Ex Parte Mannheimer et al

Patent Trial and Appeal Board

Dec 30, 2016

13292956 (P.T.A.B. Dec. 30, 2016)

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.
13/292,956 11/09/2011 Paul D. Mannheimer P0236S-03-1 /TYHC:0075- 5 3668
52144 7590
Covidien LP
ATTN: IP Legal
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
LIU, CHU CHUAN
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL D. MANNHEIMER,
MICHAEL E. FEIN (deceased),
and CHARLES E. PORGES
Appeal 2015-003151
Application 13/292,956
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-003151
Application 13/292,956
STATEMENT OF THE CASE1
Paul D. Mannheimer et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a):
(1) claims 1, 4, 5, 8, 9, 12, 13, 16, 17, 20, and 21 as unpatentable over Sakai
(US 4,942,877; iss. July 24, 1990) and Branstetter (US 4,796,636; iss. Jan.
10, 1989); and (2) claims 2, 3, 6, 7, 10, 11, 14, 15, 18, and 19 as
unpatentable over Sakai, Branstetter, and Bemreuter (US 6,226,540 Bl; iss.
May 1, 2001), and on the ground of nonstatutory obviousness-type double
patenting: (1) Claims 1—3 as unpatentable over claims 4 and 5 of
Mannheimer (US 6,801,797 B2; iss. Oct. 5, 2004, hereinafter “Mannheimer
’797”) and Branstetter; and (2) Claims 1—21 as unpatentable over claims 1,
5-9, 11, 13, 14, 18, 22-26, and 28-31 of Mannheimer (US 7,689,259 B2;
iss. Mar.30, 2010, hereinafter “Mannheimer ’259”) and Branstetter. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 At page 2 of the Final Action, mailed April 23, 2014, the Examiner objected
to certain language of dependent claim 21. In particular, the Examiner
objected to the term “threshold” indicating that it should be set forth as
“value.” See Final Act. 2. Appellants did not subsequently “correct” the
objected to language of claim 21, and the Examiner did not address the issue
in the Examiner’s Answer. Accordingly, although there is no express
antecedent basis for the term “threshold” in claim 1 from which claim 21
depends, for purposes of the present appeal, we consider claim 21 as being in
the form presented at page 22 of the Appeal Brief.
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Application 13/292,956
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “multiple sets of coefficients []
stored [in a memory of an oximetry sensor and] apply to different ranges of
[oxygen] saturation values to provide a better fit to occur by breaking the
[signal modulation ratio] R to Sp02 relationship up into different pieces,
each described by a different function.” Spec. 3:31—4:1. Claims 1, 5, 9, 13,
and 17 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of manufacturing an oximeter sensor,
comprising:
providing a memory of an oximeter sensor; and
storing on the memory coefficients, the coefficients
including at least a first set of coefficients and a second set of
coefficients for a light emitter configured to emit a maximum of
two different wavelengths of light, wherein the first set of
coefficients is for use in a first formula for determining oxygen
saturation and the second set of coefficients is for use in a second
formula for determining oxygen saturation, wherein the first
formula is different than the second formula, and wherein the
first set of coefficients is configured to be used in the first
formula to cause a monitor to determine an oxygen saturation
until the oxygen saturation or a signal modulation ratio exceeds
a predetermined value and the second set of coefficients is
configured to be used in the second formula to cause the monitor
to determine the oxygen saturation after the oxygen saturation or
the signal modulation ratio exceeds the predetermined value.
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Appeal 2015-003151
Application 13/292,956
ANALYSIS
Obviousness over Sakai and Branstetter
Claims 1, 4, 5, 8, 9, 12, 13, 16, 17, 20, and 21
Appellants argue independent claims 1, 5, 9, 13, and 17 as a group
and do not offer separate arguments in favor of dependent claims 4, 8, 12,
16, 20, and 21. Appeal Br. 8—13. We select claim 1 as the representative
claim, and claims 4, 5, 8, 9, 12, 13, 16, 17, 20, and 21 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Sakai teaches the majority of the limitations
of claim 1 (Final Act. 2—3) except that Sakai fails to disclose
wherein the first set of coefficients is configured to be used in the
first formula to cause a monitor to determine an oxygen
saturation until the oxygen saturation or a signal modulation ratio
exceeds a predetermined value and the second set of coefficients
is configured to be used in the second formula to cause the
monitor to determine the oxygen saturation after the oxygen
saturation or the signal modulation ratio exceeds the
predetermined value.
Id. at 3; see also Appeal Br. 18, Claims App. (emphasis added).
