Ex Parte Wells et al

Patent Trial and Appeal Board

Feb 8, 2017

12738905 (P.T.A.B. Feb. 8, 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.
12/738,905 11/11/2010 Michael C. Wells 46396.06 5513
27683 7590 02/10/2017
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
HANRAHAN, BENEDICT L
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL C. WELLS, MARK PARKER,
DANIEL J. CLARIUS, ANDREW PARKER, FARAIDOON
PUNDOLE, TOM WOODS, and MARK NIEDERAUER
Appeal 2015-003904
Application 12/738,905
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
This is an appeal under 35U.S.C. § 134 involving claims 12—37 (App.
Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify “[t]he real party in interest [as] Electrochemical
Oxygen Concepts, Inc.” (App. Br. 2).
Appeal 2015-003904
Application 12/738,905
STATEMENT OF THE CASE
Appellants’ “invention relates to tissue treatment systems, specifically
to tissue oxygenation systems for accelerating the healing of damaged tissue
and promoting tissue viability” (Spec. 1:19-21). More particularly,
Appellants’ “tissue oxygenation system is intended for use with wound
dressings to treat the following: skin ulcerations due to diabetes, venous
stasis, post surgical infections and gangrenous lesions; pressure ulcers;
infected residual limbs; skin grafts; bums; and frostbite” {id. at 1:21—24).
Independent claims 12, 21, and 30 are representative and reproduced in the
Claims Appendix of Appellants’ Appeal Brief.
Claims 12, 13, 17, 21, 22, 26, 30, 31, and 35 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Sarangapani,2
Iobbi,3 and McGrath.4
Claims 14, 16, 19, 20, 23, 25, 28, 29, 32, 34, 36, and 37 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Sarangapani, Iobbi, McGrath, and Vogel.5
Claims 15, 18, 24, 27, and 33 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Sarangapani, Iobbi, McGrath, and
Maget.6
2 Sarangapani, US 2006/0287632 Al, published Dec. 21, 2006.
3 Iobbi, US 2006/0225737 Al, published Oct. 12, 2006.
4 McGrath et al., US 2003/0083610 Al, published May 1, 2003.
5 Vogel, US 2007/0299412 Al, published Dec. 27, 2007.
6 Maget, US 5,788,682, issued Aug. 4, 1998.
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Application 12/738,905
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Sarangapani suggests
the claimed invention but does not specifically disclose a
processor that is located in the housing; wherein the processor is
operable to: receive pressure information from the pressure
monitoring system that is indicative of a pressure in a restricted
airflow enclosure that is provided by a dressing and that is
located adjacent a wound site; and use the pressure information
to control the power provided from the power delivery system to
the oxygen concentrator in order to control an oxygen flow
created by the oxygen concentrator and provided through the
oxygen outlet to the restricted airflow enclosure.
(Ans. 3.)
FF 2. Iobbi discloses the use of a “flow regulating valve” to constrain,
within a continuous range, the oxygen flow-rate to a patient (Iobbi 130; see
also Ans. 3—4, 9.)
FF 3. Figure 1 of Iobbi is reproduced below:
t-H, I
Figure 1 shows
the general schematic of the preferred embodiment for the
present invention. The oxygen source 101 is understood to
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Application 12/738,905
include any of the various commercial systems available such as
but not limited to gas cylinders, liquid oxygen, and condensers.
The present invention is also not specific to the particular use
whether it occur at home, hospital environment, or a portable
setting. As a stand-alone device, the present invention can be
incorporated between the oxygen source 101 and the patient 104
to provide automatic flow-rate control. Further, one embodiment
of the present invention provides the control method be
implemented directly into the system of the oxygen source 101.
In the preferred embodiment, a proportional solenoid valve 102
is placed directly across the tubing connected between the
oxygen source 101 and the patient 104. The proportional
solenoid valve 102 can be externally regulated by either voltage
or current and determine the constraint to oxygen the flow-rate.
