Ex Parte Kaestle

Patent Trial and Appeal Board

Mar 30, 2017

13320549 (P.T.A.B. Mar. 30, 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.
13/320,549 11/15/2011 Siegfried Kaestle 2009P00745WOUS 1010
24737 7590 04/03/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue FARDANESH, MARJAN
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIEGFRIED KAESTLE
Appeal 2015-005046
Application 13/320,549
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Siegfried Kaestle (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Action dated May
13, 2014, rejecting claims 1-5, 8-14, and 16-19.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies KONINKLIJKE PHILIPS N.V. as the real party in
interest. Appeal Br. 2, dated October 13, 2014 (“Appeal Br.”).
2 Claims 6, 7, 15, and 20 are canceled. Appeal Br. 15-17 (Claims App.).
Appeal 2015-005046
Application 13/320,549
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “SpCE [(peripheral
oxygen saturation)] probes that are attached to a patient to monitor blood
oxygen levels while the patient is positioned in an MRI device.” Spec. 1,11.
3—4. Claims 1,13, and 18 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below.
1. An oximetry probe, including:
an appendage clip including first and second rigid
clip portions, at least one of the clip portions including:
a receiving aperture on an exterior surface of
the clip portion, wherein the aperture releasably
engages and aligns a fiber optic cable head through
which light is transmitted into or received from an
appendage received in the clip;
a compressible foam or plastic layer affixed
to an interior surface of the clip portion, the
compressible foam or plastic layer defining an
aperture in alignment with the clip portion aperture;
an attachment structure that releasably
attaches to a fiber optic cable head in alignment with
the aperture; and
wherein a portion of the exterior surface
surrounding the receiving aperture permanently
deforms upon removal of the fiber optic cable head
from the receiving aperture, such that it is rendered
non-functional, thereby ensuring that the appendage
clip is not re-used.
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Appeal 2015-005046
Application 13/320,549
EVIDENCE
The Examiner relied upon the following evidence in the Final Action:
Richards et al.
(“Richards”)
US 5,273,041 Dec. 28, 1993
Noll et al.
(“Noll”)
US 5,337,386 Aug. 9, 1994
Caro US 5,348,003 Sept. 20, 1994
Parker US 6,321,100 B1 Nov. 20, 2001
Jenkins et al.
(“Jenkins”)
US 2006/0047190 Al Mar. 2, 2006
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1-4, 11, 12, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Richards and Jenkins.
2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Richards,
Jenkins, and Noll.
3. Claims 8, 9, 13, 14, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Richards, Jenkins, and Caro.
4. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Richards,
Jenkins, and Parker.
ANALYSIS
First Ground of Rejection
Appellant argues the claims subject to the first ground of rejection as a
group. Appeal Br. 4-12. We select claim 1 as representative of the group,
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Appeal 2015-005046
Application 13/320,549
and the remaining claims 2—4, 11, 12, 18, and 19 stand or fall with claim 1.
37C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Richards discloses the oximetry probe
substantially as called for in claim 1, except Richards “fails to disclose that
the portion of the clip surrounding the receiving aperture is deformed upon
removal of the fiber optic cable head from the receiving aperture, such that it
is rendered non-functional, to ensure that the appendage clip is not reused.”
Final Act. 2-3. The Examiner finds that Jenkins discloses a probe including
frangible probe body 110 and reusable insertable piece 116. Id. at 3. The
Examiner finds that frangible probe body 110 has casing 22, detent 118
coupled to casing 22 by spring 120, and breakpoint 122. Id. The Examiner
also finds that insertable piece 116 has groove 114, into which detent 118 is
urged by spring 120 upon insertion of piece 116 into casing 22. Id. The
Examiner explains that “[w]hen insertable piece 116 is removed from
frangible probe body 110, the detent 118 and spring 120 break from casing
22 at the breaking point 122, such that further use of the probe body is
inhibited, as the insertable piece can no longer be fixed into a locked
position.” Id. at 3—4. The Examiner determines that it would have been
obvious to modify the device of Richards to deform the attachment
mechanism, as taught in Jenkins, to “provide[] a single use sensor in order to
prevent re-use of the sensor, and contamination of the patient.” Id. at 4.
Appellant does not contest the Examiner’s findings as to the scope
and content of Richards, or the Examiner’s proposed modification of the
device of Richards with the teaching of Jenkins. Appeal Br., passim.
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Appeal 2015-005046
Application 13/320,549
Appellant contests only the Examiner’s findings as to the disclosure of
Jenkins. In particular, Appellant contends “Jenkins does not disclose or
suggest ‘wherein a portion of the exterior surface surrounding the receiving
aperture permanently deforms upon removal of the fiber optic cable head
from the receiving aperture, such that it is rendered non-functional thereby
ensuring] that the appendage clip is not re-used,’ as recited in claim 1.”
Appeal Br. 4 (arguing that because Jenkins’s detents 118, springs 120, and
breaking point 122 are internally located with probe body 110, breakage of
these internal components at breaking point 122 cannot constitute
deformation of the exterior surface of the clip surrounding the receive
aperture).
Jenkins discloses an aperture in probe body 110 through which
insertable piece 116 is received. Jenkins, Fig. 6D (showing opening in
casing 22 at right hand end of probe body 110 defined by material at
breakpoint 122). Jenkins discloses that “[w]hen insertable piece 116 is
removed from frangible probe body 110, the detent 118 and spring 120
break from casing 22 at the breaking point 122, such that further use of the
