Ex Parte Koch

Patent Trial and Appeal Board

Dec 31, 2012

11062830 (P.T.A.B. Dec. 31, 2012)

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.
11/062,830 02/22/2005 Jochim Koch 71655RCE 5826
23872 7590 12/31/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
VERBITSKY, GAIL KAPLAN
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
12/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOCHIM KOCH
____________________

Appeal 2010-011550
Application 11/062,8301
Technology Center 2800
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed February 22, 2005 claiming benefit of DE 10 2004 028
359.1 filed June 11, 2004. The real party in interest is Dragerwerk
Aktiengesellschaft. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-12 and 15-27. The Examiner indicates
claims 13 and 14 include allowable subject matter. (App. Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b). A Telephonic Oral Hearing was held on
November 8, 2012.
We affirm-in-part.
Appellant’s Invention
The invention at issue on appeal concerns a method and device for
measuring the body core temperature of a person, the device including a
double temperature sensor connected to a means for wrapping around the
upper body. (Spec. ¶¶ [0002], [0015]; Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A device for measuring the body core temperature of
a person, the device comprising
a means for firmly wrapping around the upper body of
the person;
a double temperature sensor connected with said means
for wrapping around the upper body such that it is pressed
elastically onto the upper body in the state in which it is put on
in the area of the sternum of the person, said double
temperature sensor including first and second temperature
sensors arranged spaced from one another by a known thermal

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed October 9, 2009; and Reply Brief (“Reply Br.”) filed June 16, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed April 16, 2010.
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conductivity, said first temperature sensor being arranged
against the area of the sternum, said second temperature sensor
being arranged in combination with said first temperature
sensor and said thermal conductivity to measure heat flow
through the area of the sternum.

Rejections on Appeal
1. The Examiner rejects claims 21 and 27 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the enablement requirement.
2. The Examiner rejects 1-7, 11, 12, 15, 16, and 18-27 under 35
U.S.C. § 103(a) as being unpatentable over US 4,129,125, issued Dec. 12,
1978 (“Lester”); US 7,059,767 B2, issued Jun. 13, 2006 (filed Apr. 25,
2005, claiming benefit of US 10/120,297, filed Apr. 9, 2002) (“Tokita”); and
Russian Patent App. Pub. No. RU 2143220 C1, published Dec. 27, 1999
(“RU”).
3. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Lester, Tokita, RU, and US 2005/0165323 A1,
published Jul. 28, 2005 (filed May, 19, 2004) (“Montgomery”).
4. The Examiner rejects claims 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over Lester, Tokita, RU, and US 2004/0260167 Al,
published Dec. 23, 2004 (filed Jan. 27, 2004) (“Leonhardt”).
5. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Lester, Tokita, RU, and US 5,050,612, issued Sep. 24,
1991 (“Matsumura”).

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ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in rejecting claims 21 and 27 under 35
U.S.C. § 112, first paragraph, in that the limitation “temperature sensors
arranged spaced from one another by a known thermal conductivity” is not
clearly described or supported in Appellant’s Specification?
2. Does the Examiner err in finding that the combination of
Lester, Tokita, and RU is properly combinable and collectively would have
taught or suggested “first and second temperature sensors arranged spaced
from one another by a known thermal conductivity” within the meaning of
independent claim 1?
3. Does the Examiner err in finding that the combination of
Lester, Tokita, and RU collectively would have taught or suggested “a
biasing element connecting said double temperature sensor to said belt, said
biasing element and said belt being arranged to bias said double sensor
against the area of the sternum of the person” within the meaning of claim
21 and the commensurate limitations of claim 27?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

