Ex Parte Nelson

Patent Trial and Appeal Board

Aug 15, 2016

12918820 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/918,820 08/23/2010 Mark Nelson
24737 7590 08/17/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P00158WOUS 1120
EXAMINER
SMITH, RUTHS
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK NELSON
Appeal2014-003405
Application 12/918,820
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Nelson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1, 3---6, 9, 11-15, and 17-21. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 Claims 10, 16, and 22 are withdrawn from consideration. Claims 2, 7, and
8 are canceled.
Appeal2014-003405
Application 12/918, 820
CLAIMED SUBJECT MATTER
The claims are directed to a monitor for use in a magnetic resonance
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A magnetic resonance system comprising:
a main magnet for generating a substantially uniform main
magnetic field in an examination region;
a gradient coil assembly for imposing gradient magnetic
fields on the main magnetic field in the examination region,
spatially encoding the main magnetic field;
a radio frequency assembly for inducing magnetic
resonance in selected dipoles of a subject in the examination
region, and receiving the magnetic resonance;
an automated non-magnetic monitor disposed in the
examination region to measure at least one physiological
parameter of the subject, the non-magnetic monitor including
one of a blood pressure monitor and a gas analysis monitor
including an electrically operated pump disposed in the
examination region.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Watanabe us 5,267,589 Dec. 7, 1993
Ives us 5,445,162 Aug. 29, 1995
Sugahara us 5,464,014 Nov. 7, 1995
Aida us 5,590,653 Jan. 7, 1997
Feinberg US 2004/0267111 Al Dec. 30, 2004
Hilson US 2005/0244972 Al Nov. 3, 2005
Susi US 2006/0079758 Al Apr. 13, 2006
Zatezalo US 2006/0184008 Al Aug. 17, 2006
Lane US 2006/0293601 Al Dec. 28, 2006
Heitzmann US 2007/0112274 Al May 17, 2007
Petrucelli US 2008/0183398 Al July 31, 2008
Widenhom US 2009/0105581 Al Apr. 23, 2009
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Application 12/918, 820
Faro
Takahashi
US 2010/0099975 Al Apr. 22, 2010
US 2010/0137725 Al June 3, 2010
REJECTIONS 2
I. Claims 1 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugahara, Lane, Ives or Widenhom or Feinberg,
and Susi or Zatezalo.
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugahara, Lane, Ives or Widenhom or Feinberg, Susi or Zatezalo, and
Aida.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugahara, Lane, Ives or Widenhom or Feinberg, Susi or Zatezalo,
Aida, and Hilson.
IV. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugahara, Lane, Ives or Widenhom or Feinberg, Susi or Zatezalo,
i~..ida, and \Vatanabe.
V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sugahara, Lane, Ives or Widenhom or Feinberg, Susi or Zatezalo,
Hilson, Watanabe, and Takahashi.
VI. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sugahara, Lane, Ives or Widenhom or Feinberg, Susi or
Zatezalo, and Faro.
2 The Examiner withdrew the rejection of claims 12-15 and 17 under 35
U.S.C. § 112, second paragraph, as indefinite in the Advisory Action dated
August 15, 2013.
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Application 12/918, 820
VII. Claims 12-15 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugahara, Lane, Susi or Zatezalo, Aida, Hilson, and
Watanabe.
VIII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sugahara, Lane, and Faro.
IX. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sugahara, Lane, Faro, Aida, and Watanabe.
X. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sugahara, Lane, Faro, and Petrucelli or Heitzmann.
OPINION
New Ground of Re} ection
As discussed in further detail infra, claim 1 alternatively requires "a
blood pressure monitor" or "a gas analysis monitor including an electrically
operated pump." Appeal Br. 19. Claim 9 specifies that the monitor is a
blood pressure monitor, then requires "a controller for controlling high
voltage drivers for driving the pump and the valve." Id. at 20. As the blood
pressure monitor of claim 1 does not include a pump, and claim 1 does not
require a valve at all, it is unclear what pump and valve are being referred to
in this limitation. Accordingly, claim 9 is indefinite.
Rejection I
Claim 1
Claim 1 requires "an automated non-magnetic monitor disposed in the
examination region to measure at least one physiological parameter of the
subject, the non-magnetic monitor including one of a blood pressure monitor
and a gas analysis monitor including an electrically operated pump disposed
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Application 12/918, 820
in the examination region." Appeal Br. 19. Thus, claim 1 requires either a
blood pressure monitor or a gas analysis monitor; and, in the case of the gas
analysis monitor, further requires an electrically operated pump.
