Ex Parte Masic et al

Patent Trial and Appeal Board

Nov 21, 2016

13098130 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/098, 130
94654 7590
Covidien LP
ATTN: IP Legal
04/29/2011
6135 Gunbarrel Avenue
BOULDER, CO 80301
11/23/2016
FIRST NAMED INVENTOR
Milenko Masic
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-RM-02182US/0141US01 7996
EXAMINER
SUL, DOUGLAS YOUNG
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILENKO MASIC, PETER DOYLE, and
GARDNER KIMM
Appeal 2015-001359
Application 13/098, 130
Technology Center 3700
Before LYNNE H. BROWNE, MITCHELL G. WEATHERLY, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Milenko Masic et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Appeal2015-001359
Application 13/098, 130
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for controlling exhalation during ventilation of
a patient on a ventilator, the method comprising:
determining with a ventilator a plurality of potential
pressure profiles for an exhalation that will provide a faster rate
of lung emptying for the exhalation than a previously provided
rate based on at least one received criterion by a patient being
ventilated on a ventilator;
selecting a pressure profile for delivery to the patient from
the at least one potential pressure profile; and
controlling at least one of airway pressure and flow with
the ventilator based on the selected pressure profile during the
exhalation by the patient.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gilmore
Jalde
Berthon-Jones
Yurko
Blanch
us 5,931,160
US 6,564,798 Bl
US 7,367,337 B2
US 6,640,806 B2
US 7,562,657 B2
2
Aug. 3, 1999
May 20, 2003
May 6, 2008
Nov. 4, 2003
July 21, 2009
Appeal2015-001359
Application 13/098, 130
REJECTIONS 1
I. Claims 1, 6-8, 10-14, 16, 19, and 20-23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Gilmore and Berthon-
Jones.
II. Claims 2 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gilmore, Berthon-Jones, and Blanch.
III. Claims 3-5, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gilmore, Berthon-Jones, and Yurko.
IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Gilmore, Berthon-Jones, and Jalde.
DISCUSSION
Rejection I
Claims 1, 6-8, and 10-13
The Examiner finds that Gilmore discloses all of the limitations of
independent claim 1 except for "a potential pressure profile that will provide
a faster rate of lung empty than a previously provided rate." See Final Act.
6-7. The Examiner further finds that
Berthon-Jones, in fig 1 teaches a method of ventilating a patient
in which a criterion to determine a pressure profile is a function
II( ) which is a decaying exponential with a time constant that
decreases as K increases (col 5, ln 45---col 6, ln 25), which
provides a faster rate of lung empty than a previously provided
rate as K decreases from 1.0 to 0.0 for more efficient ventilation
(col 5, ln 36-44).
1 The rejection of claims 22 and 23 under 35 U.S.C. § 112(b) and the
rejection of claim 21 under 35 U.S.C. § 101 are withdrawn by the Examiner.
See Ans. 14--16.
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Appeal2015-001359
Application 13/098, 130
Id. at 7. Based on these findings, the Examiner determines that it would
have been obvious
Id.
to modify the method of Gilmore by using as a criterion to
determine a pressure profile a decaying exponential function
II( ) to provide a profile with a faster rate of lung empty[ing]
than a previously provided rate as taught by Berthon-Jones in
order to create a more efficient pressure profile for ventilation
when needed by a user (col 3, ln 6-10).
Appellants argue that "Berthon-Jones discloses adjusting a pressure
profile to adjust the degree of support provided to the patient. Berthon-Jones
does not teach or disclose determining a plurality of pressure profiles to
provide a faster rate of lung emptying." Appeal Br. 23.
In response to this argument, the Examiner explains that
Berthon-Jones also teaches that a gradual decay in the expiratory
cycle maintains a high lung volume for a longer period of time
rather than an instantaneous drop to zero (Berthon-Jones; col 5;
ln 6-12). Therefore, a sudden decrease in pressure in the
expiratory cycle would provide a faster rate of lung emptying
than a gradual decay, with lower values ofK (least smooth, most
square) corresponding to pressure profiles that provide a faster
rate of lung emptying than higher values of K (most smooth)
(Berthon-Jones, col 5, ln 22-34).
Ans. 17. Although, it may be true that selection of one of Berthon-Jones'
pressure profiles with a lower K value might result in a faster rate of lung
emptying, the Examiner does not explain why one skilled in the art would
make such a selection. Further, the Examiner does not identify where
Berthon-Jones teaches making such selection to "provide a faster rate of
lung emptying ... than a previously provided rate" as required by claim 1.
