Ex Parte Hamilton

Patent Trial and Appeal Board

Dec 27, 2016

11716496 (P.T.A.B. Dec. 27, 2016)

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.
11/716,496 03/09/2007 Emily Hamilton 18948CIP 7003
293 7590 12/29/2016
DOWELL & DOWELL, P.C.
2560 HUNTINGTON AVE, SUITE 203
ALEXANDRIA, VA 22303
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
DOWELL@DOWELLPC.COM
SDARRENKAMP@DOWELLPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY HAMILTON
Appeal 2014-008211
Application 11/716,4961
Technology Center 3600
Before, JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Non-Final rejection of claims 1, 5—17, 20, 21, 25—37, 40, 41, 45—57, 60-65,
68—70, and 72. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM IN PART.
1 Appellant identifies Perigen Inc., as the real party in interest. Br. 3.
Appeal 2012-002645
Application 11/618,705
THE INVENTION
Appellant’s claims “relate[] generally to the field of obstetrics.”
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1) A computer readable storage medium storing a program
element suitable for execution by a processor, said
program element implementing a process for monitoring
an obstetrics patient during labour, said processor when
executing said program element being adapted for:
(a) receiving a contraction signal associated with the
obstetrics patient, the contraction signal conveying
information related to uterine contractions over time;
(b) processing the contraction signal to derive first
information conveying rates of uterine contractions
over time;
(c) causing said first information to be displayed in a
viewing window on a display device;
(d) deriving information conveying if an anomalous
contraction rate has persisted for a prolonged period
of time, said information being derived at least in part
by determining if the rates of uterine contractions
conveyed by said first information have fallen outside
a limit set by a threshold rate of uterine contractions
for a time duration exceeding a predetermined time
duration;
(e) selectively causing an alarm event at least in part
based on the information conveying if the anomalous
contraction rate has persisted for the prolonged
period of time.
2
Appeal 2012-002645
Application 11/618,705
THE REJECTION
The following rejections are before us for review.2 3
1. Claims 1, 5-14, 20-21, 25-34, 40-41, 45-54, 58-65, 68-70, and
72 are rejected under 35 U.S.C. § 103(a) as being unpatentable by
Miklos, et al. (EP 0286731, pub. Oct, 19, 1988, hereinafter
“Mikroker”) in view of to Hojaiban (US 3,989,034, iss. Nov. 2,
1979). Non-Final Act. 2.
2. Claims 15—17, 35—37, and 55—57 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mikroker in view of Official
Notice. Non-Final Act. 32.
ANALYSIS
35 U.S.C. § 103 REJECTION
The Appellant argued claims 1, 6, 8—14, 20-21, 26, 28—34, 40-41, 46,
48—54 and 58—65. We select claim 1 as the representative claim for this
group, and the remaining claims standing or falling with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
The Appellant respectfully submits that the
combination of Mikroker and Hojaiban fails to
disclose the claimed features of "deriving
information conveying if an anomalous
2 The Examiner has withdrawn the rejection of claims 5, 7, 25, 27, 45, and
47 under 35 USC § 103(a). Answer 2. Claims 18, 19, 22, 24, 38, 39, 42-44,
66, 67, 71 and 73 have been cancelled.
3
Appeal 2012-002645
Application 11/618,705
contraction rate has persisted for a prolonged
period of time" and "selectively causing an alarm
event at least in part based on the information
conveying if the anomalous contraction rate has
persisted for the prolonged period of time."
Appeal Br. 10.
The Examiner however found that Mikroker discloses this feature:
The measured parameters are compared with
corresponding outer limits of acceptability and
when those limits are exceeded the system alerts,
sounding an audio alarm and actuating an
appropriate indicator lamp which identities [sic]
the condition parameter that has transcended its
assigned tolerance for more than a permissible
time period[.]
Answer 3 (citing Mikroker, Abstract).
We agree with the Examiner. The cited Abstract of Mikroker
discloses measuring “values corresponding to the size and duration of the
sampled uterine contractions” and, the “measurement is repeated and the
number of measured values stored during a predetermined time span is
calculated.” Thus, Mikroker discloses measuring the duration of contraction
per predetermined time span, which we find meets the claim requirement of
contractions per time because a measure of the duration of a contraction over
a predetermined time span will inherently mark the occurrence of that