The Examiner finds that the combined teachings of Sugahara, Lane,
and Ives or Widenhom or Feinberg, and Susi or Zatezalo discloses or
suggest all of the limitations of claim 1. Final Act. 2-3. In particular, the
Examiner finds that Sugahara discloses "a blood pressure monitor disposed
at least partially in the examination region of the MRI system to measure
and display a patient's blood pressure." Id. at 3 (citing Sugahara 1 :55-59;
63---65; 3:57---66). Thus, the Examiner's rejection pertains to the "blood
pressure monitor" alternative of claim 1, which as noted supra, does not
require an electrically operated pump.
Appellant argues that "Sugahara does not teach or suggest an
automated non-magnetic monitor with a pump disposed in the examination
region to measure at least one physiological parameter of the subject, the
non-magnetic monitor including one of a blood pressure monitor and a gas
analysis monitor." Appeal Br. 7. This argument is not responsive to the
rejection as articulated by the Examiner. See Final Act. 2-3. As discussed
supra, the rejection relies upon the combined teachings of Sugahara, Lane,
and Ives or Widenhom or Feinberg, and Susi or Zatezalo. Specifically, the
rejection relies upon Lane, not Sugahara, to meet the limitation requiring an
automated monitor and Ives, Widenhom, or Feinberg, not Sugahara, to meet
the limitation requiring that the monitor be non-magnetic. See id. at 3.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Moreover, claim 1 does not require a pump. Thus, Appellant's argument is
unconvmcmg.
Noting that "Sugahara also mentions a hemomanometer and a
sphygmograph," Appellant argues that Sugahara "does not illustrate such
monitors much less place them in the examination region." Appeal Br. 7.
Sugahara states:
Attached to the patient in the MRI booth are electrodes S
for ECG recording and the ECG signals derived through the
electrodes S are amplified by a preamplifier 6 and fed to a display
monitor 7. Though not shown, a hemomanometer and a
sphygmograph are also connected to the patient and the signals
obtained by these instruments are also fed to the display monitor
7.
The display monitor 7 is of the known type and displays
the ECG, hemomanometer and sphygmograph output signals on
a display device 7a, such as a cathode-ray tube. The auxiliary
terminals of the display monitor 7 are connected to the input
terminals of a video converter 8 so that the ECG, blood pressure
and other signals derived from the auxiliary terminals are fed to
the video converter 8.
The video converter 8 converts ECG, blood pressure and
other signals to NTSC (National Television System Committee)
video signals and outputs them and, at the same time, it displays
the ECG, blood pressure and other signals on an optional scale
on a built-in display 8a.
The NTSC video signal output of the video converter 3 is
fed to a display device 10 in the MRI booth through a switch box
9 and an interface box 2. Therefore, an image similar to the
images on display 7 a and display 8a is displayed on the display
device 10 so that the physician may have constant tabs on the
physiological condition of the patient. Incidentally the
connecting cable is hermetically shielded to prevent leakage of
NTSC video signals.
Sugahara 3:57--4:16 (original emphasis omitted, new emphasis added).
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Sugahara explicitly states that display 10 is in the MRI booth (i.e., in
the examination region). Sugahara further states that display 10 receives the
same images as displays 7 a and 8a which include blood pressure signals.
Thus, we find that Sugahara discloses a blood pressure monitor in the MRI
booth.
Appellant further argues that none of Lane, Widenhom, or Feinberg
"teach or suggest the pump of the blood pressure monitor being within the
MRI examination room." Appeal Br. 7. Again, Appellant's argument is not
responsive to the rejection as articulated by the Examiner as these references
are not relied upon to show a blood pressure monitor in the examination
region. See Final Act. 2-3. As discussed supra, Sugahara meets the blood
pressure monitor limitation and claim 1 does not require the blood pressure
monitor to include a pump, but rather states that "[the] gas analysis monitor
includ[es] an electrically operated pump." Appeal Br. 19.
Then, Appellant argues "there is no teaching or motivation that one of
ordinary skill would look to modify the materials within the blood pressure
monitor of Lane et al. with the non-magnetic materials of the EEG
electrodes of Ives or the ultrasound apparatus of Widenhom or Feinberg."
Appeal Br. 8; see also Reply Br. 2. This argument is foreclosed by KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected
the rigid requirement of a teaching or suggestion or motivation to combine
known elements in order to show obviousness. KSR, 550 U.S. at 415. The
Court noted that an obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. Here, the Examiner's
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Application 12/918, 820
reasoning is grounded in the principle of simple substitution of components.
