Ex Parte KaestleDownload PDFPatent Trial and Appeal BoardMar 30, 201713320549 (P.T.A.B. Mar. 30, 2017) Copy Citation 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. 13/320,549 11/15/2011 Siegfried Kaestle 2009P00745WOUS 1010 24737 7590 04/03/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue FARDANESH, MARJAN Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): marianne. fox @ philips, com debbie.henn @philips .com patti. demichele @ Philips, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIEGFRIED KAESTLE Appeal 2015-005046 Application 13/320,549 Technology Center 3700 Before LINDA E. HORNER, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Siegfried Kaestle (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action dated May 13, 2014, rejecting claims 1-5, 8-14, and 16-19.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies KONINKLIJKE PHILIPS N.V. as the real party in interest. Appeal Br. 2, dated October 13, 2014 (“Appeal Br.”). 2 Claims 6, 7, 15, and 20 are canceled. Appeal Br. 15-17 (Claims App.). Appeal 2015-005046 Application 13/320,549 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “SpCE [(peripheral oxygen saturation)] probes that are attached to a patient to monitor blood oxygen levels while the patient is positioned in an MRI device.” Spec. 1,11. 3—4. Claims 1,13, and 18 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. An oximetry probe, including: an appendage clip including first and second rigid clip portions, at least one of the clip portions including: a receiving aperture on an exterior surface of the clip portion, wherein the aperture releasably engages and aligns a fiber optic cable head through which light is transmitted into or received from an appendage received in the clip; a compressible foam or plastic layer affixed to an interior surface of the clip portion, the compressible foam or plastic layer defining an aperture in alignment with the clip portion aperture; an attachment structure that releasably attaches to a fiber optic cable head in alignment with the aperture; and wherein a portion of the exterior surface surrounding the receiving aperture permanently deforms upon removal of the fiber optic cable head from the receiving aperture, such that it is rendered non-functional, thereby ensuring that the appendage clip is not re-used. 2 Appeal 2015-005046 Application 13/320,549 EVIDENCE The Examiner relied upon the following evidence in the Final Action: Richards et al. (“Richards”) US 5,273,041 Dec. 28, 1993 Noll et al. (“Noll”) US 5,337,386 Aug. 9, 1994 Caro US 5,348,003 Sept. 20, 1994 Parker US 6,321,100 B1 Nov. 20, 2001 Jenkins et al. (“Jenkins”) US 2006/0047190 Al Mar. 2, 2006 REJECTIONS The Final Action includes the following grounds of rejection: 1. Claims 1-4, 11, 12, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Richards and Jenkins. 2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Richards, Jenkins, and Noll. 3. Claims 8, 9, 13, 14, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Richards, Jenkins, and Caro. 4. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Richards, Jenkins, and Parker. ANALYSIS First Ground of Rejection Appellant argues the claims subject to the first ground of rejection as a group. Appeal Br. 4-12. We select claim 1 as representative of the group, 3 Appeal 2015-005046 Application 13/320,549 and the remaining claims 2—4, 11, 12, 18, and 19 stand or fall with claim 1. 37C.F.R. §41.37(c)(l)(iv). The Examiner finds that Richards discloses the oximetry probe substantially as called for in claim 1, except Richards “fails to disclose that the portion of the clip surrounding the receiving aperture is deformed upon removal of the fiber optic cable head from the receiving aperture, such that it is rendered non-functional, to ensure that the appendage clip is not reused.” Final Act. 2-3. The Examiner finds that Jenkins discloses a probe including frangible probe body 110 and reusable insertable piece 116. Id. at 3. The Examiner finds that frangible probe body 110 has casing 22, detent 118 coupled to casing 22 by spring 120, and breakpoint 122. Id. The Examiner also finds that insertable piece 116 has groove 114, into which detent 118 is urged by spring 120 upon insertion of piece 116 into casing 22. Id. The Examiner explains that “[w]hen insertable piece 116 is removed from frangible probe body 110, the detent 118 and spring 120 break from casing 22 at the breaking point 122, such that further use of the probe body is inhibited, as the insertable piece can no longer be fixed into a locked position.” Id. at 3—4. The Examiner determines that it would have been obvious to modify the device of Richards to deform the attachment mechanism, as taught in Jenkins, to “provide[] a single use sensor in order to prevent re-use of the sensor, and contamination of the patient.” Id. at 4. Appellant does not contest the Examiner’s findings as to the scope and content of Richards, or the Examiner’s proposed modification of the device of Richards with the teaching of Jenkins. Appeal Br., passim. 4 Appeal 2015-005046 Application 13/320,549 Appellant contests only the Examiner’s findings as to the disclosure of Jenkins. In particular, Appellant contends “Jenkins does not disclose or suggest ‘wherein a portion of the exterior surface surrounding the receiving aperture permanently deforms upon removal of the fiber optic cable head from the receiving aperture, such that it is rendered non-functional thereby ensuring] that the appendage clip is not re-used,’ as recited in claim 1.” Appeal Br. 4 (arguing that because Jenkins’s detents 118, springs 120, and breaking point 122 are internally located with probe body 110, breakage of these internal components at breaking point 122 cannot constitute deformation of the exterior surface of the clip surrounding the receive aperture). Jenkins discloses an aperture in probe body 110 through which insertable piece 116 is received. Jenkins, Fig. 6D (showing opening in casing 22 at right hand end of probe body 110 defined by material at breakpoint 122). Jenkins discloses that “[w]hen insertable piece 116 is removed from frangible probe body 110, the detent 118 and spring 120 break from casing 22 at the breaking point 122, such that further use of the probe body is inhibited . . . .” Id. at para. 79 (emphasis omitted). As such, the material of casing 22 that defines the aperture through which insertable piece 116 is received is permanently deformed when it breaks at breaking point 122, upon removal of insertable piece 116 from body probe 110. This material at breaking point 122, as shown in Figure 6D of Jenkins, is located on the exterior surface of probe body 110 surrounding the receiving aperture. 