Ex Parte Jaffe

Patent Trial and Appeal Board

Jul 12, 2018

14361551 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/361,551 05/29/2014 Michael Brian Jaffe
24737 7590 07/16/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011P02350WOUS 6845
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BRIAN JAFFE
(APPLICANT: KONINKLIJKE PHILIPS N.V.)
Appeal2017-007930
Application 14/361,551 1
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-15 (App. Br.
2). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM, but designate our affirmance a new ground of rejection.
STATEMENT OF THE CASE
Appellant's disclosure relates "to a method and apparatus for
monitoring the composition of a measurement flow of breathable gas
received in a sidestream manner with a pump and detector assembly that are
1 Appellants identify "Koninklijke Philips Electronics N.V." as the real party
in interest (App. Br. 2).
Appeal2017-007930
Application 14/361,551
controlled by control electronics that are tightly integrated" (Spec. ,r 1 ).
Appellant's independent claim 1 is representative and reproduced below:
1. A detector device configured to measure composition of a
flow of breathable gas received from a respiratory circuit, the
detector device comprising:
a housing;
a flow path engaged with a portion of the housing for the
flow of breathable gas having an inlet and an outlet;
a radiation source within the housing and configured to
emit electromagnetic radiation into the flow path;
a sensor assembly within the housing and configured to
receive electromagnetic radiation that has been emitted by the
radiation source and has passed through the flow path, the
sensor assembly being further configured to generate output
signals conveying information related to one or more
parameters of the received electromagnetic radiation;
a pump, at least a portion of which is within the housing,
the pump comprising:
a pump motor; and
a pump actuator configured to be driven by the pump
motor to draw the flow of breathable gas through the flow path;
and
a single control system configured to control the detector
device and the pump, the single control system comprising one
or more processors housed within an individual compartment
within the housing, the one or more processors being
configured by machine-readable instructions to:
drive the radiation source;
read the output signals generated by the sensor assembly;
drive the pump motor; and
obtain information related to one or more operating
parameters of the pump.
(App. Br. 11-12 (emphasis added).)
2
Appeal2017-007930
Application 14/361,551
The claims stand rejected as follows:
Claims 1-3, 5-8, 10-13, and 15 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofEsposito2 and Labuda. 3
Claims 4, 9, and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Esposito, Labuda, and Tobola. 4
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The detector device of Appellant's claim 1 comprises, inter alia, a
housing and a pump, wherein at least a portion of the pump is within the
housing of the detector device (see App. Br. 11).
The rejection over the combination of Esposito and Labuda:
Examiner finds that Esposito makes obvious the subject matter of
Appellant's claimed invention, including "a pump, at least a portion of
which is within [a] housing," but does not disclose "a pump motor and a
pump actuator" (Final Act. 5 3). Examiner relies on Labuda to make up for
this deficiency in Esposito (id.). Therefore, based on the combination of
Esposito and Labuda, Examiner concludes that, at the time Appellant's
invention was made, it would have been prima facie obvious "to modify the
pump of Esposito ... with a motor and actuator of Labuda ... as it would
2 Esposito et al., US 2010/0168599 Al, published July 1, 2010.
3 Labuda et al., US 6,325,978 B 1, issued Dec. 4, 2001.
4 Tobola et al., US 2010/0286546 Al, published Nov. 11, 2010.
5 Office Action mailed September 6, 2016.
3
Appeal2017-007930
Application 14/361,551
provide power and the ability of the pump to operate as is well known in the
art" (id.).
Appellant contends, however, that neither Esposito nor Labuda
disclose locating a pump, or part thereof, within a housing (see App. Br. 8-
9; Reply Br. 5-7). Examiner addresses Appellant's concern by directing
attention to Esposito's reliance on Pierry6 (see Ans. 9 ( citing Esposito ,r,r 73-
75) ). According to Examiner, Pierry discloses that, in the context of
Esposito's system, a pump "'may be [] contained within the housing of the
Host System or the housing of the Gas Sensor and Gas Monitor"' (Ans. 9
( citing Pierry 6: 46-60) ). Thus, as Examiner explains, "Esposito ... a[ s]
further evidenced by Pierry ... , [discloses the location of] at least a portion
of [a] pump [] within [a] housing. Examiner has not relied upon Labuda ...
to disclose this limitation" (Ans. 9). We find no error in Examiner's
conclusion that Exposito, Pierry, and Labuda make obvious the subject
matter of Appellant's claim 1.
We, however, restate the rejection of record as follows: Claims 1-3,
5-8, 10-13, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Esposito, Pierry, and Labuda. 7 To provide
Appellant a full and fair opportunity to respond, the affirmance of the
rejection of record is designated a new ground of rejection.
6 Pierry et al., US 6,954,702 B2, issued Oct. 11, 2005.
7 See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (even if the prior
art reference is cited to support the rejection in a minor capacity, it should be
positively included in the statement of rejection and be designated as a new
ground of rejection).
4
Appeal2017-007930
Application 14/361,551
The rejection over the combination of Esposito, Labuda, and Tobola:
Examiner relies on Esposito, as evidenced by Pierry, and Labuda as
discussed above, but finds that this combination of references fails to
disclose a "common circuit board [that] has a length of less than 4. 5 cm[]
and a width of less than 2.5 cm" (Final Act. 7). Examiner relies upon
Tobola to make up for the foregoing deficiency in the combination of
Esposito and Labuda, as evidenced by Pierry (id.). Therefore, based on the
combination of Esposito Labuda, and Tobola, as evidenced by Pierry,
Examiner concludes that, at the time Appellant's invention was made, it
would have been prima facie obvious "to modify the common circuit board
of Esposito[, as evidenced by Pierry, and] ... modified by Labuda ... with
specific dimensions of Tobola ... as it would provide a compact and
integrated device" (id.). We find no error in Examiner's conclusion of
obviousness.
We, however, restate the rejection of record as follows: Claims 4, 9,
and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Esposito, Pierry, Labuda, and Tobola. To provide Appellant
a full and fair opportunity to respond, the affirmance is designated a new
ground of rejection.
For the reasons discussed above, having found no deficiency in the
combination of Esposito, as evidenced by Pierry, and Labuda, we are not
persuaded by Appellant's contention that Tobola fails to make up for such a
deficiency (see App. Br. 9; see also Reply Br. 7).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
5
Appeal2017-007930
Application 14/361,551
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Esposito, as evidenced by Pierry, and Labuda is
affirmed. Claims 2, 3, 5-8, 10-13, and 15 are not separately argued and fall
with claim 1.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Esposito, as evidenced by Pierry, Labuda, and
Tobola is affirmed. Claims 9 and 14 are not separately argued and fall with
claim 4.
As discussed above, we designate the affirmance of both rejections
new grounds of rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
6
Appeal2017-007930
Application 14/361,551
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
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; 37 C.F.R. § 4I.50(b)
7