Ex Parte GeigerDownload PDFBoard of Patent Appeals and InterferencesAug 1, 201210976164 (B.P.A.I. Aug. 1, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARK A. GEIGER __________ Appeal 2011-009695 Application 10/976,164 Technology Center 3700 __________ Before MELANIE L. McCOLLUM, STEPHEN WALSH, and ERICA A. FRANKLIN, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to a system and a method for sensing intracranial pressure. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-009695 Application 10/976,164 2 STATEMENT OF THE CASE “Elevated intracranial pressure (ICP) can be a problem for patients suffering from chronic hydrocephalus, as well as patients with brain injuries or other diseases that cause an acute accumulation of CSF. An ICP monitor provides an indication of ICP so that a caregiver can intervene in the event ICP becomes too high.” (Spec. 1, ¶ 4.) “Typically, an implantable ICP monitor . . . is ordinarily powered inductively by an external device, and provides a „snap-shot‟ of ICP at a particular point in time.” (Id. at ¶ 5.) “[T]he invention is directed to a system and method for monitoring ICP within a patient on a continuous or periodic basis over an extended period of time using an inductive power element that extends over a substantial portion of a patient's head to inductively power an implanted ICP monitor.” (Id. at 2, ¶ 8.) Claims 1-13, 15-18, and 20-32 are on appeal. The Examiner rejected the claims as follows: claims 1-8, 10-13, 15, 16, and 29-32 under 35 U.S.C. § 103(a) as unpatentable over Fryer, 1 Seylar, 2 Von Arx 3 or Shugart III, 4 and Derby; 5 1 Thomas B. Fryer, US 4,186,749, issued Feb. 5, 1980. 2 George R. Seylar, US 4,114,606, issued Sept. 19, 1978. 3 Jeffrey A. Von Arx and Khalil Najafi, On-Chip Coils With Integrated Cores For Remote Inductive Powering Of Integrated Microsystems, pp. 999- 1002 in Transducers ‟97, 1997 Int‟l Conf. on Solid-State Sensors and Actuators (1997). 4 M. Wilbert Shugart, III, US 5,420,930, issued May 30, 1995. 5 Kevin A. Derby et al., US 5,379,767, issued Jan. 10, 1995. Appeal 2011-009695 Application 10/976,164 3 claims 1-13, 15, 16, 23-27, and 29-32 under 35 U.S.C. § 103(a) as unpatentable over Ericson, 6 Seylar, Von Arx or Shugart III, and Derby; claim 22 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, and Von Arx or Shugart III; claim 28 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, Von Arx or Shugart III, and Eide; 7 and claims 17, 18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, and Derby. DISCUSSION Findings of Fact We adopt the Examiner‟s findings concerning the scope and content of the prior art, set out in the “Grounds of Rejection” and “Response to Argument.” (Ans. 3-21.) Analysis I. The rejection of claims 1-8, 10-13, 15, 16, and 29-32 over Fryer, Seylar, Von Arx or Shugart III, and Derby. Group 1 - Claims 1-8, 10, 30, and 31 Claim 1 reads: 1. A system for sensing intracranial pressure (ICP), the system comprising: 6 Milton N. Ericson et al., US 6,533,733 B1, issued March 18, 2003. 7 Per Kristian Eide, US 2002/0161304 A1, published Oct. 31, 2002. Appeal 2011-009695 Application 10/976,164 4 an implantable ICP monitor for implantation in a head of a patient; an inductive power transmitting element sized to extend over at least a substantial portion of the head of the patient and inductively power the ICP monitor, wherein the inductive power transmitting element defines an opening to receive the head of the patient, wherein the opening is sized to provide a distance of at least 3 cm to approximately 10 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element; and an external monitor to receive a transmitted ICP signal from the ICP monitor. The Examiner‟s position is that Fryer described a system and method for sensing intracranial pressure (ICP). The Examiner found that Fryer‟s inductive power transmitting element 12 was sized to extend over at least a substantial portion of the head of the patient, but it did not define an opening to receive the head of the patient, and was not sized to provide a distance of 3 – 10 cm between the head-implanted monitor and the inductive power transmitting element. The Examiner additionally found that (i) Seylar described an analogous ICP system comprising an inductive power transmitting element 18 also sized to extend over at least a substantial portion of the head, and defining an opening; (ii) Von Arx taught effective inductive power transmission to an implanted biomedical device from a distance of 3cm; and (iii) Shugart III similarly taught effective inductive power transmission from at least 5cm. Finally, the Examiner found that Derby described a shroud-like hemispherical shaped inductive