Ex Parte Johnson

Patent Trial and Appeal Board

Sep 16, 2014

12424390 (P.T.A.B. Sep. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROYCE JOHNSON
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Appeal 2012-005555
Application 12/424,3901
Technology Center 3700
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Before CATHERINE Q. TIMM, GEORGE C. BEST, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

Pending on appeal are the Examiner’s rejections of claims 22, 24–27,
and 29–31 as anticipated under 35 U.S.C. § 102(b) and of claims 23 and 28
as obvious under 35 U.S.C. § 103(a), which were entered as new grounds of
rejection in the Examiner’s Answer. (Ans. 3–4.) The Examiner withdrew
the previous final rejections of these claims. (Id. at 4.) In response to the
Examiner’s new grounds of rejection, Appellant chose to maintain the
appeal by filing a Reply Brief, pursuant to 37 C.F.R. § 41.41, and seeks

1 According to Appellant, the Real Party in Interest is KCI Licensing, Inc., a
subsidiary of Kinetic Concepts, Incorporated. (Appeal Br. 4.)
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Application 12/424,390

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reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification generally relates to transcutaneous monitoring of
blood gases, which is useful in vacuum-assisted wound healing. (Spec. ¶ 2.)
Specifically, the Specification describes using reduced pressure to induce a
condition called hyperperfusion, which is characterized by an increased flow
of arterial blood gases toward and through the surface of the skin. (Appeal
Br. 8; Spec. ¶¶ 2, 4.) Claim 22 is representative:
22. A method for monitoring a blood gas pressure
comprising:
inducing hyperperfusion of a blood gas at a tissue site by
exposing the tissue site to a reduced pressure from a reduced
pressure source;
measuring a gas pressure of the blood gas at the tissue site; and
estimating an arterial partial pressure of the blood gas using the
measured gas pressure.
(Appeal Br. 20 (Claims App.).)
REJECTIONS
On appeal, the Examiner enters the following new grounds of
rejection:
1. Claims 22, 24–27, and 29–31 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Vesterager2 as evidenced by Hopwood.3
(Ans. 5.)

2 U.S. Patent No. 4,274,418, issued June 23, 1981.
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Application 12/424,390

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2. Claims 23 and 28 are rejected under 35 U.S.C. § 103(a) as obvious
over Vesterager as evidenced by Hopwood, in view of Cormier.4
(Ans. 6.)
DISCUSSION
If “each and every limitation is found either expressly or inherently in
a single prior art reference,” then the claim is invalid under § 102 for
anticipation. Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1375 (Fed.
Cir. 2006) (internal quotation marks omitted).
Vesterager generally describes an electrochemical measuring device
for transcutaneously measuring arterial gas pressure. (Vesterager, Abstract.)
In one embodiment, Vesterager describes adhering the measuring device to
the skin by using a vacuum source to create suction in a ring around the area
of skin beneath the sensor. (See id. at col. 5, ll. 30–40; Fig. 9.) Vesterager
does not mention “hyperperfusion,” and uses the vacuum for the purpose of
attachment, but the Examiner finds that “it is well known that reduced
pressure against the skin draws blood to the area, thereby inherently
inducing hyperperfusion.” (Ans. 5.) As an example, the Examiner offers
the practice of Chinese fire cupping (id.), which Hopwood describes as “a
technique that increases local superficial circulation by creating a vacuum
under the cup.” (Hopwood at 5.)
Appellant argues that claims 22 and 27 “require that the blood gas
being measured is the same as the blood gas that is hyperperfused due to the
tissue site being exposed to reduced pressure.” (Reply Br. 12.) We agree

3 Hopwood et al., Acupuncture & Related Techniques in Physical Therapy 5
(Churchill Livingstone 1st ed. 1997).
4 U.S. Patent No. US 6,537,264 B1 issued Mar. 25, 2003.
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with Appellant that the principles of antecedent basis make this so: claims
22 and 27 each recites “inducing hyperperfusion of a blood gas at a tissue
site” and “measuring a gas pressure of the blood gas at the tissue site.”
(Claims App.) Appellant asserts Vesterager fails to teach or suggest
inducing hyperperfusion of a blood gas at a tissue site and measuring a gas
pressure of the blood gas because the vacuum applied in Vesterager forms in
a chamber created by a groove that surrounds but is “not fluidly connected
to” the chamber in which the gas sensor is located. (Reply Br. 13–15.) As
such, Appellant argues that even if hyperperfusion were induced beneath the
groove, “any gas pressure measured by the sensor [] is occurring at a
different tissue site from that at which hyperperfusion is induced.” (Id. at
15.)
The Examiner rejects this reasoning as unpersuasive because the
claim language “does not state that the claimed tissue site resides entirely
within the vacuum, nor is there a specific boundary-limiting definition of
what the tissue site is.” (Ans. 7.) Further, the Examiner cites the
Specification as teaching that “the transducer may be disposed in ‘an area
immediately adjacent a wound site that is being treated by negative pressure
therapy’. If such an arrangement induces hyperperfusion for applicant’s
invention, it does so equally for Vesterager (where the degree of separation
are [sic] fractions of a millimeter).” (Id. (quoting Spec. ¶ 12).) Appellant
argues the Examiner’s position takes the Specification out of context,
because when the transducer is located “immediately adjacent to a wound
site,” the transducer remains exposed to reduced pressure. (Reply Br. 14
(citing Spec. ¶ 30.))
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The Examiner is correct that claims 22 and 27 do not limit the
boundaries of the tissue site, but this is not dispositive. Instead, the critical
point is that claims 22 and 27 require, on their face, measuring the gas
pressure at a tissue site that is exposed to reduced pressure. Consistent with
this interpretation, the Specification repeatedly describes the device used to
measure the gas pressure as located within an area under reduced pressure.
(See Spec. ¶ 24 (transducer “is disposed entirely within the local vacuum at
the area of patient application”); ¶ 27 (vacuum source “in fluid
communication with” transducer to “induce a condition of hyperperfusion in
the locality of the electrochemical blood gas transducer”); ¶¶ 30–31 (vacuum
perfusion may be supplied to the wound site and the transducer by a
common vacuum source or separate vacuum sources).) By contrast, in
Vesterager, the area of reduced pressure is separate from the area where the
gas pressure measurement occurs. We see no teaching in Vesterager that the
area where the gas pressure is measured is exposed to reduced pressure, and
the Examiner points to none.
Because Vesterager does not teach “measuring a gas pressure of the
blood gas at the tissue site,” wherein the tissue site is exposed to reduced
pressure, Vesterager does not teach all of the elements of either independent
claim 22 or 27. Accordingly, we reverse the Examiner’s anticipation
rejection of independent claims 22 and 27, as well as the same rejection with
respect to dependent claims 24–26 and 29–31. The Examiner’s obviousness
rejection of claims 23 and 28 likewise relies on the deficient teaching of
Vesterager, which Cormier does not remedy. We thus reverse the
Examiner’s obviousness rejection of claims 23 and 28 as well.
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CONCLUSION
The Examiner’s decision rejecting claims 22–31 is reversed.

REVERSED

cdc