Ex Parte Miller

Patent Trial and Appeal Board

Apr 26, 2016

12648160 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/648,160 12/28/2009
23464 7590 04/28/2016
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Charles G. Miller
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.
0087962-000006 3264
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES G. MILLER
Appeal2014-002562
Application 12/648,160
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles G. Miller (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellant's invention "relates generally to education of medical
professionals using medical simulators, more specifically to a method and
apparatus for illuminating and recording an internal cavity of a medical
simulator and integrating simulator data." Spec. i-f 3.
Appeal2014-002562
Application 12/648,160
Claims 1, 14, and 15 are independent. Claims 1 and 14 are illustrative
of the claimed invention and read as follows:
1. A method for illuminating and recording an internal
cavity of a medical simulator for a simulated patient and
integrating simulator data comprising the steps of:
A) providing a medical simulator having an internal
cavity with operator activity normally occurring within the
internal cavity during a session;
B) creating at least one data output from the simulator
associated with an operator session, wherein the at least one
data output includes simulated physiologic parameters of the
simulated patient;
C) illuminating the internal cavity with light outside of
the visible spectrum during an operator session;
D) video recording an operator session on at least one
video camera having a field of vision including at least part of
the internal cavity;
E) receiving and storing the at least one video recording
of step D) and the at least one data output of step B) in a
synchronizing system which can provide playback of each
video recording and each data output in an integrated
synchronized manner.
14. A method for illuminating an internal cavity of a medical
simulator comprising the steps of:
A) providing a medical simulator having an internal
cavity with operator activity normally occurring within the
internal cavity during a session;
B) illuminating the internal cavity with light outside of
the visible spectrum during an operator session and wherein the
light is positioned outside of the boundary of the internal cavity
and configured to diffuse through a boundary membrane that
defines the boundary of the internal cavity; and
C) video recording an operator session on at least one
video camera having a field of vision including at least part of
the internal cavity.
2
Appeal2014-002562
Application 12/648,160
REFERENCES RELIED ON BY THE EXAMINER
Eggert
Hemphill
Yarin
Huang
US 6,503,087 Bl
US 2007/0166681 Al
US 2007/0166682 Al
US 2008/0145830 Al
REJECTIONS ON APPEAL
Jan. 7,2003
July 19, 2007
July 19, 2007
June 19, 2008
(I) Claims 1---6, 9, and 10 are rejected under 35 U.S. C. §103(a) as
unpatentable over Hemphill and Huang.
(II) Claims 7, 8, 11, and 12 are rejected under 35 U.S. C. §103(a) as
unpatentable over Hemphill, Huang, and Y arin.
(III) Claim 13 is rejected under 35 U.S. C. §103(a) as unpatentable over
Hemphill, Huang, and Eggert.
(IV) Claims 15-18 are rejected under 35 U.S. C. §103(a) as unpatentable
over Hemphill, Eggert, and Huang.
(V) Claims 19 and 20 are rejected under 35 U.S. C. §103(a) as
unpatentable over Hemphill, Eggert, Huang, and Y arin.
(VI) Claim 14 is rejected under 35 U.S. C. §103(a) as unpatentable over
Y arin and Hemphill.
ANALYSIS
Rejection I
Claim 1 recites, in part, "creating at least one data output from the
simulator associated with an operator session, wherein the at least one data
output includes simulated physiologic parameters of the simulated patient."
Appeal Br. 18.
3
Appeal2014-002562
Application 12/648,160
The Examiner finds that Hemphill teaches most of the limitations of
claim 1, but relies on Huang for the above noted limitation and states that
"the EKG output (of Huang) suggests the physiologic parameter." Final
Act. 4 (citing Huang iii! 24 and 30).
Appellant asserts that Huang "does not teach wherein ' [at] least one
data output includes simulated physiologic parameters of the simulated
patient,'" because the "EKG machine simulation identified by the examiner
is not a physiologic parameter as known in the art," and rather, is "a
simulated MONITOR rather than a physiologic parameter as claimed."
Appeal Br. 10-11. Appellant argues that, moreover, the EKG and other
monitor based parameters of Huang are not "data output from the simulator .
. . 'associated with an operator session"' and are not "'operator activity
normally occurring within the internal cavity during a session,"' because the
data stream of Huang "may simply be a video of the monitor display." Id. at
11 (citing Huang if 30).
