Ex Parte KrebsDownload PDFBoard of Patent Appeals and InterferencesJul 30, 201010737431 (B.P.A.I. Jul. 30, 2010) 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. 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. Appeal 2009-010260 Application 10/737,431 2 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 Appeal 2009-010260 Application 10/737,431 3 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. Appeal 2009-010260 Application 10/737,431 4 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, Appeal 2009-010260 Application 10/737,431 5 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 Appeal 2009-010260 Application 10/737,431 6 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 Appeal 2009-010260 Application 10/737,431 7 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. Appeal 2009-010260 Application 10/737,431 8 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 Copy with citationCopy as parenthetical citation