Ex Parte Krebs

Board of Patent Appeals and Interferences

Jul 30, 2010

10737431 (B.P.A.I. Jul. 30, 2010)

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.
10/737,431 12/16/2003 Christian Krebs 5885
7590 07/30/2010
CONNOLLY BOVE LODGE & HUTZ
P.O. BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
PATEL, NIHIR B
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
07/30/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRSTIAN KREBS
____________

Appeal 2009-010260
Application 10/737,431
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
KEN B. BARRETT, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/737,431

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STATEMENT OF THE CASE
Christian Krebs (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 2-5, 7-10, 12-14, 16-21 and
23-31, all of the claims currently pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is to a method of sequential metering,
or of pulse-modulated metering, one or more medical gases to a human or
mammal patient. Claims 27 and 28, reproduced below, are illustrative of the
claimed subject matter:
27. A method of sequential metering one or more
medical gases to a human or mammal patient with
a sensor exposed to the respiration and a control
unit, metering the medical gas only during the
inspiration cycles of the patient, whereby the
medical gas metering is carried out via a repeating
sequence of inspiration cycles with medical gas
metered to the breathing gas (gas metering) during
some of the inspiration cycles and during other
inspiration cycles without medical gas being added
(exclusion) and independently of the exhaled gas
and of the breathing rate, with consecutive
sequences thereby not requiring identical mixtures
of breathing gas and added metered medical gas,
and supplying the breathing gas with any added
metered medical gas to the patient.

28. A method of pulse-modulated metering one or
more medical gases to a human or mammal patient
with a sensor exposed to the respiration and a
control unit, whereby the control unit receives the
measurement signal from the sensor for triggering
the medical gas metering and uses a program
and/or a sensor control to determine whether the
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medical gas is metered and for what duration,
and/or with what number of metering operations
the gas is metered, metering the medical gas as an
additive to the respiratory gas only during the
inspiration cycles of the patient and independently
of the exhaled gas and of the breathing rate, and
supplying the respiratory gas with any additive
metered medical gas to the patient.

THE REJECTIONS
The Examiner has rejected:
(i) claims 2-4, 7-10, 12-142, 16-20, 23-28, 30 and 31 under 35 U.S.C.
§ 102(b) as being anticipated by Bathe (US 5,558,083, issued September 24,
1996)(hereafter Bathe ‘083); and
(ii) claims 5 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over Bathe ‘083 in view of Bathe (US 6,125,846, issued October 3,
2000)(hereafter Bathe ‘846).

ISSUES
Does the Bathe ‘083 patent disclose a method of metering a medical
gas to a patient in which the method includes carrying out a repeating
sequence of inspiration cycles in which, during some cycles, medical gas is
delivered and, during other cycles, medical gas is not delivered?
Does the method set forth in claims 28 and 31, and in any claims
depending therefrom, require a repeating sequence of inspiration cycles in

2 Claims 13, 30 and 31 are not listed in the heading for this ground of
rejection in the Examiner’s Answer, but are addressed in the body of the
rejection. (See Answer 3, 4-5, 7-8). We will treat these claims as being
rejected as anticipated by Bathe ‘083.
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which, during some cycles, medical gas is delivered and, during other
cycles, medical gas is not delivered?

