Ex Parte Gavriely

Patent Trial and Appeal Board

Aug 7, 2017

13902888 (P.T.A.B. Aug. 7, 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.
13/902,888 05/27/2013 Oren GAVRIELY ETVIEW0001-04-US 4010
27268 7590 08/09/2017
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
08/09/2017 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 2016-005140
Application 13/902,8882
Technology Center 3700
Before RICHARD J. SMITH, JOHN E. SCHNEIDER,
and DAVID COTTA, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
apparatus for ventilating a patient, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies the Real Party in Interest as ETVIEW Ltd. Br. 3.
2 A related application, 13/955,008, was the subject of an earlier decision by
the Board, Appeal No. 2016-004932. The appeal addressed almost identical
issues and involved the same Real Party in Interest. Indeed, the argument
portion of the briefs submitted in both cases is substantially identical.
Notwithstanding the fact that significant portions of the briefs submitted in
the two appeals were substantially identical, submitted two days apart, and
signed by the same person, Appellant failed to identify the related appeal as
required by 37 C.F.R. § 41.37(c)(ii).
Appeal 2016-005140
Application 13/902,888
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.
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
verify the location of the endotracheal tube, none allows for continuous
monitoring ofthe 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—27 are on appeal. Claim 1 is the sole independent
claim and reads as follows:
1. An artificial ventilation system adapted for ventilating a
subject, the system comprising:
a) 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 a mouth of the subject and 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;
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Application 13/902,888
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 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 signal wire and wherein said signal wire is
connected to said imaging sensor; and
b) an image signal receiver for receiving said image signals,
wherein said image signal receiver is connected to said signal
wire.
The claims stand rejected as follows:
Claims 1, 6, 8—10, 13, 15, 17—21, and 23—27 have been rejected under
35 U.S.C. § 103(a) as unpatentable over Pirak3 in view of Mackin4 and in
further view of Nakashima.5
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.6
3 Pirak et al., US 5,400,771, issued Mar. 28, 1995 (“Pirak”).
4 Mackin, US 5,285,778, issued Feb. 15, 1994 (“Mackin”).
5 Nakashima, US 6,533,722 B2, issued Mar. 18, 2003 (“Nakashima”).
6 Smith et al., US 6,447,446 Bl, issued Sept. 10, 2002 (“Smith”).
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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.7
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.8
Claim 22 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.9
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.10
The Examiner finds that Pirak discloses an artificial ventilation
system comprising almost all of the elements recited in the claims. Final
Act. 2— 3. The Examiner finds that while Pirak 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 at 3. The Examiner finds that this element is taught
7 Merideth, US 6,164,277, issued Dec. 26, 2000 (“Merideth”).
8 Yoon, US 6,419,626 Bl, issued July 16, 2002 (“Yoon”).
9 Kazakevich, US 6,692,431 B2, issued Feb. 17, 2004 (Kazakevich”).
10 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 13/902,888
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. 4. 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 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.
Appellant argues that the Examiner engaged in impermissible
hindsight in combining the references. Appeal Br. 17. Appellant contends
that the Examiner has failed to identify any motivation to combine the
references. Appeal Br. 18—19. Appellant argues that the combination of
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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. 19—20. Appellant argues that Nakashima is
directed to endoscopes and that its teachings are not applicable to
endotracheal tubes. Appeal Br. 20.
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. 17. We are
not persuaded. As our reviewing court’s predecessor stated in In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971):
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 time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
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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’s 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. Appeal Br. 19. 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. Similarly
the Examiner points out that “[o]ne 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.
Appellant argues that the combination of references would result in a
device that is inoperable. To support this argument Appellant points to the
declarations of Dr. Eckmann11 wherein Dr. Eckmann 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. 19. We have considered
11 Declaration of David M. Eckmann under 37 C.F.R. § 1.132, signed
August 28, 2014 (“Eckmann Deck 1”) and Declaration of David M.
Eckmann under 37 C.F.R. § 1.132, signed March 27, 2015 (“Eckmann Decl.
2”).
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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 Decl. 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 Decl. 1 at 4. As the Examiner points out, Nakashima is
relied upon to show use of an imaging sensor and an LED in lieu of fiber
optics. Ans. 18.
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—21 and 23—27 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Rejections of claims 11, 12, 14, 16, and 22
Claims 11, 12, 14, 16, and 22 were rejected over the combination of
Pirak, Makin, and Nakashima in further view of Smith, Merideth,
Kazakevich or Yoon. Appellant does not make any additional or different
arguments with respect to these rejections. (Appeal Br. 21—22)
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Accordingly, we affirm the rejections of claims 11, 12, 14, 16, and 22 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
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