initial
posting of the physiological parameter,
wherein the processor is configured to determine
an approximate wait-time until the physiological parameter is
initially displayed and to determine the progress indication
based at least in part upon the approximate wait-time, and
wherein the processor is configured to analyze the
progress towards the initial posting of the physiological
parameter and to modify the approximate wait-time and the
progress indication based at least in part upon the analysis.
10. A system, comprising:
a monitor, comprising:
a display; and
a processor configured to cause display of a
progress indication indicative of a time remaining before
2 US 6,493,069 B1 (issued Dec. 10, 2002).
3 US 2007/0135717 A1 (published June 14, 2007).
4 US 2006/0015022 A1 (published Jan. 19, 2006).
5 US 5,410,474 (issued Apr. 25, 1995).
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Application 12/165,241
a physiological parameter is initially displayed on the
display prior to initial posting of the physiological
parameter,
wherein the processor is configured to determine
an approximate wait-time until the physiological
parameter is initially displayed and to determine the
progress indication based at least in part upon the
approximate wait-time, and
wherein the processor is configured to analyze the
progress towards the initial posting of the physiological
parameter and to modify the approximate wait-time and the
progress indication based at least in part upon the analysis; and
a sensor configured to provide information to the
monitor.
ANTICIPATION
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants persuade us that a preponderance of the evidence does not
support the Examiner’s determination of anticipation as to independent
claims 1 and 10. In particular, Appellants persuade us that Nagashimada
does not describe a physiological monitor with a processor “configured to
determine an approximate wait-time until the physiological parameter is
initially displayed and to determine the progress indication based at least in
part upon the approximate wait-time,” as claims 1 and 10 both require.
Appeal Br. 21—22.
Nagashimada discloses a “blood sugar measuring instrument for
measuring the blood sugar level of blood on the basis of change in the color
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Application 12/165,241
of the reagent having reacted with the blood.” Nagashimada, Abstract.
Nagashimada explains further:
The instrument irradiates light onto a specimen to which blood
is applied, detects the intensity of the reflected light with a
photo detector, determines absorbency from the specimen every
one second after the specimen has started coloring by the
applied blood, and calculates the blood sugar level of the blood
applied to the specimen on the basis of the absorbency when
change in the absorbency has become 2% or less.
Id.
In the embodiment cited by the Examiner, “Embodiment 2” {id. at
6:36), Nagashimada discloses that its device includes a display composed of
“rotating and moving marks (predetermined marks), for example, as shown
in FIG. 8 [which] are displayed on the display 110 (roulette display), and the
speed of rotating and moving is changed corresponding to the remaining
time until the completion of measurement.” Id. at 6:42 46.
Nagashimada explains that the display has two modes: (1) a first
mode showing rotating and moving marks, displayed when the blood sample
is initially introduced into the instrument, and (2) a second display mode in
which the speed of the rotating/moving marks is changed. Id. at 7:33—63.
Nagashimada explains further that its instrument triggers the switch
from the first display mode to the second display mode when the instrument
obtains successive absorbency readings that are sufficiently consistent to
anticipate an imminent blood glucose reading. See id. at 7:59-63 (“When
change [in absorbency reading] per second has become 5% or less, the
process is proceeded to step S27, and the display mode is shifted to the
second display mode in which the moving speed of the above-described
marks is changed (e.g. lowered).”); see also id. at Fig. 11 (flow chart
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Application 12/165,241
showing change in absorbency as triggering second display mode at step
S27).
Thus, rather than determining an approximate wait-time as required
by Appellants’ claims 1 and 10, Nagashimada’s device only determines
whether successive absorbency readings are sufficiently consistent to allow
for a substantially accurate blood glucose reading. Indeed, as Nagashimada
further explains, the length of time between the switch to the second display
mode and the final measurement is essentially constant, that is,
predetermined rather than being determined by the device, and the user,
rather than the device, can estimate the wait-time:
When the mode of displaying is changed from the first
display mode to the second display mode, it is preferable that
the length of time from shifting to the second display mode to
the completion of measurement is substantially constant,
because the user can estimate the length of time until the
completion of measurement. . . .
