Ex Parte Felding et alDownload PDFPatent Trials and Appeals BoardJun 7, 201914438955 - (D) (P.T.A.B. Jun. 7, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/438,955 04/28/2015 Anders Fettling 29178 7590 06/11/2019 K&L Gates LLP-Gambro P. 0. BOX 1135 CHICAGO, IL 60690-1135 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. PN1766 (3724361-00174) 9337 EXAMINER SPIES, BRADLEY R ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 06/11/2019 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): uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS FELDING, TOR-BJORN JONASSON, DAN JONSSON, and ROLF NYSTRAND Appeal2018-007007 Application 14/438,955 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. The invention relates to water systems, medical equipment ( such as dialysis apparatus), apparatus for thermal disinfection and methods for thermal disinfection. Spec. 1. Claim 1 illustrates the invention. 1 Gambro Lundia AB is the Applicant/ Appellant and is identified as the real party in interest. App. Br. 2. Appeal2018-007007 Application 14/438,955 1. A water system for providing water to at least one connected device through a fluid path and being able to disinfect the fluid path by means of thermal disinfection, the water system comprising: an inlet for receiving water to the water system; a heating unit configured to heat water within the water system; a filter unit configured to filter water within the water system in order to provide filtered water to an outlet; an actuator configured to control the flow of the water from the heating unit to the outlet; a fluid path connected to the outlet, the fluid path comprising at least one connector configured to connect to at least one device to which water is provided by the water system; a temperature sensor located at the fluid path and configured to measure the temperature of the fluid in the fluid path; a control unit connected to the heating unit, the actuator and the temperature sensor, the control unit configured to (i) start the disinfection of the fluid path by controlling the heating unit to heat water and controlling the actuator to enable heated water to flow to the outlet and further into the fluid path, (ii) read the temperature as measured by the temperature sensor during the disinfection, (iii) calculate an achieved disinfection dose based on the read temperature, (iv) compare the achieved disinfection dose with information representing a set disinfection dose, and (v) discontinue the disinfection if the achieved disinfection dose equals or exceeds the set disinfection dose. Independent claim 5 is directed to a medical equipment essentially comprising the water system of claim 1. Independent claims 10 and 14 are directed respectively to a method and apparatus for thermally disinfecting a fluid path using the water system of claim 1. 2 Appeal2018-007007 Application 14/438,955 Appellant (see generally App. Br.) requests review of the following rejections from the Examiner's Final Action: I. Claims 1, 2, 5-7, 10, 11, 14, 15, and 18-20 rejected under pre- AIA 35 U.S.C. § I02(e) as anticipated by Kotsos (US 2012/0308431 Al, published December 6, 2012) or, in the alternative, under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kotsos and Rosenberg ("Urs Rosenberg, Thermal Disinfection - The Ao Concept and the Biological Background," 11 Zentral Sterilisation 118-120 (2003)). II. Claims 3, 8, 12, and 16 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kotsos and Wilkinson (WO 0057935 Al, published October 5, 2000) or Kotsos, Rosenberg, and Wilkinson. III. Claims 4, 9, 13, and 17 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kotsos and Rosenberg. IV. Claims 21-23 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Kotsos and Weatherhill (US 2007/0102357 Al, published May 10, 2007) or Kotsos, Rosenberg, and Weatherhill. V. Claims 1, 2, 5-7, 10, 11, 14, 15, and 18-20 rejected under pre- AIA 35 U.S.C. § I02(b) as anticipated by Kenley (DE 19655227 B4, published August 27, 2009, and relying on an English machine translation dated February 5, 2017) or, in the alternative, under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kenley and Rosenberg. VI. Claims 3, 8, 12, and 16 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kenley and Wilkinson (WO 0057935 Al, published October 5, 2000) or Kenley, Rosenberg, and Wilkinson. VII. Claims 4, 9, 13, and 17 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kenley and Rosenberg. VIII. Claims 21-23 are rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Kenley and Weatherhill (US 2007/0102357 Al, published May 10, 2007) or Kenley, Rosenberg, and Weatherhill. Appellant relies on the same line of arguments to address the rejections of all claims on appeal. See generally App. Br. For this reason and because all independent claims contain the same dispositive limitation ( discussed below), we select independent claim 1 as representative of the 3 Appeal2018-007007 Application 14/438,955 claimed subject matter and limit our discussion to the rejections of this claim (Rejections I and V). Claims 2-23 stand or fall with independent claim 1. ANALYSIS Claim 1 is directed to a water system for providing water to at least one connected device through a fluid path to disinfect the fluid path by means of thermal disinfection, where the water system comprises a control unit configured to (i) start the disinfection of the fluid path by controlling the heating unit to heat water and controlling the actuator to enable heated water to flow to the outlet and further into the fluid path, (ii) read the temperature as measured by the temperature sensor during the disinfection, (iii) calculate an achieved disinfection dose based on the read temperature, (iv) compare the achieved disinfection dose with information representing a set disinfection dose, and (v) discontinue the disinfection if the achieved disinfection dose equals or exceeds the set disinfection dose. Anticipation rejections of Claim 1 After review of the respective positions that Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Action and Answer, we reverse the prior art rejections of claims 1, 2, 5-7, 10, 11, 14, 15, and 18-20 under 35 U.S.C. §§ 102(e) and 102(b) for the reasons Appellant presents and add the following. Appellant does not dispute the Examiner's findings that each of Kotsos and Kenley teaches a water system comprising a control unit connected to a heating unit, an actuator, and a temperature sensor that is configured to conduct a disinfection program for a fluid path. Final Act. 5- 4 Appeal2018-007007 Application 14/438,955 6, 13-14; App. Br. 17-18, 20-21. The Examiner finds that Kotsos and Kenley rely on a combined temperature for disinfection and a disinfection time to conduct the disinfection process. Final Act. 6, 13-14; Kotsos ,r 68; Kenley ,r,r 83, 97, 100. Under the broadest reasonable interpretation, the Examiner finds that the control units of Kotsos and Kenley calculate a dose based on temperature and discontinues the process once the desired dose level is reached. Final Act. 6, 14. Appellant contends that Kotsos and Kenley do not teach or suggest a control unit that calculates an achieved disinfection dose based on a sensed temperature, let alone discontinuing disinfection if the achieved disinfection dose equals or exceeds a set disinfection dose. App. Br. 19, 21. According to Appellant, Kotsos and Kenley monitor the time it takes to reach a temperature and does not allow for varying heating profiles. Id. Appellant further argues that Kotsos and Kenley measure time and not disinfection dose because their dose is always the same. Id. at 19-21. We agree with Appellant that the Examiner committed reversible error in determining that each of Kotsos and Kenley anticipates the subject matter of claim 1. Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the prior art control unit must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. 5 Appeal2018-007007 Application 14/438,955 The Examiner asserts the control units of Kotsos and Kenley calculate a value for a dose because both references teach incrementing time when temperature is sufficiently high. Ans. 9-10. While it is possible to install software and/or hardware that would allow the control units of Kotsos and Kenley to perform the functions of the claimed control unit, the "configured to" language requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. The Examiner asserts that each of the control units of Kotsos and Kenley is in fact calculating a value because both references teach incrementing the timer only when the temperature is sufficiently high. Ans. 9-10. The Examiner further contends that the value may be considered a dose. Id. However, the Examiner does not explain adequately or direct us to any evidence or portions of the references that support the assertion that Kotsos's and Kenley's function of counting the increments in time is in fact a calculation. Therefore, the Examiner has not established that the control units of Kotsos and Kenley are structurally identical to the claimed control unit. Accordingly, we reverse the Examiner's rejections of claims 1, 2, 5-7, 10, 11, 14, 15, and 18-20 under 35 U.S.C. §§ 102(b) and 102(e) for the reasons presented by Appellant and given above. 