Ex Parte Swedlow et al

Patent Trial and Appeal Board

May 31, 2013

10452806 (P.T.A.B. May. 31, 2013)

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.

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Application 10/452,806

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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
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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
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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
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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

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