Ex Parte Fulkerson et al

Patent Trial and Appeal Board

Jan 2, 2018

12610032 (P.T.A.B. Jan. 2, 2018)

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.
12/610,032 10/30/2009 Barry Neil Fulkerson XCorp241,Ord 9612
29484 7590
Novel IP
191 West Second Street
Santa Ana, CA 92701
EXAMINER
KEYWORTH, PETER
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
01/04/2018 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):
hazim @ no velip. com
sona @ no velip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY NEIL FULKERSON, MARTIN HERING,
MARK F. SMITH, and JAN B. ZWIERSTRA
Appeal 2017-000985
Application 12/610,032
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 1—4, 6, 8—16, and 18—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In explaining our Decision, we cite to the Specification dated October 30,
2009 (Spec.), Final Office Action dated November 22, 2013 (Final), the
Appeal Brief dated April 17, 2014 (Br.), and the Examiner’s Answer dated
August 4, 2014 (Ans.).
2 Appellants identify the real party in interest as Fresenius Medical Care
Holdings, Inc. Br. 4.
Appeal 2017-000985
Application 12/610,032
The claims are directed to a modular, portable dialysis system. See,
e.g., claims 1 and 13. Appellants’ Figure 1 is illustrative and reproduced
below:
Figure 1 is a front view of dialysis system 100
The illustrated system 100 includes a top unit 101, also referred to as a
controller unit, that includes a graphical user interface 114. Spec. 9:10—17.
Attached to the top unit (controller unit) 101 is a dialyzer 103. Id.
The top unit 101 is detachably fixed to a base 102, also referred to as a
base unit or bottom unit, that includes reservoir 122 for fluid storage. Spec.
9:11—13. Detachable fixing is accomplished using a latching mechanism,
such as male/female mating connections on the bottom surface of the top
unit and top surface of the base unit, respectively, that ensure solid
alignment between the top unit 101 and base 102, thereby enabling the use
of electronic components (such as exposed electronic connectors on the
bottom of the top unit and top of the bottom unit) which, when the units are
properly aligned, automatically come into contact and complete a power
2
Appeal 2017-000985
Application 12/610,032
circuit. Spec. 12:12-25. Appellants describe a number of different
embodiments of useful latching mechanisms that can accomplish the
electronic connection and can also accomplish data communication
connections. Spec. 12:12—16:15.
We reproduce claim 1 to illustrate the scope of the modular dialysis
systems claimed and in so doing we highlight key limitations at issue in the
appeal.
1. A modular dialysis system comprising:
a controller unit having a first external housing with a
front side, a back side, a left side, a right side, a top side and a
bottom side, wherein said front side comprises a door
configured to provide access to an internal volume within said
controller unit and wherein said bottom side comprises a first
latch member and a first data transceiver,
a reservoir unit having a second external housing with a
front side, a back side, a left side, a right side, a top side and a
bottom side, wherein said front side comprises a door
configured to provide access to an internal volume within said
reservoir unit, wherein said top side comprises a second latch
member adapted to mate to said first latch member and a
second data transceiver, and wherein
when said first external housing is securely and
removably attached to said second external housing using said
first latch member and said second latch member, the first data
transceiver is automatically placed in data communication with
said second data transceiver.
Claims Appendix, Appeal Br. 26.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a) (Final 2-10; Ans. 2):
3
Appeal 2017-000985
Application 12/610,032
A. The rejection of claims 1—4 and 6 as obvious over Kenley3 in view of
Skalak4;
B. The rejection of claims 8 and 13—16 as obvious over Kenley in view
of Skalak and further Kamen5; and
C. The rejection of claims 9—12 and 18—20 as obvious over Kenley in
view of Skalak and Kamen and further Plahey.6
OPINION
Rejection A
In addressing the rejection of claims 1—4 and 6 as obvious over
Kenley in view of Skalak, we select claim 1 as representative as Appellants
do not argue claims 2-4 and 6 separately. Br. 7—20.
There is no dispute that Kenley teaches a modular dialysis system
(dialysis machine 10 of Figure 1) with a user interface 12 and an enclosure
26 housing an extracorporeal circuit module 24 mounted above a lower
cabinet 22. Br. 8—9; see also Kenley, col. 5,11. 57—67. Kenley’s dialysis
machine is shown in Figure 1, reproduced below:
3 Kenley et al., US 6,044,691, issued Apr. 4, 2000.
4 Skalak et al., US 6,607,495 Bl, issued Aug. 19, 2003.
5 Kamen et al., US 2009/0101549 Al, published Apr. 23, 2009.
6 Plahey et al., US 2006/0195064 Al, published Aug. 31, 2006.
4
Appeal 2017-000985
Application 12/610,032
Kenley’s Figure 1 is a perspective view
of dialysis machine 10
In Kenley’s machine 10, user interface 12 is mounted to enclosure 26
via hinge 29 and arm 30. Kenley, col. 6,11. 26—28. The user interface
includes a touch sensitive display screen 13 and hard keys 16 that are
pressed by the user to enter and change parameter values and information for
the machine. Kenley, col. 6,11. 23—26. The extracorporeal circuit module
24 includes a dialyzer 46 as shown in Figure 2. Kenley, col. 6,11. 44-45.