Appellant's arguments are not persuasive because the Examiner does
not rely solely on the video of the EKG display. Although the latter portion
of Huang's paragraph 30 discloses a video of an EKG display as an
example, the first portion of Huang's paragraph 30 discloses simulator data
as telemetry values, and Appellant does not persuasively explain why
telemetry values do not include physiological parameters. See Huang if 30.
Moreover, the Examiner also relies on paragraph 24 of Huang, which
provides various other examples of "simulator data sources 18 in the medical
industry, for instance, include[ing] full-body mannequin simulators, virtual
reality simulators, EKG machines, and blood pressure monitors." See Ans.
19 (citing Huang if 24; see also Ans. 17). Appellant does not provide a
4
Appeal2014-002562
Application 12/648,160
persuasive reason why the data output from these data sources does not
include physiological parameters. Further, Appellant does not provide an
adequate technical reason why the "training sessions [of Huang that] involve
one or more trainees (not shown) who perform simulated procedures," (see
Huang i-f 24) or the practice simulated surgeries of Hemphill (see Hemphill i-f
29) are not an operator session, nor does Appellant point to any explicit
definition in the Specification that would exclude these activities as operator
sessions. Accordingly, we are not persuaded by Appellant's arguments for
the patentability of claim 1. We thus sustain the Examiner's rejection of
claim 1, and claims 2---6, 9, and 10 depending therefrom, as unpatentable
over Hemphill and Huang.
Rejection II
Each of claims 7, 8, 11, and 12 recites, in part, that infrared light
source(s) is/are "configured to diffuse through a boundary membrane that
defines the boundary of the internal cavity."
The Examiner finds that "Y arin teaches a medical training apparatus
that incorporates one or more light sources (such as the illuminator discussed
in FIG 25, label 248), wherein the light source(s) is arranged or configured
in such a way that the light would diffuse through a boundary membrane
defining the internal cavity." Ans. 22 (citing Yarin i-f 84). The Examiner
finds that "the inner surface of the enclosure surrounding the inner cavity of
the simulator where the light source (illuminator) is positioned (e.g., the
section depicting the internal components of the simulator including the light
source) also suggests an internal boundary membrane that defines the
boundary of the internal cavity." Id. (citing Yarin, Fig. 25).
5
Appeal2014-002562
Application 12/648,160
Appellant argues that "[ t ]he illmninator 248 of the Y arin Publication
is shown on the 'underside of the cover of the medical training apparatus' in
figure 25 and does not 'diffuse through a boundary membrane' as claimed."
Appeal Br. 12. Appellant asserts that "[t]here is nothing in the Yarin
Publication teaching or suggesting 'at least one infrared light source is
configured to diffuse through a boundary membrane that defines the
boundary of the internal cavity."' Id.; see also Reply Br. 2.
Appellant's arguments are persuasive because the Examiner does not
explain how Yarin's light source is configured to diffuse through a boundary
membrane that defines the boundary of the internal cavity. Yarin states
"FIG. 25 illustrates in perspective view an underside of the cover 208 in the
open position." Yarin i-f 82. As seen by comparing Figures 22 and 25 of
Yarin, when cover 208 is in the closed (in use) position, illuminator 248 on
the inside of cover 208 is used to illuminate one of task modules 230, 232,
234, 236, 238, and 240 of carousei 204 that is housed in enclosure 202, by
emitting light directly toward carousel 204 in a direction away from the
cover 208. See id. at i-fi-181 and 83; Figs. 22, 24, and 25. As such, the light
from illuminator 248 does not diffuse through a boundary membrane that
defines the boundary of the internal cavity as recited by claims 7, 8, 11, and
12. Rather, Yarin's light is emitted in a direction away from cover 208 and
toward enclosure 202, and is diffused only because illuminator 248 is
configured as an array to create "a diffused light source with fewer visible
shadows." Id. at i-f 84. Because the light ofYarin is not diffused through a
boundary membrane, the Examiner has not adequately established that
Hemphill and Huang as modified based on the teachings of Y arin would
include each of the limitations of claims 7, 8, 11, and 12. Hence, we do not
6
Appeal2014-002562
Application 12/648,160
sustain the rejection of these claims as unpatentable over Hemphill, Huang,
and Yarin.
Rejection III
Claim 13 recites, in part, that "the simulator is a child birthing medical
simulator."
