Ex Parte Lippincott

Board of Patent Appeals and Interferences

Jan 10, 2011

10973223 (B.P.A.I. Jan. 10, 2011)

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.
10/973,223 10/26/2004 Kathy J. Lippincott 124.0001 3109
35987 7590 01/10/2011
JOSEPH P. CURTIN
1469 N.W. MORGAN LANE
PORTLAND, OR 97229
EXAMINER
LU, SHIRLEY
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
01/10/2011 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 KATHY J. LIPPINCOTT
____________________

Appeal 2009-007245
Application 10/973,2231
Technology Center 2600

____________________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Kathy J. Lippincott.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or 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 2009-007245
Application 10/973,223

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to a monitoring system for a monitoring
at least two body function parameters of a sleeping person. The monitoring
system includes a sensor unit and a base unit. The sensor unit outputs a
sensor signal corresponding to the body function parameters, such as a heart-
rate, a respiratory rate and/or a body temperature of the sleeping person. The
base unit determines whether an alarm condition is present based upon the
sensor signal. In response to a detected alarm condition, the base unit
generates an actuation signal for actuating an audible signal, such as a pre-
recorded voice of a caregiver. Additionally, the sensor unit includes a
shock-delivering device which may be actuated by the base unit for
stimulating the sleeping person to either breathe or enter a less deep sleep
pattern (Abstract).
Claim 1 is exemplary:
1. A system, comprising:
a sensor unit capable of outputting a sensor signal corresponding to
each of at least two body function parameters of a sleeping person; and
a base unit capable of determining whether an alarm condition is
present based on each sensor signal output from the sensor unit and, in
response to a detected alarm condition, capable of generating an actuation
signal for actuating a shock-delivering device for stimulating the sleeping
person to do one of breathe and enter a less deep sleep pattern.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Palsgard US 4,848,360 Jul. 18, 1989
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Application 10/973,223

Teller US 2002/0013538 A1 Jan. 31, 2002
Pulkkinen US 2002/0107451 A1 Aug. 8, 2002

Claims 1, 2, 4-8, 10, 11, 13-15, and 17stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Teller in view of Palsgard.
Claims 3, 12, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teller in view of Palsgard and Sweeney.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teller in view of Palsgard and Pulkkinen.

ISSUE
Appellant contends that the Examiner has not established a prima
facie case of obviousness because the Examiner has not indicated that Teller
provides a suggestion for modifying Teller or combining Teller and Paslgard
as proffered (App. Br. 5, 7, and 8). Appellant asserts that in similar cases,
the Federal Circuit reversed the decision of the Board when there was no
evidence on the record of a motivation to combine (App. Br. 7-8).
Accordingly, Appellant argues that the Examiner has used impermissible
hindsight to reject the Appellant’s claims based upon the proffered
combination (App. Br. 8).
Appellant further contends that Palsgard teaches away from actuating
a shock-delivering device for stimulating the sleeping person since it
discloses the disadvantages of shocking a person (App. Br. 5-6). Appellant
asserts that Palsgard “strives to reduce” the drawbacks of shocking a person
by influencing a snoring person through actuation of a vibrator that sends
out vibrations to change his sleeping position as opposed to actuation of a
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Application 10/973,223

shock delivering device that sends an electric shock to the sleeping person
(App. Br. 5-6). Appellant contests that the Examiner ignores the Palsgard
disclosure that is immediately subsequent to the relied upon portion of
Palsgard (App. Br. 6).
Appellant’s contentions present us with the following issue:
Does a motivation exist for combining the references, given that it is
known to one skilled in the art that a person will be awakened by application
of an electric shock?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Teller
1. Teller discloses a system for monitoring health signs of an
individual which detects at least one health sign characteristic of the
individual with a health signs sensor unit that is located proximate the
individual (¶¶ [0043] and [0046]). Examples of health signs include but are
not limited to temperature, heart rate, blood pressure, respiration, blood
oxygen, moisture, muscle response, patient body position such as a baby’s
sleeping position to prevent Sudden Infant Death Syndrome (SIDS) (¶¶
[0048] and [0119]). The sensor unit produces a health signal from the health
signs sensor that indicates at least one health sign of the individual and
communicates the health signal from the individual to a receiving apparatus
over a wireless connection (¶¶ [0043] and [0046]). The receiving apparatus
processes the provided signal at a destination node of the network to indicate
if an emergency condition exists and displays the alert on a response device
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Application 10/973,223