contraction per the predetermined time span.
Notwithstanding, we find that Hojaiban explicitly discloses that it “is
desirable to know not only the magnitude of uterine contractions, but their
4
Appeal 2012-002645
Application 11/618,705
timing as well.” Hojaiban, col. 5, lines 63—65. Thus, we agree with the
Examiner’s finding that one having ordinary skill in the art would know to
use Hojaiban’s disclosure of using an alarm “signaled when the condition
occurs for a time duration exceeding a predetermined time duration
(.Hojaiban see more than a permissible time period)” (Non Final Act. 3), as
part of the duration/size monitoring feature of Mikroker to alert if an
anomalous contraction rate has persisted for a prolonged period of time.
Appellant next argues:
In particular, if one were to combine the teachings
of Mikroker with those of Hojaiban, one might
obtain, hypothetically, a technique for deriving
improved predictions about premature birth by
comparing a computed contraction rate to a
threshold (i.e., using the method of Mikroker), but
where the contractions themselves are detected in
an improved manner using the technique of
Hojaiban.
Appeal Br. 12.
We disagree with Appellant because Appellant in essence is attacking
the Hojaiban reference individually when the rejection is based on a
combination of references, and the Examiner relies on Hojaiban only for
disclosing signaling when a condition occurs for a time duration exceeding a
predetermined time duration. (Non Final Act. 3). See In re Keller, 642 F.2d
413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968).
Appellant next argues:
The condition detected in Hojaiban influences
5
Appeal 2012-002645
Application 11/618,705
whether a contraction is deemed to have occurred,
but is totally unrelated to the rate of such
contractions. Moreover, not only does Hojaiban
fail to discuss monitoring the rate at which
contractions occur, but it is even less apparent why
Hojaiban would have any interest in carrying out
such monitoring, let alone analyzing the
contraction rate over a period of time to draw
subtending conclusions therefrom.
Appeal Br. 14—15.
We disagree with Appellant because as found supra, Hojaiban
explicitly discloses that it is desirable “to know not only the magnitude of
uterine contractions, but their timing as well.” Hojaiban, col. 5, lines 63—65.
We further find reasonable the Examiner’s reason for combining
Mikroker with Hojaiban namely, “would have been obvious since the
resulting system would reduce false alarm events by allowing transient out
of threshold values” (Answer 3), because accuracy of data is a predominant
concern in the medical profession. In so doing, we find that the Examiner
has taken into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant argues that the rejection of claims 15—17, 35—37 and 55—57
using official notice is improper because the claimed subject matter is not
“capable of instant and unquestionable demonstration as being well-known.”
Appeal Br. 18.
We agree with Appellant that the claimed:
6
Appeal 2012-002645
Application 11/618,705
(a) causing a control to be displayed on the display device for
allowing a user to select a portion of the third tracing indicative of
intensities of uterine contractions over time in the second viewing window;
(b) causing a zoomed-in portion of the third tracing in the second
viewing window to be displayed in a third viewing window on the display
device,
is not subject matter to be decided by official notice because it goes to
features which are not well known or common knowledge in the art, and the
official notice is not supported by the Examiner’s providing a technical line
of reasoning underlying the determination of obviousness that is clear and
unmistakable. See In reZurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
Since Appellant argues the rejection of claim 72 based on those
arguments advanced for claim 1 (Appeal Br. 19), we sustain the rejection of
claim 72 for the same reasons set forth for claim l.3
CONCFUSIONS OF FAW
We conclude the Examiner did not err in rejecting claims 1, 6, 8—14,
18-21, 26, 28-34, 38-41, 46, 48-54 and 58-67, 72 under 35 U.S.C. § 103.
We conclude the Examiner did err in rejecting claims 15—17, 35—37
and 55-57 under 35 U.S.C. § 103.
3 We find no merit in the alleged discrepancy asserted by Appellant that the
version of claim 72 used by the Examiner was incorrect because Appellant
admits that claim 72 and 1 are similar enough to argue together. See Appeal
Br. 19.
7
Appeal 2012-002645
Application 11/618,705
DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART.
8