The Examiner relies on Eggert for this limitation (see Final Act. 8
(citing, Eggert, col. 7, 11. 25-30 and col. 8, 11. 2-31 )). In the Answer, the
Examiner states that because Hemphill' s simulator "is already in the area of
simulating surgical procedures directed to the abdomen," and because
"Eggert is also describing procedures directed to the abdomen," one of
ordinary skill would understand that "Eggert' s simulator is relevant to that of
Hemphill's; and accordingly, a person skilled in the art would be readily
motivated to modify Hemphill' s simulator based on the teaching of Eggert,
for exampie, by incorporating additionai components into HemphiH' s
simulator." Ans. 23-24.
Appellant argues that "[t]he examiner does not discuss how the
'anatomical cassette' described in the Hemphill Publication could
accommodate formatting as a 'child birthing medical simulator."' Appeal
Br. 13. Appellant asserts that Hemphill is directed to a "hemodynamic
simulator" not "child birthing simulations, nor could the structure as shown
accommodate such a simulator." Id.
We do not agree with Appellant's arguments because "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
7
Appeal2014-002562
Application 12/648,160
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citation omitted). See also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures."). Rather, "if 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." KSR Int'! Co. v. Teleflex Inc. 550 U.S. 398, 417 (2007) (citation
omitted). In the present case, Appellant has not shown that the Examiner's
proposed modification is beyond the abilities of one of ordinary skill in the
art. Indeed, Appellant notes that "[t]he Eggert patent confirms that birthing
simulators are in fact known in the art." Appeal Br. 13.
Appellant also argues that "the object of the Eggert patent is the
implementation of 'virtual instruments' with such simulators which
TEACHES AW A Y from the fundamentai aspects of the present invention."
Id.
We are not persuaded that the use of virtual instruments by Eggert
teaches away from the invention recited in claim 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). As
the Examiner correctly notes, "even if the reference describes the use of
'virtual instruments', such teaching does not disqualify the reference since
the current claims (e.g. see claims 13 and 15) do not positively recite any
limitation directed to types of instruments." Ans. 24. Moreover, the
8
Appeal2014-002562
Application 12/648,160
Examiner relies on Eggert for the broad teaching of a birthing simulator, and
Appellant does not provide a persuasive technical reason why the teachings
of Eggert would lead one in a divergent direction from the claimed
invention. As such, we are not persuaded that Eggert teaches away from the
claimed invention. We thus sustain the Examiner's rejection of claim 13 as
unpatentable over the combined teachings of Hemphill, Huang, and Eggert.
Rejection IV
Similar to claim 13, independent claim 15 recites, in part, "a medical
child birthing simulator forming a simulated birthing canal and womb of a
simulated patient." Appellant asserts that "claims 15-18 define over the
prior art for the same reasons as discussed above in connection with claim
13." Appeal Br. 14--15. Because Appellant's arguments for claim 13 are
not persuasive as discussed supra, we likewise sustain the Examiner's
rejection of claims 15-18 as unpatentabie over the combined teachings of
Hemphill, Eggert, and Huang.
Rejection V
Claims 19 and 20, similar to claims 7, 8, 11, and 12, require a light
source "configured to diffuse through a boundary membrane that defines the
boundary of the internal cavity."
As discussed above in Rejection II, the combined teachings of
Hemphill, Huang, and Y arin does not describe this limitation. Because the
Examiner does not rely on the teachings of Eggert in any manner that would
remedy the deficiencies of the combined teachings of Hemphill, Huang, and
Yarin, we do not sustain the rejection of claims 19 and 20 as unpatentable
9
Appeal2014-002562
Application 12/648,160
over Hemphill, Eggert, Huang, and Y arin for the same reasons discussed
above with respect to Rejection II.
Rejection VI
Independent claim 14 recites, in part, a light "configured to diffuse
through a boundary membrane that defines the boundary of the internal
cavity."
As noted supra in Rejection II, the combination of Hemphill, Huang,
and Y arin would not include this limitation, and therefore, the combination
of Yarin and Hemphill also does not include this limitation. Accordingly,
we do not sustain the rejection of claim 14 as unpatentable over Yarin and
Hemphill.
DECISION
The decision of the Examiner to reject claims 1-6, 9, 10, 13, and
15-18 based on Hemphill, Huang, and Eggert is affirmed.
The decision of the Examiner to reject claims 7, 8, 11, 12, 14, 19, and
20 based on various combinations of Hemphill, Huang, Eggert, and Y arin is
reversed.
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-IN-PART
10