element extending over at least a substantial portion of the head. The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the inductive power Appeal 2011-009695 Application 10/976,164 5 transmitting element of Fryer to include an opening as taught by Seylar, the opening sized to provide a distance of at least 3 cm or at least 5 cm as taught by Von Arx et al or Shugart III respectively, between the implantable ICP monitor and the interior (under) surface of the inductive power transmitting element, and the inductive power transmitting element includes a hemispherical shroud-like element that defines the opening to receive the head of the patient as taught by Derby et al, to effectively receive and work best with the head of the patient while allowing a hands-free approach for the provider during use of the inductive power transmitting element that still ensures proper communication between said inductive power transmitting element and said ICP monitor, respectively. (Ans. 5.) Appellant first contends: the techniques for sensing ICP disclosed by Seylar are inconsistent with the techniques for sensing ICP disclosed by Fryer such that one of ordinary skill in the art would not have found the inductive power transmitting element defining an opening from the disclosure of Seylar to be useful in the system for sensing ICP disclosed by Fryer (App. Br. 11-12). Thus, Appellant essentially argues that “the external detector disclosed by Seylar is not suitable for use in the system for sensing ICP disclosed by Fryer.” (Id. at 12.) This argument is unpersuasive because the rejection did not propose using Seylar‟s detector in Fryer‟s system. See Examiner‟s “Response to Argument” at Ans. 14. Appellant contends that Seylar taught away from an opening sized to provide a distance of at least 3 cm to 10 cm between an implanted monitor and an interior surface of the inductive power transmitting element (id. at 11), and taught instead that the external monitor antenna “is commonly position[ed] as close to the ICP monitor as possible” (id. at 13). However, Seylar simply taught the detector is “usually taped or manually positioned on Appeal 2011-009695 Application 10/976,164 6 the surgical dressing which overlies the site of the implanted transducer” (Seylar, col. 3, ll. 64-66), and did not teach or suggest that distances of 3-10 cm would not work. A person of ordinary skill in the art would have weighed Seylar‟s teaching with the evidence that Von Arx taught effective power transmission at 3 cm and Shugart III taught transmission at 5 cm. Even if the person of ordinary skill took Seylar‟s statement about the usual placement as a preference for the closest possible placement, there remains no evidence that Seylar taught or suggested that distances of 3 to 5 cm would not work. There are differences between the reference teachings, but Appellant has not established that the differences amount to a conflict, much less a teaching away. Therefore, the weight of the evidence here is in favor of concluding that distances of 3 and 5 cm would have been obvious for ICP monitoring. Appellant contends that the disclosure of Derby et al. is directed to MRI imaging and does not include any teaching relevant to ICP monitoring systems, and certainly would have not have lead one of ordinary skill in the art at the time of Appellant‟s invention to find the feature of, “an inductive power transmitting element defining an opening to receive the head of the patient” to be obvious as asserted by the final Office Action (id. at 11). The Examiner responds that Derby was “relied upon for the hemispherical shroud structure of the element to surround the head of a patient in certain monitoring conditions,” and the shroud would have provided an advantage so that a provider may be free to effectively perform the procedure without having to hold the inductive power transmitting element over the head of the patient, thus allowing Appeal 2011-009695 Application 10/976,164 7 the provider more freedom to perform other necessary tasks while still effectively ensuring proper communication between said inductive power transmitting element and said ICP monitor positioned in the head of the patient. (Ans. 15.) We also note that while Appellant distinguishes MRI from inductive power transmission, Appellant does not dispute the Examiner‟s characterization of Derby‟s shroud as an inductive device, albeit of a different kind. The Examiner considered Derby pertinent to devices for monitoring conditions in a patient‟s head, whether by MRI or ICP or other monitoring method. We see no error in that finding. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor‟s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor‟s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Granting Appellant‟s point that MRI and ICP are different, which the Examiner does not dispute, we agree with the Examiner that a person of ordinary skill in the art would have considered Derby reasonably pertinent to devices for monitoring conditions in a patient‟s head, whether by MRI or ICP. Claims 2-8, 10, 30, and 31 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Group 2 - Claim 29 Claim 29 further limits the system of claim 1 by adding: “wherein the opening is sized to provide a distance of at least 5 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element.” Appeal 2011-009695 Application 10/976,164 8 Appellant contends that Von Arx disclosed only minimal inductive power transmission at distances greater than 4 cm, and thus could not have made 5 cm obvious. (App. Br. 18.) The rejection relied on additional evidence from Shugart III, which disclosed inductive transmission over a few inches. Appellant acknowledges and does not dispute the Examiner‟s finding that a few inches is at least two inches, and at least two inches is equivalent to at least 5 cm. (Id. at 17-18.) Appellant nevertheless argues for reversal because “the disclosures of Von Arx et al. and Shugart, III do not include any disclosure that contradicts the teaching of Seylar that the distance between an ICP monitor and inductive power transmitting element should be minimized.” (Id. at 18.) We again find this argument unpersuasive, as explained in Group 1. Shugart III disclosed effective power transfer at 5 cm, and when multiple references are used in a rejection, they do not have to be unanimous for the application of a teaching to be obvious. Group 3 - Claims 11-13, 15, and 16 Claim 11 reads: 11. A system for sensing intracranial pressure (ICP), the system comprising: an inductive power transmitting element sized to extend over at least a substantial portion of a head of a patient and inductively power an ICP monitor implanted in the head of the patient, wherein the inductive power transmitting element defines an opening to receive the head of the patient, wherein the inductive power transmitting element includes a shroud- like element that defines the opening to receive the head of the patient, wherein the opening is sized to provide a distance of at least 3 cm to approximately 10 cm between the ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element, Appeal 2011-009695 Application 10/976,164 9 wherein the opening is sized sufficiently small to permit reliable inductive transfer of power from the inductive power transmitting element to the ICP monitor; and an external monitor to receive a transmitted ICP signal from the ICP monitor. Appellant contends that the arguments applied to claim 1 also apply to claim 11. (App. Br. 19.) In addition, Appellant contends that the rejection failed to address claim 11‟s feature “wherein the opening is sized sufficiently small to permit reliable inductive transfer of power from the inductive power transmitting element to the ICP monitor.” (Id.) In particular, Appellant reiterates the argument that Derby‟s MRI system did not rely on inductive powering of an implanted device to operate, and the other references fail to suggest modifying Derby‟s shroud to permit reliable inductive power transfer. (Id. at 20.) We again find these arguments unpersuasive, as explained for Group 1. Claims 12, 13, 15, and 16 have not been argued separately and therefore fall with claim 11. 37 C.F.R. § 41.37(c)(1)(vii). Group 4 - Claim 32 Claim 32 further limits the system of claim 11 by reciting “wherein the opening is sized to provide a distance of at least 5 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element.” Appellant reiterates the argument that a distance of at least 5 cm would not have been obvious. (App. Br. 21.) The argument remains unpersuasive as explained for Groups 1 and 2. Appeal 2011-009695 Application 10/976,164 10 II. The rejection of claims 1-13, 15, 16, 23-27, and 29-32 over Ericson, Seylar, Von Arx or Shugart III, and Derby. Group 5 – Claims 1-8, 10, 30, and 31 The Examiner‟s position is that Ericson described a system for sensing intracranial pressure (ICP) comprising an implantable ICP monitor (10) for implantation in a head of a patient, an inductive power transmitting element (Col.4: 12-21) including an inductive coil (50) to inductively power the ICP monitor, and an external monitor (Col.5: 32-33) to receive a transmitted ICP signal from the ICP monitor, wherein it is obvious to one of ordinary skill in the art to include a monitor with a display to present information based on the transmitted ICP signal. (Ans. 