Ex Parte Eckerbom

Board of Patent Appeals and Interferences

Aug 4, 2009

10486972 (B.P.A.I. Aug. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDERS ECKERBOM
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Appeal 2009-000570
Application 10/486,972
Technology Center 3700
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Decided: August 4, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 17 and 19-21. We have jurisdiction
under 35 U.S.C. § 6(b).

Appeal 2009-000570
Application 10/486,972

STATEMENT OF THE CASE
Claim 17 is representative of the claims on appeal, and reads as
follows:
17. A device for quantitative analysis of respiratory gases passing to and
from a patient connected to a respirator for breathing assistance, the device
comprising:
a housing having at one end a first connector for connection to the
respirator and at a second end a second connector for connection to a hose
leading to the patient, and a respiratory gas passageway between said first
and second connectors, said passageway having two windows on opposite
sides for passage of light and a first opening in a side of said passageway
between the opposite sides having said two windows;
a gas analyzer on said housing that analyzes the respiratory gases by
transmitting light through the respiratory gases in said passageway, said gas
analyzer extending over said first opening and over said two windows so
that light from said gas analyzer passes through said two windows;
a fuel cell attached to said gas analyzer that measures oxygen gas
content of the respiratory gases, said fuel cell having a second opening that
is in registration with said first opening and through which a minority
portion of the respiratory gases that are passing between said two windows
are diverted into said fuel cell; and
a flow director that extends through said first opening into said
passageway less than half a width of said passageway to direct the minority
portion of the respiratory gases towards said fuel cell, the flow director being
arranged to avoid blocking light passing through said two windows.

The Examiner relies on the following evidence:
Gedeon US 5,468,451 Nov. 21, 1995
Mace US 2002/0029003 A1 Mar. 7, 2002
Jones US 6,585,662 B1 Jul. 1, 2003

Chowienczyk GB 2 287 655 A Sep. 27, 1995

Appellant relies on the following evidence:
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Declaration filed under 37 C.F.R. § 1.132 of Anders Eckerbom.

We affirm.

ISSUES
The Examiner concludes that claims 17 and 19 are rendered obvious
by the combination of Mace and Chowienczyk; that claim 20 is rendered
obvious by the combination of Mace and Chowienczyk, as further combined
with Jones; and that claim 21 is rendered obvious by the combination of
Mace and Chowienczyk, as further combined with Gedeon.
Appellant contends that the combination does not teach or suggest all
of the limitations of claim 17; specifically, the limitation that the fuel cell
has a second opening through which a minority portion of the respiratory
gases that are passing between the two windows are diverted into the fuel
cell, and that the flow director extends through the first opening into the
passageway less than half a width of the passageway to direct the minority
portion of the respiratory gases towards the fuel cell, where the flow director
is arranged to avoid blocking light passing through said two windows.
Appellant contends further that, as demonstrated by the Eckerbom
Declaration, the ordinary artisan would have not combined the references as
suggested by the Examiner.
Thus, the issues on appeal are:
1) Has Appellant demonstrated that the Examiner erred in concluding
that the combination of Mace and Chowienczyk teaches or suggests the
limitation that the fuel cell has a second opening through which a minority
portion of the respiratory gases that are passing between the two windows
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are diverted into the fuel cell, and that the flow director extends through the
first opening into the passageway less than half a width of the passageway to
direct the minority portion of the respiratory gases towards the fuel cell,
where the flow director is arranged to avoid blocking light passing through
said two windows? and
2) Has Appellant demonstrated that the Examiner erred in concluding
that it would have been within the level of skill of the ordinary artisan to
combine Chowienczyk with Mace as set forth in the rejection, and that the
Examiner erred in concluding that the Eckerbom Declaration, when
considered with all of the evidence of record, is not sufficient to rebut the
prima facie of obviousness?