See Final Act. 3; see also KSR, 550 U.S. at 416 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966), "when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result."). Appellant does not explain how the Examiner's
reasoning is faulty. Thus, Appellant does not apprise us of error.
In addition, Appellant argues that Susi and Zatezalo do not cure the
shortcomings in Sugahara, Lane, and Ives or Widenhom or Feinberg. See
Appeal Br. 8; see also Reply Br. 3. As we find no such shortcomings as
discussed supra, Appellant's argument is unconvincing.
In conclusion, Appellant "submits that the combination of Sugahara in
view of Lane et al. and Ives or Widenhom or Feinberg and Susi or Zatezalo
is improper because the Office Action relies on information gleaned solely
from Applicant's specification." Appeal Br. 8-9. However, Appellant does
not identify any knowledge relied upon by the Examiner that was gleaned
only from Appellant's disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. Thus, Appellant's argument in
unconvincing. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
In the Reply Brief, Appellant contends that "[t]he Examiner concedes
in the Examiner's Answer that neither Sugahara nor Lane et al. disclose an
automated blood pressure device being within an MRI examination room."
Reply Br. 2. Appellant mischaracterizes the Examiner's statements
explaining the breadth of the claim language which does not concede that
Sugahara fails to disclose a blood pressure monitor in the MRI examination
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Application 12/918, 820
room. See Ans. 10. Moreover, this argument is moot in view of our new
finding that Sugahara discloses a blood pressure monitor in the MRI booth.
The remainder of Appellant's arguments in the Reply Brief are not
responsive to an argument raised in the Answer. Accordingly, in accordance
with 37 C.F.R. § 41.41(b)(2), lacking a showing of good cause, we do not
consider these arguments.
For these reasons, we sustain the Examiner's decision rejecting claim
1. As our findings differ from those made by the Examiner, we designate
our affirmance as a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b).
Claim 5
Appellant argues that "Sugahara does not teach or suggest the blood
pressure monitor including at least one valve disposed within the MRI
examination region" and that neither Sugahara nor Lane "teach or suggest
the pump of the blood pressure monitor including at least one valve disposed
in the examination region being within the MRI examination room." Appeal
Br. 11; see also Reply Br. 5. Appellant's argument is not responsive to the
rejection as articulated by the Examiner which relies upon the combined
teachings of Sugahara and Lane. Specifically, the rejection relies upon
Sugahara's disclosure of a blood pressure monitor in the MRI examination
room and Lane's teaching of a blood pressure monitor which includes a
valve to meet the limitations at issue. See Final Act. 3. As discussed supra,
obviousness cannot be shown by attacking the references separately.
Moreover, as discussed supra, claim 1 does not require a pump for the blood
pressure monitor alternative.
We sustain the Examiner's decision rejecting claim 5.
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Re} ections II and III
Rejections II and III reject claims 3 and 4, respectively. Claims 3 and
4 are directed to limitations which further limit the pump; and thus, are
directed to the gas analysis monitor embodiment of claim 1. The Examiner
makes no findings pertaining to a gas analysis monitor or its pump.
Accordingly, the Examiner fails to set forth a prima facie case of
obviousness for claims 3 and 4.
For this reason, we do not sustain the Examiner's decisions rejecting
claims 3 and 4.
Re} ection IV
The Examiner finds that Aida discloses that piezoelectric ceramic
materials are non-magnetic and may be used in an MRI environment, and
concludes that it would have been obvious to modify the diaphragm valve of
the modified Sugahara monitor to comprise "a known non-magnetic material
such as piezoelectric ceramic in order to prevent interference from
occurring." Final Act. 4. The Examiner further finds that Watanabe
discloses the use of a high voltage driver to control a diaphragm valve, and
concludes it would have been obvious to modify the modified monitor of
Sugahara to include the high voltage driver and diaphragm valve of
Watanabe because "[s]uch a modification involves the substitution of one
known type of valve and control for another." Id. at 4--5.
Appellant notes that Watanabe is directed to a control valve for an
anti-lock braking system and argues that "Watanabe does not disclose an
automated non-magnetic monitor with a pump ... including at least one
valve including a piezoelectric ceramic diaphragm valve and a high voltage
driver for the piezoelectric diaphragm valve." Appeal Br. 12; see also Reply
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Application 12/918, 820
Br. 5---6. Again, Appellant's argument is not responsive to the rejection
articulated by the Examiner. The Examiner is not relying on Watanabe for
teaching the automated non-magnetic monitor as claimed, but rather for
teaching a diaphragm valve controlled by a high voltage driver. See Final
Act. 4--5. Moreover, as discussed supra, the rejection meets the limitations
of the blood pressure monitor alternative which does not require a pump.
Appellant also argues that "one of ordinary skill in the art would not
look to modify the blood pressure monitor of Sugahara to include
piezoelectric ceramic diaphragm valve and a high voltage driver of a control
system of an anti-lock braking system." Appeal Br. 12; see also Reply Br.
6. Appellant further argues that the Examiner has not provided a sufficient
rationale for combining the teachings of the cited references. Reply Br. 6.
Appellant does not explain why one skilled in the art would not look to Aida
and Watanabe or explain why the Examiner's reasoning lacks rational
underpinnings. Thus, Appellant does not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
6 and designate our affirmance as a new ground of rejection.
Rejection V
Having determined that claim 9 is indefinite, we cannot sustain the
rejection of this claim under 35 U.S.C. § 103(a) because to do so would
require speculation as to the scope of the claim. See In re Steele, 305 F.2d
859, 862---63 (CCPA 1962) (Holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a)).
Re} ection VI
Appellant does not present any separate arguments regarding the
patentability of claim 11 apart from the arguments for claim 1. See Appeal
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Application 12/918, 820
Br. 7-9. Accordingly, we sustain the Examiner's decision rejecting claim 11
for the reasons discussed above in regard to claim 1 and designate our
affirmance as a new ground of rejection.
Rejection VII
Claims 12 and 1 7
Appellant argues claims 12 and 17 together. Appeal Br. 13-14. We
select independent claim 12 as representative. Claim 17 stands or falls with
claim 12.
The Examiner finds that the combined teachings of Sugahara, Lance,
Susi, Zatezalo, Aida, Hilson, and Watanabe disclose or suggest all of the
limitations of claim 12. See Final Act. 6-7. In particular, the Examiner
finds that the combined teachings of Lane, Susi, and Zatezalo suggest a
piezoelectric ceramic peristaltic pump and piezoelectric ceramic diaphragm
valve. Id. We find that Sugahara discloses a blood pressure monitor in the
MRI booth, as discussed supra. See Sugahara 3:56-4: 16.
Appellant argues that "the pump and valve of Lane et al. are not a
piezoelectric ceramic peristaltic pump and a piezoelectric ceramic
diaphragm valve," "[t]he peristaltic pumps of Susi and Zatezato are utilized
in medical injection or infusion devices," and that "Susi and Zatezato do not
teach or suggest the use of peristaltic pumps in blood pressure monitors."
Appeal Br. 13; see also Reply Br. 8. These arguments attack the references
separately and do not address their combined teachings. As discussed supra,
such attacks cannot establish nonobviousness.
Appellant similarly argues that "Watanabe does not teach or suggest
the use of a piezoelectric pressure control value in blood pressure monitors."
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Appeal Br. 13. Again, Appellant's argument cannot establish
nonobviousness as it attacks the reference separately.
Finally, Appellant argues that the rejection "is improper because the
Office Action relies on information gleaned solely from Applicant's
specification." Id. at 14. However, Appellant does not identify the
information which was gleaned solely from Appellant's Specification. Thus,
as discussed supra, Appellant does not apprise us of error.
In addition, in accordance with 37 C.F.R. § 41.41(b)(2), lacking a
showing of good cause, we do not consider the arguments raised in the
Reply Brief which are not responsive to an argument raised in the Answer.
For these reasons, we sustain the Examiner's decision rejecting claim
12, and claim 17 which falls therewith. As our findings differ from those
made by the Examiner, we designate our affirmance as a new ground of
rejection pursuant to our authority under 37 C.F .R. § 41.50(b ).
Claim 13
Appellant argues that "Sugahara does not teach or suggest an
automated non-magnetic monitor with a pump disposed in the examination
region ... including at least one valve disposed in the examination region."
Appeal Br. 15. Appellant further argues that the Examiner has not provided
a rationale for "why it would have been obvious to modify the piezoelectric
pump and valve of the blood pressure monitor of Sugahara to be located
inside the MRI Examination region." Appeal Br. 15; Reply Br. 8-9.