7.) Ericson did not describe the size or specific structure of an inductive power transmitting unit to use in its system. (Id.) Given Seylar‟s teaching that an inductive power transmitting element for ICP may vary in physical structure, the Von Arx or Shugart III teaching that distances of 3 cm or a few inches would be effective for inductive power transmission, and Derby‟s shroud-like inductive element, the Examiner concluded: it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the inductive power transmitting element of Fryer to include an opening as taught by Seylar, the opening sized to provide a distance of at least 3 cm or at least 5 cm as taught by Von Arx et al or Shugart III respectively, between the implantable ICP monitor and the interior (under) surface of the inductive power transmitting element, and the inductive power transmitting element including a hemispherical shroud-like element that defines the opening to receive the head of the patient as taught by Derby et al, to effectively receive and work best with the head of the patient while allowing a hands-free approach for the provider during use of the inductive power transmitting element that still ensures Appeal 2011-009695 Application 10/976,164 11 proper communication between said inductive power transmitting element and said ICP monitor, respectively. (Id. at 8.) Appellant contends (i) the techniques for sensing ICP disclosed by Seylar are inconsistent with the techniques for sensing ICP disclosed by Ericson; (ii) Seylar teaches away from an opening sized to a distance of 3 to 10 cm between the ICP monitor and the inductive power transmitter; and (iii) Derby is directed to MRI. (App. Br. 22-23.) These arguments are in substance the same as those directed against the rejection over Fryer, combined with the same additional references. The arguments are again unpersuasive for the reasons explained in Groups 1 and 2. Claims 2-8, 10, 30, and 31 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Group 6 – Claim 9 Claim 9 further limits the system of claim 1 by reciting “wherein the inductive power transmitting element is coupled to a support platform for the patient.” The Examiner found that Derby‟s shroud was coupled to a support platform and concluded it would have been obvious to use the support platform to allow proper support and stabilization during bedside use, citing Seylar‟s disclosure of bedside use. (Ans. 9-10.) Appellant contends that MRI systems, such as Derby‟s, are inherently different from ICP sensing systems. (App Br. 29.) “For this reason, providing stability of a patient may be important to provide a clear [MRI] picture. In contrast, in a system for sensing ICP, an external monitor Appeal 2011-009695 Application 10/976,164 12 receives a transmitted ICP signal from an ICP monitor that takes direct measurements from within a patient.” (Id.) Appellant argues that the difference means “one of ordinary skill in the art would not have found a support platform as provided by Derby et al. useful in a system for measuring ICP.” (Id.) These arguments are, in substance, the same as those raised in Group 1, and are unpersuasive for the reasons discussed in that Group. Rather than discuss stabilizing the patient, the rejection found that a person of ordinary skill in the art would have recognized stabilizing the equipment as a concern. Appellant argues to the contrary, but the argument is made without explaining how it could be reasonable to think a person of ordinary skill in the art would have preferred using unsupported equipment. We see no error in the Examiner‟s finding and conclusion and therefore affirm the rejection. Group 7 – Claim 29 Claim 29 further limits the system of claim 1 by reciting “wherein the opening is sized to provide a distance of at least 5 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element.” Appellant reiterates the argument that Von Arx did not disclose power transmission at distances greater than 5 cm, and disclosed only minimal power transmission at distances greater than 4 cm. (App. Br. 30-31.) Appellant reiterates the argument that Von Arx and Shugart “do not include any disclosure that contradicts the teachings of Seylar that the distance between and ICP monitor and inductive power transmitting element should Appeal 2011-009695 Application 10/976,164 13 be minimized.” (Id. at 31.) Appellant contends that Von Arx demonstrated that shorter distances provide for greater power transfer. (Id.) These arguments are in substance the same as those raised in Group 2, and are unpersuasive for the reasons discussed in that Group. Group 8 – Claims 11-13, 15, and 16 Appellant first notes that claim 11 recites features similar to those in claim 1, and states that the arguments regarding claim 1 apply as well to claim 11. (App. Br. 32.) Appellant contends there is no reason the structure of the MRI system disclosed by Derby et al. would provide the feature of wherein the opening is sized sufficiently small to permit reliable inductive transfer of power from the inductive power transmitting element to the ICP monitor, and Derby et al. fails to disclose such a feature. The other references fail to include any teaching that would support modification of the structure of the MRI system disclosed by Derby et al. to provide the feature of wherein the opening is sized sufficiently small to permit reliable inductive transfer of power from the inductive power transmitting element to the ICP monitor. (Id. at 33.) We again find these arguments unpersuasive. Given the distance information that Von Arx and Shugart III provided for effective power transmission, a person of ordinary skill in the art would have designed the shroud to provide an effective distance. Each reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Appeal 2011-009695 Application 10/976,164 14 Claims 12, 13, 15 and 16 have not been argued separately and therefore fall with claim 11. 37 C.F.R. § 41.37(c)(1)(vii). Group 9 – Claim 32 Claim 9 further limits the system of claim 1 by reciting “wherein the inductive power transmitting element is coupled to a support platform for the patient.” The Examiner found that Derby‟s shroud was coupled to a support platform and concluded it would have been obvious to use the support platform to allow proper support and stabilization during bedside use, citing Seylar‟s disclosure of bedside use. (Ans. 9-10.) Appellant contends that MRI systems, such as Derby‟s, are inherently different from ICP sensing systems. (App Br. 29.) “For this reason, providing stability of a patient may be important to provide a clear [MRI] picture. In contrast, in a system for sensing ICP, an external monitor receives a transmitted ICP signal from an ICP monitor that takes direct measurements from within a patient.” (Id.) Appellant argues that the difference means “one of ordinary skill in the art would not have found a support platform as provided by Derby et al. useful in a system for measuring ICP.” (Id.) These arguments are in substance the same as those presented for Group 6, and they are unpersuasive for the reasons explained there. Group 10 – Claims 23-26 Claim 23 further limits the method of claim 22 by reciting “wherein the inductive power transmitting element defines an opening to receive the Appeal 2011-009695 Application 10/976,164 15 head of the patient, the inductive power transmitting element including an inductive coil to inductively power the ICP monitor.” The rejection found that using the shroud shape suggested by Derby would accommodate the head of a patient. Appellant contends that claim 23 is patentable for the reasons claim 22 is patentable, and for the reasons claim 1 is patentable. (App. Br. 34.) These contentions are unpersuasive as explained for Group 12 and Group 1. Claims 24-26 have not been argued separately and therefore stand or fall with claim 23. 37 C.F.R. § 41.37(c)(1)(vii). Group 11 – Claim 27 Claim 27 further limits the method of claim 22 by reciting “wherein the inductive power transmitting element is coupled to a support platform for the patient.” The Examiner found that Derby‟s shroud was coupled to a support platform and concluded it would have been obvious to use the support platform to allow proper support and stabilization during bedside use, citing Seylar‟s disclosure of bedside use. Appellant contends that claim 27 is patentable for the reasons claim 22 is patentable, and for the reasons claim 9 is patentable. These contentions are unpersuasive as explained for Group 6 and Group 9. III. The rejection of claim 22 over Ericson, Seylar, and Von Arx or Shugart III (Group 12). Claim 22 reads: Appeal 2011-009695 Application 10/976,164 16 22. A method for sensing intracranial pressure (ICP), the method comprising: powering an inductive power transmitting element sized to extend over at least a substantial portion of a head of a patient to inductively power an ICP monitor implanted in the head of the patient for an extended period of time; and receiving an ICP signal transmitted by the ICP monitor via an output of the inductive power transmitting element on a continuous or periodic basis during the extended period of time, wherein the ICP signal includes ICP measurements sensed by the ICP monitor over the extended period of time, wherein the inductive power transmitting element is configured to provide a distance of at least 3 cm to approximately 