Ex Parte Marks et al

Patent Trial and Appeal Board

Oct 31, 2012

11874731 (P.T.A.B. Oct. 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.
11/874,731 10/18/2007 Lloyd Marks 117622-00106 3085
27557 7590 10/31/2012
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
10/31/2012 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 LLOYD MARKS and MICHAEL SMITH
__________

Appeal 2012-001840
Application 11/874,731
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for detecting shock in a patient. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Application 11/874,731

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STATEMENT OF THE CASE
According to Appellants, the invention “involves taking a pulse
volume measurement from the patient by using a plethysmograph to perform
signal averaged plethysmography on an external body surface of the
patient.” (App. Br. 4.)
Claims 10, 59, 61-69 are on appeal. Claim 10 is the only independent
claim and is representative. Claims 10, 59, 61-64 and 66-68 have not been
argued separately and therefore stand or fall together with claim 10. 37
C.F.R. § 41.37(c)(1)(vii). Claims 65 and 69 are argued separately. Claims
10, 65 and 69 are representative and read as follows:
10. A method for detecting shock in a patient, the method
comprising:
(a) taking a pulse volume measurement from the patient
by using a plethysmograph to perform signal-averaged
plethysmography on an external body surface of the patient;
(b) using a processor, determining, from the pulse
volume measurement taken in step (a), whether the patient
suffers from decreased peripheral vascular flow;
(c) detecting the shock in accordance with the
determination of step (b); and
(d) performing steps (a)-(c) a plurality of times to
determine the effectiveness of treatment of the shock.

65. The method of claim 10, wherein the external body surface
is a limb segment.

69. The method of claim 10, wherein the pulse volume
measurement is taken only on the external body surface of the
patient.

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The claims stand rejected as follows:
I. Claims 10, 59, and 61-69 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kimball et al. (US 2004/0127800 A1
published Jul. 1, 2004) in view of Marks (US 4,548,211 issued
Oct. 22, 1985), Sackner et al. (US 2002/0103454 A1 published
Aug. 1, 2002) and Cox et al. (US 2004/0152995 A1 published
Aug. 5, 2004).

I.
Issue
The Examiner finds that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to have followed
the method of Kimball to detect shock, and used the external body surface
measurement location of Marks as the location for measurement in
Kimball‟s method, as it would merely be the simple substitution of one
known location for performing a plethysmography or pulse volume
measurement for another to obtain predictable results, performed a
treatment, as taught by Sackner, and repeated the measurement steps in order
to determine the effectiveness of the treatment, as taught by Cox, in order to
ensure that the treatment is working.” (Ans. 5-6.)
Appellants contend that “the present claimed invention would not
have been obvious over the applied combination of references.” (App. Br.
4.)
The issue with respect to this rejection is:
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Did the Examiner establish that the teachings of Kimball are properly
combinable with the teachings of the other references employed and set forth
a prima facie case of obviousness under 35 U.S.C. § 103(a)?

Findings of Fact
FF1. Kimball discloses methods and devices “for assessing
impairment of circulatory function in a patient, such as that in perfusion
failure, which is indicative of shock, by measurement of blood flow adjacent
a mucosal surface accessible via the mouth or nose that connects with the GI
tract and/or upper respiratory/digestive tract of a patient.” (Kimball, ¶
[0007].)
FF2. Marks discloses a “method and apparatus for measuring the
pulsatile volume and net inflow in a body segment (e.g. a limb)” (Marks,
Abstract), where “[d]etails of the individual volume pulse wave measured by
the instant admittance plethysmograph are clarified by signal averaging,
utilizing a digital computer system” (Id., col. 4, ll. 4-7) for the purpose of
“measuring the peripheral limb pulsatile volume” (Id., col. 4, ll. 20-24).
(See also Ans. 5.)
FF3. The Examiner finds that “Kimball does not disclose repeating
these steps a plurality of times to determine the effectiveness of a treatment
for the shock, or using signal-averaged plethysmography on an external
body surface to take the pulse volume measurement.” (Ans. 5.)

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FF4. Regarding claim 65, the Examiner finds that “Marks further
teaches the external body surface being a limb (figure 1), in order to increase
convenience for the patient.” (Ans. 6.)
FF5. Regarding claim 69, the Examiner finds that “the method of
Kimball as modified by Marks, Sackner, and Cox includes the pulse volume
measurement being taken only on the external body surface.” (Ans. 7.)

Principles of Law
[T]he examiner bears initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.

After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a prima facie conclusion of obviousness may be supported by a
showing that a combination of familiar elements according to known
methods yields no more than predictable results. See KSR, 550 U.S. at 401;
citing United States v. Adams, 383 U.S. 39, 40 (1966).
One “may rebut a prima facie case of obviousness by showing that the
prior art teaches away from the claimed invention in any material respect.”
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In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003); citing In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997). However, for a reference to teach
away, it must state more than a general preference for an alternative
invention. It must „“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).

Analysis
Claim 10:
Appellants argue that
[A] person having ordinary skill in the art who had no
knowledge of the present invention would have understood
Kimball et al to be limited to the use of mucosal locations, and
the only teaching that Kimball et al.’s method has broader
applicability comes from the present invention itself.
An important difference between the present claimed
invention and the devices that use mucosal surfaces has to do
with reproducibility. The present claimed invention is
inherently reproducible, as the electrodes stay in a fixed
position throughout a single study and can be replaced in the
same location for serial studies.

(Reply Br. 2; see also App. Br. 4.)

The Examiner does not dispute Applicants‟ assertions that Kimball
fails to teach the disputed feature, but argues that the combination of
Kimball, Marks, Sackner and Cox renders the claims obvious. (See e.g.,
Ans. 5-6.) Specifically, the Examiner finds a person of ordinary skill in the
art would have substituted the mucosal locations of Kimball for a location
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on the external body surface (e.g., a limb), as taught by Marks, because “it
would merely be the simple substitution of one known location for
performing a plethysmography or pulse volume measurement for another to
obtain predictable results.” (Id.)
After reviewing the record before us, we find Appellants have failed
to traverse the Examiner‟s specific findings noted above. The Examiner has
provided a rational basis for combining the cited references, where the
proposed modifications address each disputed element of the claims. (Ans.
5-6, FF4, FF5.) The fact that Kimball fails to disclose that the limb or other
external body surface is a desirable place to make the pulse volume or
plethysmography measurements is not sufficient to establish that the
Examiner erred in reaching a conclusion of obviousness based upon the
combined teachings of the references. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”).
Appellants further argue that “Kimball, by repeatedly emphasizing
plethysmography on a mucosal surface, provides strong teaching away from
using an external body surface.” (App. Br. 4; see also Reply Br. 2-3.) This
argument is also unpersuasive. Kimball “does not „criticize, discredit, or
otherwise discourage‟ investigation into the invention claimed.” Depuy
Spine, 567 F.3d at 1327. The most that might be reasonably said about
Kimball is that it expresses a preference for the alternative invention (a
device for the measurement of blood flow adjacent a mucosal surface)
(FF1), but does not discourage investigation into measurement of blood flow
on an external body surface. Appellants have pointed to no part of Kimball
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that criticizes or discredits pulse volume or plethysmography measurements
on an external body surface.

Claim 65:
For the foregoing reasons we are not persuaded by Appellants‟
contention that “Kimball provides strong teaching away from using a limb
segment, and the other applied references do not overcome that teaching
away” (App. Br. 5; Cf. FF4).

Claim 69:
With regard to claim 69, Appellants argue that Kimball teaches that
“while brachial pressure may also be taken, it is not taken alone, nor is it
used to determine a pulse volume measurement through signal-averaged
plethysmography.” (App. Br. 5.)
We are unpersuaded by Appellants‟ arguments because they fail to
address the combined teachings of the references cited by the Examiner.
Non-obviousness cannot be established by attacking the references
individually. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants‟ arguments are directed against the disclosure of Kimbell alone
and do not persuasively rebut the Examiner‟s prima facie case of
obviousness over the combined teachings of Kimball, Marks, Sackner and
Cox. Here, Kimball discloses the measurement of blood flow adjacent a
mucosal surface accessible via the mouth or nose (FF1), Marks discloses
measuring the peripheral limb pulsatile volume (FF2), and the Examiner is
applying the combination of, inter alia, Kimball and Marks. Specifically,
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the Examiner finds that “since Kimball‟s method for detecting shock only
requires a single pulse volume measurement, the method of Kimball as
modified by Marks, Sackner, and Cox includes the pulse volume
measurement being taken only on the external body surface.” (Ans. 7; see
also Ans. 8-9; FF 5.) Appellants‟ arguments fail to address the teachings of
the combined references.
Conclusion of Law
The evidence supports the Examiner‟s findings of fact. After
reviewing the evidence and arguments, we conclude that the Examiner‟s
evidence and reasoning establishes a prima facie case of obviousness. We
agree with the Examiner that Appellants‟ arguments for nonobviousness are
unpersuasive.
SUMMARY
We affirm the rejection of claims 10, 65, and 69 under 35 U.S.C. §
103(a) as being unpatentable over Kimball in view of Marks, Sackner and
Cox. Claims 59 and 61-64 fall together with claim 10. Claims 66-68 fall
together with claim 65. 37 C.F.R. § 41.37(c)(1)(vii).

AFFIRMED

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