Ex Parte Schermeier et al

Patent Trial and Appeal Board

Feb 24, 2013

11381662 (P.T.A.B. Feb. 24, 2013)

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.
11/381,662 05/04/2006 Olaf SCHERMEIER 72102 4744
23872 7590 02/25/2013
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
02/25/2013 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 OLAF SCHERMEIER, HEIKO LOKOTSCH,
AXINJA SCHOENBECK, and MICHAEL WILKENING
____________

Appeal 2011-005439
Application 11/381,662
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
BARRY L. GROSSMAN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/381,662

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STATEMENT OF THE CASE
Olaf Schermeier et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1, 2, 4-13, 16-22, and
24-28. Claims 3, 14, 15, and 23 have been canceled. Appellants’
representative presented oral argument on February 5, 2013. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to “a process and a device for the
automatic identification of breathing tubes.” Spec. 1, para. [0002].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A process for the automatic identification of a type of a
breathing tube, the process comprising:
providing a respirator with a reading unit and a control
unit for controlling respiration processes during operation of the
device based on respiration parameter settings;
providing a memory element connected to a breathing
tube, the memory element having data identifying the breathing
tube stored thereon;
reading data from the memory element with the reading
unit which is part of the respirator, when the breathing tube is
brought into the vicinity of the respirator;
identifying, with the control unit, when the breathing
tube is not suitable for an intended mode of respiration,
associated with the respiration parameter settings, or identifying
a mode of respiration set at the respirator, associated with the
respiration parameter settings, that does not fit the breathing
tube set at the respirator; and
triggering an alarm upon identifying when the breathing
tube is not suitable for an intended mode of respiration or upon
identifying a mode of respiration that does not fit the breathing
tube set at the respirator.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
DeVires US 5,474,062 Dec. 12, 1995
Truschel US 6,360,741 B2 Mar. 26, 2002
Preveyraud US 2004/0016431 A1 Jan. 29, 2004
Faram US 2005/0061318 A1 Mar. 24, 2005
Anttila US 2005/0211761 A1 Sep. 29, 2005
Krüger US 6,968,843 B2 Nov. 29, 2005

The following rejections are before us for review:
The Examiner rejected claims 1, 2, 4, 11, 12, 16-18, and 21 under 35
U.S.C. § 103(a) as unpatentable over Faram, DeVires, Krüger, and
Preveyraud.
The Examiner rejected claims 5-8, 13, 19, 20, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Faram, DeVires, Krüger, Preveyraud, and
Anttila.
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Faram, DeVires, Krüger, Preveyraud, and Truschel.
The Examiner rejected claims 9, 10, and 25-28 under 35 U.S.C. §
103(a) as unpatentable over Faram, DeVires, Krüger, Preveyraud, Anttila,
and Truschel.

SUMMARY OF DECISION
We REVERSE.

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ANALYSIS
Claims 1, 2, 4-13, 16-22, and 241
Independent claim 1 requires, inter alia, providing a controller for (1)
“identifying . . . when the breathing tube is not suitable for an intended mode
of respiration” or for (2) “identifying a mode of respiration set at the
respirator . . . that does not fit the breathing tube.” App. Br., Clms. App’x.
Similarly, independent claim 11 requires, inter alia, a controller for (1)
determining whether the breathing tube is suitable or not suitable for
respiration parameters set on the respirator or (2) for changing the
respiration parameters set on the respirator to respiration parameters suitable
for the breathing tube. Id.
The Examiner found that Faram discloses respirator 1 (high frequency
oscillation breathing treatment apparatus)2, breathing tube 11, 21 (breathing
head assembly and nebulizer), memory element 43 (RFID tag) connected to
breathing tube 11, 21, and memory element reading unit 42 (RFID
transceiver). Ans. 3-4; see also Faram, para. [0097] and fig. 6. The
Examiner further found that: (1) “DeVires teaches a respirator with a control
unit [44];” (2) Krüger teaches a chip card that stores information regarding
available modes of operation for respirators; and (3) Preveyraud teaches
light alarm 42/sound alarm 44 “for improper connection . . . of ventilation
devices which would include improper modes associated with various
respirator machines." Ans. 4-5. The Examiner concluded that it would have

1 Our disposition of claims 1, 2, 4-13, 16-22 and 24 depends on the
Faram, DeVires, and Krüger references, which are common to all these
claims. Accordingly, we have grouped them for purposes of our analysis.
2 Throughout this opinion the parenthetical nomenclature refers to the
references relied upon by the Examiner as evidence of unpatentability.
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been obvious for a person of ordinary skill in the art to modify the device of
Faram (1) “to include a control unit as taught by DeVires in order to provide
a safe and accurate ventilation support to the patient;” (2) “to include
information relative to available modes of operations for respiration as
taught by Kruger in order to avoid human error due to technician performing
incorrect mode of respiration with the selected breathing tube;” and (3) “to
include an alarm signifying improper connection of ventilation equipment
due to incorrect modes of respiration etc. as taught by Preveyraud in order to
prevent incorrect use of the respiration or ventilation equipment/modes.” Id.
According to the Examiner:
[T]he modified Faram reference in view of DeVires, Kruger,
and Preveyraud teach the respirator device with the ability to
determine suitability of a breathing tube with a respiration
mode at the respirator (Faram teaches breathing tubes 20 and 21
with memory element 43; DeVires teaches control unit 44;
Kruger teaches storing breathing settings/mode of respiration
stored on memory element; Preveyraud teaches alarm
notification [(]para 0010 and 0032) and further more teaches
that operation is not started where the respiration parameters set
are not possible (Faram para. 0097 ln. 13-14) as well as
providing an alarm (Preveyraud para 0010 and 0032) when the
respirator operation is not adapted to use the breathing tube as
claimed.

Ans. 14-15. Emphasis added.
Although the Examiner concluded that the controller of Faram,
DeVires, and Krüger has the ability to determine whether a breathing tube is
suitable for (1) an intended mode of respiration, as per claim 1, or for (2)
respiration parameters set on the respirator, as per claim 11, the Examiner
provides no other evidence or reasoning that might be construed as support
for the Examiner’s conclusion. While (1) Faram’s memory tag 43
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determines whether nebulizer 21 is compatible3 with breathing apparatus 1
(see App. Br. 16 and Faram, para. [0097]); (2) DeVires’s controller controls
a valve that controls the flow of gas in a medical ventilator (see App. Br. 17
and DeVires, Abstr.); and (3) Krüger’s chip card makes available modes of
respiration on a respirator (see App. Br. 18 and Abstr.), neither Faram,
DeVires, Krüger nor their combination discloses “identify[ing] when a
breathing tube is suitable or unsuitable for an intended mode of respiration
of the respirator based on the information regarding modes of operation
stored on the identification tag or memory element,” as the Examiner
concludes. See Ans. 10-11.
At most, modifying the device of Faram’s breathing apparatus 1 to
include the controller of DeVires and the modes of respiration of Krüger
stored on Faram’s RFID tag 43, as the Examiner proposes, would result in a
breathing apparatus having a controller that operates Faram’s breathing
apparatus 1 according to the modes of respiration stored on Faram’s RFID
tag 43. This does not mean that the controller of Faram, DeVires, and
Krüger has the ability to determine (identify) whether the breathing tube of
Faram is suitable for Krüger’s mode of respiration, as per claim 1, or
respiration parameters (that define a specific mode of respiration) set on the
respirator, as per claim 11. As noted by Appellants, Faram’s RFID tag is
used only to determine whether nebulizer 21 is compatible (i.e., designed to
work) with breathing apparatus 1. See Reply Br. 2. Thus, even if breathing
tube 11, 21 is designed to work with Faram’s breathing apparatus 1, this

3 An ordinary and customary meaning of the term “compatible” is
“designed to work with another device or system without modification.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
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does not mean that it is suitable for Krüger’s mode of respiration or
respiration parameters. Furthermore, although we appreciate that the
controller and RFID tag of Faram, DeVires, and Krüger could be
programmed for determining whether the breathing tube of Faram is suitable
for Krüger’s mode of respiration, as per claim 1, or respiration parameters
(that define a specific mode of respiration) set on the respirator, as per claim
11, we note that rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In making such a rejection, the examiner has the initial duty of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual basis. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, we could not find
any portion in either Faram, DeVires, or Krüger, and the Examiner has not
pointed to any portion, that would suggest that the controller and RFID tag
of Faram, DeVires, and Krüger has the ability to determine whether the
breathing tube of Faram is suitable for Krüger’s mode of respiration, as per
claim 1, or respiration parameters set on the respirator, as per claim 11.
As such, without sufficient evidence to support the Examiner’s
position, we find that neither Faram, DeVires, Krüger nor their combination
discloses providing a controller for (1) “identifying . . . when the breathing
tube is not suitable for an intended mode of respiration” or for (2)
“identifying a mode of respiration set at the respirator . . . that does not fit
the breathing tube,” as called for by independent claim 1. For the same
reasons, we find that neither Faram, DeVires, Krüger nor their combination
discloses a controller for (1) determining whether the breathing tube is
suitable or not suitable for respiration parameters set on the respirator or (2)
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for changing the respiration parameters set on the respirator to respiration
parameters suitable for the breathing tube, as called for by independent
claim 11.
Preveyraud discloses an alarm, light alarm 42/sound alarm 44, for
detecting disconnection of a ventilator duct. Preveyraud, paras. [0010] and
[0032]; see also Ans. 5. Anttila discloses a writable RFID tag. Anttila, para.
[0073]; see also Ans. 6. Finally, Truschel discloses a ventilator system
including multiple ventilators. Truschel, col. 6, ll. 26-31; see also Ans. 8.
Thus, the addition of either, Preveyraud, Anttila, or Truschel does not
remedy the deficiencies of Faram, DeVires, and Krüger, as described supra.
Accordingly, for the foregoing reasons, we do not sustain the
rejections under 35 U.S.C. § 103(a) of independent claims 1 and 11, and
their respective dependent claims 2, 4, 12, 16-18, and 21 as unpatentable
over Faram, DeVires, Krüger, and Preveyraud; of claims 5-8, 13, 19, 20, and
22 as unpatentable over Faram, DeVires, Krüger, Preveyraud, and Anttila;
claim 24 as unpatentable over Faram, DeVires, Krüger, Preveyraud, and
Truschel; and claims 9 and 10 as unpatentable over Faram, DeVires, Krüger,
Preveyraud, Anttila, and Truschel. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988).

Claims 25-28
Independent claim 25 requires, inter alia, a controller for controlling
the operation of a first to be used respirator from a plurality of respirators by
using only respiration parameters that are to be set by the breathing tube and
not using respiration parameters that must not be set by the breathing tube.
App. Br., Clms. App’x.
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The Examiner found that the controller of Faram, DeVires, Krüger,
Anttila, and Truschel is capable of controlling the operation of one of
multiple respirators by “us[ing] only specific respiration parameters.” Ans.
9.
At the outset, we appreciate that the controller of DeVires operates
Faram’s breathing apparatus 1, as one of Truschel’s multiple respirators,
according to Krüger’s modes of respiration stored on Faram’s RFID tag 43,
as modified by Anttila. However, we could not find any portion in either
Faram, DeVires, Krüger, Anttila, or Truschel and the Examiner has not
pointed to any portion, that would suggest that the controller of Faram,
DeVires, Krüger, Anttila, and Truschel is capable of “us[ing] only specific
respiration parameters,” namely, “respiration parameters, which are to be set
with the breathing tube, and respiration parameters, which must not be set
with the breathing tube,” as called for by independent claim 25.
Therefore, the Examiner’s conclusion that the controller of Faram,
DeVires, Krüger, Anttila, and Truschel is capable of controlling the
operation of one of multiple respirators by “us[ing] only specific respiration
parameters” is mere speculation and conjecture. Accordingly, we cannot
sustain the rejection of claims 25-28 under 35 U.S.C. § 103(a) as
unpatentable over Faram, DeVires, Krüger, Preveyraud, Anttila, and
Truschel. See Fine, 837 F.2d at 1076.

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SUMMARY
The Examiner’s decision to reject claims 1, 2, 4-13, 16-22, and 24-28
is reversed.

REVERSED

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