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ANALYSIS
Based on Appellant’s arguments (Br. 9-19), we select independent
claims 1 and 21 and dependent claims 2, 3, 6, 11, and 15-20 as
representative of Appellant’s arguments and groupings with respect to
claims 1-12 and 15-27. 37 C.F.R. § 41.37(c)(1)(vii).
The § 112 Rejection of Claims 21 and 27
The Examiner rejects Appellant’s claims 21 and 27 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement
requirement. Specifically, the Examiner submits that “the limitation
including ‘temperature sensors arranged spaced from one another by a
known thermal conductivity’ has not been clearly described in the
specification.” (Ans. 4 (quoting claim 21).)
Appellant provides detailed arguments attempting to show support for
the limitation. (App. Br. 19-27.)
We note, however, Appellant filed an Amendment revising the
disputed claim language and conceding the issue. (Reply Br. 1-2.)
Accordingly, we affirm the Examiner’s rejection for the reasons set forth in
the Examiner’s Answer (4-5, 11-13), which we adopt as our own.
The § 103 Rejection of Claim 1
Appellant contends that the combination of Lester, Tokita, and RU
would not have been made by one of ordinary skill in the art (App. Br. 28-
29) and fails to teach or suggest certain features of the claimed invention
(App. Br. 27-31, 34-35; see Reply Br. 2-6). Specifically, Appellant
contends: (1) “[t]he modification of the references in the rejection [is] so
circuitous as to not to make such a modification obvious” (App. Br. 29); (2)
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that there is no “disclosure in Tokita of a known thermal conductivity
between two temperature sensors” (App. Br. 28); and (3) there is “no
teaching nor suggestion in the applied prior art of any connection between a
temperature sensor and a belt where that connection has an elastic element”
(App. Br. 34-35.)
The Examiner sets forth a detailed explanation of the obviousness
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
5-11, 13-15) and, in particular, the rejection of claim 1 (Ans. 5-7, 13-14).
Specifically, the Examiner provides a detailed explanation with respect to
Tokita’s disclosure of two temperature sensors (a double temperature sensor)
separated by a medium having a known thermal conductivity (Ans. 6-7, 13
(citing Tokita, generally and col. 9)) and Lester’s disclosure of belt including
an elastic element (Ans. 5-6, 13-14 (citing Lester, col. 3, ll. 7-9; Figs. 1-7)).
The Examiner also finds that RU (Vavilov) describes measuring temperature
in the Sternum area of the chest. (Ans. 7, 13-14.) The Examiner further
provides a rationale for combining Lester and Tokita: “to allow [regulation
of] the environment temperature, if the temperature of the body is getting too
high or too low” and for combining RU with Lester and Tokita: “so as to
measure temperature of the sternum/ position the sensor against the chest/
sternum . . . to [inform] the operator [of] potential damage of the arteries.”
(Ans. 7.) We adopt these findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that the
combination of Lester, Tokita, and RU is properly combinable and would
have taught or at least suggested the disputed features of claim 1.
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Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons
set forth in the Answer, which we incorporate herein by reference. (Ans. 5-
7, 13-14.) We limit our additional analysis to the following points of
emphasis.
We agree with the Examiner (and find) that Tokita describes a dual
temperature sensor and insulating mediums having different thermal
conductivities. (Ans. 6-7, 13; see Tokita, col. 3, ll. 1-8, 15-18; col. 9, ll. 1-
40; Abstract.) It follows that these thermal conductivities must be known –
for instance, to solve the equation described in column 9. Thus, we
conclude that Tokita would have at least suggested dual temperature sensors
separated by a medium having a known thermal conductivity. We also agree
with the Examiner (and find) that Lester describes an elastic belt designed to
be fitted around a patient’s chest. (Ans. 5-6, 13-14; see Lester, col. 3, ll. 7-
9.)
With respect to Appellant’s combinability arguments, the Examiner
provides a rationale for combining the references (supra) – to determine and
allow regulation of the environment temperature in order to control patient
