Ex Parte Beckmann et al

Board of Patent Appeals and Interferences

Aug 18, 2009

11058623 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte UDO BECKMANN and HENNING GERDER
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Appeal 2008-002786
Application 11/058,623
Technology Center 3700
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Decided1: August 18, 2009
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Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 Heard August 6, 2009.

Appeal 2008-002786
Application 11/058,623

2
This appeal under 35 U.S.C. § 134 involves claims 1-12 and 14-22,
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a patient care unit with a bed for
accommodating a patient (claims 1-8) and a patient care unit system (claims
9-12 and 14-22). Claims 1 and 21 are illustrative:
1. A patient care unit with a bed for accommodating a patient, the
patient care unit comprising:
means for receiving sensor signals of the patient from sensors that are
not a part of the patient care unit; and
means non-detachably integrated to the patient care unit for passing
on the sensor signals to a cable connection for connecting said patient care
unit to a power supply, so that the sensor signals reach said corresponding
measuring instruments or treating devices for evaluating the sensor signals
via the power supply.

21. [A patient care unit system comprising:
one or more measuring instruments or treating devices connected to a
power source via a power cable for providing power to said one or more
measuring instruments or treating devices, said one or more measuring
instruments or treating devices each including at least a power transceiver
for sending and receiving signals over said power line via said power source;
a patient care unit including a bed with bed surface for
accommodating a patient and a bed support structure supporting said bed
with bed surface;
a concentrator integrated into and fixed in said bed support structure,
said concentrator including terminals;
a power supply cable integrated into and fixed in said bed support
structure, said power supply cable providing power to the patient care unit
and to said cable concentrator;
a plurality of sensors operatively positioned relative to the patient with
each of said sensors generating sensor signals for said one or more
measuring instruments or treating devices;
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Application 11/058,623

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an operative connection from each of said sensors to one of said
terminals; and
a transmission means non-detachably connected within said patient
care unit including a transceiver for passing on the sensor signals from said
cable concentrator terminals along said power supply cable to said
measuring instruments or treating devices via said power supply for
evaluating and/or displaying information provided from or derived from said
sensor signals]
further comprising an inductance integrated into said patient care unit
and connected to one of said terminals, at least one of said sensors including
a transponder coil for receiving signals and power from said inductance and
transmitting said sensor signals from said at least one of said sensors to said
inductance.

The Examiner relies on the following evidence:
Malinouskas US 5,882,300 Mar. 16, 1999
Bell US 6,493,568 B1 Dec. 10, 2002
Cosentino US 2006/0015017 A1 Jan. 19, 2006

The rejections as presented by the Examiner are as follows:
1. Claims 1-8 and 16-22 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking adequate written descriptive support.
2. Claims 1-12 and 14-20 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Bell and Cosentino.
3. Claims 21 and 22 stand rejected under 35 U.S.C § 103(a) as unpatentable
over the combination of Bell, Cosentino, and Malinouskas.
We reverse.

Appeal 2008-002786
Application 11/058,623

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Written Description:
ISSUE

Does Appellants’ Specification have written descriptive support for a
means for passing on sensor signals that is “non-detachably” integrated to
the patient care unit?

FINDINGS OF FACT
FF 1. The Examiner finds that Appellants’ Specification lacks written
descriptive support for the recitation in Appellants’ claims of a “means to
pass the sensor signals on or transmission means that are non-detachably
integrated into the patient care unit” (Ans. 4).
FF 2. The Examiner finds that Appellants’ Specification fails to describe
“how the incorporation or integration is done, i.e. whether it is permanent or
detachable” (Ans. 6).
FF 3. The Examiner did not include claim 9 in this ground of rejection.
Claim 9 requires, inter alia, a transmission means permanently fixed within
said patient care unit (Claim 9).
FF 4. For clarity, Appellants’ Figure 2 is reproduced below:

“Figure 2 is a schematic view of a patient care unit with a bed support with a
receiving antenna” (Spec. 5: ¶ 0017).
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FF 5. Appellants’ Specification discloses:
As an alternative, the signal transmission takes place in a
wireless manner by means of radio (of any transmitting unit
incorporated in the patient care unit 1) from the patient care unit
1 to the measuring instruments or treating devices 2.

(Spec. 6: ¶ 0019.)
FF 6. Appellants’ Specification discloses:
According to Figure 2, at least one receiving antenna 11 is
integrated in the patient care unit 1 or in the bed support 10 in
order to receive the sensor signals from the wireless, battery
operated sensors 9 and to subsequently forward them as
described.

(Spec. 6: ¶ 0020.)

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, first
paragraph, “the [A]pplicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). “In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In this regard, we note that it is
well established that alternative elements positively recited in a specification
may be explicitly excluded in the claims. See, e.g., In re Johnson, 558 F.2d
1008, 1019 (CCPA 1977) (“[t]he specification, having described the whole,
necessarily described the part remaining.”).

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ANALYSIS
The Examiner finds that Appellants’ Specification lacks written
descriptive support for the recitation in Appellants’ claims of a “means to
pass the sensor signals on or transmission means that are non-detachably
integrated into the patient care unit” (FF 1). More specifically, the Examiner
finds that Appellants’ Specification fails to describe “how the incorporation
or integration is done, i.e. whether it is permanent or detachable” (FF 2).
The Examiner’s position is inconsistent with the requirement in Claim 9 that
the transmission means be permanently fixed within said patient care unit
(FF 3).
Further, Appellants contend that
The ordinary meaning of “incorporated” is to “unite or work
into something already existent so as to form an
indistinguishable whole” or “to unite in or as one body. . . .
Further, the ordinary meaning of “integrated” is defined as “to
form, coordinate, or blend into a functioning or unified whole”.