132, including a pager, telephone, facsimile machine, computer, or a device
located with a health care provider. (¶¶ [0043], [0046-0048]).
Palsgard
2. Palsgard discloses a device for preventing snoring that detects
snoring sounds and applies a small electric shock to the person through two
electrodes of a bracelet as soon as the sound is registered by a microphone
included in the device. The sleeping person is influenced to either change
his sleeping position or wake up in an effort to eliminate the snoring (col. 1,
ll. 29-43).
3. Palsgard discloses that this device may unnecessarily disturb a
person by false detection of a snoring sound from the sleeping person (i.e.
sleep talking and other background sounds) (col. 1, ll. 44-61). Therefore, the
objective of the Palsgard invention is to detect if a person snores
continuously during a rather long time interval and, if so, then to deliver a
signal to an influencing apparatus 17 such as a vibrator that sends out
vibrations perceptible to the sleeping person which influence him to change
his sleeping position without waking up (col. 1, ll. 62-67; col. 4, ll. 16-26).

PRINCIPLE OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.
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Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). Our reviewing court has held that “[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994);
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1090
(Fed. Cir. 1995).

ANALYSIS
Claims 1, 2, 4-8, 10, 11, 13-15, and 17
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 1 recites “in response to a detected alarm
condition, generating an actuation signal for actuating a shock-delivering
device for stimulating the sleeping person to do one of breathe and enter a
less deep sleep pattern.” Independent claim 10 is similar in scope to
representative claim 1.
We do not consider Appellant’s arguments to be persuasive to show
Examiner error. Teller discloses a system for monitoring health signs of an
individual which detects at least one health sign characteristic of the
individual with a health signs sensor unit that is located proximate the
individual (FF 1). One example of a health sign includes patient body
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Application 10/973,223

position such as a baby’s sleeping position to prevent Sudden Infant Death
Syndrome (SIDS) (FF 1). The sensor unit produces and communicates the
health signal from the individual to a receiving apparatus over a wireless
connection (FF 1). The receiving apparatus processes the provided signal at
a destination node of the network to indicate if an emergency condition
exists and displays the alert on a response device 132, including a pager,
telephone, facsimile machine, computer, or a device located with a health
care provider (FF 1).
Palsgard discloses an admitted prior art device for preventing snoring
that detects snoring sounds and applies a small electric shock to the person
through two electrodes of a bracelet as soon as the sound is registered by a
microphone included in the device (FF 2). Although Palsgard discloses that
this device may unnecessarily disturb a person by false detection of a
snoring sound from the sleeping person (i.e. sleep talking and other
background sounds) (FF 3), it does not render the application of an electric
shock ineffective. Therefore, we do not find that Palsgard teaches away
from the application of a shock to a sleeping person. We find that the
motivation to combine amounts to “knowledge generally available to one of
ordinary skill in the art,” since it is common knowledge that a person may be
awakened using an electric shock. Particularly with reference to a SIDS
victim as disclosed in Teller, application of an electric shock to influence the
baby to shift in sleeping position or to awaken may save the life of the infant
when the medical alert condition is detected (FF 1).
In any event,
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
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Application 10/973,223

combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added).
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Teller and Palsgard
discloses a system that in response to detecting an alarm condition, the base
unit is “capable of generating an actuation signal for actuating a shock-
delivering device for stimulating the sleeping person to do one of breathe
and enter a less deep sleep pattern.” As a result, we will sustain the
Examiner’s § 103 rejection of representative claim 1 and that of claims 2, 4-
8, 10, 11, 13-15, and 17.
Claims 3, 9, 12, 16, and 18
Appellant contends that the additional cited references (Sweeney and
Pulkkinen) do not cure the deficiencies of Teller and Palsgard (Brief 9). As
noted supra, however, we affirmed the rejection of independent claims 1 and
10 from which claims 3, 9, 12, 16, and 18 respectively depend. We
therefore affirm the Examiner’s rejections of claims 3, 9, 12, 16, and 18
under 35 U.S.C. § 103, for the same reasons expressed with respect to the
§ 103 rejection of parent claims 1 and 10, supra.

CONCLUSION
A motivation exists for combining the references given that it is
known to one skilled in the art that a person will be awakened by application
of an electric shock.
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Application 10/973,223

ORDER
The Examiner’s rejection of claims 1-18 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)(1)(iv).

AFFIRMED

ELD

JOSEPH P. CURTIN
1469 N.W. MORGAN LANE
PORTLAND, OR 97229

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