5 Appeal 2015-005046 Application 13/320,549 In other words, although we agree with Appellant that detents 118 and springs 120 are within casing 22, the material of casing 22 that forms breaking point 122 is located on the exterior of casing 22 of probe body 110 and surrounds the aperture through which insertable piece 116 is received. The lead line in Figure 6D points to a breaking point 122 that lies along the expanse of material of casing 22 between the receiving aperture and the outer sidewall of casing 22. As noted by the Examiner, “if one were to view the aperture from the insert direction, one would identify the visible parts/surfaces at the external surface.” Advisory Action, dated July 31, 2014, at 2. The portion of casing 22 at breaking point 122 is a visible part of the casing material surrounding the aperture at the external surface of the probe body 110. We further understand Jenkins to disclose that this material of casing 22 at breaking point 122 will break upon removal of insertable piece 122 from probe body 110. Jenkins, para. 79. As such, we agree with the Examiner’s finding that Jenkins discloses a portion of the exterior surface of the probe head 110 surrounding the receiving aperture permanently deforms upon removal of the insertable piece 116 from the receiving aperture. Appellant further argues that Jenkins’s first and second tooth engaging surfaces 18 “are the only surfaces of Jenkins that can be considered exterior surface[s] surrounding the receiving aperture (e.g., a tooth). Reply Br. 3 (arguing “the back end of the probe body of Jenkins is not ‘an exterior surface surrounding the receiving aperture,’ as recited in claim 1”). This argument is not commensurate with the language of claim 1. 6 Appeal 2015-005046 Application 13/320,549 Claim 1 defines the “receiving aperture” as being “on an exterior surface of the clip portion, wherein the aperture releasably engages and aligns a fiber optic cable head through which light is transmitted into or received from an appendage received in the clip.” Appeal Br. 14 (Claims App.). Thus, the receiving aperture of claim 1 is the aperture through which the fiber optic cable head is received. In the case of Jenkins, the opening at the right hand side of probe body 110 in Figure 6D, through which the insertable piece 116 is received, corresponds to the claimed “receiving aperture.” The cross- hatching in Figure 6D shows that casing 22, including the surface that engages the tooth, is formed of a single piece of material, and thus the receiving aperture disposed on the right hand side of probe body 110 in Jenkins is on the exterior surface of the clip portion. Breaking of the material of casing 22 at breaking point 122 upon removal of insertable piece 116 would result in permanent deformation of a portion of the material on the exterior surface surrounding the receiving aperture. Additionally, Appellant contends that in Jenkins the permanent deformation does not “‘ensur[e] that the appendage clip is not re-used'' as recited in claim 1.” Appeal Br. 8. In particular, Appellant argues that “[t]he appendage clip of Jenkins includes both the probe body 110 and insertable piece 116” and deformation of detents 118 and springs 120 on probe body 110 do not preclude re-use of the entire appendage clip, because insertable piece 116 can be reused with another probe body 110. Id. There is no dispute that Jenkins’s insertable piece 116 can be reused with multiple probe bodies. Appeal Br. 8; Final Act. 4. We disagree with Appellant’s 7 Appeal 2015-005046 Application 13/320,549 characterization of “the entire appendage clip” of Jenkins as corresponding to the combination of probe body 110 and insertable piece 116. Rather, probe body 110, which clips onto a tooth in Jenkins, corresponds to the claimed “appendage clip,” and insertable piece 116, in which the transmission medium 26 is fixed, corresponds to “a fiber optic head through which light is transmitted into or received from an appendage received in the clip.” Thus, similar to Appellant’s invention, in which “the fiber optic cables can be reused with a number of disposable clips” (Spec. 4,1. 32 — 5, 1. 1), Jenkin’s insertable piece 116 can be reused with a number of probe bodies 110 (Jenkins, para. 29). For the above reasons, we agree with the Examiner’s finding that Jenkins discloses “a portion of the exterior surface surrounding the receiving aperture permanently deforms upon removal of the fiber optic cable head from the receiving aperture, such that it is rendered non-functional, thereby ensuring that the appendage clip is not re-used,” as recited in claim 1. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Richards and Jenkins. Claims 2-4, 11, 12, 18, and 19 fall with claim 1. Remaining Grounds of Rejection The remaining grounds of rejection are based upon the same base combination of Richards and Jenkins, and in further combination with one of Noll, Caro, and Parker. Final Act. 5-9. Appellant relies on the arguments presented in support of the patentability of claim 1 as the basis for seeking reversal of the remaining grounds of rejection of claims 5, 8-10, 13, 14, 16, 8 Appeal 2015-005046 Application 13/320,549 and 17. Appeal Br. 10-12. For the same reasons provided above in our discussion of claim 1, we likewise sustain the remaining grounds of rejection of claims 5, 8-10, 13, 14, 16, and 17. DECISION The decision of the Examiner to reject claims 1-5, 8-14, and 16-19 is affirmed. 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 9 Copy with citationCopy as parenthetical citation