As discussed supra, we find that Sugahara discloses a blood pressure
monitor in the examination region. Sugahara 3:56-4:16. Thus, to the extent
that Appellant is arguing that the blood pressure monitor is not in the
examination region, this argument is moot. To the extent the Appellant is
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Application 12/918, 820
arguing that Sugahara does not disclose an automated non-magnetic monitor
with a pump and valve, Appellant's argument is not responsive to the
rejection as articulated by the Examiner because it attacks the references
separately, not their combined teachings. As discussed supra, such attacks
cannot establish nonobviousness.
Appellant additionally argues that the "rationale relied on by the
Examiner has been improperly gleaned from Applicant's own specification."
Appeal Br. 15. For the reasons discussed supra, Appellant's argument is
unconvincing because Appellant does not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellant's disclosure
and that was not otherwise within the level of ordinary skill at the time of the
invention.
For these reasons, we sustain the Examiner's decision rejecting claim
13 and designate our affirmance as a new ground of rejection.
Claims 14 and 15
Claim 14 depends from claim 12 and recites "wherein the first
piezoelectric valve is a linear release valve." Appeal Br. 22. Claim 15
depends from claim 14 and recites "a second piezoelectric diaphragm valve
that acts as a dump valve for releasing pressure from the monitor" and "a
third high voltage driver for driving the second piezoelectric diaphragm
valve." Id. The Examiner finds that "[w]ith respect to claims 14, 15, in the
absence of any showing of criticality, the specific type of valve used and the
number of valves used would have been an obvious design choice of known
equivalents in the art." Final Act. 7.
With respect to claim 14, Appellant argues that "Watanabe does not
teach or suggest the first piezoelectric valve being a linear release valve."
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Appeal Br. 15. We note that this issue is not in contention. See Final Act. 7.
The rejection articulates reasons why use of a linear release valve is a design
choice. Id. With respect to claim 15, Appellant argues that the references
do not "teach or suggest a second piezoelectric diaphragm valve let alone a
third high voltage driver for driving the second piezoelectric diaphragm
valve." Appeal Br. 15. We again note that these issues are not in
contention. See Final Act. 7. Thus, Appellant does not apprise us of error.
In the Reply Brief, Appellant also argues that design choice is not a
sufficient rationale in this case because that concept may only be used
"when a claimed product merely arranges known elements in a configuration
recognized as functionally equivalent to a known configuration." Reply Br.
9-10. This argument is not responsive to an argument raised in the Answer.
Accordingly, In accordance with 3 7 C.F .R. § 41.41 (b )(2 ), lacking a showing
of good cause, we do not consider this argument.
For these reasons, we sustain the Examiner's decision rejecting claims
14 and 15 and designate our affirmance as a new ground of rejection.
Re} ections VIII-X
The Examiner finds that the combined teachings of Sugahara, Lane
and Faro disclose or suggest all of the limitations of independent claim 18.
See Final Act. 7-8. In particular, the Examiner finds that:
Sugahara further discloses a blood pressure monitor disposed in
the examination region of the MRI system to measure and
display a patient's blood pressure (col I, lines 55-59, 63---65, col
3, lines 57---66). When placing the patient in the main field of the
magnet and also measuring a patient's blood pressure during the
examination, the blood pressure device would be placed in the
field of the MRI scanner.
Ans. 7.
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Appellant argues that "neither Sugahara, nor Lane et al., nor the
combination teach or suggest controlling at least one valve and at least one
pump located in the main magnetic field to one of inflate and deflate a blood
pressure cuff." Appeal Br. 16. We note that claim 18 recites "controlling at
least one valve and at least one pump located in the at least 2500 Gauss main
magnetic field to alternately inflate and deflate a blood pressure cuff." Id. at
23.
Although Sugahara teaches a blood pressure monitor coupled to a
patient undergoing an MRI scan, Sugahara does not indicate that the blood
pressure monitor is present within the main magnetic field. Sugahara, 3 :56-
4: 16. Thus, the Examiner's finding that Sugahara discloses a blood pressure
monitor in the main magnetic field is not supported by a preponderance of
the evidence.
For this reason, we do not sustain the Examiner's rejection of claim
18. The Examiner's rejections of claims 19--21 rely upon the same
unfounded finding as the rejection of claim 18. Accordingly, we do not
sustain the Examiner's rejections of these claims for the same reason.
DECISION
We enter a NEW GROUND OF REJECTION of claim 9 under 35
U.S.C. § 112, second paragraph.
The Examiner's rejections of claims 1, 5, 6, 11-15, and 17 are
AFFIRMED, and designated as NEW GROUNDS OF REJECTION.
The Examiner's rejections of claims 3, 4, 9, and 18-21 are
REVERSED.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
17