10 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element. The Examiner‟s position is that Ericson described a method for sensing intracranial pressure (ICP), the method comprising: powering an inductive power transmitting element (Col.4: 12-21) sized to extend over a portion of the head of the patient to inductively power an ICP monitor 10 implanted in the head of the patient for an extended period of time; receiving an ICP signal transmitted by the ICP monitor via an output of the inductive power transmitting element (Col.6: 10-14) on a continuous or periodic basis during the extended period of time, wherein the ICP signal includes ICP measurements sensed by the ICP monitor over the extended period of time (Col.1: 60-67; Col.4:12-14,32-37). Ericson et al also disclose the inductive power transmitting element includes an inductive coil 50 to inductively power the ICP monitor. (Ans. 10.) Ericson was “silent as [to] the size or specific structure of the inductive power transmitting element.” (Id.) Given Seylar‟s teaching of an inductive power transmitting element sized to extend over a portion of the head, and continuous or periodic monitoring of ICP during an extended period of time (id. at 11, citing Seylar columns 2 and 4), the Von Arx or Appeal 2011-009695 Application 10/976,164 17 Shugart III teaching that distances of 3 cm or a few inches would be effective for inductive power transmission (id.), the Examiner concluded: it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a distance of at least 3 cm between the implanted ICP monitor and an interior surface of the inductive power transmitting element as taught by Von Arx et al or Shugart III as an effective distance to enable the two to properly communicate with one another during device use. (Id.) Appellant contends that Seylar‟s explicit teachings contradict the rejection. Specifically, Seylar discloses that inductor 28, part of the external detector 18, should be positioned coaxially in the closest position possible with the coil 27 of the implanted transducer 10. This teaching explicitly contradicts the modification of a system for sensing ICP to provide a distance of at least 3 cm between the implantable ICP monitor as implanted in the head of the patient and an interior surface of the inductive power transmitting element as recited in claim 1. (App. Br. 36, citing Seylar, col. 5, ll. 26-30.) This argument is unpersuasive because Seylar did not require “closest possible” positioning, and instead taught that inductive coupling is maximized with closest possible positioning: “The magnitude of the RF voltage drop is dependent primarily on the amount of inductive coupling which is maximized when the two inductors, i.e., the coil 27 and the inductor 28, are positioned coaxially in the closest possible proximity.” (Seylar, col. 5, ll. 26-30.) Seylar‟s statement did not teach away from using a distance of 3 cm. Appellant argues that “the disclosures of Von Arx et al. and Shugart do not overcome the disclosure of Seylar that the distance between an ICP monitor and inductive Appeal 2011-009695 Application 10/976,164 18 power transmitting element should be minimized.” (App. Br. 37-38, citing also Von Arx Figure 7.) This argument is unpersuasive for two reasons. First, Seylar did not require the distance to be minimized but instead explained only that inductive coupling is maximized at closest possible positioning. That teaching is consistent with Von Arx‟s Fig. 7, illustrating received power as a function of distance. Second, it is undisputed that Von Arx and Shugart III taught effective power transfer at distances of 3 cm and 5 cm, respectively. Those were alternatives to Seylar‟s approach. Weighing the evidence as a whole, it is apparent that Seylar did not teach that transmission at a distance of 3 cm would fail, and therefore did not teach away. “The prior art‟s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). IV. The rejection of claim 28 over Ericson, Seylar, Von Arx or Shugart III, and Eide (Group 13). Claim 28 further limits the method of claim 26 by reciting “further comprising powering the inductive power transmitting element to power the ICP monitor over a substantially continuous period of time to cause the ICP monitor to transmit the ICP signal on a substantially continuous basis.” The Examiner‟s position is that although Ericson, Seylar, and Von Arx or Shugart III did not disclose monitoring ICP over a substantially continuous period of time, “Eide teaches measuring ICP while the patient is Appeal 2011-009695 Application 10/976,164 19 sleeping for an extended period of time to allow continuous monitoring (¶0075, 0079-0080).” (Ans. 12.) The