Ex Parte Thys

Patent Trial and Appeal Board

Feb 28, 2017

13147879 (P.T.A.B. Feb. 28, 2017)

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.
13/147,879 08/30/2011 Martin Thys 23456-0022US1 7018
26216 7590 03/02/2017
FISH & RICHARDSON P.C. (FRESENIUS)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN THYS1
Appeal 2015-004253
Application 13/147,879
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 28—54 under 35 U.S.C. § 102(b) as being anticipated by
Roger.2 We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as “FRESENIUS MEDICAL
CARE DEUTSCHLAND GMBH.” Appeal Br. 1 (filed Aug. 12, 2014).
2 Roger et al., US 2008/0195021 Al, pub. Aug. 14, 2008. Final Act. 5
(mailed Jan. 16, 2014). We note that the rejections under 35 U.S.C. §§ 101
and 112 are withdrawn. See Advisory Act. 2 (mailed May 14, 2014).
Appeal 2015-004253
Application 13/147,879
CLAIMED INVENTION
Claim 28, reproduced below, is illustrative of the subject matter on
appeal.
28. An apparatus for monitoring a vascular access device,
comprising:
at least one signal generator configured for generating
vibrations in order to stimulate the vascular access device or a
portion thereof to vibrate;
at least one signal receiver configured for detecting
vibrations of the vascular access device or of said portion
thereof; and
at least one processor configured for evaluating the
detected vibrations.
Appeal Br., Claims App. 1.
ANALYSIS
Claims 28 and 50—53
laim 28 is directed to an apparatus for monitoring a
vascular access device including three structural components: “at least one
signal generator,” “at least one signal receiver,” and “at least one
processor.” See Appeal Br., Claims App. 1.
The Examiner finds the claimed signal generator and receiver read on
Roger’s acoustic emitter/receiver transducer 68 as shown in Figures 8 and 9,
and Roger’s digital signal processor (“DSP”) 44 constitutes the claimed
processor. Ans. 2—3 (mailed Dec. 22, 2014). The Examiner additionally
finds venous line 18 and venous needle 20 shown in Figures 8 and 9
constitute the claimed vascular access device or a portion thereof. See id. at
2.
2
Appeal 2015-004253
Application 13/147,879
Appellant argues:
According to the present invention a vascular access device
"establishes] a fluid communication between an exterior and
an interior of any vessel" (see, e.g., page 3, third paragraph, of
the specification), which may be, for example, a needle (see,
e.g., page 6, last paragraph, of the specification). In contrast, the
Examiner refers to the tubing set of Roger et al. for the
disclosure of a vascular access device. However, the tubing set
of Roger et al. does not, in and of itself, establish a fluid
communication between an exterior and an interior of any
vessel. Thus, the tubing set of Roger et al. is different from the
vascular access device of the present invention. Further, in the
present invention, the vascular access device itself is made to
vibrate. In contrast, while Roger et al. may disclose that sound
waves are introduced into a tubing set in which blood flows,
Roger et al. does not disclose or suggest that a vascular access
device itself is made to vibrate.
Reply Br. 2; see also Appeal Br. 4.
We are unpersuaded of error by Appellant’s argument at least because
the Examiner rather finds Roger’s venous line 18 and needle 20 (see Roger,
Figures 8 and 9), constitute the claimed vascular access device or a portion
thereof—-not just venous line 18. See Ans. 2. Thus, the Examiner’s finding
as to the claimed “vascular access device or a portion thereof’ is not
inconsistent with Appellant’s proffered definition supra. Roger discloses
that acoustic emitter/receiver transducer 68 is configured to emit acoustic
signals into venous line 18, wherein the signal reflects in venous line 18
producing a response back, in which transducer 68 is configured to receive
as sound waves. Roger 9S--99. The Examiner interprets Roger’s
ultrasound waves as the claimed vibrations (see Adv, Act. 2), which is
consistent with Appellant’s Specification. Spec. 2 (“The vibrations may
preferably be understood as to be sound waves.”).
3
Appeal 2015-004253
Application 13/147,879
There is no question that the structural limitations of claim 28 are met
by Roger. The only question being whether the functional limitations of
claim 28 can he found in Roger. Schreiber teaches that writing a claim by
mixing structural and functional limitations comes at a price. In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The price being, when
the structural limitations are met by a single prior art reference, and when
the examiner “has reason to believe” that the prior art reference
inherently teaches the functional limitation, the burden shifts to the
patent applicant to show that the functional limitation cannot be met by
