Ex Parte Maschke

Patent Trial and Appeal Board

Feb 27, 2013

11708149 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/708,149 02/16/2007 Michael Maschke 2005P22521US 8724
22116 7590 02/27/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
YOO, REGINA M
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
02/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte Siemens Aktiengesellschaft
(Inventor: Michael Maschke)
____________________

Appeal 2011-007427
Application 11/708,149
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL

Siemens Aktiengesellschaft (Applicant) appeals from an Examiner’s
decision rejecting claims 21-26 and 29-31. 35 U.S.C. §§ 6(b) and 134(a). We
affirm.
The Claimed Subject Matter
Applicant claims a method for sterilizing medical instruments. The sole
independent claim --Claim 21-- illustrates the invention:

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21. A method for sterilizing a medical object in a sterilization
device, comprising:
reading a machine readable information code by an
electromagnetic wave from a radiofrequency identification
(RFID) tag of the medical object via a RFID read unit of the
sterilization device;
determining a number of sterilization cycles of the
medical object that has undergone to date based on the
information code;
comparing the number of sterilization cycles with a
maximum number of permitted sterilization cycles that the
medical object is allowed to undergo;
automatically triggering a warning signal if the number
of sterilization cycles reaches the maximum number of
permitted sterilization cycles; and
automatically overwriting the number of sterilization
cycles of the medical object if the number of sterilization cycles
has not reached the maximum number of permitted sterilization
cycles and the medical object undergoes a further sterilization;
wherein the sterilization device verifies if a plurality of
different medical objects subject to different sterilization
requirements are located in one sterilization area of the
sterilization device based on information code of each
respective medical object,
wherein a combined sterilization process is configured
to reach a compromise sterilization solution suitable to each
of the different medical objects based on the different
sterilization requirements of each respective medical object,
and
wherein the combined sterilization process comprises:
selecting a sterilizing sequence based on the compromise
sterilization solution suitable to each of the medical objects,
automatically triggering the warning signal, and automatically
restricting a sterilization function of the sterilization device
while the combined sterilization process is performed to avoid
damage to any of the different medical objects in the
sterilization area,
wherein the sterilization area of the sterilization device is
divided into a plurality of subareas,
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wherein a plurality of read units are arranged at the sub-
areas, and wherein locations of the medical objects in the sub-
areas are determined based on identification elements of the
medical objects and the read units arranged at the sub-areas.
Brief, 9-10 (Claims Appendix, emphasis added).
The Examiner’s Evidence
Denen US 5,400,267 Mar. 21, 1995
Fuchs US 5,996,889 Dec. 7, 1999
Perruchot US 2004/0037736 A1 Feb. 26, 2004
Root US 2004/0024290 A1 Feb. 5, 2004
Neuberger US 2004/0122419 A1 Jun. 24, 2004
Wu US 2005/0265889 A1 Dec. 1, 2005

