Ex parte Dieken

Board of Patent Appeals and Interferences

Nov 25, 1997

07976328 (B.P.A.I. Nov. 25, 1997)

Application for patent filed November 13, 1992,1
entitled "Stethoscope Having Microphone Therein."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ALAN P. DIEKEN

Appeal No. 95-0953
Application 07/976,3281

HEARD: November 10, 1997

Before THOMAS, BARRETT, and FLEMING, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0953
Application 07/976,328
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-4, 6-13, and 15-17, all the
claims pending in the application. Claims 5 and 14 have been
cancelled. We affirm-in-part.
The disclosed invention is directed to a stethoscope
chestpiece having an acoustic to electrical transducer mounted
within the acoustic pathway in the chestpiece.
Claim 1, the sole independent claim, is reproduced below.
1. A stethoscope chestpiece for transmitting
auscultatory sounds both acoustically and electrically,
comprising:
a stethoscope housing forming an acoustic pathway
for acoustic auscultation;
a mounting having at least one opening to permit
passage of sound in the acoustic pathway; and
an acoustic to electrical transducer residing within
the mounting and within the acoustic pathway and
positioned within the same acoustic pathway as employed
for acoustic auscultation;
whereby the same pathway of sound is used to receive
both acoustically transmitted information and
electrically generated information from the stethoscope
chestpiece.
The examiner relies on the following references:
Pfeiffer 4,071,694 January 31, 1978
Dufresne et al. (Dufresne) 5,204,500 April 20, 1993
(filed February 20, 1991)
Appeal No. 95-0953
Application 07/976,328
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The final rejection of all claims under 35 U.S.C.
§ 102(b) as being anticipated by Kempka, U.S. Patent
4,783,813, has been withdrawn (Examiner's Answer, page 3).
Claims 1-3, 9-12, and 17 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Dufresne.
Claims 1-4, 6-13, and 15-17 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Pfeiffer.
We refer to the Examiner's Answer (Paper No. 14) for a
complete statement of the examiner's position and to the
replacement Brief (Paper No. 13) and the Reply Brief (Paper
No. 16) for appellant's response.
OPINION
Grouping of claims
The examiner errs in considering the dependent claims to
stand or fall together with independent claim 1 under 37 CFR
§ 1.192(c)(5) (1994).
As appellant points out (Reply Brief, page 3): "there
were two sets of claims, one to a chestpiece [claims 1-4 and
6-8] and one to a stethoscope [claims 9-13 and 15-17]."
Claim 9 is, in effect, an independent claim to a stethoscope
Appeal No. 95-0953
Application 07/976,328
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which incorporates by reference the chestpiece limitations of
claim 1. The chestpiece limitations of claims 11-13, 15, and
16, which depend directly or indirectly on stethoscope
claim 9, parallel identically the chestpiece limitations in
claims 2-4, 6, and 7, which depend directly or indirectly on
chestpiece claim 1. We agree with appellant that it is
acceptable to refer to arguments made with respect to
identical limitations in other claims rather than repeating
the arguments. This is not the situation where a dependent
claim is stated to be patentable for the reasons given with
respect to an independent claim from which it depends.
Appellant separately argues each of dependent claims 2,
3, and 10 in the Dufresne rejection (Brief, pages 9-10). Even
if the examiner considers that claims 11 and 12 were not
properly argued, the examiner gives no excuse for not treating
claims 2, 3, and 10. Similarly, appellant separately argues
each of claims 2-4 and 6-9 in the Pfeiffer rejection (Brief,
pages 11-13). Even if the examiner considers that
claims 11-13, 15, and 16 were not properly argued, the
examiner gives no excuse for not treating claims 2-4 and 6-9.
The fact that some claims are not properly argued and could be
Appeal No. 95-0953
Application 07/976,328
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grouped to stand or fall together according to 37 CFR
§ 1.192(c)(5) does not excuse failing to treat claims that are
properly argued. As discussed, claims 11 and 12 in the
Dufresne rejection and claims 11-13, 15, and 16 in the
Pfeiffer rejection were properly argued.
The examiner also criticizes how claims 9 and 17 are
argued in the Dufresne rejection and how claims 9, 10, and 17
are argued in the Pfeiffer rejection (Examiner's Answer,
page 4). Appellant states that claim 17 is grouped with
claim 9 both in the grouping of claims for the Dufresne
rejection (Brief, page 4) and in the argument (Brief,
page 10). It is clear that claim 17 is grouped to stand or
fall with claim 9 in the Dufresne rejection. Appellant also
states that claims 10 and 17 are grouped with claim 9 both in
the grouping of claims for the Pfeiffer rejection (Brief,
page 4) and in the argument (Brief, pages 13 and 14). It is