Within lower cabinet 22 is dialysate preparation module 25 including tank
54 for storing dialysate solutions. Kenley, col. 7,11. 3—8.
The Examiner finds that Kenley teaches a top module comprising a
controller unit, pointing to Kenley’s enclosure 26 and user interface 12.
5
Appeal 2017-000985
Application 12/610,032
Final 2. Appellants contend that neither enclosure 26 nor user interface 12
can be considered a controller of any type, and it is inaccurate to
characterize both the enclosure and user interface, together, as a singular
“controller.” Br. 10—11. According to Appellants, Kenley’s control system
is located within the lower cabinet. Br. 11.
Underlying the dispute is a claim interpretation issue concerning the
limiting effect of “controller” as that term is used to modify “unit” in claim
1. We determine that the term “controller” does not limit the claim as
argued by Appellants, and Appellants’ arguments overlook the breath of the
claim. Although the claim uses the phrase “controller unit,” it never
affirmatively requires a controller structure be housed within the unit. The
limitation recites “a controller unit having a first external housing” with a
door in the front side, and a first latch member and a first data transceiver in
the bottom side. Only the housing of the unit is affirmatively claimed in
terms of structure. Appellants are free to more affirmatively limit the unit to
require a controller, but they have not yet done so. See In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.”).
In essence, the “controller unit” of claim 1 is a housing with a door, a
latch member, and a data transceiver. But even if we were to determine that
the word “controller” implies some further structure, we agree with the
Examiner that Kenley’s user interface 12 meets that structure. Ans. 2.
Kenley’s user interface allows the user to enter and change parameter values
and information for the machine. Kenley, col. 6,11. 23—26. Appellants’ own
Specification refers to a user interface within the controller unit and does so
6
Appeal 2017-000985
Application 12/610,032
without referring to any other controllers within the controller unit. Spec.
9:13—16. Although Appellants’ controller unit described in the Specification
“comprises a graphical user interface, pumping unit, and a door 110, 210
with a power lock and mechanical backup 16 mechanism,” claim 1 does not
require a pumping unit, power lock, or mechanical backup mechanism.
Nor does claim 1 clearly exclude the hinge, arm, and further housing
for interface 12 of Kenley. But even more importantly, because the claim
does not affirmatively require a controller as a structure within the housing,
enclosure 26, which has the required sides and door, has the structure
required of the controller unit albeit without the latch and transceiver
structure recited in claim 1.
The Examiner acknowledges that Kenley fails to teach the latching
and transceiver structure and turns to Skalak as evidence that it would have
been obvious to modify Kenley to include a latching and transceiver
structure to provide mechanical and electrical communication between
modules for easy attachment and detachment. Final 3^4.
Appellants contend that Skalak does not expressly teach two separate
connection mechanisms. Br. 12—13. But, as pointed out by the Examiner,
claim 1 does not require two separate connection mechanisms. Ans. 4.
Skalak teaches a latching mechanism 5, and this latching mechanism can
provide mechanical and electrical communication between detachable
module 3 containing a fluid collection chamber and detachable module 4
containing electronic circuitry, etc. Skalak, col. 10,11. 53—67, Fig. 9A. The
latching mechanism 5 may have latches, infrared communication, radio
frequency, Bluetooth communication, electrical and mechanical connectors.
Skalak, col. 10,11. 56—60.
7
Appeal 2017-000985
Application 12/610,032
Appellants contend that the Examiner has ignored the full import of
the last limitation of the claim and argues that this limitation requires
automatic placing of the data transceivers into data communication upon
physical attachment of the latches. Br. 13—15. The Examiner has not
ignored the limitation. Ans. 4—5. As the Examiner points out, Skalak
discloses a single latching mechanism 5 that provides both mechanical and
electrical/data communication. Id. Because the single mechanism
accomplishes both the mechanical and electrical/data communication, it
follows that the electrical/data connection is automatic upon physical
connection as occurs with, for instance, Ethernet cables or laptop docketing
stations.
Appellants further contend that the Examiner has not provided
articulated reasoning with a rational underpinning for combining the
teachings of Kenley and Skalak. Br. 15—19.