For these teachings, the Examiner relies on Branstetter. In particular,
the Examiner finds that Branstetter teaches a two-wavelength oximeter that
utilizes first and second sets of coefficients for respective use in first and
second different formulas for determining oxygen saturation. Final Act. 3^4
(citing Branstetter, first set of coefficients associated with curve 30’, Fig. 2
and the equation in Col. 6, lines 1—13, and second set of coefficients
associated with curve 30, Fig. 2 and equations in Col. 5, lines 34—67). The
Examiner additionally finds that the first set of coefficients is configured to
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Application 13/292,956
be used in the first formula to cause a monitor to determine an oxygen
saturation until the oxygen saturation exceeds a predetermined value
“(<90% or lower ranges of oxygen saturations, Col[.] 5 [,] line 34 — Col. 6
line 13)”2 and the second set of coefficients is configured to be used in the
second formula to cause a monitor to determine an oxygen saturation after
the oxygen saturation exceeds a predetermined value “(> 90%, Col[.] 5[,]
line 34 — Col[.] 6[,] line 13).”3 Id. at 4. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to “modify the oximeter sensor (Sakai) to store
coefficients to be used in different oxygen saturation formulas (Branstetter)
in order to obtain more accurate oxygen saturation measurements.” Id.
Appellants contend that (1) Branstetter “teaches utilizing only the
Square Model to calculate oxygen saturation across all ranges of oxygen
saturation. See Branstetter column 7, lines 46 to 50” (Appeal. Br. 10); and
(2) the Linear Model is merely used for calibrating the system and enables
use of the Square Model “for all subsequent calculations of oxygen
saturation. [Branstetter] column 7, lines 59—68” {Id. at 10—11; see also
Reply Br. 2—3).
2 We interpret the Examiner’s reference to “<90% or lower ranges of oxygen
saturations” to refer to oxygen saturations less than 90% which are suitable
for use in the “Square Model” discussed at column 6, line 3, through column
7, line 28, and elsewhere in Branstetter.
3 We interpret the Examiner’s reference to “>90%” to refer to oxygen
saturations of greater than 90% which are suitable for use in the “Linear
Model” discussed at column 4, line 48, through column 6, line 3, and
elsewhere in Branstetter.
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Application 13/292,956
The Examiner responds that “Branstetter discloses both Linear Model
and Square Model to provide accurate oxygen saturation determination in
the 90%-100% range and the Square Model provides accurate readings in
lower levels [Figs. 2 and 3 and associated descriptions in Col[.] 5[,] line 65 —
Col[.] 7[,] line 50].” Ans. 14. In this regard, Branstetter states:
Referring again to FIG. 3, it can be seen that the Linear Model
reference curve 30 and the Square Model reference curve 32 will
provide very similar oxygen saturation readings in the range
from 90% to 100%. Therefore, either of these reference curves
can be used to provide accurate readings in this range.
However, as discussed above, the Square Model reference curve
32 will provide more accurate readings in the range below 90%.
Since the Square Model reference curve can be used to provide
accurate readings in both the upper and lower ranges of the curve,
it would be desirable to use this single reference curve for all
oxygen saturation measurements.
Branstetter, 7:38—50 (emphasis added).
At the outset, Appellants appear to be suggesting that there must be an
express suggestion in a reference to use a less than preferred embodiment for
that embodiment to be considered a valid teaching of a claimed invention.
That is not what the law requires. One skilled in the art is able to read a
reference for all that it teaches and not limit a reference to its preferred
embodiment. See Beckman Instruments, Inc. v. LKB Produkter AB, 892
F.2d 1547, 1551 (Fed. Cir. 1989); see also In re Chapman, 357 F.2d 418,424
(CCPA 1966) (“A reference can be used for all it realistically teaches, and is
not limited to the disclosures in its specific illustrative examples”) (citation
omitted); In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures
in a reference must be evaluated, including nonpreferred embodiments”).
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In this case, Branstetter clearly teaches that the Linear Model provides
accurate oxygen saturation readings above 90% and that the Square Model
provides accurate oxygen saturation readings above and below 90%.
Moreover, notwithstanding that the Linear Model is also used for system
calibration and that the Square Model is preferably used for all subsequent
calculations of oxygen saturation (Branstetter 7:59-68), Branstetter merely
states that “it would be desirable” to use the Square Model for all oxygen
saturation measurements. Branstetter 7:48—50. Taken together, these
teachings reveal that, although using the Square Model for all oxygen
saturation measurement may be the preferred method taught by Branstetter,
it is not the only method suggested by that reference. That is, Branstetter
provides for using the Square Model for calculating oxygen saturation below
90% and the option of using the Linear Model for calculating oxygen
saturation above 90% (i.e., either of these reference curves can be used to
provide accurate readings in this range). Because Branstetter teaches that
the Square Model may be used at oxygen saturations below 90% and the
Linear Model may be used at oxygen saturations above 90%, Appellants do
not apprise us of error in the Examiner’s findings and conclusions
concerning the combination of Sakai and Branstetter.
Appellants additionally argue that the Examiner’s combination of the
teachings of Sakai and Branstetter constitute impermissible hindsight.