Appeal Br. 3 9.
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Appeal2015-001359
Application 13/098, 130
Claim 1 is a method claim. Although, claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function (see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997), the same is not true for method claims. Claim 1 requires
"determining with a ventilator a plurality of potential pressure profiles for an
exhalation that will provide a faster rate of lung emptying for the exhalation
than a previously provided rate based on at least one received criterion by a
patient being ventilated on a ventilator." Appeal Br. 39. In other words,
claim 1 requires that the profiles be determined based on an ability to
provide a faster rate of lung emptying than a prior profile for the same
patient. As noted by Appellants, Berthon-Jones determines the profiles to
adjust the degree of support provided to the patient. Appeal Br. 23; See also
Berthon-Jones 2:49---63. Thus, Berthon-Jones does not teach this step of
claim 1.
For this reason, we do not sustain the Examiner decision rejecting
independent claim 1, and claims 6-8 and 10-13, which depend therefrom.
Claims 14, 16, 19 and 20
Independent claim 14, in a manner similar to claim 1, requires
"modifying the pressure profile for an exhalation to provide a faster rate of
lung emptying during the exhalation than a previously provided rate based at
least in part on the monitored at least one parameter." Appeal Br. 41.
Regarding the teachings of Berthon-Jones, the Examiner's rejection of
independent claim 14 is substantially the same as the rejection of claim 1
discussed supra. See Final Act. 10. This rejection is also deficient for the
reasons discussed supra. Accordingly, we do not sustain the Examiner's
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Appeal2015-001359
Application 13/098, 130
decision rejecting independent claim 14, and claims 16, 19, and 20, which
depend therefrom.
Claim 21
Claim 21 similarly requires
a pressure profile module that determines at least one
potential pressure profile for an exhalation based on at least one
received criterion to provide a faster rate of lung emptying for
the exhalation than a previously provided rate by a patient being
ventilated on a ventilator and selects a pressure profile for
delivery to the patient from the at least one potential pressure
profile to provide the fastest rate of lung emptying.
Appeal Br. 42. Regarding the teachings of Berthon-Jones, the Examiner's
rejection of independent claim 21 is substantially the same as the rejection of
claim 1 discussed supra. See Final Act. 11-12. Accordingly, we do not
sustain the Examiner's decision rejecting claim 21 for the reasons discussed
supra.
Claims 22 and 23
Claims 22 and 23 are apparatus claims which require "means for
selecting a pressure profile for delivery to the patient from the plurality of
potential pressure profiles to provide a faster rate of lung emptying than a
previously provided rate" and "means for modifying the pressure profile for
an exhalation based at least in part on the monitored at least one parameter
to provide a faster rate of lung emptying for the exhalation than a previously
provided rate." Appeal Br 42, 43. The Specification identifies the means
corresponding to these limitations as modules used by a generic controller
110. See, e.g., Spec 5. The Specification does not indicate that controller
110 is a specialized controller.
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Appeal2015-001359
Application 13/098, 130
Appellants contend that "Berthon-Jones does not teach or disclose
means for determining a pressure profile that provides for a faster rate of
lung emptying" or "means for modifying a pressure profile to provide a
faster rate of lung emptying." Appeal Br. 30, 33. However, as discussed
supra, claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function.
The Examiner correctly finds (see Final Act. 12-13) that Berthon-
Jones teaches a processor with modules for selecting pressure profiles. See,
e.g., Berthon-Jones 7:22--48. Thus, Berthon-Jones teaches the means set
forth in these limitations. Accordingly, Appellants' arguments are not
persuasive.
We sustain the Examiner's decision rejecting claims 22 and 23.
Re} ections II-IV
The rejection of claims 2-5, 9, 15, 17, and 18 rely upon the same
erroneous finding with respect to Berthon-Jones discussed supra.
Accordingly, we do not sustain the Examiner's decision rejecting these
claims.
DECISION
The Examiner's rejections of claims 1-21 are REVERSED.
The Examiner's rejection of claims 22 and 23 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).
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Appeal2015-001359
Application 13/098, 130
AFFIRMED-IN-PART
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