probe body is inhibited . . . .” Id. at para. 79 (emphasis omitted). As such,
the material of casing 22 that defines the aperture through which insertable
piece 116 is received is permanently deformed when it breaks at breaking
point 122, upon removal of insertable piece 116 from body probe 110. This
material at breaking point 122, as shown in Figure 6D of Jenkins, is located
on the exterior surface of probe body 110 surrounding the receiving
aperture.
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Application 13/320,549
In other words, although we agree with Appellant that detents 118 and
springs 120 are within casing 22, the material of casing 22 that forms
breaking point 122 is located on the exterior of casing 22 of probe body 110
and surrounds the aperture through which insertable piece 116 is received.
The lead line in Figure 6D points to a breaking point 122 that lies along the
expanse of material of casing 22 between the receiving aperture and the
outer sidewall of casing 22. As noted by the Examiner, “if one were to view
the aperture from the insert direction, one would identify the visible
parts/surfaces at the external surface.” Advisory Action, dated July 31,
2014, at 2. The portion of casing 22 at breaking point 122 is a visible part of
the casing material surrounding the aperture at the external surface of the
probe body 110. We further understand Jenkins to disclose that this material
of casing 22 at breaking point 122 will break upon removal of insertable
piece 122 from probe body 110. Jenkins, para. 79. As such, we agree with
the Examiner’s finding that Jenkins discloses a portion of the exterior
surface of the probe head 110 surrounding the receiving aperture
permanently deforms upon removal of the insertable piece 116 from the
receiving aperture.
Appellant further argues that Jenkins’s first and second tooth
engaging surfaces 18 “are the only surfaces of Jenkins that can be
considered exterior surface[s] surrounding the receiving aperture (e.g., a
tooth). Reply Br. 3 (arguing “the back end of the probe body of Jenkins is
not ‘an exterior surface surrounding the receiving aperture,’ as recited in
claim 1”). This argument is not commensurate with the language of claim 1.
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Application 13/320,549
Claim 1 defines the “receiving aperture” as being “on an exterior surface of
the clip portion, wherein the aperture releasably engages and aligns a fiber
optic cable head through which light is transmitted into or received from an
appendage received in the clip.” Appeal Br. 14 (Claims App.). Thus, the
receiving aperture of claim 1 is the aperture through which the fiber optic
cable head is received. In the case of Jenkins, the opening at the right hand
side of probe body 110 in Figure 6D, through which the insertable piece 116
is received, corresponds to the claimed “receiving aperture.” The cross-
hatching in Figure 6D shows that casing 22, including the surface that
engages the tooth, is formed of a single piece of material, and thus the
receiving aperture disposed on the right hand side of probe body 110 in
Jenkins is on the exterior surface of the clip portion. Breaking of the
material of casing 22 at breaking point 122 upon removal of insertable piece
116 would result in permanent deformation of a portion of the material on
the exterior surface surrounding the receiving aperture.
Additionally, Appellant contends that in Jenkins the permanent
deformation does not “‘ensur[e] that the appendage clip is not re-used'' as
recited in claim 1.” Appeal Br. 8. In particular, Appellant argues that “[t]he
appendage clip of Jenkins includes both the probe body 110 and insertable
piece 116” and deformation of detents 118 and springs 120 on probe body
110 do not preclude re-use of the entire appendage clip, because insertable
piece 116 can be reused with another probe body 110. Id. There is no
dispute that Jenkins’s insertable piece 116 can be reused with multiple probe
bodies. Appeal Br. 8; Final Act. 4. We disagree with Appellant’s
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Application 13/320,549
characterization of “the entire appendage clip” of Jenkins as corresponding
to the combination of probe body 110 and insertable piece 116. Rather,
probe body 110, which clips onto a tooth in Jenkins, corresponds to the
claimed “appendage clip,” and insertable piece 116, in which the
transmission medium 26 is fixed, corresponds to “a fiber optic head through
which light is transmitted into or received from an appendage received in the
clip.” Thus, similar to Appellant’s invention, in which “the fiber optic
cables can be reused with a number of disposable clips” (Spec. 4,1. 32 — 5,
1. 1), Jenkin’s insertable piece 116 can be reused with a number of probe
bodies 110 (Jenkins, para. 29).
For the above reasons, we agree with the Examiner’s finding that
Jenkins discloses “a portion of the exterior surface surrounding the receiving
aperture permanently deforms upon removal of the fiber optic cable head
from the receiving aperture, such that it is rendered non-functional, thereby
ensuring that the appendage clip is not re-used,” as recited in claim 1.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Richards and Jenkins. Claims 2-4, 11, 12, 18, and 19 fall
with claim 1.
Remaining Grounds of Rejection
The remaining grounds of rejection are based upon the same base
combination of Richards and Jenkins, and in further combination with one of
Noll, Caro, and Parker. Final Act. 5-9. Appellant relies on the arguments
presented in support of the patentability of claim 1 as the basis for seeking
reversal of the remaining grounds of rejection of claims 5, 8-10, 13, 14, 16,
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Application 13/320,549
and 17. Appeal Br. 10-12. For the same reasons provided above in our
discussion of claim 1, we likewise sustain the remaining grounds of rejection
of claims 5, 8-10, 13, 14, 16, and 17.
DECISION
The decision of the Examiner to reject claims 1-5, 8-14, and 16-19 is
affirmed.
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
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