clear that claims 10 and 17 are grouped to stand or fall with
claim 9 in the Pfeiffer rejection. The fact that the argument
section mentions the limitations of the claims does not affect
the claim grouping. The examiner's confusion with respect to
claim 17 in the Dufresne rejection and claims 10 and 17 in the
Appeal No. 95-0953
Application 07/976,328
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Pfeiffer should produce the intended result that these claims
stand or fall together with claim 9; it is not an excuse to
treat all of the other dependent claims as standing or falling
together.
Technically, the case should be remanded to the examiner
for more fact finding with respect to the dependent claims.
However, since this appeal is several years old and since the
rejections of all claims are based on anticipation which is
strictly a fact question, we will make the findings in the
first instance.
Dufresne
Appellant argues that Dufresne does not have a
"transducer . . . positioned within the same acoustic pathway
as employed for acoustic auscultation" (emphasis added), as
recited in claim 1. Dufresne describes the transducer is
"located along the acoustic sound transmission path, typically
in or very near the chestpiece" (emphasis added) (col. 4,
lines 50-52). Appellant argues that the term "within" to
describe the transducer location patentably distinguishes from
Dufresne's description of "along" to describe the location
(Brief, page 6). We disagree.
Appeal No. 95-0953
Application 07/976,328
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The term "acoustic pathway" is used four times in claim 1
and requires definition. The specification defines an
"acoustic pathway" as follows (page 5, lines 10-13): "An
acoustic pathway 25 in the chestpiece proceeds from
diaphragm 27 into chamber 24 and into hollow, preferably
detachable, stem 22." As the examiner observes (Examiner's
Answer, pages 8-9), claim 1 does not define the structure of
the acoustic pathway, such as a diaphragm chamber, an aperture
in communication with the diaphragm chamber, a tubular passage
in the chestpiece stem, etc. The acoustic pathway is broadly
all of the hollow volume extending from the diaphragm to the
earpieces.
The limitation of "a stethoscope housing forming an
acoustic pathway for acoustic auscultation" reads on the upper
piece in figures 5 and 6, identified for convenience as
element 26 (26 actually refers to the raised center portion).
The key to this rejection is recognizing that the cavity for
accepting the lower piece in figures 5 and 6, identified for
convenience as element 36 (36 actually refers to the bottom
surface of the chestpiece), and the opening 38 for connecting
tube 16 are "an acoustic pathway for acoustic auscultation."
Appeal No. 95-0953
Application 07/976,328
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The acoustic pathway is not structurally defined in claim 1 as
extending from the diaphragm. The acoustic pathway consisting
of the cavity and opening 38 in element 26 of Dufresne
corresponds to the portion of the pathway beginning at the top
of chamber 24 in appellant's figure 2, although, again, the
structure of the acoustic pathway is not recited
The limitation of "a mounting having at least one opening
to permit passage of sound in the acoustic pathway" reads on
the lower piece in figures 5 and 6, identified as element 36.
Element 36 is inserted into the acoustic pathway (the cavity
in the upper piece 26) in essentially the same way as
appellant's mounting 35 is inserted into the acoustic pathway
25. The "opening to permit passage of sound in the acoustic
pathway" reads on the "acoustic passage 44 [which] allows for
the simultaneous transmission of acoustic signals" (col. 6,
lines 38-39). Passage 44 in Dufresne corresponds to
appellant's opening 39 in figure 4. The acoustic to
electrical transducer, microphone 42, is "residing within the
mounting."
Because the mounting (element 36) holding the
transducer 42 is located within the acoustic pathway (the
Appeal No. 95-0953
Application 07/976,328
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cavity in element 26) in Dufresne, the transducer in Dufresne
is "within the acoustic pathway and positioned within the same
acoustic pathway as employed for acoustic auscultation" in the
same sense as appellant's transducer is within the acoustic
pathway. Although the transducer 42 and the opening of 44 in
Dufresne are slightly offset, appellant's openings 39 are also
slightly offset from the transducer. It may be easier to
visualize the explanation by considering if appellant's
mounting 35 was located along the vertical centerline in
figure 4 instead of in the angularly disposed stem as shown.
Then the transducer is centered at the top of the chamber 24
and the openings 39 are immediately adjacent to the transducer
as in Dufresne.
Appellant argues that the term "within" to describe the
transducer location patentably distinguishes from Dufresne's
description of "along" to describe the location (Brief,