The proportional solenoid valve 102 is capable of a continuous
range of constraint. Any flow regulating component may be used
to replace the valve 102 provided it have the capability similar to
a proportional control valve. A flow meter 103 or other similar
sensor able to measure the flow-rate of oxygen delivered to the
patient is placed in series with the valve 103. Feedback
information regarding the measured flow-rate from the flow
meter 103 is communicated to the controller 107.
(Iobbi 142; see also Ans. 3—4, 8—9.)
FF 4. Examiner relies on McGrath to disclose “a method of tissue
superoxygenation to treat wounds including pressure monitoring systems
with sensors to measure and output pressure in order to deliver an
appropriate amount of oxygen” (Ans. 4).
ANALYSIS
The combination of Sarangapani, Iobbi, and McGrath'.
Appellants’ independent claim 12 requires, inter alia, a processor that
is operable to “use [Jpressure information to control the power provided
from [a] power delivery system to [an] oxygen concentrator in order to
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Application 12/738,905
control an oxygen flow created by the oxygen concentrator and provided
through [an] oxygen outlet to [a] restricted airflow enclosure” (Appellants’
claim 12). Independent claim 21 requires, inter alia, a processor that is
operable to “receive pressure information from [a] pressure monitoring
system that is indicative of a pressure in [a] restricted airflow enclosure
adjacent the wound site” and to “use the pressure information to control an
oxygen flow created by the oxygen concentrator and provided through [a]
delivery tubing to the restricted airflow enclosure” (Appellants’ claim 21).
Independent claim 30 similarly requires, inter alia, using “pressure
information” “to control an oxygen flow created by the oxygen concentrator
and provided” through the delivery tubing to “[a] restricted airflow
enclosure” in which “power [is] provided from a power delivery system to
an oxygen concentrator in order to control an oxygen flow created by the
oxygen concentrator” (Appellants’ claim 30).
Claims 12, 13, 17, 30, 31, and 35:
Thus, the issue before this Panel in regard to these claims distills
down to whether the combination of Sarangapani, Iobbi, and McGrath
suggests a system that, inter alia, comprises a processor that uses pressure
information to control the power provided from a power delivery system to
an oxygen concentrator in order to control oxygen flow created by the
oxygen concentrator as required by Appellants’ claimed invention.
Examiner concedes that Sarangapani fails to meet the foregoing
requirements of Appellants’ claimed invention (FF 1). To make up for this
deficiency, Examiner relies on Iobbi to disclose a “flow regulating valve”
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(see FF 2—3). Therefore, Examiner concludes that, at the time of Appellants’
claimed invention, it would have been prima facie obvious “to modify the
Sarangapani reference to include a microprocessor that is able to regulate the
flow of oxygen in response to changes in patient feedback measurements, as
disclosed by Iobbi” (Ans. 4). In this regard, Examiner reasons that “Iobbi
discloses that the control method may be implemented directly into the
system of the oxygen source” and, therefore, Iobbi’s “controller would []
control[] the creation of the oxygen at the source” (Ans. 9, citing Iobbi 142).
We are not persuaded. Instead, we find that Appellants have the
better argument. As Appellants explain,
Iobbi’s teaching that the control method may be
implemented directly into the system of the oxygen source, read
in the context of Iobbi, still only teaches mechanical oxygen flow
control. In other words, the only control system that Iobbi
discusses in detail is a proportional solenoid valve placed across
tubing (para. [0042]), and thus the brief mention that the “control
method may be implemented directly into the system of the
oxygen source” must be interpreted as some sort of valve that
mechanically regulates the flow of oxygen from the oxygen
source. Thus, while Iobbi may not be limited to mechanical
adjustment of oxygen flow by obstructing a tube, the Applicants
submit that it is still limited to mechanical[] adjustments of
oxygen flow. As such, the Applicants respectfully disagree with
the conclusion that Iobbi teaches “controlling the creation of
oxygen at the source” — Iobbi discusses the use of a valve to
control oxygen flow, but includes no teaching of controlling the
creation of that oxygen flow.
(Reply Br. 5 (alteration original); cf. FF 2 (Iobbi suggests that the oxygen
flow-rate to the patient can be varied within a continuous range by
constraining the flow regulating valve).)