body temperature (which is also determined) (Ans. 7), i.e., to improve
performance and efficiency of the temperature monitoring system.
Therefore, the Examiner has stated “some rational underpinning to support
the legal conclusion of obviousness,” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)), and Appellant has not shown error therein.
We further conclude that it would have been well within the skill of
one skilled in the art to combine such known devices and techniques, i.e., to
combine an internal temperature measuring device including a dual
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temperature sensor, as taught by Tokita, and an elastic belt, as taught by
Lester, and to position the sensor against a patient’s chest, in particular the
sternum area of the chest as taught by RU (Vavilov) (see RU/Vavilov pp. 4,
6). See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill” (citations
omitted)).
The § 103 Rejections of Claims 21- 27
Appellant also contends that the combination of Lester, Tokita, and
RU fails to teach or suggest “a biasing element connecting said double
temperature sensor to said belt, said biasing element and said belt being
arranged to bias said double sensor against the area of the sternum of the
person when said belt is wrapped around the upper body of the person” as
recited in claim 21. (App. Br. 31-33.) The Examiner submits that Lester
describes a “biasing element,” in that Lester describes a spring that presses
the belt over the chest. (Ans. 6, 13-14 (citing Lester, col. 3, ll. 6-12; Fig. 1).)
We disagree with the Examiner’s findings and agree with Appellant
that the cited portions of Lester do not disclose a spring arranged to bias
(push) a sensor against the sternum. Lester’s springs merely attach the
housing to the belt. (Compare Lester, Fig. 1, element 12 and Spec., Fig. 1,
element 6.)
Consequently, based on this record, we conclude that the Examiner
erred in finding that Lester would have taught or suggested Appellant’s
claimed biasing element. Accordingly, we reverse the Examiner’s
obviousness rejection of representative independent claim 21, independent
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claim 27 which includes limitations of commensurate scope, and dependent
claims 22-26 which depend on and stand with claim 21.
The § 103 Rejection of Claim 2
Appellant contends that the combination of Lester, Tokita, and RU
does not teach or suggest the limitation recited claim 2. Specifically, that:
Claim 2 sets forth that the double temperature sensor is
pressed elastically onto the upper body in the area of the
sternum between the xiphoid body and xiphoid process. The
rejection does not state exactly where these features can be
found in the applied prior art. Applicant does not find these
features in the applied prior art. Therefore claim 2 further
defines over the rejection.
(App. Br. 35.)
The Examiner finds that Lester describes elastically placing a sensor
against a patient’s chest and RU describes measuring temperature on the
sternum in particular. (Ans. 5-6, 13-14 (citing Lester, col. 3, ll. 7-9; see RU
pp. 4, 6).) We agree with the Examiner’s findings and conclusion of
obviousness and adopt these findings and this reasoning as our own. We
limit our additional analysis to the following points of emphasis.
We initially note the argued limitation fails to distinguish the claimed
invention from the prior art either structurally or functionally. Specifically,
the recited feature argued by Appellant – that the “temperature sensor is
pressed elastically onto the upper body in the area of the sternum” (claim 2)
is merely a statement of intended use or purpose of the claimed device,
which in this instance does not further limit the scope of the claim. See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003) (a statement of intended use “usually will not
limit the scope of the claim because such statements usually do no more than
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define a context in which the invention operates”). That is, how the device
is arranged on a person does not alter the structure of the device.
Further, even if we arguendo ascribe some patentable weight to the
limitation as explained by the Examiner, without additional argument and
supporting evidence, reciting a particular location on the sternum does not
distinguish the present invention from the cited prior art combination which
