Ex Parte Swedlow et alDownload PDFPatent Trial and Appeal BoardMay 31, 201310452806 (P.T.A.B. May. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID SWEDLOW, MICHAEL E. FEIN, MARCIA FEIN, and PAUL D. MANNHEIMER ____________________ Appeal 2009-014337 Application 10/452,806 Technology Center 3700 ____________________ Before KEN B. BARRETT, BENJAMIN D. M. WOOD, and RICHARD E. RICE, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David Swedlow et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 4 and 7-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2009-014337 Application 10/452,806 2 THE INVENTION Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An oximeter sensor comprising: a light emitting element; a light detecting element; and a memory device that stores digital data, the digital data comprising patient identification information. THE REJECTIONS The following Examiner’s rejections are before us for review: 1. Claims 1, 4, 7-10, and 12-21 are rejected under 35 U.S.C. § 102(e) as being anticipated by von der Ruhr (US 6,308,089 B1, issued Oct. 23, 2001); and 2. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over von der Ruhr and Beller (US 5,961,446, issued Oct. 5, 1999). OPINION The rejection of claims 1, 4, 7-10, and 12-21 as anticipated by von der Ruhr Appellants argue the rejected claims as a group. App. Br. 6-12. We select claim 1 as representative, and claims 4, 7-10, and 12-21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 calls for an oximeter sensor having “a memory device that stores digital data, the digital data comprising patient identification information.” There is no dispute that medical probes having a memory device were known in the art and there is no dispute that von der Ruhr Appeal 2009-014337 Application 10/452,806 3 discloses a memory device that stores certain data. App. Br. 9 (Appellants stating: “the Ruhr reference discloses a medical probe 14 with a memory storage component 26 for maintaining data regarding the duration of use of the medical probe 14 and/or a history of the number of uses of the medical probe 14.”); id. (“the Ruhr reference teaches that the memory may store ‘patient data,’ which Appellants believe may be interpreted as data relating to the patient . . . .”) Rather, Appellants argue that von der Ruhr fails to disclose that the digital data is patient identification data. Id. Appellants’ argument is not persuasive. The Examiner is correct that the issue of nonfunctional descriptive material is relevant to this appeal and that “there is no functional relation between the patient identification data and the memory.” Ans. 7. The memory device of claim 1 merely stores data. The distinction between pieces of data based on what that data represents (i.e., patient identification information versus some other patient data) is not patentably consequential because it is a distinction grounded on nonfunctional descriptive material. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Accordingly, we sustain the Examiner’s rejection of claims 1, 4, 7-10, and 12-21 as being anticipated by von der Ruhr. The rejection of claim 11 as being obvious over von der Ruhr and Beller Independent claim 9 recites storing digitally encoded data in a memory of a sensor. Claim 11 depends from claim 9, and recites: “wherein the sensor exchanges digitally encoded data with a medical facility computer Appeal 2009-014337 Application 10/452,806 4 network, the digitally encoded data including patient identification information.” The Examiner found that von der Ruhr discloses a medical device, including an oximeter, having a communications port “capable of or configured to communicate with a variety of external devices including a computer network.” Ans. 4 (citing von der Ruhr, col. 3, ll. 60-64). The Examiner further made the uncontested finding that Beller “teaches physiological sensors, including an oximeter sensor, in communication with a medical data network to allow remote monitoring of a patient.” Id. The Examiner concluded that it would have been obvious to modify von der Ruhr’s sensor “to have communication with a medical data network, as taught by Beller et al., since this allows remote monitoring of medical patients at a centralized location.” Id. We determine that the Examiner’s conclusion of obviousness is supported by adequate articulated reasoning with rational underpinning. Appellants argue that there is no indication that von der Ruhr’s communication port is configured to communicate with a medical data network, and argue that therefore there is no teaching or suggestion to combine the references. App. Br. 13. These arguments are not persuasive. The portion of von der Ruhr cited by the Examiner reads: “The memory storage component 26 also includes communication capabilities such as a serial communications port 27 or other digital communication means.” von der Ruhr, col. 3, ll. 60-63. In other words, von der Ruhr discloses a medical device having communications capabilities. Appellants do not assert that some unique configuration of the port is required to communicate with a medical data network or that it would be beyond the skill of the ordinary Appeal 2009-014337 Application 10/452,806 5 artisan to configure a communication means on a medical device to do so. Appellants’ “no teaching or suggestion” argument is not persuasive as it fails to address the Examiner’s articulation of the rejection which relies on the teachings of both references, not solely von der Ruhr, for the reason as to why Appellants’ claimed invention would have been obvious. See also KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (rejecting the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness.) Appellants also assert that Beller fails to remedy the deficiencies of von der Ruhr and refers to the arguments made in the context of the anticipation rejection. App. Br. 14. This argument is not persuasive in light of our affirmance of that rejection. We sustain the Examiner’s rejection of claim 11 as obvious over von der Ruhr and Beller. DECISION The decision of the Examiner to reject claims 1, 4 and 7-21 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation