10990967 (B.P.A.I. Jul. 7, 2010)

Ex Parte Sternby

Board of Patent Appeals and InterferencesJul 7, 2010

10990967 (B.P.A.I. Jul. 7, 2010)

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. 10/990,967 11/18/2004 Jan Peter Sternby 07552.0047 5258 22852 7590 07/08/2010 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER MARCETICH, ADAM M ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 07/08/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JAN PETER STERNBY ____________________ Appeal 2009-007462 Application 10/990,967 Technology Center 3700 ____________________ Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007462 Application 10/990,967 2 STATEMENT OF THE CASE Jan Peter Sternby (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-7, 9-28 and 35. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to measuring a parameter relating to a heart-lung system of a mammal, when the mammal is connected to blood treatment equipment (Spec. 1:2-9). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for measuring a parameter relating to the heart-lung system of a mammal connected to blood treatment equipment, said equipment comprising an extracorporeal blood circuit connected to the mammal, said blood circuit including a blood treatment unit having a blood side, a blood inlet, a blood outlet, a treatment fluid side, a treatment fluid inlet, and a treatment fluid outlet, wherein said method comprises the steps of: providing a detectable perturbation to at least a measurable blood characteristic in the blood circuit, said detectable perturbation flowing through the heart-lung system and back to said blood circuit; measuring an integrated change of a corresponding characteristic on the treatment fluid outlet; and determining a parameter relating to the heart-lung system based on the measurement of said integrated change on the treatment fluid outlet. Appeal 2009-007462 Application 10/990,967 3 THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-72, 9 and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneditz (US 5,830,365, issued November 3, 1998) in view of Goux (US 6,110,384, issued August 29, 2000). 2. Claims 10-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneditz in view of Goux, and further in view of Lehmann (US 3,304,413, issued February 14, 1967). 3. Claims 18-27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneditz in view of Goux and Lehmann, and further in view of Pfeiffer (US 2003/0060722 A1, published March 27, 2003). 4. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Schneditz in view of Goux , and further in view of De Freitas (“Determination of Pulmonary Blood Volume . . .,” published 1964). ISSUE The issue before us is whether the Examiner erred in concluding that the combined teachings of Schneditz and Goux would have led a person having ordinary skill to the step of “providing a detectable perturbation to at least a measurable blood characteristic in the blood circuit, said detectable perturbation flowing through the heart-lung system and back to said blood circuit,” as called for in claim 1 (App. Br. 10). 2 While the Grounds of Rejection section of the Examiner’s Answer indicates otherwise, claim 8 is not part of this appeal since it was canceled in an amendment filed October 23, 2007 (Ans. 3, see also App. Br. 3, 6). Appeal 2009-007462 Application 10/990,967 4 ANALYSIS Claims 1-7, 9 and 35 Appellant contends that neither Schneditz nor Goux describe “providing a detectable perturbation to at least a measurable blood characteristic in the blood circuit, said detectable perturbation flowing through the heart-lung system and back to said blood circuit,” as called for in claim 1 (App. Br. 10). Appellant further contends Schneditz, and similarly Goux, does not describe “that a change in concentration of the indicator solution of Schneditz would still be ‘detectable’ after ‘flowing through the heart-lung system and back to said blood circuit,’ as recited in independent claim 1.” (App. Br. 10). The Examiner found that Schneditz describes the claimed steps of “providing a detectable perturbation . . .” and “said detectable perturbation flowing through the heart-lung system and back to said blood circuit.” (Ans. 4). The Examiner further found that “Schneditz discloses measuring a change in a physical-chemical property of blood through measurements made with sensors (. . . sensors 19, 20),” and that “[i]n other words, a change in a blood property will be reflected as a diminished or diluted property after flowing through the heart-lung system.” (Ans. 15). Schneditz describes a fistula 10 of the patient, and an extracorporeal path 2 between which a dialyzer 3 and a blood chamber 5 are arranged, wherein the extracorporeal path 2 includes an arterial branch 8 and a venous segment 12 (col. 6, ll. 33-65). Schneditz describes injecting an indicator solution into the extracorporeal path 2 (col. 7, ll. 30-48), wherein the indicator solution alters a physical-chemical property of the blood in the venous branch of the extracorporeal path, that is the path where the blood Appeal 2009-007462 Application 10/990,967 5 flows back to the patient (col. 4, ll. 1-6; col. 5, ll. 8-32). Schneditz describes sensors 19, 20 for measuring, that is, detecting the concentration of the indicator solution, which has been injected into the extracorporeal path 2 (col. 7, ll. 19-23). While Schneditz describes that blood including a detectable indicator solution flows to the heart-lung system of the patient, Schneditz is silent as to whether the sensors 19, 20 detect the presence of any indicator solution in the blood that flows back from the heart-lung system of the patient to the extracorporeal circuit 2. Schneditz is also silent as to whether there is any indicator solution in the blood, which flows back to the extracorporeal circuit from the heart-lung system of the patient that would still be detectable. As such, it becomes incumbent upon the Examiner to provide a basis in fact and/or technical reasoning that would support a finding that Schneditz does, in fact, describe that the blood that flows back to the extracorporeal circuit from the heart-lung system of the patient contains indicator solution that would still be detectable, as called for in claim 1. We find that the Examiner’s finding that “a change in a blood property will be reflected as a diminished or diluted property after flowing through the heart-lung system” is a conclusory statement, which is not supported by an adequate articulated basis in fact and/or technical reasoning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). The Examiner has not relied on Goux for any teaching that would remedy the deficiency in Schneditz (Ans. 5). Appeal 2009-007462 Application 10/990,967 6 Thus, we are constrained to reverse the rejection of claim 1. Likewise, we are constrained to reverse the rejection of claims 2-7, 9 and 35, which depend from claim 1. Claims 10-28 The Examiner has not relied on Lehmann, Pfeiffer or De Freitas for any teaching that would remedy the deficiency in the combined teaching of Schneditz and Goux (Ans. 7, 11 and 14). We thus reverse the rejection of claims 10-28. CONCLUSION The Examiner has erred in concluding that the combined teachings of Schneditz and Goux would have led a person having ordinary skill to the step of “providing a detectable perturbation to at least a measurable blood characteristic in the blood circuit, said detectable perturbation flowing through the heart-lung system and back to said blood circuit,” as called for in claim 1. DECISION The decision of the Examiner to reject claims 1-7, 9-28 and 35 is reversed. REVERSED Appeal 2009-007462 Application 10/990,967 7 mls FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413