FINDINGS OF FACT
FF1 The Examiner rejects claims 17 and 19 under 35 U.S.C. § 103(a) as
being obvious over the combination of Mace and Chowienczyk (Ans. 3).
FF2 The Examiner finds that Mace substantially teaches the invention of
claim 17, except that instead of teaching the use of a fuel cell to measure
oxygen, Mace teaches the use of luminescence quenching (id. at 3-4).
FF3 The Examiner cites Chowienczyk for teaching “that a fuel cell is a
known oxygen sensor for use in measuring oxygen in patients in a
respirator.” (Id. at 4.)
FF4 The Examiner notes that Chowienczyk teaches “that to ensure
sufficient flow to the fuel cell, the cell should be located outside of the flow
path and the flow should be diverted to the fuel cell by an obturator.” (Id.)
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FF5 Chowienczyk teaches that their apparatus and method “allows more
accurate and consistent measurements from fuel cell gas sensors than would
otherwise be obtained.” (Chowienczyk, p. 3.)
FF6 Specifically, Chowienczyk teaches:
there is provided a T-piece for use with a fuel cell gas sensor,
which T-piece comprises a body part, a through bore in the
body part, a leg part which extends at right angles from the
body part, a bore in the leg part which communicates with the
bore in the body part, and obturator means which is positioned
in the bore in the body part and in the bore in the leg part such
that the obturator means partially blocks both bores, the
obturator means being such that when the T-piece is in use and
air from a patient’s lungs is blown into the T-piece from one
end of the body part then some of the air misses the obturator
means and passes directly through the bore in the body part,
and some of the air strikes the obturator means and is caused to
pass down the bore in the leg part, around an end of the
obturator means in the leg part and back up the leg part before
carrying on through the bore in the body part, and the T-piece
being such that in use the air passing around the end of the
obturator means in the leg part flows over a fuel cell of the fuel
cell gas sensor attached to the leg part whereby the fuel cell
receives more air than it would have done in the absence of the
obturator means and whereby the fuel cell sensor is then able to
give more accurate and consistent readings than would do in the
absence of the obturator means.

(Id. at 2-3.)
FF7 The Examiner concludes that the sensors of Mace and Chowienczyk
are equivalents in that they both measure oxygen, thus “it would have been
obvious to modify Mace to use a fuel cell, as it is merely the substitution of
one known oxygen sensor for another.” (Ans. 4.)
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FF8 The Examiner concludes further that “it would have been obvious to
modify Mace to substitute a fuel cell for the light source in the housing 22
and direct flow with an obturator, to ensure accurate measurements.” (Id.)
FF9 The Examiner notes “that the flow diverter extends more than halfway
across the flow path and diverts more than a minimum of the flow,” but that
“the size would have been a mere matter of design choice for one skilled in
the art, as all sizes appear to work equally as well as the others.” (Id.)
FF10 The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
obvious over the combination of Mace and Chowienczyk, as further
combined with Jones (Id.).
FF11 The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as being
obvious over the combination of Mace and Chowienczyk, as further
combined with Gedeon (Id. at 5).
FF12 The Eckerbom Declaration, attached to the Appeal Brief, addresses a
previous rejection, in which the Orr patent1 was relied upon (Declaration p.
3). The Orr patent, according to the Declaration, used an oxygen sensor in
the context of a calorimeter (id.).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).

1 U.S. Patent No. 6,475,158, issued November 5, 2002.
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The Supreme Court has recently emphasized that “the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Thus,
[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, 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, 550 U.S. at 417. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416. Moreover, an “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982).
Moreover, in making the obviousness determination, all of the
features of the secondary reference need not be bodily incorporated into the
primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, the ordinary artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 421 (“A person of
ordinary skill is . . . a person of ordinary creativity, not an automaton.”).
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ANALYSIS
Appellant argues that the combination of Mace and Chowienczyk
does not teach or suggest all of the limitations of clam 17 (App. Br. 4).
According to Appellant, claim 17 requires:
that the fuel cell has a second opening through which a minority
portion of the respiratory gases that are passing between the
two windows are diverted into the fuel cell, and that the flow
director extends through the first opening into the passageway
less than half a width of the passageway to direct the minority
portion of the respiratory gases towards the fuel cell, where the
flow director is arranged to avoid blocking light passing
through said two windows.

