Ex Parte Gavriely

Patent Trial and Appeal Board

Jun 26, 2017

13955008 (P.T.A.B. Jun. 26, 2017)

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.
13/955,008 07/31/2013 Oren GAVRIELY ETVIEW0001-05-US 1165
27268 7590 06/28/2017
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
EXAMINER
LEUBECKER, JOHN P
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
inteas @faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OREN GAVRIELY1
Appeal 2016-004932
Application 13/955,008
Technology Center 3700
Before ULRIKE W. JENKS, TAWEN CHANG,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
for ventilating a patient, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Many patients who are critically ill or undergoing general anesthesia
require artificial ventilation.” Spec. 1. Ventilation is usually accomplished
by pumping air into a patient’s lungs through an endotracheal tube. Id.
1 Appellant identifies the Real Party in Interest as ETVIEW Ltd. Br. 2.
Appeal 2016-004932
Application 13/955,008
Several different methods are used to place endotracheal tubes including use
of a laryngoscope or a fiber optic bronchoscope. Spec. 2. Once the
endotracheal tube is in place, it is important to verify that the tube is
properly positioned. Spec. 3^4. While several methods are available to
verily the location of the endotracheal tube, none allows for continuous
monitoring off the tube’s position. Id. The specification describes a device
and method which allows continuous monitoring of the placement of a tube
inserted into a patient’s body. Spec. 4—5.
Claims 1, 6, and 8—25 are on appeal. Claim 1 is the sole independent
claim and reads as follows:
1. A method of ventilating a subject with an artificial
ventilation system, the method comprising:
b) providing a multifunctional endotracheal tube
comprising:
i) an elongate cylindrical structure having a wall and
defining a free lumen for transferring liquids or gasses in
two directions, said free lumen being adapted to
permanently maintain patency and to maintain ventilation
of the subject, wherein said endotracheal tube has a
proximal end adapted to protrude from the subject and a
distal end having an anterior face, wherein said anterior
face is positioned within the body of the subject when
said tube is inserted into the subject;
ii) a conduit located between an inner diameter and an
outer diameter of said tube from said proximal end of
said tube to said anterior face of said tube;
iii) a conduit of energy comprising an electric wire
located between an inner diameter and an outer diameter
of said tube from said proximal end of said tube to said
anterior face of said tube;
iv) an imaging sensor incorporated in said anterior face;
v) a lighting element associated with said anterior face of
said tube, wherein said lighting element is at least one
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Application 13/955,008
light emitting diode (LED), wherein said lighting element
receives activation energy from the proximal end of said
tube and wherein said activation energy is transferred via
said conduit of energy;
vi) at least one conducting element for transmitting
image signals of said imaging sensor to the proximal end
of said tube via said conduit, wherein said imaging
sensor is continuously acquiring signals and transmitting
signals via said conducting element; wherein said
conducting element comprises a wire and wherein said
wire is connected to said imaging sensor and
vii) an image signal receiver for receiving said image
signals, wherein said image signal receiver is connected
to said wire;
c) inserting the multifunctional endotracheal tube into a
trachea of the subject;
d) collecting said image signals transmitted via said
conduit and interpreting said signals and/or displaying said
signals;
e) leaving said tube within said subject for a period of
time, wherein said collecting said image signals is performed
during at least a portion of said period; and
f) conveying fluids selected from the group consisting of:
gases and liquids to sustain a vital function of said subject
concomitantly with said step of collecting said image signals.
The claims stand rejected as follows:
Claims 1, 6, 8—10, 13, 15, 17—20 and 22—25 have been rejected under
35 U.S.C. § 103(a) as unpatentable over Pirak2 in view of Mackin3 and in
further view of Nakashima.4
2 Pirak et al., US 5,400,771, issued Mar. 28, 1995 (“Pirak”).
3 Mackin, US 5,285,778, issued Feb. 15, 1994 (“Mackin”).
4 Nakashima, US 6,533,722 B2, issued Mar. 18, 2003 (“Nakashima”).
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Application 13/955,008
Claim 11 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Pirak in view of Mackin and Nakashima in further view of Smith.5
Claim 12 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Pirak in view of Mackin and Nakashima in further view of Merideth.6
Claims 14 and 16 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Pirak in view of Mackin and Nakashima in further view of
Yoon.7
Claim 21 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Pirak in view of Mackin and Nakashima in further view of
Kazakevich.8
DISCUSSION
Issue
The issue is whether a preponderance of evidence supports the
Examiner’s conclusion that the rejected claims would have been obvious
over Pirak combined with Mackin and Nakashima.9
The Examiner finds that “Pirak discloses substantially all of the
method steps of claim 1 with slight differences in [the] structure” of the
endotracheal tube used. Final Act. 4. The Examiner finds that while Pirak
5 Smith et ah, US 6,447,446 Bl, issued Sept. 10, 2002 (“Smith”).
6 Merideth, US 6,164,277, issued Dec. 26, 2000 (“Merideth”).
7 Yoon, US 6,419,626 Bl, issued July 16, 2002 (“Yoon”).
8 Kazakevich, US 6,692,431 B2, issued Feb. 17, 2004 (Kazakevich”).
9 All of the rejections are based in whole or in part on the combination of
Pirak, Mackin and Nakashima. Appeal Br. 14. Appellant has not presented
separate arguments for the rejections where these references are combined
with other references. Id.
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Application 13/955,008
discloses a conduit that is wholly within the inner diameter of the
endotracheal tube, Pirak does not disclose that the conduit is located
between the inner diameter and outer diameter of the tube. Id. The
Examiner finds that this element is taught by Mackin, which teaches
placement of conduits within the wall of the endotracheal tube. Id.
The Examiner finds that neither Pirak nor Mackin teaches an
electronic—type imaging means. Final Act. 5. However, the Examiner finds
that Nakashima teaches the use of an image sensor and an LED at the distal
end of a tube with wires transferring power a to the sensor and LED and
conveying signals back to an image receiver. Id. The Examiner concludes
that:
it would have been obvious to one of ordinary skill in the art to
have replaced the proximally located video camera and optical
fiber in the conduit of Pirak et al. with an electronic image
sensor at the distal end and used a wire to transfer the signals to
the proximal end, as an known alternative of providing the
predictable result of obtaining an image from the distal end of
the tube. In addition, given Nakashima, it would have been
obvious to have replaced the proximally located light source
and illumination fiber guide in the conduit of Pirak et al. with a
distally located LED and used a wire extending from the
proximal end to transfer power to such LED, as a known
alternative of providing the predictable result of providing
illumination light at the distal end of the tube. One would be
motivated to use the distally located electronic components
instead of the light transmitting fibers of Pirak et al. to
eliminate the need for optical fibers, which inherently incur
light losses depending on transmission length and are prone to
degraded transmission quality due to breakage.
Final Act. 5—6.
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Appellant argues that the Examiner engaged in impermissible
hindsight in combining the references. Appeal Br. 10. Appellant contends
that the Examiner has failed to identify any motivation to combine the
references. Appeal Br. 11. Appellant argues that the combination of
references would be inoperative in that the conduit described in Mackin
would be too large to be placed in the tube of Pirak and still allow the flow
of air to the patient. Appeal Br. 12. Appellant argues that Nakashima is
directed to endoscopes and that its teachings are not applicable to
endotracheal tubes. Appeal br. 13.
Analysis
Claim 1 is representative of the rejected claims and is set forth above.
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
claim 1 would have been obvious over Pirak combined with Mackin and
Nakashima. Appellant has not produced evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
Only those arguments made by Appellant in the Briefs have been considered
in this Decision. Arguments not presented in the Briefs are waived. See 37
C.F.R. § 41.37(c)(l)(iv) (2015). We address Appellant’s arguments below.
Appellant argues that “[ojnly hindsight reconstruction of the cited
references can render obvious the pending claims.” Appeal Br. 10. We are
not persuaded. “Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
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Application 13/955,008
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We find no
evidence that the Examiner gleaned anything from Appellant’s disclosure in
reaching the conclusion that claim 1 would have been obvious. It is clear
from the Examiner discussion of the references that the Examiner relied only
on what was known to one skilled in the art.
Appellant next argues that the Examiner has not set forth any
motivation to combine the references. Again we are unpersuaded. As the
Examiner points out, the motivation comes from the references themselves.
Ans. 15. For example, “Mackin recognizes the advantages of keeping the
main lumen of the endotracheal tube free by embedding the imaging and
illumination devices in the wall of the tube instead of allowing them to
extend within the main lumen.” Id. Similar the Examiner points out that:
It is well known in the art that optical fibers (and lens systems)
have certain disadvantages that directly affect operation and
output of visualization systems, including inherent transmission
losses and fragility. In fact, due to technological advances and
miniaturization of electronic components, solid-state image
sensors and light sources (including ones located within the
distal end of the shaft) are being used more and more to provide
visualization inside a body cavity. Nakashima is just one of
numerous references that evidence the state of the art and the
level of ordinary skill at the time of the invention.
Id.
Appellant argues that the combination of references would result in a
device that is inoperable. To support this argument Appellant points to the
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declarations of Dr. Hckmann10 wherein Dr. Fckmann opines that placing an
optic fiber bundle in the lumen of Pirak would result in a tube where air
could not freely flow into the patient. Appeal Br. 12. We have considered
the arguments and affidavits and find them unpersuasive. As the Examiner
points out, Dr. Eckmann’s assertions are not supported by persuasive
evidence or logical reasoning, particularly in view of the prior art. Ans. 16.
Moreover, while Dr. Eckmann’s declarations address the combination of all
three references relied upon by the Examiner, they fail to address the
Examiner’s reasoning for combining the references. Eckmann Deck 1 at 3.
For example, the Examiner does not rely on Mackin for physically
incorporating the channel of Mackin into Pirak but only for the suggestion of
incorporating channels into the wall of the endotracheal tube. Ans. 16.
With respect to Nakashima, Dr. Eckmann only discusses the fact that the
endoscope of Nakashima is different than the endotracheal tube of the
invention. Eckmann Deck 1 at 4. As the Examiner points out, Nakashima is
relied upon to show that use of and imaging sensor and an LED in lieu of
fiber optics. Ans. 18.
10 Declaration of David M. Eckmann under 37 C.F.R. § 1.132, filed August
28, 2014 (“Eckmann Deck 1”) and Declaration of David M. Eckmann under
37 C.F.R. § 1.132, filed March 27, 2015 (“Eckmann Deck 2”). We note that
both Declarations refer to Exhibits A and B which purport to measurements
and calculations relied upon by Dr. Eckmann. The copies of the
Declarations filed with Appellant’s Appeal brief and the copies found in the
prosecution history do not contain Exhibits A or B.
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Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Pirak
combined with Mackin and Nakashima under 35 U.S.C. § 103(a).
Claims 6, 8—10, 13, 15, 17—20 and 22—25 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 11, 12, 14, 16, and 21 were rejected over the combination of Pirak,
Makin, and Nakashima in further view of Smith, Merideth, or Yoon.
Appellant does not make any additional or different arguments with respect
to these rejections. (Appeal Br. 14.) Accordingly, we affirm the rejections
of claims 11, 12, 14, 16, and 21 for the same reasons set forth above.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
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).
AFFIRMED
9