Ex Parte Strom

Board of Patent Appeals and Interferences

Feb 10, 2006

09922504 (B.P.A.I. Feb. 10, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTER STROM
____________

Appeal No. 2005-2101
Application No. 09/922,504
____________

HEARD: JANUARY 24, 2006
____________

Before FRANKFORT, CRAWFORD and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final rejection of claims 1 through 7, all
of the claims remaining in the application. Claims 8 through 14 have been canceled.

Appellant’s invention relates to a ventilator of the type having an inspiratory unit and an
expiratory valve for regulating a flow of breathing gas, and a control unit for controlling the
inspiratory unit and expiratory valve to, among other things, generate a “recruitment
phase” with an elevated basic pressure for the breathing gas, with a plurality of breaths
superimposed on the elevated basic pressure and an increased breathing rate with no
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withdrawal of breathing gas. As noted on page 1 of the specification, “[d]uring a
recruitment phase, the pulmonary alveoli are opened with a pressure (usually higher than
the normal inspiratory pressure for the patient), enabling them to remain open when
exposed to a lower pressure during a subsequent period of treatment.” While recognizing
the existence of certain prior procedures for instituting a recruitment phase (specification,
page 2), appellant maintains that the procedure described and claimed in the present
application has a number of advantages over the prior art procedures, i.e., while providing
a procedure that is relatively simple to carry out, the static pressure, combined with the
superimposed breaths, leads to more effective opening of the alveoli and improved
scavenging of carbon dioxide. Independent claim 1 is representative of the subject matter
on appeal and a copy of that claim can be found in Appendix A of appellant’s brief.

The single prior art reference relied upon by the examiner in rejecting the appealed
claims is:
Bird 5,862,802 Jan. 26, 1999

Claims 1 through 4 and 7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bird.

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Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Bird.

Rather than attempt to reiterate the examiner's full commentary with regard to the
above-noted rejections and the conflicting viewpoints advanced by the examiner and
appellant regarding the rejections, we make reference to the final rejection (mailed January
12, 2004) and examiner's answer (mailed September 22, 2004) for the reasoning in
support of the rejections, and to appellant’s brief (filed June 14, 2004) and reply brief (filed
November 22, 2004) for the arguments thereagainst.

OPINION

In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art Bird patent, and to the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we have made the determinations which follow.
With respect to the rejection under 35 U.S.C. § 102(b) based on Bird, the examiner
urges that Bird discloses a ventilator comprising an inspiratory unit (Fig. 5); an expiratory
valve (143) shown in Figure 1; and a control unit for controlling the inspiratory unit and
expiratory valve to regulate flow of breathing gas by generating a recruitment phase with
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an elevated basic pressure for the breathing gas, with a plurality of breaths superimposed
on the elevated basic pressure and an increased breathing rate. See page 3 of the
answer for a full statement of the examiner’s position.

Like appellant, we note that the Bird patent has no express disclosure relating to a
“recruitment phase” or with regard to a “control unit for controlling said inspiratory unit and
said expiratory valve to regulate a flow of breathing gas by generating a recruitment phase
with an elevated basic pressure for said breathing gas, with a plurality of breaths
superimposed on said elevated basic pressure and an increased breathing rate with no
withdrawal of said breathing gas,” as set forth in appellant’s independent claim 1. The
valve (143) pointed to by the examiner in Figure 1 of Bird is part of the oscillatory diffusion
module (12) and identified as an “expiratory metering valve” (col. 9, line 48) which is
connected via its inlet port (142) to receive gas from an inspiratory metering valve (139)
and which has an outlet port (147) connected to a reservoir service socket (64) and thence
to a bag-like entrainment reservoir (69). Operation of the expiratory metering valve (143)
is discussed in column 15, lines 10-56, of the Bird patent and seems to relate to creation of
a “pneumatic clock” (col. 15, lines 22-23) which determines the bleed down rate of the
diaphragmatic servoing pressure in the oscillator cartridge (123) and determines how long
the oscillator cartridge gate valve remains closed.

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By contrast, the expiratory valve (14) of appellant’s invention operates under control of
a control unit (16) to regulate the outflow of breathing gas from the respirator (2) and along
with control of the inspiratory unit (8) to generate the pressure and flows to which the
patient is to be subjected, particularly the specific form of “recruitment phase” set forth in
claim 1 on appeal. As appellant has noted in the brief, the corresponding expiratory valve
of Bird (Fig. 1) would appear to be the exhalation valve assembly (228) shown as part of
the breathing circuit (16) and which is likewise not under control of a “control unit” like that
set forth in the claims on appeal.
As appellant has argued in the brief and reply brief, there is no showing in Figure 1 of
Bird, or otherwise discussed in that patent, of a “control unit” associated with the expiratory
metering valve (143) to permit active control of the metering valve and of the inspiratory
unit of the respirator therein so as to regulate a flow of breathing gas by generating a
“recruitment phase,” as set forth in claim 1 on appeal. Although the metering valve (143) is
described at column 15, line 49, as being adjustable, there is no disclosure in Bird of
exactly when or how the valve is adjusted, and clearly no disclosure of a “control unit” that
controls the valve (143) in a manner necessary to achieve the result defined in the claims
on appeal. The examiner’s attempt in the answer (page 3) to point to the broad disclosure
of Bird at column 2, lines 45-48; column 3, lines 1-4; and column 4, lines 8-10 as support
for such a “control unit” is not well founded, since those portions of the patent specification
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merely set forth broad objectives to be achieved by the invention therein and do not
describe, discuss or mandate a “control unit” like that defined in the claims on appeal.

For the foregoing reasons, we will not sustain the examiner’s rejection of claims 1
through 4 and 7 under 35 U.S.C. § 102(b) based on Bird.
Concerning the rejection of dependent claims 5 and 6 under
35 U.S.C. § 103(a) based on Bird, we again point to the failure of Bird to disclose or
suggest a “control unit” like that defined in the claims on appeal. Moreover, with regard to
the examiner’s reliance on Figures 24 and 32 of Bird (answer, pages 3-4), we share
appellant’s position as set forth in the reply brief that those figures of Bird’s drawings are
associated with embodiments of the invention distinct from that seen in Figure 1 of Bird
and which do not even show or rely on an expiratory metering valve (143). Thus, we will
not sustain the rejection of claims 5 and 6 under 35 U.S.C. § 103(a).

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In summary, we have determined that neither the rejection of claims 1 through 4 and 7
under 35 U.S.C. § 102(b) based on Bird, nor the rejection of dependent claims 5 and 6
under 35 U.S.C.
§ 103(a) based on Bird will be sustained. Thus, the decision of the examiner to reject
claims 1 through 7 of the present application is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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Address

Appeal No. 2005-2101
Application No. 09/922,504

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Schiff Hardin, LLP
Patent Department
6600 Sears Tower
Chicago, IL 60606-6473

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