Ex Parte Music et al

Patent Trial and Appeal Board

Feb 25, 2016

11540895 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111540,895
52144 7590
Covidien LP
ATTN: IP Legal
FILING DATE
0912912006
02/29/2016
6135 Gunbarrel Avenue
Boulder, CO 80301
FIRST NAMED INVENTOR
Doug Music
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.
TYHC:0237C/H-NE-00253C 1701
EXAMINER
SORIANO, BOBBY GILES
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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 DOUG MUSIC, DARIUS EGHBAL, and STEVE VARGAS
Appeal2013-008108
Application 11/540,895 1
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Music et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner's final decision rejecting under 35 U.S.C. § 103(a) claims 18, 19,
22, 27-31, 36, and 37 as being unpatentable over Scharf (US 2004/0204635
Al, pub. Oct. 14, 2004), Brant (US 6,278,975 Bl, iss. Aug. 21, 2001), and
Gordon (US 2006/0017576 Al, pub. Jan. 26, 2006), 2 and claims 23-26 and
1 According to Appellants, the real party in interest is Covidien LP.
Appeal Br. 2 (filed Nov. 16, 2012).
2 Although claims 22, 27-31, 36, and 37 are not cited in the heading of this
rejection, because they are discussed in the body of the rejection, we
consider this a mere typographical error on the part of the Examiner. See
Final Act. 4--7 (mailed Mar. 22, 2012).
Appeal2013-008108
Application 11/540,895
32-35 as being unpatentable over Scharf~ Brant, Gordon, and Lemelson (US
2005/0206583 Al, pub. Sept. 22, 2005). We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b ).
INVENTION
Appellants' invention relates to "systems and methods for user
interface and identification in a medical device." Spec., Abstract.
Claims 18 and 29 are independent. Claim 18 is illustrative of the
claimed invention and reads as follows:
18. A method of interacting with a pulse oximeter
compnsmg:
receiving a physiological parameter from the pulse
oximeter at a caregiver personal display, \~1herein the caregiver
personal display is wirelessly coupled to the pulse oximeter,
wherein the caregiver personal display is worn by a caregiver
and the pulse oximeter is coupled to a sensor coupled to a
patient;
receiving voice commands from the caregiver via a
microphone of the caregiver personal display, wherein the voice
commands enable control of the pulse oximeter;
receiving only inaudible alarm signals from the pulse
oximeter at the caregiver personal display;
converting the inaudible alarm signal to audible alarm
signals; and
outputting the audible alarm signals from a speaker of the
caregiver personal display such that only the caregiver hears the
audible alarm signals.
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Appeal2013-008108
Application 11/540,895
ANALYSIS
The Examiner finds that Scharf discloses a caregiver personal digital
assistant (PDA) wirelessly coupled to a pulse oximetry sensor 105 including
"a display, voice recognition capability for inputting command controls, and
an audio output interface for outputting audio alarms." Final Act. 4 (citing
Scharf, i-fi-f l 0, 34, and 41 ).
In response, Appellants argue that, "the [pulse oximetry] sensor in
Scharf does not itself constitute a pulse oximeter," but rather "an oximeter
sensor." Appeal Br. 8, 11. Appellants explain that in Scharf "the pulse
oximeter sensor 'generat[ es] signals related to blood flow characteristics,'
while the personal digital assistant 'comput[es] various blood flow
characteristics' ... on the personal digital assistant [PDA]." Id. at 12 (citing
Scharf, i-fi-136, 37; Fig. 3). Thus, according to Appellants, "the pulse
oximeter is more than a sensing device (i.e., sensor)" and "the PDA in
Scharf is acting as the pulse oximeter." Id.
Pointing to paragraphs 30, 34, 35, and 37 of Scharf, the Examiner
takes the position that although Scharf discloses, "a preferred embodiment
of a pulse oximeter sensor being attached to a caregiver personal display
with pulse oximetry software," nonetheless, "Scharf also encompasses pulse
oximeter devices that are stand alone monitors capable of calculating a
physiological measurement and configured to attach to the disclosed
personal caregiver display." Ans. 10-12; Final Act. 3.