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On this record, the Examiner failed to establish an evidentiary basis to
support a conclusion that the combination of Sarangapani and Iobbi suggests
a processor that uses pressure information to control the power delivery to
an oxygen concentrator to control the oxygen flow created by the oxygen
concentrator, as required by Appellants’ claims (see App. Br. 8—9; Reply Br.
5—6). Examiner further failed to establish an evidentiary basis to support a
conclusion that McGrath makes up for the foregoing deficiency in the
combination of Sarangapani and Iobbi (see FF 4).
Claims 21, 22, and 26:
Claims 21 is representative. The issue before this Panel distills down
to whether the combination of Sarangapani, Iobbi, and McGrath suggests a
system that, inter alia, uses pressure information to control an oxygen flow
created by the oxygen concentrator as required by Appellants’ claimed
invention.
Independent claim 21 does not require using pressure information to
control the power provided from a power delivery system to an oxygen
concentrator in order to control oxygen flow created by the oxygen
concentrator, as required by independent claims 12 and 30. We thus are not
persuaded by Appellants’ contention to the contrary (App. Br. 8—9).
Appellants contend that “the sensors in McGrath have the sole
purpose of confirming that the application of a test solution to skin produces
increases in pCE below the skin surface” (id. at 10; see also Reply Br. 7—8).
We are not persuaded. Appellants’ contention fails to account for
Sarangapani’s and Iobbi’s contribution to the combination of Sarangapani,
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Iobbi, and McGrath (FF \-A\ see also Ans. 10-11). See In re Keller, 642
F.2d 413, 425 (CCPA 1981). “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references []. [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Likewise, we recognize, but are not persuaded, by Appellants’
contention that
[t]here is no combination of Sarangapani and McGrath that
teaches the use of pressure information that is indicative of a
pressure in a restricted airflow enclosure that is located between
a wound site and a dressing, and Applicants submit that such a
use is not properly rendered obvious by combining (1) the
teaching of the monitoring for pCE increases in subcutaneous
tissue using devices that are inserted below the skin in McGrath
with (2) the dressing and wound in Sarangapani.
(App. Br. 10). Appellants argue that “the Examiner has not expressed a
reason why a person of ordinary skill in the art would combine Sarangapani
with lobbi and McGrath as required by the claims” (id. at 11).
As Examiner explains,
Iobbi discloses several physiological measurements which may
be used to control the flow of oxygen (Paragraphs 26, 28 and 29).
Iobbi does not specifically disclose the use of pressure
information. McGrath is relied on to disclose the teaching using
pressure information in supplying oxygen to wounds (Paragraphs
15—18, 35—37, and 75—77). McGrath discloses using pressure
information to disclose oxygenation levels (Paragraph 77). Iobbi
disclose using physiological measurements to control the flow of
oxygen. The pressure information as disclosed in McGrath could
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be used be [sic] the control system in Iobbi to control the oxygen
delivery.
(Ans. 10—11.) In other words, we agree with Examiner that, as claim 21
does not require that the flow of oxygen is controlled by controlling power
delivery to the oxygen concentrator, Iobbi’s solenoid valve teaches
controlling the flow of oxygen as claimed (FF 3^4; see also Reply Br. 5
(“Iobbi discusses the use of a valve to control oxygen flow”)).
Examiner further explains that
[a]ll three references pertain to healing wounds by supplying
oxygen to the wound site. Sarangapani discloses the general
device including the housing, dressing, power delivery system
and oxygen concentrator. Iobbi discloses the microprocessor to
control the flow of oxygen by using physiological information
from sensors. McGrath discloses that one of these physiological
measurements may be pressure. The motivation to combine the
references is to ensure the proper level of superoxygen[]ation at
the wound site.
(Ans. 11.)
We recognize, but are not persuaded by, Appellants’ contention that
“the present disclosure discusses at para. [0007] how systems like
Sarangapani ‘do not provide a means to deliver a varying oxygen flow rate
without requiring the patient to obtain ... a new battery’ and suffer from
‘limitations . . . associated with the use of fixed non-variable oxygen flow
rate[]’” (App. Br. 12; see also Reply Br. 4—5). Claim 21 does not restrict
power delivery without changing a battery, nor a fixed non-variable oxygen
flow rate. “[F]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Appellant’s
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arguments fail from the outset because ... they are not based on limitations
appearing in the claims.”).
