Ex Parte Eckerbom

Board of Patent Appeals and Interferences

Jul 20, 2009

10487594 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDERS ECKERBOM
____________

Appeal 2009-002003
Application 10/487,594
Technology Center 3700
____________

Decided:1 July 20, 2009
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002003
Application 10/487,594

2
STATEMENT OF THE CASE
Anders Eckerbom (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-14. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a device 1 for quantitative
analysis of respiratory gases. Specification 1: 5-6. At one end of the device
1 is a first connector 4 connected to a respirator, and at the other end of the
device is a second connector 3 attached to a hose that leads to a patient.
Specification 4:14-16, fig. 2. A measuring head 2 situated between the two
connectors straddles a central portion 5. An internal channel 20 in the
central portion 5 defines a passageway through which the respiratory gases
flow. The measuring head 2 analyzes characteristics of the respiratory gases
photometrically using light transmitted through a pair of windows 7 on
opposite sides of the central portion 5. Specification 4:16 - 5:10; 6:25-28. A
passive respiratory gas humidifier 14 is further situated between the two
connectors. The humidifier 14 serves to remove moisture and heat from the
patient's exhalations and to add moisture to the patient's inhalations.
Specification 5:12-31. The humidifier 14 serves the additional benefit of
removing moisture in the respiratory gases that would otherwise fog
windows 7. Id.
Claims 1 and 10, reproduced below, are illustrative of the claimed
invention.
1. An arrangement for the quantitative analysis of
respiratory gases to and from a patient connected
Appeal 2009-002003
Application 10/487,594

3
to a respirator for breathing assistance, said
arrangement comprising:
an adapter (1) that has a first connector (4)
for connection to a respirator, and a second
connector (3) for connection to a hose (13) leading
to the patient,
wherein the adapter includes a passive
respiratory gas humidifier (14) situated between
the first connector (4) and the second connector
(3);
wherein a connector for attaching a gas
analyser measuring head (2) directly on the adapter
is provided between the passive humidifier (14)
and the first connector (4) for measuring gas
concentrations directly in a respiratory circuit of
the patient, and
wherein the measuring head connector
includes two windows (7) through which light rays
from the measuring head (2) can pass.
10. An integral adapter for a device that
quantitatively analyzes respiratory gases to and
from a patient, said integral adapter comprising:
a housing having a longitudinal axis with a
first connector at one end and a second connector
at an opposite end, said first connector being
adapted for connection to a respirator and said
second connector being adapted for connection to
a patient;
a passive respiratory gas humidifier that is
attached to said housing coaxially with said
longitudinal axis between said first and second
connectors; and
a measuring head connection that is attached
to said housing coaxially with said longitudinal
axis between said passive respiratory gas
humidifier and said first connector, said measuring
Appeal 2009-002003
Application 10/487,594

4
head connection having an attachment for directly
attaching a gas analyzer measuring head that
measures gas concentrations directly in a
respiratory circuit of the patient and two windows
on opposite sides of said longitudinal axis that are
adapted to pass light from an attached gas analyzer
measuring head,
wherein said housing, said passive
respiratory gas humidifier, and said measuring
head connection are an integral one-piece unit
defining a gas passageway along said longitudinal
axis through which respiratory gases travel to and
from a patient.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Gedeon US 5,468,451 Nov. 21, 1995
Walters US 6,116,235 Sep. 12, 2000
Mace US Pub. No. 2002/0029003 A1 Mar. 7, 2002
Mault US 6,402,698 B1 Jun. 11, 2002
Orr US 6,475,158 B1 Nov. 5, 2002
Chowienczyk GB 2,287,655 A Sep. 27, 1995

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1, 2, 10, 12, and 13 as unpatentable over Mace in view of
Gedeon; claims 3, 4, 8, 11, and 14 as unpatentable over Mace, Gedeon, and
Walters; claim 5 as unpatentable over Mace, Gedeon, and Orr; claim 6 as
unpatentable over Mace, Gedeon, Orr, and Mault; claim 7 as unpatentable
over Mace, Gedeon, Orr, and Chowienczyk; and claim 9 as unpatentable
over Mace, Gedeon, Orr, Mault, and Chowienczyk.
Appeal 2009-002003
Application 10/487,594