6 Appeal2018-007007 Application 14/438,955 Obviousness rejections of Claim 1 that include secondary reference to Rosenberg After review of the respective positions that Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Action and Answer, we affirm the prior art rejections of claims 1-23 under 35 U.S.C. § 103(a) for the reasons the Examiner presents and add the following. In these alternative obviousness rejections, the Examiner additionally relies on Rosenberg as teaching a known Ao method for thermal disinfection that measures expended energy (temperature/time) as an indicator of disinfection effectiveness. Final Act. 6-7, 14; Rosenberg 118. Rosenberg describes the term Ao as a physical parameter that denotes the inactivation of microorganisms (i.e., achieved disinfection). Rosenberg 118. Specifically, Rosenberg aims to reduce the disinfection time ( and energy used therefore). Id. at 120. The Examiner concludes that it would have been obvious to one skilled in the art to modify the control units of Kotsos and Kenley to incorporate the Ao method for tracking the progress for a disinfection process. Final Act. 7, 14. Appellant argues that Rosenberg does not disclose a controller programmed to perform the claimed steps. App. Br. 22. Appellant further contends that Rosenberg merely generally discusses the concept of a disinfection dose. Id. Appellant asserts that, while Rosenberg discloses an equation for determining dose, Rosenberg does not teach or suggest an optimization of an amount of fluid and energy used by calculating dose and discontinuing a disinfection if an achieved disinfection dose equals or exceeds a set disinfection dose. Id. 7 Appeal2018-007007 Application 14/438,955 We are unpersuaded of reversible error in the Examiner's determination of obviousness. Appellant's arguments do not address adequately the rejection the Examiner presents but instead addresses Rosenberg separately. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981). Moreover, Rosenberg discloses an equation to monitor a disinfection process using Ao values similar to Appellant's disinfection doses. App. Br. 10-11; Rosenberg 118. Appellant has not provided an adequate technical explanation of why one skilled in the art would not have been capable of programming the control units of either Kotsos or Kenley to incorporate the teachings of Rosenberg and arrive at the claimed invention. Thus, Appellant has not adequately explained how the claimed invention distinguishes from the combined teachings of either Kotsos or Kenley with Rosenberg. Accordingly, we affirm the Examiner's§ 103 rejections based on Rosenberg of claims 1-23. Obviousness rejections of Claim 1 that exclude secondary reference to Rosenberg The Examiner also rejects claims 3, 8, 12, 16, and 21-23 in further alternative obviousness rejections based on either Kotsos (Rejections II-IV) or Kenley (Rejections VI-VIII) as primary references in view of a number of secondary references, where these rejections do not rely on the reference to Rosenberg. See Final Act. 10-13, 17-19. The premise of these rejections is that the Examiner's rejections under 35 U.S.C. §§ 102(b) and 102(e) based on either Kotsos or Kenley alone anticipate the subject matter of the 8 Appeal2018-007007 Application 14/438,955 independent claims. As discussed above, such is not the case. The Examiner did not rely on the additionally cited secondary references to overcome the previously noted deficiencies of either Kotsos or Kenley. Id. Accordingly, we reverse the Examiner's prior art rejections of claims 3, 8, 12, 16, and 21-23 under 35 U.S.C. § 103(a) that do not rely on the Rosenberg reference for the reasons presented by Appellant and given above. DECISION The Examiner's rejections of claims 1, 2, 5-7, 10, 11, 14, 15, and 18- 20 under 35 U.S.C. §§ 102(b) and 102(e) are reversed. The Examiner's rejections of claims 3, 8, 12, 16, and 21-23 under 35 U.S.C. § 103(a), not based on Rosenberg, are reversed. The Examiner's rejections of claims 1-23 under 35 U.S.C. § 103(a), based on Rosenberg, are affirmed. Because the affirmed rejections reach all the claims under appeal, our decision is an affirmance. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED 9 Copy with citationCopy as parenthetical citation