Ex Parte Husheer

Patent Trial and Appeal Board

Jun 24, 2016

13061191 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/061,191 03/21/2011
20230 7590 06/28/2016
V orys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
FIRST NAMED INVENTOR
Shamus Husheer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
073129.000004 4453
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
patlaw@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAMUS HUSHEER
Appeal2014-001001
Application 13/061,191 1
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
JAMES J. MAYBERRY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shamus Husheer (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-3, 5, 6, 8-19, 21, 22, and
24. 2 Appellant's representative presented oral argument on June 21, 2016.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellant, the real party in interest is Cambridge
Temperature Concepts Limited. Appeal Br. 1 (filed June 6, 2013).
2 Claims 4, 7, 20, and 23 are cancelled. Final Act. 2 (mailed Nov. 26,
2012).
Appeal2014-001001
Application 13/061, 191
SUMMARY OF DECISION
We REVERSE and ENTER NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b ).
INVENTION
Appellant's invention relates to a "device for measuring temperature
and heat flow into or out of a subject body." Spec. 5.
Claims 1 and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A device for measuring temperature comprising:
first and second temperature sensors enclosed in a first
material having one or more material components;
a contact surface for contacting a body whose
temperature is to be measured; wherein the first and second
temperature sensors are arranged at different depths from the
contact surface and the net thermal conductivity across the
device from the contact surface through the first and second
temperature sensors is greater than the net thermal conductivity
of the device in lateral directions parallel to the contact surface.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-3, 5, 6, 8-13, 15, 18, 19, 21,
and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Sattler (US 2008/0170600 Al, pub. July 17, 2008) and
Tsuchida (US 4,929,089, iss. May 29, 1990).
II. The Examiner rejected claims 14, 17, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Sattler, Tsuchida, and
Heikkila (US 5,816,706, iss. Oct. 6, 1998).
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Application 13/061, 191
III. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Sattler, Tsuchida, and Carlton-Foss
(US 2007/0295713 Al, pub. Dec. 27, 2007).
ANALYSIS
Rejection I
The Examiner finds that Sattler discloses most of the limitations of
independent claim 1 including, inter alia, a temperature measuring device
having first and second sensors 2, 3 arranged at different depths from contact
surface 9 and enclosed in material 4 having first and second material
components 4, 7. See Final Act. 2--4; see also Sattler i-fi-f 19--20; Figs. 1, 2.
The Examiner further finds that Sattler fails to disclose that the thermal
conductivity across its device in a direction from contact surface 9 towards
sensors 2, 3, is greater than the thermal conductivity in a perpendicular
direction, i.e., lateral direction. See Final Act. 4. Nonetheless, the Examiner
finds that Tsuchida discloses a device 100 having a net thermal conductivity
across the device (axial direction) greater than the net thermal conductivity
in lateral directions. Id. at 4; Ans. 5 (mailed Aug. 22, 2013); see also
Tsuchida, col. 14, 11. 39--48, col. 16, 11. 49-53. The Examiner concludes that
it would have been obvious for a person of ordinary skill in the art to
substitute Tsuchida's anisotropic material for the material of Sattler's heat
flux insulation material because "such a modification would amount to a
simple substitution of one known element ... for another ... to obtain
predictable results such as making conductivity in the axial direction
substantially larger than that in the lateral direction" and thus, "measure the
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Application 13/061, 191
internal temperature of an object while minimizing extraneous heat inputs or
losses occurring laterally to the main heat flow path from the wearer's skin
to the ambient environment." See Final Act. 5; see also Ans. 6 (emphasis
omitted).
Appellant argues that the Examiner's reasoning to modify Sattler' s
device to include an anisotropic material, as taught by Tsuchida, "is found
only in the teachings of the presently appealed application." Reply Br. 4;
see also Appeal Br. 10, 13. Thus, Appellant appears to argue that the
Examiner's reasoning is based on impermissible hindsight.
We agree with Appellant for the following reasons. First, we do not
agree with the Examiner's position that replacing Sattler's heat flux
insulation material 4 in the embodiment of Figure 1 with Tsuchida's spiral
enclosure 100 (see Tsuchida, col. 14, 11. 39--50) or anisotropic material (see
id., col. 16, 11. 49--53) is a mere substitution of one known element for
another because Tsuchida' s spiral enclosure 100 or anisotropic material, that
transfer heat flux differently in different directions, will not transfer heat
flux in the same manner as Sattler' s homogeneous material that provides
uniform heat flux transfer (see Sattler i-f 19).
Secondly, we note that the Examiner's reasoning appears to already
be adequately performed by Sattler's device. Specifically, Sattler discloses
reducing lateral heat flux transfer when measuring the core temperature of a
patient by either reducing the lateral dimension of heat flux insulation block
4 in the middle section 7 (as per the embodiment of Figure 2) or by
providing an additional lateral heat flux insulation block 8 (as per the
embodiment of Figure 3). See also Sattler i-fi-112, 20, 21. The Examiner has
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Application 13/061, 191
not provided any findings that Sattler recognized a problem with the
methods described above to reduce lateral heat flux transfer. Without a
persuasive articulated rationale based on rational underpinnings for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1-3, 5, 6, 8-13, 15, 18, 19, 21, and 24 as