For the reasons discussed above, we are not persuaded by Appellants’
contention that “[t]he Office Action has not found any suggestion to use the
pressure in a restricted airflow enclosure between a dressing and a wound
site to vary oxygen produced and supplied to that wound site” or that “the
USPTO’s combination arises solely from hindsight” (App. Br. 13; see also
Reply Br. 6; cf. Ans. 12).
The combination of Sarangapani, Iobbi, McGrath, and Vogel:
Claims 14, 16, 19, 20, 32, 34, 36, and37:
Based on the combination of Sarangapani, Iobbi, McGrath, and
Vogel, Examiner concludes that it would have been obvious to “modify the
modified Sarangapani [device] to include a pressure sensor in the tubing as
disclosed and taught by Vogel, for the purpose of maintaining a desired
pressure” (Ans. 6), and to “modify the modified Sarangapani [device] to
include an out of range alarm that is visual or audible as disclosed and taught
by Vogel, for the purpose of ensuring no leaks in the system and proper
pressure levels” (id.). Examiner, however, failed to establish that Vogel
makes up for the deficiency in the combination of Sarangapani, Iobbi, and
McGrath as discussed above.
Claims 23, 25, 28, and 29:
Claim 23, depends from claim 21 and is representative. Having found
no deficiency in Examiner’s rejection of claim 21 over the combination of
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Sarangapani and Iobbi, we are not persuaded by Appellants contention that
claim 23 is “allowable for at least the reasons discussed above” (App. Br.
13). Thus, Appellants fail to provide persuasive evidence or argument to
support a conclusion that the combination of Sarangapani, Iobbi, McGrath,
and Vogel fails to make obvious the subject matter of Appellants’ claims 23.
The combination of Sarangapani, Iobbi, McGrath, and Maget:
Claims 15, 18, 27, and 33:
Based on the combination of Sarangapani, Iobbi, McGrath, and
Maget, Examiner concludes that it would have been obvious to “modify the
modified Sarangapani [device] to include a pressure sensor in the housing,
as disclosed and taught by Maget, for the purpose of regulating oxygen flow
to the wound” (Ans. 7), and to
modify the modified Sarangapani [device so] that the desired
oxygen flow level is either received by the processor through an
input device on the housing or determined by the processor using
the pressure information, as disclosed and taught by Maget, for
the purpose of regulating oxygen flow to the wound
(Id.) Examiner, however, failed to establish that Maget makes up for the
deficiency in the combination of Sarangapani, Iobbi, and McGrath as
discussed above.
Claim 24:
Claim 24, depends from claim 21 and is representative. Having found
no deficiency in Examiner’s rejection of claim 21 over the combination of
Sarangapani and Iobbi, we are not persuaded by Appellants contention that
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claim 24 is “allowable for at least the reasons discussed above” (App. Br.
13). Thus, Appellants fail to provide persuasive evidence or argument to
support a conclusion that the combination of Sarangapani, Iobbi, McGrath
and Maget fails to make obvious the subject matter of Appellants’ claims 24.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to claims 21, 23, and 24.
The rejection of claims 21 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sarangapani, Iobbi, and McGrath is affirmed.
Claims 22 and 26 are not separately argued and fall with claim 21.
The rejection of claims 23 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sarangapani, Iobbi, McGrath, and Vogel is
affirmed. Claims 25,28, and 29 are not separately argued and fall with
claim 23.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sarangapani, Iobbi, McGrath, and Maget is
affirmed.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to claims 12—20, 27, and
30-37.
The rejection of claims 12, 13, 17, 30, 31, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sarangapani, Iobbi, and
McGrath is reversed.
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The rejection of claims 14, 16, 19, 20, 32, 34, 36, and 37 under 35
U.S.C. § 103(a) as unpatentable over the combination of Sarangapani, Iobbi,
McGrath, and Vogel is reversed.
The rejection of claims 15, 18, 27, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sarangapani, Iobbi,
McGrath, and Maget is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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