page 6). In our opinion, the transducer in Dufresne is shown
within the acoustic pathway in the same sense as appellant's
invention because the mounting holding the transducer is
within the acoustic pathway. The term "along" is not
controlling. Thus, appellant's arguments are not persuasive.
Appeal No. 95-0953
Application 07/976,328
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Appellant argues that microphone 42 in Dufresne is
"located outside of the same acoustical pathway 44 as used for
acoustic auscultation" (Brief, page 6). Again, the transducer
in Dufresne is within the acoustic pathway in the same sense
as appellant's invention because the mounting holding the
transducer is within the acoustic pathway in the upper piece
26. To the extent the transducer is outside the acoustic
pathway of opening 44, appellant's transducer in figure 4 is
also outside the same acoustic pathway because the opening is
to one side of the transducer. Thus, appellant's arguments
are not persuasive.
Appellant argues that the transducer in Dufresne picks up
different sounds through a variety of acoustic effects due to
its location than is transmitted for acoustic auscultation and
that appellant's transducer "'hears' the same sound as is
acoustically transmitted to the health care practitioner"
(Brief, page 7) because the transducer is located within the
same acoustic pathway. Appellant argues that "Appellant's
drawings illustrate positioning of transducer within acoustic
pathway 25, wherein the sound wave is impinging on the
transducer in the exact same propagation direction as the
Appeal No. 95-0953
Application 07/976,328
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sound progression for acoustic auscultation leading to the
user's ears" (Brief, page 7). The term "within" does not
capture any structural limitations about the transducing
surface being oriented normal to the sound waves or the nature
of the sound. Appellant's arguments are not commensurate in
scope with the claim language.
Claim 1 lastly recites "whereby the same pathway of sound
is used to receive both acoustically transmitted information
and electrically generated information from the stethoscope
chestpiece." This appears to refer to the fact that the
disclosed invention has a cable 31 in the acoustic pathway
that carries the electrically generated information produced
by the transducer (specification, page 5). Normally, a
whereby clause describes the operation or cooperation of the
preceding limitations, but here no cable or structure for
carrying electrically generated information is recited. Thus,
the statement about receiving "electrically generated
information" appears to be a statement of intended use. In
any case, Dufresne discloses that "[e]lectrical wires transmit
the processed electrical signal within and along connecting
Appeal No. 95-0953
Application 07/976,328
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tube 16" (col. 5, lines 4-5), which meets the limitations of
the whereby clause.
For the reasons stated above, the rejection of claim 1 is
sustained. Claim 9 recites the chestpiece of claim 1 plus
binaural tubing and an earpiece assembly, which additional
structure is clearly shown in Dufresne. Claim 17 is argued to
stand or fall together with claim 9. Therefore, the rejection
of claims 9 and 17 are also sustained.
The acoustic pathway in Dufresne is not regular in shape
and thus we find that the transducer is not coaxially disposed
as recited in claims 2 and 11. The transducer in Dufresne is
manifestly not in the stem of the chestpiece as recited in
claims 3 and 12. The examiner does not point out where
Dufresne shows an electrical connector as recited in claim 10.
For these reasons, the rejection of claims 2, 3, and 10-12 is
reversed.
Pfeiffer
We agree with appellant that the mounting of the
transducer in the wall of the acoustic pathway in Pfeiffer is
not "within the acoustic pathway and positioned within the
same acoustic pathway as employed for acoustic auscultation."
Appeal No. 95-0953
Application 07/976,328
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The meaning of "within" does not appear broad enough to
encompass structure mounted within a wall without undue
straining; for example, it is not clear that a doorway opening
to a room is "within" the room. Therefore, the rejection of
claims 1-4, 6-13, and 15-17 over Pfeiffer is reversed.
CONCLUSION
The rejection of claims 1, 9, and 17 over Dufresne is
sustained and the rejection of claims 2, 3, and 10-12 over
Dufresne is reversed.
The rejection of 1-4, 6-13, and 15-17 over Pfeiffer is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
Appeal No. 95-0953
Application 07/976,328
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) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-0953
Application 07/976,328
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Attn: John H. Hornickel
3M Office of Intellectual Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427