We agree with Appellants' position for the following reasons. In
Scharf, a pulse oximetry sensor 105 that generates signals related to blood
flow characteristics, is coupled to a patient, and wirelessly transmits data to
processing module 120, i.e., a PDA, that has oximetry software incorporated
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Appeal2013-008108
Application 11/540,895
therein for computing and displaying various blood flow characteristics of
the patient. See Scharf, i-fi-134 and 37. Hence, in Scharf, PDA 120 both
calculates and displays various blood flow characteristics of the patient (i.e.,
physiological parameters), and thus constitutes both a "pulse oximeter" and
a "caregiver personal display." As such, Scharf s display is not wirelessly
coupled to the pulse oximeter, as called for by each of independent claims
18and29.
Furthermore, we do not agree with the Examiner's position that
Scharf discloses sensing module 105 as having the physiological parameter
calculation capability of PDA 120. See Adv. Act. 2 (mailed Sept. 11, 2012).
More specifically, Scharf's paragraph 30 provides mere examples of the
types of sensors that can be used as "physiological sensing module 105" in
conjunction with various monitoring systems such as EKG monitors,
exercise monitors, spirometers, etc. 3 As such, although we appreciate the
Examiner's position that monitoring systems "inherently require some form
of processing" (see Ans. 12), nonetheless, we agree with Appellants that
Scharf' s sensor module 105 does "not necessarily process the signal in any
manner." Reply Br. 3 (emphasis added). Appellants are correct in that
Scharf's sensors merely convert a raw analog signal to a digital signal. Id.
(citing Scharf, i137). Even assuming arguendo that Scharf's sensing module
105 has the physiological parameter calculation capability of PDA 120, the
Examiner then fails to explain what is the purpose of having a computing
3 "The physiological sensing module 105 comprises a sensor to monitor the
physiological condition of a subject. The sensor may be one of various
types used in health and medical fields such as EKG monitors, exercise
monitors .... " Scharfi-f 30 (emphasis added).
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Appeal2013-008108
Application 11/540,895
device, i.e., PDA 120, in Scharf s system. As disclosed in Scharf's
paragraph 34, the system of Scharf requires a computing device with display
module 118, i.e. PDA 120, either to receive signals from a stand-alone
sensor module 105 or to incorporate sensor module 105. As such, we agree
with Appellants that in either situation:
Reply Br. 3.
If the sensor module 105 is separate from the PDA,
then the sensor module 105 acquires the signal and
the PDA calculates the physiological parameter.
Since the PDA is calculating the physiological
parameter and acting as the pulse oximeter, the
PDA cannot be wirelessly coupled to a pulse
oximeter. If the sensor module 105 is integrated
into the PDA, the PDA still fails to be wirelessly
coupled to a pulse oximeter.
Hence, because Scharf's PDA 120 is both a "pulse oximeter" and a
"caregiver personal display," Scharf fails to disclose a "caregiver personal
display [that] is wirelessly coupled to the pulse oximeter;" as called for by
independent claim 18. Similarly, Scharf fails to disclose a "caregiver
personal display [that] is configured to wirelessly couple to the pulse
oximeter," as called for by independent claim 29. The Examiner's use of the
disclosures of Brant and Gordon does not remedy the deficiencies of Scharf
as discussed supra. See Final Act. 5---6.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 18, 19, 22, 27-31, 36, and 37
as being unpatentable over Scharf, Brant, and Gordon.
As for the rejection of claims 23-26 and 32-35, the Examiner's use of
the disclosure of Lemelson likewise fails to cure the deficiencies of the
combined teachings of Scharf, Brant, and Gordon. See Final Act. 7-8.