We do not find Appellants’ argument persuasive. Kenley’s user
interface, by its nature, must be in data communication with the dialyzing
components that control the fluid flow, such as the pumps and valves, within
the enclosure 26 and lower cabinet 22 in order to allow the data from the
user interface to reach those dialyzing components for adjustment of the
parameter values of the dialyzing process. Kenley uses a turntable 28 to
accomplish the physical connection between the lower cabinet 22 and
enclosure 26. Kenley, col. 5,1. 66—col. 6,1. 4. Skalak teaches a latching
mechanism 5 between a module including a power supply and electronic
circuitry and a module including various elements including a fluid
collection chamber. Skalak, col. 10,11. 50—67. This latching mechanism
allows one to detach the modules from one another. Id. The Examiner’s
8
Appeal 2017-000985
Application 12/610,032
finding of a reason to make the modules of Kenley detachable by using a
latching mechanism suggested by Skalak flows from the teachings of
Skalak. Using the latching mechanism of Skalak for its known function of
allowing modules to be detached is within the realm of obviousness. See
KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”).
Appellants have not identified a reversible error in the Examiner’s
rejection of claims 1—4 and 6 as obvious over Kenley in view of Skalak.
Rejection B
In addressing the rejection of claims 8 and 13—16 as obvious over
Kenley in view of Skalak and further Kamen, Appellants group claim 8 with
claims 1—4 and 6, the rejection of which we addressed above, and limit their
arguments to the rejection of claim 13. Br. 7—20, 23—26.
Because Appellants do not challenge the rejection of claim 8, we
sustain that rejection for the reasons we presented above.
Claim 13 is an independent claim from which claims 14—16 depend.
Claim 13 requires the top side of the reservoir unit have “an angled surface
with a plurality of channels in fluid communication with at least one leak
detector.” The Examiner acknowledges that Kenley fails to teach the
required top surface configuration and turns to Kamen’s teaching of slots
517. Final 6. But slots 517, as shown in Kamen’s Figure 21, hold
bloodlines 203, 204, which are shown in Figure 20. Kamen 1116. Slots
517 and bloodlines 203, 204 reside on a front panel within the body of
dialysis unit 51. Kamen 1115; see also Kamen, Fig. 17 (including reference
9
Appeal 2017-000985
Application 12/610,032
numeral 51). Kamen’s slots 517 are not in the surface of the cabinet.
Although Kamen includes a leak detector 258, this leak detector is for
detecting leaks within the dialyzer 14. Kamen 190. The teachings with
regard to slots 517 and leak detector 258 do not pertain to the top of the
cabinet, much less the top of a reservoir unit.
Appellants have identified a reversible error in the rejection of claims
13—16 as obvious over Kenley in view of Skalak and Kamen.
Rejection C
In addressing the rejection of claims 9—12 and 18—20 as obvious over
Kenley in view of Skalak and Kamen and further Plahey, we first focus on
claim 9 as claims 10—12 depend from claim 9.
Claim 9 requires that the internal surface of the door on the front side
of the controller unit include “a plurality of pump shoes, a latch, and casing
with sides that protrude into said internal volume when said door is closed.”
The Examiner finds Kenley’s internal volume has pumps 44 “that
interact with the manifold and tubing. When the doors are closed, the hooks
and holders for reagent materials protrude into the internal volume.” Final
8. The Examiner also explains that “Kenley, Plahey, and Kamen all teach
pumps located in a similar place. More specifically, Plahey teaches
interaction between the pump and the door (pump shoes [0031]). Thus,
providing the door/latching means of Plahey as outlined in claim 9 would
also provide the pump shoes argued.” Ans. 7.
The Examiner fails to specifically point out what structure of Kenley,
or what structure of the combination of Kenley, Plahey, and Kamen,
constitutes a pump shoe. The pump itself is not a pump shoe, nor is the door
10
Appeal 2017-000985
Application 12/610,032
itself. If the Examiner is relying on a structure on the door, as is required by
the claim, it is unclear what structure the Examiner is relying on.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 9—12.
Claims 18—20 depend from claim 13. For the reasons we explain
above, the Examiner’s rejection of claim 13 is in error. The Examiner’s
addition of Plahey does not cure the deficiency. Thus, the rejection of
claims 18—20 is not sustained for the reasons provided above when
discussing claim 13.
CONCLUSION
We sustain the rejection of claims 1—4 and 6 as obvious over Kenley
in view of Skalak and the rejection of claim 8 over Kenley in view of Skalak
and Kamen. We do not sustain the Examiner’s rejection of claims 13—16
over Kenley in view of Skalak and Kamen or the rejection of claims 9—12
and 18—20 over Kenley in view of Skalak, Kamen, and Plahey.
DECISION
The Examiner’s decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
11