(Reply Br. 1 (emphasis removed).) Therefore, Appellants contend that a
“person of ordinary skill in the art would appreciate from these terms that
the transmission means is permanently fixed within the patient care unit as
discussed in paragraphs [0019] and [0020] of the [S]pecification” (Reply Br.
1-2). Stated differently, even if the term incorporated or integrated reads on
both detachably and non-detachably incorporating/integrating the
transmission means into a patient care unit, having disclosed the whole (e.g.,
both detachably and non-detachably) Appellants have necessarily described
both alternatives.
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For the foregoing reasons, we are not persuaded by the Examiner’s
conclusion that Appellants’ Specification lacks written descriptive support
for the term “non-detachably” integrated.

CONCLUSION OF LAW
Appellants’ Specification provides written descriptive support for a
means for passing on sensor signals that is “non-detachably” integrated to
the patient care unit. The rejection of claims 1-8 and 16-22 is reversed.

Obviousness:
PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).

The combination of Bell and Cosentino:

ISSUE
Does the evidence relied upon by the Examiner support a conclusion
that Appellants’ claims are prima facie obvious?

FINDINGS OF FACT
FF 7. The Examiner directs attention to Bell’s “figures 1 and 6” (Ans. 4).
Bell, however, does not have a figure 6.
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FF 8. The Examiner directs attention to paragraph 74 of Bell to teach, inter
alia, a wireless transmitter (id.). Bell, however, does not have a paragraph
74, nor does Bell teach a wireless transmitter.
FF 9. The Examiner directs attention to paragraph 139 of Bell to teach
“that some analysis occurs at the central station” and thereby support a
finding “that the signal[s] are wirelessly transmitted to the central station for
evaluation” (id.). Bell, however, does not have a paragraph 139, does not
teach a “central station” or wireless transmissions.
FF 10. The Examiner correctly finds that Bell fails to teach the use of a
power supply to send signals (id.).
FF 11. The Examiner finds that “Cosentino teaches that it is well known to
send data via a power supply, to eliminate any unnecessary connections”
(id.).
FF 12. The Examiner concludes that “it would have been obvious to modify
West [(US 6,544,173 B2 (US 2002/0013517), issued Apr. 8, 2003)] to
transmit the data via a power supply, as it is merely the substitution of one
known equivalent for another” (id. (emphasis added)).
ANALYSIS
Appellants contend, inter alia, that the prior art relied upon by the
Examiner fails to teach the features or advantages of the claimed invention
(App. Br. 13). We agree. The Examiner has relied on factual findings not
present in the references relied upon (FF 5-7). In addition, the Examiner’s
conclusion of obviousness is based on a reference, West, not before us on
Appeal (FF 10).

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CONCLUSION OF LAW
The evidence relied upon by the Examiner fails to support a
conclusion that Appellants’ claims are prima facie obvious over Bell and
Cosentino.
The rejection of claims 1-12 and 14-20 under 35 U.S.C § 103(a) as
unpatentable over the combination of Bell and Cosentino is reversed.

The combination of Bell, Cosentino, and Malinouskas:

ISSUE
Does the evidence relied upon by the Examiner support a conclusion
that Appellants’ claims are prima facie obvious?

FINDINGS OF FACT
FF 13. The Examiner does not identify any additional factual findings
regarding the combination of Bell and Cosentino. Instead, the Examiner
relies on the combination of Bell and Cosentino “as applied to claims 1-12[ ]
and 14-20 [discussed] above” (see FF 5-9).
FF 14. The Examiner finds that Malinouskas “teaches that inductive
couplings are well known couplings for transmitting data in medical
systems” (Ans. 5).
FF 15. The Examiner concludes that “it would have been obvious to modify
Bell to use wireless transmission, as it is merely the substitution of one
known equivalent transmission medium for another” (id.).

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ANALYSIS
Appellants contend, inter alia, that “[t]he references together do not
suggest the combination of features claimed” (App. Br. 17).
As discussed above, the Examiner has relied on factual findings not
present in the references relied upon (FF 8 and 9). Further, since the
Examiner has incorporated his analysis of claims 1-12 and 14-20 into this
rejection, the Examiner’s conclusion of obviousness is based on a reference,
West, not before us on Appeal (FF 12). In addition, the Examiner’s
conclusion that “it would have been obvious to modify Bell to use wireless
transmission, as it is merely the substitution of one known equivalent
transmission medium for another” (FF 15) runs counter to the Examiner’s
findings that Bell teaches a wireless transmitter and wireless transmission to
a central station (FF 8 and 9). In sum, the Examiner has failed to establish
that Malinouskas makes up for the deficiencies in the combination of Bell
and Cosentino as discussed above.

CONCLUSION OF LAW
The evidence relied upon by the Examiner fails to support a
conclusion that Appellants’ claims are prima facie obvious over Bell,
Cosentino, and Malinouskas.
The rejection of claims 21 and 22 under 35 U.S.C § 103(a) as
unpatentable over the combination of Bell, Cosentino, and Malinouskas is
reversed.

REVERSED

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Application 11/058,623

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