(Id.)
Appellant asserts that in Chowienczyk, “the obturator 16 extends
substantially all the way across the passageway,” directing “a majority of the
respiratory gases towards the fuel cell.” (Id. (citing Chowienczyk, Fig. 3).)
That arrangement, Appellant argues, “leaves no place for the windows that
allow the measuring light rays of the gas analyzer to pass through the
respiratory gas.” (App. Br. 4.) Appellant asserts that “[n]one of the
references addresses the problem of both diverting part of the gas towards an
oxygen measuring device and still allowing the main stream of gas to be
penetrated by the passing light rays,” and that the “flow director in claim 17
offers a solution to the problem that is not suggested by the proposed
combination of references.” (Id. at 5.) According to Appellant, Mace used
the LQ oxygen sensor because they could not master the slow reaction time
of the fuel cell, which grows worse if bacterial protection is added (id. at 6)
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Appellant’s arguments have been carefully considered, but are not
found to be convincing. As to the issue of bacterial protection, nothing in
claim 17 requires bacterial protection. Moreover, Chowienczyk teaches the
use of a fuel cell in the context of a patient ventilator, and thus solves the
problem that Appellant asserts that Mace had with the fuel cell, that is slow
reaction time. As to Appellant’s argument that “[n]one of the references
addresses the problem of both diverting part of the gas towards an oxygen
measuring device and still allowing the main stream of gas to be penetrated
by the passing light rays,” we agree with the Examiner (see, e.g., Ans. 5-6)
that it would have been within the level of skill of the ordinary artisan to add
an obturator to ensure proper functioning of the fuel cell of Chowienczyk
and still allow the main gas stream to be penetrated by passing light rays,
such as by having the obturator stop short of the optical pathway.
Appellant argues further that the ordinary artisan would have not
combined the references as suggested by the Examiner (App. Br. 5).
Appellant relies on the Declaration of Anders Eckerbom, which was
submitted against a reference that is no longer being applied, but which
Appellant asserts is also pertinent as to Chowienczyk (id. at 5-6). Appellant
argues that the Declaration explains that “the typical LQ (quenching) oxygen
sensor has considerably faster reaction time, less linearity, shorter stability,
and higher sensitivity to other gases than a fuel cell oxygen sensor.” (Id. at
6.) Appellant asserts that Mace recognized drawbacks of their solution,
which Appellant has solved using a fuel cell oxygen sensor (id. at 6-7).
Appellant asserts that “[t]o accommodate the longer reaction time, the
housing was adapted to force the respiratory gases towards the fuel cell
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oxygen sensor,” but that presented challenges in the design of the
passageway through the housing, as argued above (id. at 7-8).
Thus, Appellant asserts:
[T]he matter of replacing one component with another is not a
simple one and would not be obvious to one of skill in the art.
Rather, the LQ and fuel cell sensors have such differences as to
amount to an entirely different concept of construction that give
different properties to the product for analyzing the respiratory
gases.

(Id. at 8-9.)
The Eckerbom Declaration has been considered, but is not found to be
persuasive as to the obviousness issue. As noted by the Examiner, the
Declaration was submitted in response to a rejection over Orr, which was
drawn to a different environment, and is thus of little relevance to
Chowienczyk (Ans. 6). We also agree with the Examiner’s analysis (id. at
6-7), in that Orr was drawn to the use of a fuel cell in a calorimeter, while
both Mace and Chowienczyk are drawn to measuring oxygen in a patient
ventilator, and thus are drawn to the measurement of oxygen in the same
environment. Moreover, as also noted by the Examiner, while Appellant
asserts that “the matter of replacing one component with another is not a
simple one and would not be obvious to one of skill in the art,” Appellant
has presented no evidence as that it would have been beyond the level of
skill of the ordinary artisan to substitute the luminescence quenching method
of measuring oxygen as taught by Mace with the fuel cell of Chowienczyk,
and arguments of counsel cannot take the place of evidence in the record. In
re Scarbrough, 500 F.2d 560, 566 (CCPA 1974).
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Appellants do not separately argue the rejections of claims 19, 20, and
21 (App. Br. 9). Thus, we affirm the rejections of those claims for the
reasons set forth above.

CONCLUSIONS OF LAW
We conclude:
1) Appellant has not demonstrated that the Examiner erred in
concluding that the combination of Mace and Chowienczyk teaches or
suggests the limitation that the fuel cell has a second opening through which
a minority portion of the respiratory gases that are passing between the two
windows are diverted into the fuel cell, and that the flow director extends
through the first opening into the passageway less than half a width of the
passageway to direct the minority portion of the respiratory gases towards
the fuel cell, where the flow director is arranged to avoid blocking light
passing through said two windows; and
2) Appellant has not demonstrated that the Examiner erred in
concluding that it would have been within the level of skill of the ordinary
artisan to combine Chowienczyk with Mace as set forth in the rejection, or
that the Examiner erred in concluding that the Eckerbom Declaration, when
considered with all of the evidence of record, is not sufficient to rebut the
prima facie of obviousness.
We thus affirm the rejection of claims 17 and 19 under 35 U.S.C. §
103(a) as being obvious over the combination of Mace and Chowienczyk;
the rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious over the
combination of Mace and Chowienczyk, as further combined with Jones; as
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well as the rejection of claim 21 under 35 U.S.C. § 103(a) as being obvious
over the combination of Mace and Chowienczyk, as further combined with
Gedeon.

TIME PERIOD FOR RESPONSE
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

Ssc:

YOUNG & THOMPSON
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SUITE 500
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