[E]ven if the time until the completion of measurement
increases due to a high blood sugar level, the length of time
after shifting to the second display mode to the completion of
measurement can be substantially constant.
Nagashimada 8:10-29 (emphasis added).
Given these disclosures, Appellants persuade us that Nagashimada
does not describe a device with a processor configured to determine an
approximate wait-time until the physiological parameter is initially
displayed, and to determine the progress indication based at least in part
upon the approximate wait-time, as claims 1 and 10 both require. We have
carefully considered the Examiner’s arguments in this regard, but do not find
them persuasive, in light of the relevant disclosures in Nagashimada
explaining how its device functions, discussed above.
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Application 12/165,241
We acknowledge Nagashimada’s disclosure that, in Embodiment 2,
the display is not limited to the rotating marks, “but may be displays such as
digital displays or clocks.” Nagashimada 8:8—9. Nonetheless, the Examiner
does not identify, nor do we discern, a specific description in Nagashimada
explaining how its device functions when using digital displays or clocks.
Given the absence of a specific description as to how Nagashimada’s
device functions when using digital displays or clocks, we are not persuaded
that Nagashimada’s disclosure of using digital displays or clocks
demonstrates that its device makes an actual wait-time determination as
Appellants’ claims 1 and 10 require, as opposed to the actually described
determination of consistent absorbency readings, discussed above. See In re
Brink, 419 F.2d 914, 917 (CCPA 1970) (“[I]f a reference is ambiguous and
can be interpreted so that it may or may no[t] constitute an anticipation of an
appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based
upon the ambiguous reference is improper.”); see also Richardson v. Suzuki
Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (For a reference to
anticipate a claim, “[ejvery element of the claimed invention must be
literally present, arranged as in the claim.”).
In sum, for the reasons discussed, Appellants persuade us that
Nagashimada does not describe a physiological monitor having all of the
elements required by independent claims 1 and 10. We, therefore, reverse
the Examiner’s rejection of those claims, and their dependent claims 2—5, 7,
12, 13, 24, 26, 28, and 29, as anticipated by Nagashimada.
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OBVIOUSNESS—
NAGASHIMADA AND UENISHI
In rejecting claim 6, which depends from claim 1 discussed above,
over Nagashimada and Uenishi, the Examiner cited Nagashimada for the
disclosures discussed above, and cited Uenishi as evidence of the
obviousness of including in Nagashimada’s device the speaker recited in
claim 6. Final Action 3^4.
Because the Examiner does not identify, nor do we discern, any
teaching in Uenishi that remedies the shortcomings of Nagashimada
discussed above as to claim 1, we reverse the Examiner’s rejection of claim
6 over Nagashimada and Uenishi.
OBVIOUSNESS—
CHO OR FOX COMBINED WITH NAGASHIMADA
In the obviousness rejections in which Nagashimada is combined with
either Fox or Cho, the Examiner relies on Nagashimada as teaching a
processor configured to determine an approximate wait-time until a
physiological parameter is initially displayed, and to determine the progress
indication based at least in part upon the approximate wait-time, as claims 1
and 10 both require. See Final Action 4 (“Nagashimada et al. teach a
physiological monitor having a processor . . . wherein the processor is
configured to determine an approximate wait-time until the physiological
parameter is initially displayed and to determine the progress indication
based at least in part upon the approximate wait-time . . . .”); see also id. at 6
(same).
As discussed above, however, Appellants persuade us that
Nagashimada does not teach a process configured in the manner required by
claims 1 and 10. Because the Examiner does not identify, nor do we discern,
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any teaching in either Cho or Fox that remedies the shortcomings of
Nagashimada discussed above as to claims 1 and 10, we reverse the
Examiner’s rejections in which Nagashimada is combined with either Fox or
Cho.
SUMMARY
For the reasons discussed, we reverse each of the Examiner’s
rejections.
REVERSED
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