Rejections
In the Answer, the Examiner maintained the following rejections, all based
on 35 U.S.C. § 103(a):
1. Claims 21, 23, 25-26, and 29-31 relying on the combined teachings of
Wu, Denen, and Perruchot;
2. Claims 22, 25-26, and 31 relying on the combined teachings of Wu,
Denen, Root, and Neuberger; and
3. Claim 24 relying on the combined teachings of Wu, Denen, and Fuchs.
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Applicant’s Contentions
1. Applicant contends that “the term ‘combined sterilization process’
should be construed as a process not requiring human intervention” and “that Wu
involves a user in order to choose or modify the sterilization cycle to appropriately
treat a load having different attributes, such as different weigh, different volume,
etc.” Brief 5.
2. Applicant also contends that “Wu [does] not describe or suggest a
compromise sterilization solution suitable to each of the different medical objects”
placed in the sterilizer. Brief 6.
Discussion
Applicant confines its arguments to independent Claim 21 and the Wu
reference. We also limit our discussion to that claim and reference. The
patentability of the subject matter of Claims 22-26 and 29-31 therefore runs with
that of Claim 21. 37 C.F.R. § 41.37(c)(1)(vii).
1.
With respect to Applicant’s first contention, it is unnecessary for us to
decide whether Applicant’s claims are implicitly limited to a method that precludes
human intervention. The Examiner found that Wu teaches that “a user or a control
system chooses or modifies the sterilization cycle . . . .” Answer 18 (emphasis
added). The Examiner relied upon “Wu, p. 4 [0057] - specifically lines 10-12, p. 5
[0062] first four lines and first six lines of [0063], and p. 6 [0064] lines 2-3 and 16-
18” as evidentiary support. Answer 18.
A preponderance of the evidence supports the Examiner’s finding. Wu
describes a flexible sterilization system which allows for both fully automated
computer control as well as operator assisted control. In addition to the portions of
Wu specifically referenced by the Examiner, we note the following. Wu states that
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in prior systems the sterilizer did not determine the sterilization cycle and the
operator had to input the desired cycle. Wu , ¶ [0004], ll. 5-6. Wu states that
“[t]he present invention overcomes these and other limitations in the prior art.”
Wu , ¶ [0004], ll. 6-8. Thus, Wu teaches that the control system can determine the
sterilization cycle based upon the inputted data. Wu, ¶ [0064]. Wu’s control
system can read data from multiple sources and use those inputs to determine
which sterilization cycle is to be performed. Wu, ¶ [0062], ll. 1-4. For example
Wu’s system can take data inputs regarding the nature of the instruments loaded
into the sterilizer and determine sterilization parameters based upon those inputs.
Wu, ¶ [0005], ll. 5-9. and ¶ [0012], ll. 9-11. The instrument data can be read
automatically from data encoded on, inter alia, RFID tags attached to the
instrument. Wu, ¶ [0010], ll. 1-4. Exemplary input data includes whether the
instruments are wrapped or unwrapped, the weight of the instruments, the number
and types of instruments, and the materials and proportions of the materials from
which the instruments are made. Wu, ¶ [0006], ll. 1-2 and ¶ [0062], ll. 1-14.
Based upon the data encoded on the instruments, the controller can select the
sterilization cycle from those previously stored in the controller. Wu, ¶ [0057], ll.
8-12. The controller also includes sensors that collect sterilization parameters such
as pressure, temperature, sterilant concentration and plasma power. Wu, ¶ [0011],
ll. 4-6 and ¶ [0063], ll. 1-3. The data inputted from the sensors is fed to feedback
circuitry that is used to adjust the sterilization cycle parameters. Wu, ¶ [0011], ll.
1-4.
Based upon the above facts, we do not see error in the Examiner’s
determination that Wu teaches a sterilization method in which “a control system
chooses or modifies the sterilization cycle.” Answer 18. Applicant’s argument to
the effect that Wu only teaches a system in which the operator chooses the
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sterilization cycle (Brief 5) is contrary to the weight of the evidence. On this
point, we note that Applicant has not directed us to evidence establishing that one
having ordinary skill in the art would understand Wu as teaching a system that
necessarily requires the operator “to choose or modify the sterilization cycle to
appropriately treat a load having different attributes, such as different weigh,
different volume, etc.” Brief 5. As we noted above, Wu teaches a flexible system
which allows both computer and operator assisted control.
2.
Applicant’s second contention asserts that Wu does not teach a “combined
sterilization process . . . configured to reach a compromise sterilization solution
suitable to each of the different medical objects based on the different sterilization
requirements of each respective medical object.” Brief 6.
We disagree. Wu teaches that the control system is programmed to take
inputs regarding the nature of the instrument load and uses those inputs to
determine sterilization cycle parameters. Wu, ¶ [0005], ll. 1-8. Wu notes that it
was typical to optimize sterilization cycles to permit sterilization of the most
challenging, i.e. most difficult to sterilize, of the instruments loaded into the
sterilizer. Wu, ¶ [0056], ll. 1-4. For example, Wu in describing the sterilization of
lumens (i.e. tubular medical instruments), notes that
the devices can be coded themselves, such as with a bar
code which is scanned as the device is loaded, and the
control system 28 selects the appropriate cycle to meet a
particular lumen claim based upon the most challenging
lumen device which was scanned.

Wu, ¶ [0057], ll. 8-12. Additionally, Wu teaches that data may be inputted item by
item or based upon inputted aggregated information from which the control system
determines the sterilization steps to be taken. Wu, ¶ [0064]. Thus, Wu reasonably
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suggests a “combined sterilization process . . . configured to reach a compromise
sterilization solution suitable to each of the different medical objects based on the
different sterilization requirements of each respective medical object.”
3.
In the Reply Brief, Applicant argues for the first time that the Perchot
reference is not combinable with Wu. Applicant argues that Wu and Perchot
sterilizers have substantially different principles of operation --the use of a
chemical sterilant and a plasma, respectively. Reply Brief 3-4.
This argument is not timely. Since we do not have the Examiner’s views on
this issue, we decline to consider the argument. Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (“The reply brief is not an opportunity to
make arguments that could have been made during prosecution, but were not. Nor
is the reply brief an opportunity to make arguments that could have been made in
the principal brief on appeal to rebut the Examiner's rejections, but were not”).
However, we do note that it appears that Wu considers a plasma to be a sterilant.
See Wu, ¶ [0034]. Therefore the combination would not involve a change in the
principle of operation.
4.
Having carefully considered Applicant’s arguments and the record, we do
not see error in the Examiner’s decisions Rejecting Claims 21-26 and 29-31.
DECISION
The Examiner’s decisions rejecting Claims 21-26 and 29-31 under 35 U.S.C.
§ 103(a) are affirmed.

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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).
AFFIRMED

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