Ex Parte Fraden

Board of Patent Appeals and Interferences

Dec 8, 2010

10870654 (B.P.A.I. Dec. 8, 2010)

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.
10/870,654 06/18/2004 Jacob Fraden KAZ-05US 9694
26875 7590 12/09/2010
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
SMITH, FANGEMONIQUE A
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
12/09/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JACOB FRADEN
__________

Appeal 2009-014252
Application 10/870,654
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a non-
invasive contact thermometer and methods of use. The Examiner has

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014252
Application 10/870,654

2
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The Specification discloses a “medical thermometer with a miniature
sensor that touches the patient’s skin by a spring-loaded probe” (Spec.,
abstract). Figure 2 of the Specification is shown below.

Figure 2 shows “a cross-sectional view of probe 3” (id. at 5: 6). The
Specification discloses that “sensor 6 can be attached to plate 20 that is …
fabricated of metal ” (id. at 5: 17-18), and that to protect the end of the
probe, the thermometer can include a guard 17 that slides in and out of
sleeve 16 (id. at 5: 25-27).
Claims 1-3, 6, 9-15, and 19-25 are on appeal. Claim 1 is
representative and reads as follows:
1. A non-invasive contact thermometer for intermittent determination
of body core temperature of a patient comprising:
a housing containing a probe;
a guard being part of said probe;
a first temperature sensor shielded by said guard, said guard being
configured to slide within said probe and relative to said first temperature
sensor after said probe is pressed against skin of the patient to bring said first
temperature sensor in thermal contact with the skin;
a thermally conductive plate attached to said first temperature sensor;
Appeal 2009-014252
Application 10/870,654

3
a microcontroller for receiving an electrical signal from said first
temperature sensor and for computing the body core temperature of the
patient; and
a display communicating with said microcontroller for presenting the
body core temperature computed by said microcontroller.

Issue
The Examiner has rejected claims 1-3, 6, 9-15, and 19-25 under 35
U.S.C. § 103(a) as being obvious in view of Smith2 and Canfield.3 The
Examiner finds that Smith discloses a “thermometer having a housing (38), a
probe (36) and a first temperature sensor … [that] is designed to contact the
skin of a patient and is positioned on a moveable shaft made of a thermally
insulating material” (Answer 3). The Examiner further finds that although
Smith’s thermometer includes a protective cover over the probe, “Smith et
al. do not disclose the cover sliding inside the probe upon the sensor coming
into contact with the skin of a patient” (id. at 4). The Examiner finds that
Canfield discloses a thermometer that includes “a cover, which slides into a
position to reveal or cover the sensor module end during use of the device”
(id.), and concludes that it would have been obvious to modify Smith’s
thermometer to include a retractable cover “similar to that disclosed by
Canfield et al., to provide a mechanism which protects the device from
contamination” (id.).
Appellant contends that the cited references would not have suggested
either a “guard being configured to slide within said probe … after said
probe is pressed against skin of the patient to bring said first temperature
sensor in thermal contact with the skin” (see Appeal Br. 6-7) or a

2 Smith et al., US 6,059,452, May 9, 2000
3 Canfield et al., US 6,186,959 B1, Feb. 13, 2001
Appeal 2009-014252
Application 10/870,654

4
thermometer having “relative movement between a guard and temperature
sensor … to bring the temperature sensor in thermal contact with skin”
(Appeal Br. 12) as required by the claims on appeal.
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the cited references would have made obvious a
thermometer that includes a guard having the features required by the claims
on appeal?
Findings of Fact
1. Smith discloses a “quick registering thermometer utilizing a sensor
… located at the tip of a probe” (Smith, abstract). The thermometer
measures body temperature “after contact with a patient’s epidermis, such as
the concha of the ear” (id. at col. 2, ll. 45-46).
2. Figure 1 of Smith is shown below:

Figure 1 shows a diagrammatic representation of Smith’s thermometer
(id. at col. 2, ll. 63-64), “including a probe 36, probe tip 37 and a base 39”
(id. at col. 6, ll. 50-55).
3. Smith discloses that using a sanitary, disposable probe cover that
can be replaced between uses may be desirable to prevent transfer of
infectious agents (id. at col. 8, ll. 32-39) and that “[u]se of a thin cover made
Appeal 2009-014252
Application 10/870,654

5
of a material having high thermal conductivity will not detract from the
purposes and goals of the present invention” (id. at col. 8, ll. 39-42).
4. Canfield discloses a “tympanic thermometer temperature
measuring system [that] includes a measuring unit … [that] can be
ergonomically designed as a compact, pencil-shaped, easy to hold unit”
(Canfield, abstract).
5. Canfield discloses that the measuring unit has a probe end that is
inserted into the outer ear canal of a patient and that can accept removable,
disposable probe covers (id. at col. 11, ll. 51-53).
6. Canfield discloses that disposable probe covers
prevent cross-contamination, protect measuring unit 22 from
contacting ear wax and other body secretions, thermally isolate
measuring unit 22 from the patient’s outer ear, pad the
measuring unit probe end 30 to minimize patient discomfort,
help direct the probe end toward the eardrum to achieve more
repeatable measurement results, and provide other features.
(Id. at col. 11, l. 60-col. 12, l. 5.)
Analysis
Appellant argues that the cited references would not have suggested
the limitation of claim 1 requiring a “guard being configured to slide within
said probe … after said probe is pressed against skin of the patient to bring
said first temperature sensor in thermal contact with the skin” (see Appeal
Br. 6-7).
Appellant’s argument is persuasive. Both Smith and Canfield disclose
thermometers that can include a disposable cover (FFs 3, 5). In both cases,
however, the cover (guard) is a separate element that slides onto the probe
rather than sliding within the probe, as required by claim 1. The Examiner’s
Appeal 2009-014252
Application 10/870,654

6
reasoning that the claim “can be reasonably interpreted to mean the probe is
brought in contact with the skin … and afterwards the guard is positioned to
slide within the probe … [and is] reasonably interpreted to mean the guard is
slid within the probe as a result of pressing the probe against the skin of a
patient” (Answer 6) does not adequately explain how the disposable cover
disclosed by Smith or Canfield meets the disputed limitation of claim 1.
Similar to claim 1, independent claim 6 recites measuring a patient’s
temperature by steps that include pressing the guard of a thermometer
against a patient’s skin to slide the guard within a probe. For the reasons
discussed above with respect to claim 1, the Examiner has not shown that
the method defined by claim 6 would have been obvious based on Smith and
Canfield.
Independent claim 19 is directed to a thermometer that includes a
temperature sensor shielded by a guard, where the temperature sensor can
move relative to the guard to bring the temperature sensor in thermal contact
with a patient’s skin. Similarly, each of independent claims 14 and 24 is
directed to a method of measuring a patient’s temperature comprising
moving a temperature sensor relative to a guard on a thermometer to bring
the temperature sensor in thermal contact with skin.
Appellant argues that “there is no relative movement between a guard
and temperature sensor in either Smith or Canfield to bring the temperature
sensor in thermal contact with skin” (Appeal Br. 12).
Appellant’s argument is persuasive. Canfield discloses that its guard
covers the probe during use to protect the probe and the ear canal (FF 6).
Thus, the Examiner has not adequately explained how the cited references
would have made obvious a guard or cover that moves with respect to a
Appeal 2009-014252
Application 10/870,654

7
temperature sensor to bring the temperature sensor into contact with the
skin, as required by claims 14, 19, and 24.
Claims 2, 3, 9-13, 15, 20-23, and 25 depend from one of claims 1, 6,
14, 19, or 24, and therefore incorporate the limitations of one of the
independent claims discussed above.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the cited references would have made obvious a thermometer that
includes a guard having the features required by the claims on appeal.
SUMMARY
We reverse the rejection of claims 1-3, 6, 9-15, and 19-25 under 35
U.S.C. § 103(a).

REVERSED

lp

WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202