Appeal Br. 12. In this regard, the Examiner’s combination involves bringing
together familiar elements to yield predictable results as specified by the
references themselves. We are not apprised of any specific knowledge
gleaned only from Appellants’ disclosure. Rather, the Examiner’s findings
and conclusions are founded on articulated reasoning based on rational
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underpinnings. See KSR Int’l Co. v Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).4
Appellants further contend the Branstetter teaches away from using
the Linear Model and the Square Model in the manner claimed. Appeal Br.
12—13. “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed
Cir. 2004)). In this regard, Appellants do not direct us to any portion of
Branstetter that criticizes, discredits, or otherwise discourages using the
Square Model for calculating oxygen saturation below 90% and using the
Linear Model for calculating oxygen saturation above 90%.
In the Answer, the Examiner additionally points to MPEP § 2143.01,
subsection I, for the proposition that “The disclosure of desirable alternatives
does not necessarily negate a suggestion for modifying the prior art to arrive
at the claimed Invention” (Ans. 15) and concludes “[therefore, the teachings
4 Appellants contend that “[tjhere does not appear to be any objective benefit
obtained from modifying the disclosed technique of Branstetter . . . such a
modification would merely increase the complexity of Branstetter’s system,
while providing little to no benefit in return.” See Appeal Br. 12. However,
the Examiner is proposing to modify Sakai with Branstetter not Branstetter
with Sakai. See Final Act. 2—A.
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of Branstetter do not limit the scope(s) of the reference to utilize only the
Square Model to calculate oxygen saturation across all ranges of oxygen
saturation as alleged by [Appellants].” Id.
Appellants contest the Examiner’s reference to and reliance on MPEP
§2143.01, subsection I, arguing that “this portion of the M.P.E.P. appears to
relate to disclosed alternatives in multiple references combined in an
obviousness rejection, and thus, does not appear to be applicable to the
present case.” Reply Br. 3; see also id. at 4. In this regard, the examples
provided in MPEP § 2143.01 subsection I, do discuss alternatives in
multiple references but that passage does not preclude its application to
disclosed alternatives in a single reference. Therefore, this argument is
considered unpersuasive.
Lastly, Appellants contend that “the recited claims are not merely
directed to ‘a memory’ nor ‘intended use(s),’ as alleged by the Examiner.”
Reply Br. 4. Appellants have misinterpreted the Examiner’s assertions. In
this case, the Examiner is referring to the claimed “memory” coefficients.
See Ans. 14; see also e.g., Claim 1 at Appeal Br. 18, Claims App. Further,
the Examiner is interpreting the language “determining oxygen saturation”
to be the “intended use” of the claimed first and second formulas. See id.;
see also e.g., Claim 1 at Appeal Br. 18, Claims App.
Based on the record before us, and for the foregoing reasons, we
sustain the Examiner’s rejection of independent claim 1 as unpatentable over
Sakai and Branstetter. We further sustain the Examiner’s rejection of claims
4, 5, 8, 9, 12, 13, 16, 17, 20, and 21, which fall with claim 1.
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Obviousness over Sakai, Branstetter, and Bernreuter
Claims 2, 3, 6, 7, 10, 11, 14, 15, 18, and 19
Appellants do not address the rejection of claims 2,3, 6,1, 10, 11, 14,
15, 18, and 19 as unpatentable over Sakai, Branstetter, and Bernreuter other
than to state that “the cited references do not teach or suggest all elements
of claim 2, 3, 6, 7, 10, 11, 14, 15, 18, and 19, and, thus cannot render claim
2, 3, 6, 7, 10, 11, 14, 15, 18, and 19 obvious.” See Appeal Br. 14. As such,
Appellants have not apprised us of Examiner error and have waived any
argument of error, and we summarily sustain the rejection. See 37 C.F.R. §
41.37(c)(iv); see also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011);
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant
fails to contest a ground of rejection to the Board,... the Board may treat
any argument with respect to that ground of rejection as waived”).
Double Patenting Rejections
Claims 1—21
As explained above, Appellants do not apprise us of error in the
Examiner’s application of the teachings of Branstetter to Sakai. Similarly,
because Branstetter is applied to Mannheimer ’797 and Mannheimer ’259
for the same reasons discussed above in connection with Sakai (see Final
Act. 9-13; see also Appeal Br. 14—17), Appellants do not apprise us of error
in Examiner’s application of the teachings of Branstetter to the recited
claims of Mannheimer ’797 or Mannheimer ’259. Accordingly, on the
ground of nonstatutory obviousness-type double patenting, we sustain the
Examiner’s rejections of (1) claims 1—3 as unpatentable over claims 4 and 5
of Mannheimer ’797 and Branstetter; and (2) claims 1—21 as unpatentable
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over claims 1, 5—9, 11, 13, 14, 18, 22—26, and 28—31 of Mannheimer ’259
and Branstetter.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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