5
SUMMARY OF DECISION
We AFFIRM.

ISSUES
Appellant argues that the subject matter of claims 1-14 is not obvious
in view of Mace and Gedeon. Appellant argues that claim 1 is not obvious
because one of ordinary skill would see a complete solution offered by Mace
and thus would not turn to Gedeon to improve Mace (Appeal Br. 6), and
because there is no indication that Gedeon would indeed improve Mace as
the Examiner contends (Appeal Br. 7). Claim 10 is subject to the same
ground of rejection as claim 1, and Appellant argues that claim 10 is
separately patentable because the claim requires the additional limitation that
the humidifier must be coaxially attached to the housing, while Gedeon
describes a humidifier tilted at an angle. Appeal Br. 8. Appellant does not
separately argue the other claims. Appeal Br. 9-10.
The issues presented in this appeal are as follows:
(1) Has Appellant demonstrated that the Examiner erred in rejecting
claim 1 as unpatentable under 35 U.S.C. § 103(a) by failing to provide
a reason with rational underpinning for combining Mace and Gedeon?
The issue turns on whether the solution to the problem described by
Mace would have discouraged one of ordinary skill from seeking
other potential solutions to a related problem, and further, whether
Appellant has shown that the use of a passive respiratory gas
humidifier as suggested by Gedeon would not serve to improve Mace
as the Examiner contends.
Appeal 2009-002003
Application 10/487,594

6
(2) Has Appellant demonstrated that the Examiner erred in rejecting
claim 10 as unpatentable under 35 U.S.C. § 103(a) by concluding that
Mace and Gedeon, in combination, render obvious the subject matter
of claim 10 as a whole? In particular, do Mace and Gedeon render
obvious a respiratory device as called for in claim 10, comprising a
coaxially mounted gas humidifier?

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Mace describes a device 100 for analyzing respiratory gases that
includes a first connector 106 for connection to a respirator, a second
connector 104 for connection to a hose that leads to a patient, and a
connector 108 for attaching a gas analyzer that analyzes gases
between two windows 116 and 118. Paras. [0144], [0146], figs. 16-
18.
FF2 The Examiner found that Mace does not describe a passive respiratory
gas humidifier. Ans. 4.
FF3 Mace describes that moisture from the patient's breath condenses in
device 100 and can lead to the clogging of recesses 132 and 134.
Para. [0149]. Mace suggests orienting the device 100 such that
recesses 132 and 134 are directed upward, to prevent clogging. Id.
FF4 Gedeon describes a device for analyzing respiratory gases that
includes a first connector 16 connected to a respirator, a second
connector 15 connected to a hose that leads to a patient, a CO2
indicator element 14 (gas analyzer), and a heat-moisture exchanger
element 18 (passive respiratory gas humidifier). Col. 2, l. 53 through
Appeal 2009-002003
Application 10/487,594

7
col. 3, l. 13, figs. 1, 2. Heat-moisture exchanger element 18 is tilted
diagonally with respect to connectors 15 and 16. Figs. 1, 2.
FF5 Gedeon recognizes that the moisture in exhaled air (i.e. humidity)
affects the quality of the measurements of the gas analyzer. Col. 1, ll.
63-67, col. 3, ll. 26-37. Removal of this humidity improves the
measurements. Id.
FF6 Gedeon's heat-moisture exchanger element 18 passively humidifies
the inhaled air, and de-humidifies the exhaled air. Col. 3, ll. 9-19.
FF7 Each connector part 104, 106, and 108 of Mace is attached to the
other along the same axis. Fig. 16-18.