discloses placing the sensor on the sternum.
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of claim 2, and we affirm the Examiner’s obviousness
rejection thereof.
Claim 3
Appellant asserts, with respect to claim 3, that one of ordinary skill
would not have found the recited ratio through routine experimentation
because “RU is not concerned with a body core temperature, but is instead
concerned with diagnosing extremity arterial occlusion disease. Therefore
the prior art would lead a person through routine experimentation to find the
optimum or preferred ratio to properly diagnose the arterial occlusion
disease” and not the optimal ratio for measure core temperature. (App. Br.
35-36.)
We disagree and instead agree with the Examiner’s findings and
reasoning (Ans. 8, 14) which we adopt as our own. Further, as explained
with respect to claim 2 (supra), reciting a particular location on the sternum
does not distinguish the present invention from Lester and RU which
describe placing the sensor on the sternum.
Thus, for the same reasons as claim 2 and the reasons set forth by the
Examiner (Ans. 14), Appellant does not persuade us of error in the
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Examiner’s obviousness rejection of claim 3 and we affirm the Examiner’s
obviousness rejection of the claim.
Claims 4 and 5
Appellant does not separately argue claims 4 and 5. (See App. Br 19-
45.) Thus, for the same reasons as claim 1, Appellant does not persuade us
of error in the Examiner’s obviousness rejection of claims 4 and 5, and we
affirm the Examiner’s obviousness rejection thereof.
Claims 6 and 7
Appellant provides separate arguments for claim 6 and 7 (App. Br.
36-37), which include limitations similar in scope to claim 21 (supra) – e.g.,
“the double temperature sensor is fastened with a fastening means of
variable extension to the means for firmly wrapping around the upper body
such that the distance between the double temperature sensor and the means
for wrapping around the upper body is variable” (claim 6). Thus, for the
same reasons as claim 21 (supra), Appellant persuades us of error in the
Examiner’s obviousness rejection of claims 6 and 7 and we reverse the
Examiner’s obviousness rejection of these claims.
Claims 11 and 12
Appellant asserts that claims 11 and 12 “set forth different pressures
at which the double temperature sensor is pressed against the body.” (App.
Br. 37.) We find these arguments unavailing of error in the Examiner’s
rejection for the same reasons as claim 2 (supra). The recited feature, “a
biasing element biases said double temperature sensor onto the body with a
[particular] pressure” (claim 11), does not structurally distinguish the device.
Further, unlike claims 6, 7, and 21 (supra), the recited “biasing element” is
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not positively recited as having a particular structural relationship with other
the device components. Thus, for the reasons stated by the Examiner (Ans.
15) and the same reasons as claim 2 (supra), Appellant does not persuade us
of error in the Examiner’s obviousness rejection of claims 11 and 12, and we
affirm the Examiner’s obviousness rejection thereof.
The § 103 Rejection of Claim 15 and 16
Appellant contends claim 15 recites “additional sensors for measuring
body functions and that the sensors are integrated into the device” (App. Br.
38) and that the combination of Lester, Tokita, and RU does not teach or
suggest such limitations (id.). Appellant also makes commensurate
arguments with respect to claim 16. (Id.)
We disagree for the reasons set forth by the Examiner in the Answer
(Ans. 15) which we adopt as our own and herein incorporate by reference.
Specifically, we agree with the Examiner (and find) that Lester describes
monitoring multiple vital signs – e.g., temperature, as well as cardiac and
respiration status, which would have at least suggested additional sensors
integrated with a temperature sensor (dual temperature sensor) – see Lester,
col. 3, ll. 30-37 (housing includes circuitry for measuring the patient’s vital
signs); col. 4, ll. 39-42 (processor monitors multiple vital signs and switches
between them); col. 6, ll. 8-39 (describing a thermometer (temperature
sensor) and monitoring cardiac and respiration status).
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of claim 15 and 16, and we affirm the Examiner’s
obviousness rejection of these claims.

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Claim 18
Appellant contends that:
[c]laim 18 sets forth an evaluating unit which determines
the body core temperature using heat flow and an estimate of a
thermal conductivity of body tissue in the area of the sternum.
None of the applied prior art uses an estimate of a thermal
conductivity of body tissue in the area of the sternum.
(App. Br. 38.) We find Appellant’s arguments unavailing of error in the
Examiner’s rejection for the same reasons as set forth for claim 2 (supra)
because claim 18 is directed to a device including an evaluating unit (also a
device) – the recited functionality, “determin[ing] a heat flow through the
area of the sternum” and “using said heat flow and an estimate of a thermal
conductivity of body tissue in the area of the sternum to determine the core
body temperature of the person” (claim 18), does not structurally distinguish
the claimed device. Further, as explained by the Examiner (Ans. 15), Tokita
describes estimating/determining body thermal conductivity as well as the
body core temperature. (See Tokita, col. 3, ll. 18-24; col. 4, l. 67 to col. 5, l.
26; col. 8, l. 64 to col. 9, l. 40.) Thus, Appellant does not persuade us of
error in the Examiner’s obviousness rejection of claim 18, and we affirm the
Examiner’s obviousness rejection thereof.
The § 103 Rejection of Claim 19
Appellant contends that:
[c]laim 19 further sets forth a receiving station and means
for wireless data transmission from the evaluating unit to the
receiving station. The rejection does not indicate where in the
applied prior art combination such structures can be found. The
rejection also does not indicate why it would be obvious to
further comprise these additional structures.
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(App. Br. 39-40.) As explained by the Examiner (Ans. 15), Lester describes
radio frequency (RF) data transmission. (See Lester, col. 5, ll. 32-39; col. 4,
l. 67 to col. 5, l. 26; col. 8, l. 64 to col. 9, l. 40.) Thus, Lester would have at
least suggested “wireless” data transmission. Accordingly, Appellant does
not persuade us of error in the Examiner’s obviousness rejection of claim 19,
and we affirm the Examiner’s obviousness rejection of the claim.
Claim 20
Appellant contends that:
[c]laim 20 sets forth that electric lines for signal or data
transmission are integrated at least partially in the means for
wrapping around the upper body. The rejection does not
indicate where in the applied prior art combination such
structure can be found. The rejection also does not indicate
why it would be obvious to further comprise this additional
structure.
(App. Br. 40.) Lester discloses a sensor/electrode on the inner surface of the
elastic belt and an insulated wire passing through the belt and connecting the
electrode to the housing. (See Lester, col. 3, ll. 18-27; Fig. 1.) Thus, Lester
would have at least suggested that “electric lines for signal or data
transmission are integrated at least partly in the means for wrapping around
the upper body” (claim 20). Accordingly, Appellant does not persuade us of
error in the Examiner’s obviousness rejection of claim 20, and we affirm the
Examiner’s obviousness rejection thereof.
Claim 17
The Examiner rejects claim 17 as being obvious in view of Lester,
Tokita, RU, and Montgomery. Appellant contends that:
[c]laim 17 further sets forth means for determining the
wearer’s position. The rejection states that it is very well
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known that during measuring heart rate and breathing pattern, it
is very important what position the patient is. However the
invention of claim 17 does not measure heart rate and breathing
pattern. Instead claim 17 measures body core temperature. The
incentive supplied by the rejection does not apply to body core
temperature. The incentive supplied by the rejection would not
lead the person to measure a person’s position while
simultaneously measuring body core temperature.
(App. Br. 42-43.) We disagree.
Appellant does not dispute the Examiner’s findings with respect to
Montgomery and does not address the specific basis for the Examiner’s
rejection – that “Montgomery discloses a device in the field of applicant’s
endeavor comprising a body position sensor attached to means for wrapping
around the upper body of a patient” and that one would make the proffered
combination because “it is very well known in the art that during measuring
such physiological parameters as heart rate and breathing pattern,” as taught
by Lester (see claim 15 (supra)), “it is very important what position the
patient is[ ] in order to achieve accurate results of measurements” (Ans. 9).
(See Ans. 8-9, 15.) To the extent Appellant argues against the combinability
of Lester, Tokita, RU, and Montgomery, the Examiner provides a proper
rationale – the necessity of knowing a patient’s position when monitoring
certain physiological parameters – see claim 1 (supra) and KSR, 550 U.S. at
417-418.
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of claim 17, and we affirm the Examiner’s
obviousness rejection of the claim.

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Claims 8-10
Appellant provides separate arguments for claims 8-10 (App. Br. 43-
44), which depend on and stand with claim 6 (supra). The Examiner has not
proffered nor do we find that Leonhardt or Matsumura describe the recited
fastening means. Thus, for the same reasons as claim 6 (supra), Appellant
persuades us of error in the Examiner’s obviousness rejection of claims 8-
10, and we reverse the Examiner’s obviousness rejection of thereof.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
21 and 27 under 35 U.S.C. § 112.
Appellant has not shown that the Examiner erred in rejecting claims
1-5, 11, 12, and 15-20 under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in rejecting claims 6-10
and 21-27 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 21 and 27 under 35
U.S.C. § 112.
We affirm the Examiner’s rejections of claims 1-5, 11, 12, and 15-20
under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejections of claims 6-10 and 21-27 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED-IN-PART

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