NIHON KOHDEN CORPORATION

Patent Trials and Appeals BoardAug 25, 2021

2021000828 (P.T.A.B. Aug. 25, 2021)

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. 14/927,909 10/30/2015 Yukio Koyama 55751 5889 116 7590 08/25/2021 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 EXAMINER SHOSTAK, ANDREY ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 08/25/2021 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): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YUKIO KOYAMA, YOSHIHARU HARADA, and MASAMI TANISHIMA ____________ Appeal 2021-000828 Application 14/927,909 Technology Center 3700 ____________ Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–8 and 10–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Nihon Kohden Corporation as the Applicant and real party in interest. Appeal Br. 2. Appeal 2021-000828 Application 14/927,909 2 THE INVENTION Appellant’s invention relates to automated blood pressure measurement. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A measuring device, comprising: a controller configured to: control an invasive blood pressure measurement using a transducer and detect that a blood pressure from the invasive blood pressure measurement becomes a predetermined abnormal state during the invasive blood pressure measurement; detect whether or not a zero-point calibration of the transducer is being carried out; suppress an alarm when the blood pressure becomes the predetermined abnormal state and it is detected that the zero- point calibration of the transducer is being carried out; and output the alarm when the zero-point calibration is continued for a predetermined period of time, irrespective of whether the detected blood pressure is in the abnormal state or not. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Griswold US 5,006,835 Apr. 9, 1991 Kurscheidt US 5,343,868 Sept. 6, 1994 Rantala US 2013/0285812 A1 Oct. 31, 2013 Purdy US 2014/0024956 A1 Jan. 23, 2014 Ongeche US 2015/0284276 A1 Oct. 8, 2015 Appeal 2021-000828 Application 14/927,909 3 The following rejections are before us for review: 1. Claims 1–8 and 10–16 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 2. Claims 1–8 and 10–16 are rejected under 35 U.S.C. § 103 as unpatentable over Purdy, Griswold, Rantala, Kurscheidt, and Ongeche. OPINION Written Description The written description requirement of 35 U.S.C. § 112 provides, in pertinent part, that “[t]he specification shall contain a written description of the invention.” That requirement is satisfied if the inventor “convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and demonstrate[s] that by disclosure in the specification of the patent.” Centocor Ortho Biotech, Inc., v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)). “The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014); Nuvo Pharmaceuticals (Ireland) Designated Activity Company v. Dr Reddy’s Labs Inc., 923 F.3d 1368, 1377 (Fed. Cir. 2019). According to the Examiner, the phrase: output the alarm when the zero-point calibration is continued for a predetermined period of time, irrespective of whether the detected blood pressure is in the abnormal state or not Appeal 2021-000828 Application 14/927,909 4 in each of independent claims 1, 7, and 8 renders them lacking in written description support. Final Act. 2–3. The remaining claims are dependent claims and are rejected based on their dependency. Id. at 3. Appellant argues that paragraphs 44 and 45 of the Specification provide the requisite written description support for the claim language at issue. Appeal Br. 6–7. In response, the Examiner states that paragraph 44 merely describes the alarm being controlled based on both the calibration state and the blood pressure state. Ans. 4. The Examiner states that paragraph 45 merely elaborates on the subject matter disclosed in paragraph 44. Id. at 5. In reply, Appellant explains that the alarm is output after passage of a period of time following commencement of zero point detection and that such would occur based on the passage of time regardless of the blood pressure state. Reply Br. 3. The disputed passage in Appellant’s Specification is reproduced below: Next, the effects of the measuring device 10 according to the present embodiment will be described. As described above, the detecting part 13 detects whether or not the zero point calibration is being carried out. Also, the measuring part 12 measures a blood pressure value and detects the predetermined abnormal state. The notification control part 14 controls ringing of alarm based on both of a carrying-out situation of the zero-point calibration and a state of the blood pressure. Thus, it is possible to avoid a situation where an alarm is rung during the zero-point calibration (in other words, useless ringing of alarm is occurred). Also, the notification control part 14 rings alarm if a state where the zero-point calibration is being carried out is continued during a predetermined period of time (i.e., t23 in 25 Fig. 4) (alarm ON). Thus, medical personnel can recognize Appeal 2021-000828 Application 14/927,909 5 separation of the catheter 21 during carrying out of the zero- point calibration or forgetting returning the three-way stopcock 23. Spec. ¶¶ 44–45 (emphasis added). A person of ordinary skill in the art would understand that notification control 14 controls ringing of the alarm: (1) during zero-point calibration; and (2) based on blood pressure value. Appellant’s system suppresses the alarm when logic determines that ringing of the alarm is “useless” or, in other words, during routine zero-point calibration. Id. However, if zero-point calibration is unduly prolonged, the alarm rings. A person of ordinary skill in the art would understand that the alarm is triggered by the passage of time, regardless of the patient’s blood pressure reading. We agree with the Appellant that paragraphs 44 and 45 demonstrate possession of the invention. Accordingly, we do not sustain the Examiner’s Section 112 written description rejection of claims 1–8 and 10–16. Unpatentability of Claims 1–8 and 10–16 over Purdy, Griswold, Rantala, Kurscheidt, and Ongeche Appellant argues independent claims 1, 7, and 8 and does not argue for the separate patentability of any dependent claims. Appeal Br. 8–11. We select claim 1 as representative and the remaining pending claims will fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that the combination of Purdy, Griswold, Rantala, Kurscheidt, and Ongeche disclose or suggest the claimed subject matter. Final Act. 3–6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the teachings of the prior art to achieve the claimed invention. Id. Appeal 2021-000828 Application 14/927,909 6 at 5–6. According to the Examiner, a person of ordinary skill in the art would have done this to automatically suppress unwanted alarms. Id. Appellant first argues that activation of Rantala’s alarm is based on different criteria than the instant invention. Appeal Br. 8. This argument is not persuasive as the obviousness statute expressly contemplates that an invention may be obvious despite the existence of differences between the prior art and the claimed invention. 35 U.S.C. § 103. Moreover, Appellant’s argument is seen as an individual attack on one reference in a five reference combination rejection. It is well settled that non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant next argues that a person of ordinary skill in the art would not have combined the teachings of Ongeche with the other references because Ongeche deals with a different product application from a different industry. Appeal Br. 9. However, Appellant expressly declines to advance a non-analogous art argument which we take as a tacit admission that Ongeche qualifies as analogous art. Id. (“Appellant does not argue the reference is non-analogous”). Instead, Appellant argues that one of ordinary skill would not have been motivated to incorporate Ongeche’s teachings into the other cited art references because Ongeche uses different valves (electrically controlled) for a different purpose (water treatment and management) than the cited references, and is thus subject to significantly different alarm conditions than in the other references. Id. Appeal 2021-000828 Application 14/927,909 7 In response, the Examiner observes that it is known to use alarms for the purpose of notifying personnel about safety concerns. Ans. 8. The Examiner explains that a person of ordinary skill in the art would understand the dangers imposed by leaving the stopcock open in an invasive blood pressure measurement system for a prolonged period of time and would, therefore, appreciate the advantage of being notified of an unsafe open stopcock condition by activating an alarm. Id. at 9. In reply, Appellant concedes that Ongeche teaches outputting an alarm based on a time period of a detected zero point calibration. Reply Br. 4. Appellant reiterates and expounds upon its Appeal Brief argument that a person of ordinary skill in the art would not have been motivated to adopt the teachings of Ongeche related to alarm activation to a blood pressure monitoring system because Ongeche is directed to complex water treatment systems. Id. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Here, Appellant concedes that Ongeche constitutes analogous art. Reply Br. 4. Appellant’s motivation to combine argument, taken generously, is nothing more than a non-analogous art argument wrapped in alternative terminology. The issue here deals with activating an alarm in response to detection of a condition. There is nothing new or ingenious about using an alarm to notify a device operator about a condition. There is nothing new or ingenious about using sensors and computer logic to determine the existence of a condition which would then trigger the alarm. There is nothing new or ingenious about using the passage of a period of time as the condition for Appeal 2021-000828 Application 14/927,909 8 activating an alarm. Ongeche ¶ 134. Common sense informs us that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Contrary to Appellant’s position, the notion of measuring a period of time and then activating an alarm has broad application beyond its use in complex water treatment facilities. Appellant presents neither evidence nor persuasive technical reasoning that applying the concept of triggering an alarm in response to an elapsed time condition would have taken more than ordinary skill or produced unexpected results. We view Ongeche as merely emblematic of the broader principle that it is well known to activate an alarm conditioned upon a time parameter. The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well- founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claims 1–8 and 10–16. CONCLUSION Claims Rejected 35 U.S.C. § References/Bases Affirmed Reversed 1-8, 10-16 112 Written Description 1-8,10-16 1-8, 10-16 103 Purdy, Griswold, Rantala, Kurscheidt, Ongeche 1-8, 10-16 Overall Outcome 1-8, 10-16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED