Ex Parte Stoycos et al

Board of Patent Appeals and Interferences

Mar 31, 2004

09751774 (B.P.A.I. Mar. 31, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN T. STOYCOS and EWIN MICHAEL KISER
____________
Appeal No. 2004-0896
Application No. 09/751,774
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ON BRIEF
____________
Before WALTZ, KRATZ and PAWILOWSKI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-24, which are all of the claims pending in
this application.
BACKGROUND
Appellants' invention relates to a method of accessing a
study record taken during a cardiac catheterization procedure.
The method can allow for the real time access to displayed data
on a plurality of workstations during a cardiology procedure. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
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1. A method of accessing a study record taken
during a cardiac catherization procedure, the procedure
being conducted in a cardiac catherization lab,
comprising the acts of:
(a) inserting at least one catheter into a patient
comprising a heart, catheters terminating in a position
proximate to the heart and comprising one or more
sensors configured to sense data from the heart;
(b) stimulating the heart with electrical signals
from the catheter;
(c) sensing data from the heart;
(d) transmitting the data from the sensors to a
data collection device;
(e) transmitting the data from the data collection
device to a central publisher;
(f) replicating the data;
(g) transmitting the replicated data from the
central publisher to a plurality of client
workstations; and
(h) simultanously displaying the data on the
plurality of client workstations.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Budd et al. 5,662,108 Sep. 02, 1997
Soukal 6,035,328 Mar. 07, 2000
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Soukal in view of Budd.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by appellants and
the examiner concerning the issues before us on this appeal.
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Application No. 09/751,774
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1 The examiner’s obviousness position advanced in the
rejection before us hinges on the examiner’s assertion of
inherency with respect to Soukol’s disclosed therapeutic and
diagnostic system.
DECISION AND OPINION
We reverse.
A central question before us is whether the examiner’s
assertion of inherency with respect to the Soukal reference is
reasonable. We answer that question in the negative since the
examiner has not provided a sufficient basis in fact and/or
technical reasoning to reasonably support the examiner’s
assertion (answer, page 4) concerning the allegedly inherent
performance of the claimed process steps, including the
replicating step, as necessarily flowing from the teachings of
the applied prior art. See Ex parte Levy, 17 USPQ 1461, 1464
(Bd. Pat. App. & Int. 1990).1
Concerning this matter, we observe that Soukal describes a
medical therapeutic and/or diagnostic system including at least
one operating means including computing means allocated thereto,
and a control means communicating therewith for controlling the
operation. Exemplary therapeutic and/or diagnostic systems
described as prior art in Soukal (column 1, lines 13-18) include
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Application No. 09/751,774
Page 4
X-ray and shock wave systems. Soukal (column 1, lines 40-47)
teaches that:
at least a part of the operating and/or processing
data previously stored in the computing unit of the
operating means, i.e., the system’s specific technical
software, is not stored there anymore, but rather is
only implemented in the control means, which delivers
the software to the operating means only as needed,
such as in the startup of the operating means or the
like.
In the drawing figure, Soukal depicts an arrangement
employing a number of operating units, including intranet
connected units and external operating means (11) that require
use of a public network, i.e., the Internet, for connection. At
column 3, lines 29-34, Soukal further provides that:
[t]he communication between the operating units 4
and 6 and the control unit 8 ensues via an HTTP
protocol, so that the control unit 8 acts as an HTTP-
server, which places the necessary operating and/or
processing data, i.e., the respective software, at the
operating unit side, at one’s disposal as needed.
From the above passages, it is clear that Soukal is
concerned with software exchange and storage for use in the
operating means as argued by appellants (brief, page 7, first
full paragraph), not data acquired during a test procedure. The
examiner refers to column 1, lines 54-56 of Soukal for a teaching
of data transmission. However, as evident from the passages
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2 The examiner additionally relies on Budd to show a
catheterization procedure. The examiner does not rely on Budd to
suggest appellants’ data processing method steps.
reproduced above, Soukal use the term “exchange of data” as that
term relates to operating or processing data (software).
Moreover, the examiner (answer, page 4) acknowledges that
applicants provide more detail in disclosing their system than
does Soukal. Consequently, the examiner has not shown that
Soukol describes a control and operating system identical with or
substantially the same as appellants’ system so as to support the
examiner’s position that operating Soukal’s system necessarily
results in steps being performed that correspond to the data
handling steps (d) through (h) of claim 1.2
The examiner, in relying on a theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent
characteristics necessarily flow from the teachings of the
applied prior art. See In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The examiner has not
provided persuasive support for an inherency theory. Inherency
cannot be established based on conjecture and/or probabilities or
possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
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323, 326 (CCPA 1981); Ex parte Skinner, 2 USPQ2d 1788, 1788-1789
(Bd. Pat. App. & Int. 1986).
On this record, we will not sustain the examiner’s
rejection.
REMAND
We note that appellants refer to prior techniques in the
Background of Related Art section of their specification,
including the need for consultation with multiple clinicians and
the use of techniques, such as fax machines, to communicate data
from an electrophysiology (EPS) study to clinicians at remote
sites (specification, page 4). Prior to final disposition of
this application and if not already investigated, the examiner,
with appellants’ help, should determine if the prior techniques
referred to in the specification represent prior art to
appellants’ claimed invention. If so, the examiner should
determine the full extent of those prior art teachings.
Thereafter, the examiner should consider whether or not those
prior art teachings in combination with Budd taken with any other
known prior art, including Soukal, would have led (provided both
the incentive and a reasonable expectation of success) one of
ordinary skill in the art to transmit, replicate and display
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sensed data obtained from a patient’s heart via such an EPS
study, as here claimed.
CONCLUSION
The decision of the examiner to reject claims 1-24 under
35 U.S.C. § 103(a) as being unpatentable over Soukal in view of
Budd is reversed.
REVERSED/REMANDED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
PFK/sld
Appeal No. 2004-0896
Application No. 09/751,774
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PATRICK S. YODER
FLETCHER, YODER & VAN SOMERAN
P.O. BOX 692289
HOUSTON, TX 77269-2289