the single prior art reference. Id. (citing In re Swinehart, 439 F.2d 210, 212
(C.C.P.A. 1971)).
Here, the Examiner gave justification for this belief finding that
Roger’s “ultrasound waves are configured to stimulate a vascular access
device or a portion thereof (18).” Ans. 2. As the Examiner observes, “Figs.
8 and 9 of Roger et al. discloses generating vibrations (sinusoidal wave in
Fig. 8) in order to stimulate the vascular device (18; 20), detecting the
vibrations (echo in Fig. 9), and at least one processor for evaluating the
detected vibrations (44; DSP).” Id. at 3. Both devices aim to detect
dislodgment of a venous needle by monitoring the vascular access device.
See Roger 11. Moreover, Roger’s device as depicted in Figures 8 and 9,
and relied upon by the Examiner, is similar in shape and operates in a similar
environment as the claimed device, as shown in Appellant’s Figure 1
embodiment. As such, we find that the Examiner’s belief is grounded in
sufficient rationale so as to establish a prima facie case of anticipation. See
Schreiber 128 F.3d at 1478 (explaining that the examiner’s observation
that the prior art device had the “same general shape” as the claimed device
4
Appeal 2015-004253
Application 13/147,879
established a prima facie case of inherent anticipation); see also
Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886 (Fed,
Cir. 2011). Therefore, the Examiner properly shifted the burden to
Appellant to show that the prior art structure did not inherently possess the
functionally defined limitations of the claimed device. Appellant’s
arguments fail to persuasively rebut the Examiner’s rejection because they
fail to show that Roger’s prior art structure does not inherently possess the
functionally defined limitations of the claimed device.
Accordingly, we sustain the rejection of independent claim 28. We
also sustain the rejection of independent claim 50, and its dependent claims
51—53 for the same reasons as claim 28. Reply Br. 4; see also Appeal Br. 6
(“claim 50, and its dependent claims 51 to 53, are allowable for at least the
same reasons provided above.”).
Claims 38—41
We have considered Appellant’s arguments as to claims 38-41, but
we are unpersuaded of error for the reason discussed above as to
independent claim 28. Appeal Br. 6—8. Moreover, we note that the
Examiner cites paragraphs 76, 77, 82, and 92 of Roger in response to
Appellant’s arguments, but Appellant does not address those findings in the
Reply Brief. See Reply Br. 4—6. Accordingly, we sustain the rejection of
claims 38-41.
Claims 42—44
We are not persuaded by Appellant’s arguments as to claims 42 44
(Appeal Br. 8—9; Reply Br. 6—8) because Appellant has not shown that
5
Appeal 2015-004253
Application 13/147,879
Roger’s prior art structure does not inherently possess the functionally
defined limitations of the claimed device. For instance, Roger’s DSP 44
analyzes the signal and “formulates a baseline acoustic signature of the
reflected acoustical waves and stores such baseline signal in RAM 42.”
Roger 199. According to Roger, if “venous line 18 becomes partially or
completely dislodged from patient 12, the signature response back to
transducer 68 is broken or altered significantly enough compared to the
baseline acoustic signature.” Id. 1100. Therefore, we sustain the rejection
of claims 42-44.
Claim 54
Claim 54 recites “[a] method for monitoring a vascular access device,
comprising: generating, via at least one signal generator, vibrations in order
to stimulate the vascular access device or a portion thereof to vibrate;
detecting, via at least one signal receiver, vibrations of the vascular access
device or of said portion thereof; and evaluating, via at least one processor,
the detected vibrations.” Appeal Br., Claim App. 5.
In rejecting process claim 54 as anticipated by Roger, the Examiner
relies on the same findings and rejection as apparatus claim 28. See Final
Act. 5; see also Ans. 2.
Appellant argues that the recited steps and features of claim 28 are not
disclosed by Roger, and, therefore, Roger does not anticipate claim 54.
Appeal Br. 9—11; Reply Br. 8—9.
The Examiner does not address Appellant’s arguments in the Answer.
We agree with Appellant. Due to the difference in scope between
apparatus claim 28 and process claim 54, we find that the Examiner has not
6
Appeal 2015-004253
Application 13/147,879
made the requisite findings to establish a prima facie case of anticipation as
to claim 54. Accordingly, we do not sustain the rejection of independent
claim 54.
DECISION
We affirm the decision of the Examiner to reject claims 28—53.
We reverse the decision of the Examiner to reject claim 54.
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).
AFFIRMED-IN-PART
7