being unpatentable over Sattler and Tsuchida.
Rejections II and III
With respect to these rejections, the Examiner's use of the disclosures
of Heikkila and Carlton-Foss do not remedy the deficiencies of Sattler and
Tsuchida as described supra. See Final Act. 6-8.
Accordingly, for the same reasons as discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claims 14, 17, and 22 as
unpatentable over Sattler, Tsuchida, and Heikkila and of claim 16 as
unpatentable over Sattler, Tsuchida, and Carlton-Foss.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claims 1, 2, 5, 8, 10-13, 15, 18, 21, and 24 are rejected under 35
U.S.C. § 103(a) as unpatentable over Sattler and Stivoric (US 6,595,929 B2,
iss. July 22, 2003).
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Appeal2014-001001
Application 13/061, 191
Sattler discloses a temperature measuring device for measuring the
core temperature of a patient having first and second sensors 2, 3 arranged at
different depths from contact surface 9 and enclosed in a material 4. See
Sattler i-f 19; Fig. 1. Sattler further discloses the use of lateral heat flux
insulation block 8 to reduce lateral heat flux and provide lateral temperature
insulation. See id. i-f 21; Fig. 3.
Sattler fails to disclose an anisotropic material having a thermal
conductivity in a direction from contact surface 9 towards sensors 2, 3,
greater than the thermal conductivity in a perpendicular direction, i.e., lateral
directions.
Stivoric discloses a device 680C for measuring heat flux between a
wearer's skin 695 and an ambient environment 702 using a heat flux sensor
460. Stivoric, Abstract; col. 27, 11. 17-26; Fig. 21 C. Stivoric further
discloses "minimiz[ing] extraneous heat inputs or losses occurring laterally
to the main heat flow path (emphasis added)" by either insulating the device
"from laterally contacting heat sources or heat sinks" (lateral heat flux
insulation similar to Sattler) or by making the device from a "thermally
anisotropic material which has a thermal conductivity in the direction of the
main heat flow path that is substantially higher than its thermal conductivity
perpendicular to that direction." Id. at col. 29, 11. 46-57. As such, it would
have been obvious for a person of ordinary skill in the art to provide an
anisotropic material, as taught by Stivoric, as Sattler' s material 4 embedding
sensors 2, 3, because Stivoric discloses that the use of an anisotropic
material is a known equivalent alternative to providing lateral heat flux
insulation. Hence, the anisotropic material in the temperature measuring
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Appeal2014-001001
Application 13/061, 191
device of Sattler, as modified by Stivoric, will have a low thermal
conductivity in a direction from contact surface 9 towards sensors 2, 3 (such
as 0.05 to 0.3 W/mK, as taught by Sattler) and a much lower thermal
conductivity in a perpendicular direction, i.e., lateral directions, as taught by
Stivoric. See Sattler i-fi-f l 0, 19.
With respect to claims 2 and 18, as Stivoric discloses an anisotropic
material, the material of Sattler's device, as modified by Stivoric, exhibits an
anisotropic thermal conductivity, wherein the thermal conductivity is lowest
in lateral directions. See Stivoric, col. 29, 11. 46-57.
In regards to claims 5, 8, 10, and 11, Sattler discloses embedding disc-
shaped material 4 (first material component) within a ring-shaped annular
lateral heat flux insulation block 8 (second material component) of a
different material, to reduce lateral heat flow. See id. i121; Fig. 3.
Therefore, it would have been obvious for a person of ordinary skill in the
art to provide a ring-shaped lateral insulation block to the disc-shaped
anisotropic material of Sattler' s device, as modified by Stivoric, in order to
provide additional lateral temperature insulation and thus further reduce
lateral heat flow. This in tum, further reduces the heat transfer coefficient
between sensors 2, 3 and thus provides measurements that are more precise.
See Sattler i1i18, 9, 20. As the material of the ring-shaped insulation block
provides additional lateral temperature insulation, it would have been
obvious for a person of ordinary skill in the art to choose a material that has
a thermal conductivity lower than the thermal conductivity in the lateral
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Application 13/061, 191
directions of the anisotropic material of Sattler's device, as modified by
Stivoric. 3
As to claims 12 and 13, sensors 2, 3 of Sattler's device, as modified
by Stivoric, are located at different distances, i.e., thermal depth, from
contact surface 9. See Sattler, Fig. 1.
With respect to claims 15, 21, and 24, as Sattler discloses material 4
having a bottom contact surface 9, a top outer surface exposed to the
ambient, and a thermal conductivity of 0.05 to 0.3 W/mK, respectively, the
modified device of Sattler, according to Stivoric, will likewise disclose these
features. See Sattler i-fi-f l 0, 19; Fig. 1.
With respect to claims 3, 6, 9, 14, 16, 17, 19, and 22, although we
decline to reject every claim under our discretionary authority under 37
C.F .R. § 41.50(b ), we emphasize that our decision does not mean the
remaining claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
SUMMARY
The Examiner's decision to reject claims 1-3, 5, 6, 8-19, 21, 22, and
24 is reversed.
3 It is well known in the art of heat transfer that in order to have low
heat flow through a material, the material should possess a low thermal
conductivity. An artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962).
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Appeal2014-001001
Application 13/061, 191
We enter a new ground of rejection of claims 1, 2, 5, 8, 10-13, 15, 18,
21, and 24 under 35 U.S.C. § 103(a) as unpatentable over Sattler and
Stivoric.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in \vhich event the prosecution \Vill be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Application 13/061, 191
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)
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