ANALYSIS
Anticipation by Bathe ‘083
Claims 27, 28, 30 and 31 are independent. As noted by Appellant,
claims 27 and 30 differ only in referring to a “medical gas” (claim 27), and
“nitric oxide” (claim 30). The same difference exists between claims 28 and
31. Claims 27 and 30 differ in scope from claims 28 and 31 in other
respects, which will be addressed herein. Appellant argues claims 28 and 31
separately from claims 27 and 30, and we will treat claims 27 and 28 as
representative.
Claim 27 requires that the medical gas metering performed in the
method be “carried out via a repeating sequence of inspiration cycles with
medical gas metered to the breathing gas (gas metering) during some of the
inspiration cycles and during other inspiration cycles without medical gas
being added (exclusion) . . .”. (Appeal Br., Claims Appendix). The
Examiner cites to a fairly lengthy passage appearing at column 7, lines 10-67
of Bathe ‘083 as disclosing this aspect of the claimed method, without
specifying which actual portions of the passage are deemed to disclose this
aspect. (Answer 3).
Upon being challenged by Appellant that Bathe ‘083 does not disclose
the claimed other inspiration cycles in which medical gas is not added, the
Examiner focuses on the disclosure appearing in Bathe ‘083 at lines 25-30 of
column 7, which indicates that the system for metering medical gas to a
patient may operate using a breath-by-breath analysis. (Answer 9). That,
according to the Examiner, in combination with the disclosure at column 8,
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lines 1-12, of a gas sensing bench 52 and a CPU 56 operating in conjunction
to discontinue delivery of the medical gas (NO) to the patient by shutting off
a shutoff valve when the medical gas rises to dangerous levels, indicates that
the medical gas may be shut off during certain cycles, such that only
breathable gas is delivered. (Id.).
We find this to be a stilted and unreasonable interpretation of the
operation of the system disclosed in Bathe ‘083, in a futile attempt to have
the Bathe ‘083 patent seen as meeting all operative steps of the method of
claim 27. The shutting off of the valve to discontinue the supply of medical
gas to the patient is plainly seen as, and would be understood by persons of
ordinary skill in the art as, an emergency measure built into the system in the
event that the concentration of the medical gas “rises to a dangerous level”.
(Bathe ‘083, col. 8, l. 7). It is not part of the normal operation of the method
performed by the Bathe ‘083 system, and there is no indication in Bathe
‘083 that the disclosed shutting off of the medical gas by closing the shutoff
valve is contemplated to be part of a medical gas metering carried out by a
repeating sequence of inspiration cycles in which, during some cycles,
medical gas is delivered, and, during other cycles, medical gas is not
delivered.
The rejection of claim 27 as being anticipated by Bathe ‘083 will not
be sustained. Similarly, the rejection of independent claim 30 as being
anticipated will not be sustained. The rejection of claims 2-4, 7-10 and 29,
all of which depend from claim 27, will also not be sustained.
Independent claims 28 and 31 differ from each other only in referring
to a “medical gas” (claim 27), and “nitric oxide” (claim 30). These claims
are directed to a method of pulse-modulated metering of one or more
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medical gases to a patient in which a control unit is claimed as “us[ing] a
program and/or a sensor control to determine whether the medical gas is
metered”. (Appeal Br., Claims Appendix).
Appellant contends that claims 28 and 31 are not anticipated by Bathe
‘083, because in Bathe ‘083, there will always be some addition of the
medical gas to the breathing gas, “in contrast to claims 28, 31 and 16 where
in some of the inspiration cycles no gas at all would be added.” (Appeal Br.
14). This is essentially the same argument discussed above as being a
distinguishing feature of claims 27 and 30. However, in the case of claims
28 and 31, there is no positive recitation, as there was with claims 27 and 30,
of not adding the medical gas during some of the inspiration cycles. Instead,
Appellant urges that, “by use of the word ‘whether’ [claims 28 and 31]
include having an inspiration cycle where medical gas for [sic, or] nitric
oxide is not added to the respiratory gas.” (Id.). Appellant further observes
that, “the word ‘whether’ permits the practice of the method wherein there
are times when no medical gas is metered.” (Reply Br. 4).
The question as to whether claims 28 and 31 are anticipated by Bathe
‘083 is not answered by a determination that those claims “include” within
their scope a method in which the medical gas is not added during some of
the inspiration cycles, or that such a practice would be “permitted”. Rather,
the question is whether the claims “exclude” from their scope the method
disclosed by Bathe ‘083 (i.e., Bathe ‘083 does not disclose a method falling
within the scope of the claims). Appellant has presented no persuasive
evidence or argument tending to show that the Examiner erred in finding
that the Bathe patent discloses a method falling within the scope of claims
28 and 31. The rejection of those claims, and of claims 12-14, 17-20 and
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23-26, depending directly or indirectly from claim 28, and not separately
argued, will be sustained.
Appellant points to persuasive evidence that the scope of the method
of claim 28 is indeed broader than a method in which medical gas is not
added during some of the inspiration cycles, by noting that claim 16, which
depends from and further limits the method of claim 28, recites that the
method includes the element requiring “the medical gas [to be] omitted from
some of the sequences.” (Appeal Br. 14; Reply Br. 4). This feature, not
present in claim 28, is seen as adequately distinguishing claim 16 from the
Bathe ‘083 disclosure, for the same reasons discussed above with respect to
claim 27. The rejection of claim 16 as anticipated by Bathe ‘083 will not be
sustained.
Obviousness--Bathe ‘083 in view of Bathe ‘846--Claims 5 and 21
Appellant presents no arguments directed to the Examiner’s rejection
of claims 5 and 21 as unpatentable over Bathe ‘083 in view of Bathe ‘846, in
either the Appeal Brief or the Reply Brief. Accordingly, this rejection will
be sustained.
CONCLUSIONS
Bathe ‘083 does not disclose a method of metering medical gas to a
patient in which, during some inspiration cycles, no medical gas is added to
the breathing gas, as called for in independent claims 27 and 30.
The method set forth in claims 28 and 31 was not shown by Appellant
to require that, during some cycles, medical gas is delivered, and, during
other cycles, medical gas is not delivered. The method set forth in claim 16,
which depends from claim 28, was shown to require the omission of medical
gas from some of the sequences.
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DECISION
The decision of the Examiner to reject claims 2-4, 7-10, 16, 27, 28
and 30 as anticipated by Bathe ‘083 is REVERSED. The decision of the
Examiner to reject claims 12-14, 17-20, 23-26, 28 and 31 as anticipated by
Bathe ‘083 is AFFIRMED. The decision of the Examiner to reject claims 5
and 21 as being unpatentable over Bathe ‘083 and Bathe ‘846 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)(1)(iv) (2007).

AFFIRMED-IN-PART

Klh

CONNOLLY BOVE LODGE & HUTZ
P.O. BOX 2207
WILMINGTON, DELAWARE 19899-2207