PRINCIPLES OF LAW
"[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
In obviousness determinations, all of the features of the secondary
reference need not be bodily incorporated into the primary reference. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Appeal 2009-002003
Application 10/487,594

8
ANALYSIS
Issue (1) - Obviousness of claim 1
The Examiner found that Mace describes each element of claim 1 (see
FF1), except for the passive respiratory gas humidifier (FF2). Ans. 3-4. The
Examiner found that Mace considered humidity to be a known problem
(FF3), and found that Gedeon, with a similar structure as Mace (see FF4),
recognizes the need to remove humidity from the air in order to improve gas
analysis measurements (see FF5). Ans. 4. Therefore, the Examiner found
that Gedeon uses a passive respiratory gas humidifier (see FF6) to remove
the humidity and to increase the accuracy of the measurements (see FF5).
Ans. 4. The Examiner concluded that the solution presented in Gedeon for
the removal of humidity would solve the humidity problem noted by Mace.
Ans. 4-5.
Appellant argues that Mace already provides a solution to the
humidity problem, and therefore, one of ordinary skill would not turn to
another reference. Appeal Br. 6. Further, Appellant argues that there is no
indication that the passive respiratory gas humidifier in Gedeon would be
suitable to reduce the moisture on the windows as claimed in the present
invention. Appeal Br. 7-8.
Appellant's argument that Mace already presents a solution to the
humidity problem is not entirely accurate. Mace's suggestion to orient the
device in a particular way addresses the condensation resulting from the
moisture in the air. See FF3. Orienting the device does not eliminate the
humidity, but merely keeps condensation from clogging a tube. A person of
ordinary skill in the art would have readily appreciated that condensation
and humidity are different physical concepts.
Appeal 2009-002003
Application 10/487,594

9
Mace describes breath moisture as the source of the condensate in the
airway adapter. FF3. Mace does not disclose that heating the air removes
breath moisture; instead, Mace discloses that heating the air should help to
reduce the tendency of the breath moisture to condense. See FF3. Mace’s
disclosed approach would not have discouraged a person of ordinary skill in
the art from attacking the source of the condensation, that is, from removing
the breath moisture from the respiratory gases. A person of ordinary skill in
the art would have recognized that the solution (provision of a passive
respiratory gas humidifier) presented in Gedeon for the removal of humidity
or breath moisture would solve the condensation problem noted by Mace.
Thus, Mace’s and Gedeon’s teachings would have provided the person of
ordinary skill in the art reason to utilize a passive respiratory gas humidifier
in Mace’s device.
Appellant's argument that Gedeon would not be suitable to reduce the
moisture on the windows of Mace is not found persuasive. The issue on
appeal does not turn on whether Gedeon’s humidifier 18 would be suitable
to reduce the moisture on the windows for a gas analyzer head if bodily
incorporated into Mace’s device. The issue turns on whether the teachings
of Mace and Gedeon would have provided one of ordinary skill in the art
reason to improve Mace’s device by situating a passive respiratory gas
humidifier between first and second connectors. Gedeon recognizes that
moisture in respiratory gases is a problem that affects the ability of a sensor
to operate, and offers the solution of removing the moisture by a heat-
moisture exchanger. FF5. Therefore, one of ordinary skill reasonably
would have expected the use of a passive respiratory gas humidifier also to
Appeal 2009-002003
Application 10/487,594

10
succeed in removing sufficient moisture from a patient's breath to address
the condensation problem disclosed in Mace.
Appellant provides no evidence to support the assertion that Gedeon's
exchanger would not remove humidity from respiratory gases if combined
with Mace. The Appellant’s Specification suggests that humidifiers of the
type generally used in respiratory care, performing in the same way as
Gedeon’s humidifier 18, remove sufficient moisture to address the
occurrence of condensation in a respiratory gas flow passageway. See
Specification 4:17-31. Therefore, the Examiner had reason to believe that
Gedeon’s humidifier 18 would solve the condensation problem disclosed by
Mace. This reason for belief shifted to the Appellant the burden of
providing evidence to show that Gedeon’s humidifier 18 would not have
solved the condensation problem. In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). An attorney's arguments in a brief cannot take the place of
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further,
Appellant points to no claim limitation that requires that the gas humidifier
itself be subject to any particular structure or performance requirement.
Appellant's arguments are based on language not found in the claim. It is
well established that limitations not appearing in the claims cannot be relied
upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

