Ex Parte Sebelius et al

Patent Trial and Appeal Board

Jan 30, 2018

14201441 (P.T.A.B. Jan. 30, 2018)

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.
14/201,441 03/07/2014 Peter Sebelius 101752.000032/C01019.USC5 5726
116379 7590 02/01/2018
Baker & Hostetler LLP / Physio-Control, Inc.
2929 Arch Street
Cira Centre, 12th Floor
Philadelphia, PA 19104-2891
EXAMINER
MILLER, CHRISTOPHER E
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SEBELIUS, PER BERGSTROM, and JAN HAMPF
Appeal 2018-000429
Application 14/201,4411
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Sebelius et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1,3,4, 7-11, 13, 15-17,
and 22-32,2 the only claims remaining in the application. Appellants, in
accordance with 37 C.F.R. § 1.47, presented oral arguments on January 23,
2018. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 According to Appellants, the real party in interest as provided in 37 C.F.R.
§ 1.46 is the applicant, Physio-Control, Inc. Appeal Br. 1.
2 The rejection of claims 1,3,4, 7-11, 13, 15-17, and 22-32 under
35 U.S.C. § 112(b) is withdrawn by the Examiner. Ans. 18.
Appeal 2018-000429
Application 14/201,441
CLAIMED SUBJECT MATTER
The claims are directed to “a support structure for fixating the patient
to a cardiopulmonary resuscitation unit.” Spec. 1. Claims 1, 10, and 17 are
independent. Claim 1 reproduced below, is representative of the claimed
subject matter:
1. A support structure for cardiopulmonary
resuscitation of a patient, comprising:
a back plate positionable posterior to a chest cavity of the
patient; and
a front part positionable anterior to the chest cavity of the
patient and structured to be attached to the back plate, the
front part including:
a central part comprising an opening that is
structured to receive a treatment unit that is configurable to
compress and decompress the chest cavity of the patient, and
two bowed, rigid legs, each of the bowed, rigid legs
extending from the central part and each including an end
attachable to opposite portions of the back plate, the bowed, rigid
legs structured to maintain a fixed distance between the central
part of the support structure and the back plate when the bowed,
rigid legs are attached to the back plate;
wherein at least one of the two bowed, rigid legs is
releasably attached to the back plate, and
wherein said opening is in the uppermost surface of said
central part.
Appeal Br 16, Claims App.
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Application 14/201,441
EVIDENCE RELIED ON BY THE EXAMINER
Usher US 2,675,288 Apr. 13, 1954
Jennings et al. US 3,291,124 Dec. 13, 1966
(“Jennings”)
Muller US 3,552,390 Jan. 5, 1971
Herring, Jr. US 6,145,801 Nov. 14, 2000
(“Herring”)
Shifferaw US 6,315,701 B1 Nov. 13, 2001
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 3, 4, 10, 11, 13, 16, 17, and 28-32 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Muller and Jennings.
2. Claims 7, 8, 15, 22, 24, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Muller, Jennings, and Usher.
3. Claims 23, 25, and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Muller, Jennings, Usher, and Shifferaw.
4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muller, Jennings, Usher, and Herring.
OPINION
Rejection 1 — The rejection of claims 1, 3, 4, 10, 11,
13, 16, 17, and 28—32 under 35 U.S.C. § 103(a)
Claim 1
The Examiner rejects claim 1 finding that Muller teaches all of the
claim limitations with the exception of “[a] central part comprising an
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opening that is configured to receive the treatment unit on its uppermost
surface.” Final Act. 10. Jennings, according to the Examiner, teaches “[a]
central part (5) comprising the opening [10] . . . configured to receive the
treatment unit on (through) its uppermost surface.” Id.
The Examiner provides the following rationale for the combination.
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the central part
and treatment unit of Muller to be a central part with an opening
on its uppermost surface to adjustably receive the compression
treatment unit as taught by Jennings so that the cardiac motor
compression unit of Muller may be adjustably locked into a
selected height by a corresponding handle (13, see col. 2, lines
15-19 of Jennings) to accommodate patients of different chest
measurements. This would be a simple substitution of one known
means to adjustably hold a cardiac compression unit for another
known means to adjustably hold a cardiac compression unit.
Id. at 11 (emphasis added).
In response, Appellants agree with the Examiner that Muller alone
does not teach or suggest “an opening on its uppermost surface that is
structured to receive a treatment unit.” Appeal Br. 6. See id. (“The
Examiner agrees that Muller does not teach or suggest this part of the
claimed subject matter.”). Nevertheless, Appellants take issue with the
Examiner’s analysis and states that “there is no reason to modify Muller as
proposed as that device can already accommodate patients of different
sizes.” Id. at 8. Appellants expand on this position in the arguments
addressed below.
Hindsight
Appellants argue that “the Examiner’s rationale in this case is
impermissibly based on reconstructive hindsight,” because “[n]either
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reference considered alone or together suggests the modification the
Examiner now proposes.” Id. See also id. at 9 (“Further evidence that the
rejection is based upon impermissible hindsight is that the Examiner is
proposing to ‘modify the central part and treatment unit of Muller to be a
central part with an opening on its uppermost surface to adjustably receive
the compression treatment unit’”). Further, Appellants argue that moving
the treatment unit of Muller to the upper surface “would eliminate [the]
handle,” “make the Muller machine top heavy” and “[leave] the area under
the upper housing unit empty.” Id. at 9-10. Appellants assert that “[t]hese
are all indicia of a hindsight reconstruction of the prior art.” Id. at 10.
The Examiner responds that the rejection is not based upon hindsight
because Muller is modified “with another known adjustment means/
compression unit as taught by Jennings. This obtains predictable results of
an automated CPR device with an alternative means to adjust to a patient’s
torso by using an easily accessible handle.”3 Ans. 22. According to the
Examiner, “the adjustment means/compression unit in the upper housing of
Muller is replaced with another known adjustment means/compression unit
as taught by Jennings.” Id. at 25. Thus, the Examiner says that “the
compression unit in the modified device is now mounted in an opening in
the uppermost surface of the housing” and “[t]he area under the upper
housing unit (27, Fig. 1 of Muller) of the modified device would not be
3 In the “Response to Arguments” section of the Answer, the Examiner,
expresses a supplementary interpretation of Muller in that it discloses an
opening in the uppermost surface. See Ans. 19. However, we are not
relying on this interpretation, but rather on the Examiner’s articulation that
Jennings’ means to adjustably hold a cardiac compression unit is substituted
for Muller’s.
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Application 14/201,441
empty because the compression unit of Jennings would extend below the
upper housing unit.” Id.
Appellants do not point to any knowledge relied on by the Examiner
that was gleaned only from Appellants’ disclosure, and that was not
otherwise within the level of ordinary skill in the art at the time of the
invention, thereby failing to support Appellants’ hindsight assertion. See In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.”).4 Moreover, attorney argument regarding
supposed “indicia of hindsight” cannot take the place of evidence in the
record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Estee
Lauder, Inc. v. L Vreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Therefore, Appellants have not shown that the Examiner’s rejection of claim
1 is predicated on impermissible hindsight.
Lack of Factual Support
Appellants argue that “[t]he Examiner’s reasoning is circular and is
not supported by Muller and Jennings” and the Examiner “has failed to
make any factual findings that support his notion that the proposed
substitution is ‘simple.’” Appeal Br. 11.
The Supreme Court mKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
4 See also In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (An appellant’s
hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references.
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406-07 (2007) highlighted that, while evidence in the prior art of a teaching,
suggestion, and motivation (TSM) may provide a helpful insight as to the
patentability of a claim under 35 U.S.C. § 103(a), a rigid and mandatory
application of a TSM test is incompatible with its precedents in assessing the
obviousness or non-obviousness of a claimed invention. KSR, 550 U.S.
at 419. Thus, to the extent that Appellants assign error to the rejection as not
evidencing any motivation to modify the Muller structure in view of the
teachings of Jennings, the argument is unavailing.
We are not persuaded by Appellants’ argument because the Examiner
correctly notes that “[tjhis would be a simple substitution of one known
means to adjustably hold a cardiac compression unit for another known
means to adjustably hold a cardiac compression unit.” Final Act. 11.
Indeed, it is well established that “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.” KSR, 550 U.S. at 416. Appellants provide no persuasive
reason why a person of ordinary skill in the art could not have implemented
such a substitution. Neither do Appellants provide any persuasive reason
why the results of the substitution would have been unpredictable. As such,
the Examiner is correct in concluding that such a substitution would have
been obvious. Therefore, Appellants have not shown that the Examiner’s
rejection of claim 1 is predicated on a lack of factual support.
Rationale
Appellants question the Examiner’s rationale for modifying the
structure of Muller with the device of Jennings. Appellants state “[mjissing
from the Examiner’s analysis, however, is the understanding that Muller’s
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Application 14/201,441
device as illustrated is already adjustable . . . there is no reason to modify
Muller as proposed.” Appeal Br. 8. Appellants make similar arguments
throughout the Appeal Brief. See id. at 9, 10, 11. As stated supra, KSR
permits the mere substitution of one known element for another known
element provided the combination yields a predictable result. See KSR, 550
U.S. at 416. Thus, Appellants have not shown that the Examiner’s rejection
of claim 1 is predicated on a lack of rationale.
Conclusion
Claim 1 and dependent claims 3, 4, 28, and 30
Appellants have not apprised us of error in the Examiner’s rejection of
claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1.
Claims 3, 4, 28, and 30 depend from claim 1. Appellants do not provide
separate argument for claims 3, 4, 28, and 30. Appeal Br. 6-13. Rather,
Appellants rely upon the dependency from claim 1. We find no deficiencies
in the Examiner’s rejection of independent claim 1 as obvious over Muller
and Jennings. Accordingly, for the same reasons discussed above for
claim 1, we sustain the Examiner’s decision rejecting claims 3, 4, 28,
and 30.
Claims 10, If 13, 16, 29, and 31
Claim 10 is an independent claim. While Appellants have indicated
that claim 10 is argued separately, no indication is made in the Appeal Brief
that any argument is specifically devoted to this claim. See id. Accordingly,
it is considered that the arguments with respect to claim 1 are equally
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Application 14/201,441
applicable to claim 10. Appellants’ arguments, as addressed supra, have not
apprised us of error in the Examiner’s rejection. We will sustain the
Examiner’s rejection of claim 10, and of claims 11, 13, 16, 29, and 31,
which fall with claim 10, under 35 U.S.C. § 103(a).
Claims 17, 26, 27, and 32
Claim 17 is an independent claim. While Appellants have indicated
that claim 17 is argued separately, no indication is made in the Appeal Brief
that any argument is specifically devoted to this claim. See id. Accordingly,
it is considered that the arguments with respect to claim 1 are equally
applicable to claim 17. Appellants’ arguments, as addressed supra, have not
apprised us of error in the Examiner’s rejection. We will sustain the
Examiner’s rejection of claim 17, and of claims 26, 27, and 32, which fall
with claim 17, under 35 U.S.C. § 103(a).
For these reasons recited above, we sustain the rejection of claims 1,
3,4, 10, 11, 13, 16, 17, and 28-32.
Rejection 2 —The rejection of claims 7, 8, 15, 22,
24, and 26 under 35 U.S.C. § 103(a)
Claims 7, 8, and 22 depend from claim 1 either directly or indirectly.
Claims 15 and 24 depend from claim 10 either directly or indirectly.
Claim 26 depends from claim 17 directly. Appellants do not provide
separate argument for claims 7, 8, 15, 22, 24, and 26. Appeal Br. 14.
Rather, Appellants rely upon the dependency from claims 1,10, and 17,
respectively. We find no deficiencies in the Examiner’s rejection of
independent claims 1,10, and 17 as obvious over Muller and Jennings.
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Accordingly, for the same reasons discussed above for claims 1,10, and 17
we sustain the Examiner’s decision rejecting claims 7, 8, 15, 22, 24, and 26.
Rejection 3 — The rejection of claims 23, 25, and 2 7
under 35 U.S.C. § 103(a)
Claim 23 depends from claim 1 indirectly. Claim 25 depends from
claim 10 indirectly. Claim 27 depends from claim 17 indirectly. Appellants
do not provide separate argument for claims 23, 25, and 27. Id. Rather,
Appellants rely upon the dependency from claims 1,10, and 17,
respectively. We find no deficiencies in the Examiner’s rejection of
independent claims 1,10, and 17 as obvious over Muller and Jennings.
Accordingly, for the same reasons discussed above for claims 1,10, and 17
we sustain the Examiner’s decision rejecting claims 23, 25, and 27.
Rejection 4 — The rejection of claim 9
under 35 U.S.C. § 103(a)
Claim 9 depends from claim 1 indirectly. Appellants do not provide
separate argument for claim 9. Id. Rather, Appellants rely upon the
dependency from claim 1. We find no deficiencies in the Examiner’s
rejection of independent claim 1 as obvious over Muller and Jennings.
Accordingly, for the same reasons discussed above for claim 1, we sustain
the Examiner’s decision rejecting claim 9.
DECISION
The Examiner’s decision to reject claims 1,3,4, 7-11, 13, 15-17, and
22-32 under 35 U.S.C. § 103 is 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). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2007).
AFFIRMED
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