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Application 11/540,895
Accordingly, we also do not sustain the rejection of claims 23-26 and 32-35
as being unpatentable over Scharf, Brant, Gordon, and Lemelson.
NEW GROUND OF REJECTION
We make the following NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b).
Claims 18 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lemelson and Gordon.
Lemelson discloses a system for displaying data on a head mounted
display screen. Lemelson, Abstract. More specifically, Lemelson discloses
a command computer 3 6 (pulse oximeter) that is connected to sensors 4 7,
which monitor vital signs (physiological parameter) of a patient, i.e., heart
rate, body temperature, or oxygen level, and communicates wirelessly with
display system 10 (caregiver personal display) that is worn on a surgeon's
head 30 (caregiver). 4 Id. i-fi-167----69, 85, and Figs. 2, 3. Lemelson further
discloses that display system 10 includes microphone 16 for providing
commands to computer 36, and speaker 17 for issuing audible warning tones
(audible alarm). Id. i-fi-161, 90. Thus, Lemelson discloses a method of
interacting with a pulse oximeter including receiving a physiological
parameter from the pulse oximeter 3 6 at a caregiver personal display 10,
wherein the caregiver personal display 10 is wirelessly coupled to the pulse
oximeter 3 6, wherein the caregiver personal display is worn by a caregiver
and the pulse oximeter 36 is coupled to a sensor 47 coupled to a patient. See
id. i-fi-167----69, and 85. Moreover, Lemelson discloses receiving voice
4 Parentheticals refer to claim terminology.
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Appeal2013-008108
Application 11/540,895
commands from the caregiver via microphone 12 of the caregiver personal
display 10, wherein the voice commands enable control of the pulse
oximeter 36. See id. i-fi-161, 64, and 65.
Furthermore, although Lemelson discloses outputting audible alarm
signals from speaker 1 7 of the caregiver display 10 such that only the
caregiver hears the audible alarm signals (see id. i190, Fig. lB), Lemelson
fails to disclose inaudible alarm signals. Nonetheless, Gordon discloses "an
alert system and method for alerting a clinician to the occurrence of a
physiological or medical event." Gordon i18. More specifically, Gordon
discloses wirelessly transmitting a silent alert (inaudible alarm) from an
implantable medical device (IMD) that monitors a patient's condition to a
clinician's device. Id. i-fi-129, 68. Hence, it would have been obvious for a
person of ordinary skill in the art to provide Gordon's inaudible alarm signal
to the system and method of Lemelson in order to avoid distressing a patient
when hearing an audible alarm. See id. i1 7. Although Gordon does not
explicitly state that the inaudible alarm is converted into an audible alarm
when the clinician receives it, an artisan must be presumed to know
something about the art apart from what the references disclose. See In re
Jacoby, 309 F .2d 513, 516 (CCP A 1962). A person of ordinary skill in the
art of medical alarms would have understood that the function of an alarm is
to alert the clinician and providing an audible alarm is an effective way for
alerting. Moreover, Lemelson discloses speaker 1 7 for receiving audible
warning tones. See Lemelson i190. Thus, it would have been obvious to a
person of ordinary skill in the art to convert the inaudible alarm of
Lemelson, as modified by Gordon, into an audible alarm in order for the
caregiver/clinician/surgeon to be alerted by Lemelson's speaker 17.
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Appeal2013-008108
Application 11/540,895
With respect to the dependent claims, although we decline to reject
every claim under our discretionary authority under 37 C.F .R. § 41.50(b ),
we emphasize that our decision does not mean the remaining claims are
patentable. Rather, we merely leave the patentability determination of these
claims to the Examiner. See MPEP § 1213.02.
SUMMARY
The decision of the Examiner to reject claims 18, 19, and 22-37 is
reversed.
We enter a new ground of rejection of claims 18 and 29 under 35
U.S.C. § 103(a) as unpatentable over Lemelson and Gordon.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the NEW GROUND OF
REJECTION to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner ....
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record ....
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Appeal2013-008108
Application 11/540,895
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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