Issue (2) - Obviousness of claim 10
Claim 10 requires that the passive respiratory gas humidifier be
attached coaxially between the first and second connectors. The Examiner
found that Mace describes each element of claim 10 (see FF1), except for
the passive respiratory gas humidifier (FF2). Ans. 3-4. These connector
Appeal 2009-002003
Application 10/487,594

11
elements in Mace are attached along the same axis. FF7. The Examiner
found that Gedeon describes a passive respiratory gas humidifier (see FF6),
and reasoned that it would have been obvious to combine the two references
on the basis that the problem of condensation noted by Mace (see FF3)
would be solved by the addition of a passive respiratory gas humidifier (see
FF5, FF6). Ans. 3-5.
Appellant argues that exchanger element 18 of Gedeon is tilted
relative to a longitudinal axis (see FF4) and is thus not coaxial. Appeal Br.
8. The Examiner responds that Appellant is attacking the references
piecemeal (Ans. 10), and even so, the point of attachment of exchanger
element 18 of Gedeon would be along the existing coaxial structure of Mace
(see FF7) and therefore result in the exchanger element 18 being attached
coaxially (Ans. 10-11).
Claim 10 does not specify the angle of the respiratory gas humidifier
itself. Instead, it merely requires that the humidifier is attached to the
adapter housing coaxially. The orientation of the humidifier itself is
irrelevant. Appellant's arguments regarding the tilt of the humidifier in
Gedeon (see FF4) are therefore based on language not found in the claim
and are not persuasive. See In re Self, 671 F.2d at 1348.
Furthermore, references need not be bodily incorporated, such that the
respiratory gas humidifier of Gedeon need not be installed in the device of
Mace exactly as depicted in Gedeon. One of ordinary skill could combine
Mace and Gedeon as he or she sees fit, and is not compelled to blindly
follow the teaching of one prior art reference over another. See Lear Siegler,
733 F.2d at 889. As the Examiner explains, the humidifier of Gedeon could
be attached coaxially with the existing coaxial structure of Mace. Ans. 11.
Appeal 2009-002003
Application 10/487,594

12
Specifically, in the device of Mace the first connector 106, the second
connector 104, and the gas analyzer connector 108 are attached coaxially.
FF1, FF7. A person of ordinary skill would have readily recognized that the
respiratory gas humidifier (exchanger element 18) of Gedeon, when
connected to the device of Mace, could also be connected along the same
axis as the first connector 106, the second connector 104, and the gas
analyzer connector 108 in order for the various connecting elements to
match up against one another. This arrangement would clearly result in less
change to the underlying structure of Mace, while still improving Mace’s
device in the same way that the use of the humidifier 18 improved Gedeon’s
device. Therefore, we do not find Appellant's argument persuasive.

CONCLUSIONS
(1) Appellant has not demonstrated that the Examiner erred in rejecting
claim 1, and dependent claims 2-9, 13, and 14, for which Appellant
has not presented any separate arguments, as unpatentable under 35
U.S.C. § 103(a). The solution to the condensation problem described
by Mace would not have discouraged one of ordinary skill in the art
from seeking solutions to the problem of airborne moisture. Further,
Appellant has not provided evidence or convincing argument that the
Examiner erred in concluding that situating a passive respiratory gas
humidifier between connectors of Mace’s device would have
improved Mace’s device in the same way that using the humidifier 18
improved Gedeon’s device.
(2) Appellant has not demonstrated that the Examiner erred in rejecting
claim 10, and claims 11 and 12, for which Appellant has not presented
Appeal 2009-002003
Application 10/487,594

13
any separate arguments, as unpatentable under 35 U.S.C. § 103(a).
Appellant has not provided evidence or convincing argument that the
Examiner erred in concluding that one of ordinary skill in the art
would not have had reason to install a passive respiratory gas
humidifier coaxially in Mace.

DECISION
The Examiner's decision is affirmed as to claims 1-14.

AFFIRMED

mls

YOUNG & THOMPSON
209 MADISON STREET
SUITE 500
ALEXANDRIA, VA 22314