Examiner concluded: it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Ericson et al, Seylar, and Von Arx et al or Shugart III to include monitoring while the patient is sleeping for the extended period of time as taught by Eide to fully allow continuous ICP monitoring. (Id.) Appellant contends that claim 28 is patentable for at least the reasons claim 22 is patentable. This argument is unpersuasive as explained for Group 12. Appellant does not dispute the finding that Eide taught continuous monitoring, or the conclusion that continuous monitoring would have been an obvious modification to the method suggested by the other references. V. The rejection of claims 17, 18, 20, and 21 over Ericson, Seylar, and Derby (Group 14). Claim 17 reads: 17. A system for sensing intracranial pressure (ICP), the system comprising: means, substantially surrounding a head of a patient, for inductively powering an ICP monitor implanted in the head of the patient; and means for receiving the transmitted ICP signal from the ICP monitor via the means for inductively powering the ICP monitor. The Examiner‟s position is that Ericson described a system for sensing intracranial pressure (ICP) comprising: means for inductively powering (Col.4: 12-21) an ICP monitor (10) implanted in the head of the patient, the means for inductively powering the ICP Appeal 2011-009695 Application 10/976,164 20 monitor including an inductive coil 50; means for receiving the transmitted ICP signal from the ICP monitor via the means for inductively powering the monitor (Col.6: 10-14). Ericson et al also disclose a means for monitoring an output of the ICP monitor (Col.5: 32-33). (Ans. 12.) Given that Seylar disclosed an analogous ICP system with continuous or periodic ICP monitoring, and Derby disclosed “a shroud-like and hemispherical shaped inductive element with coils that substantially surrounds a head of a patient, best seen in Figure 4 and 8A, [and] performs effectively with the head of a patient due to an opening to receive the head of the patient,” it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the invention of Ericson et al such that the means for inductively powering the ICP monitor to substantially surround the head of the patient and defines an opening to receive the head of the patient, as taught by the combination of Seylar and Derby et al, to effectively receive and work best with the head of the patient while advantageously allowing a hands-free approach for the provider during use. (Id. at 13.) Appellant notes that claim 17‟s “means” terms invoke § 112, 6 th paragraph, and contends that the arguments for claim 1 apply to claim 17. (App. Br. 39.) In particular, Appellant refers to the power transmitting element sized to extend over at least a substantial portion of the head, and substantially surround the head. (Id.) The reference to the arguments about claim 1 are unpersuasive as explained in Group 5. The arguments about the shape of the shroud are also unpersuasive. The Examiner relied on a finding that Derby evidenced that a shroud-like shape was known in the art for patient monitoring functions. Appellant‟s Figure 1 illustrates a “shroud-like Appeal 2011-009695 Application 10/976,164 21 element 16 that extends over a substantial portion of the patient‟s head.” (Spec. 5, ¶ 28.) “FIG. 2 is a rear view illustrating ICP monitoring system 10 of FIG. 1.” (Id. at 6, ¶ 32.) Appellant‟s figures show the same shroud-like shape that Derby described. The Examiner provided evidence and reasoning showing that it would have been obvious to adapt the shroud-like configuration for inductively powering an ICP monitor and for receiving ICP signals by placing Ericson‟s means in the shroud. The obvious adaptation would have produced the means that comprise Appellant‟s system. Claims 18, 20, and 21 have not been argued separately and therefore fall with claim 17. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the rejection of claims 1-8, 10-13, 15, 16, and 29-32 under 35 U.S.C. § 103(a) as unpatentable over Fryer, Seylar, Von Arx or Shugart III, and Derby. We affirm the rejection of claims 1-13, 15, 16, 23-27, and 29-32 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, Von Arx or Shugart III, and Derby. We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, and Von Arx or Shugart III. We affirm the rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, Von Arx or Shugart III, and Eide. We affirm the rejection of claims 17, 18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Ericson, Seylar, and Derby. Appeal 2011-009695 Application 10/976,164 22 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 cdc Copy with citationCopy as parenthetical citation