Ex Parte Gonopolskiy et al

Patent Trial and Appeal Board

Aug 29, 2017

12832346 (P.T.A.B. Aug. 29, 2017)

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.
12/832,346 07/08/2010 Oleg Gonopolskiy H-RM-02279-01 4287
75986 7590
Covidien LP
ATTN: IP LEGAL
6135 Gunbarrel Avenue
Boulder, CO 80301
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG GONOPOLSKIY and ARIK ANDERSON1
Appeal 2016-003217
Application 12/832,346
Technology Center 3700
Before DONALD E. ADAMS, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
physiological sensor (or associated light sheet), such as a sensor to measure
oxygen saturation of blood and tissue. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 According to Appellants, the real parties in interest are COVIDIEN LP,
and its parent company, Medtronic PLC. (Appeal Br. 1.)
Appeal 2016-003217
Application 12/832,346
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 3—12, 14—16, and 20 are on appeal. (Listing of Claims,
Appeal Br. 13—17.) Claim 1 is illustrative and reads as follows:
1. A sensor comprising:
a sensor pad configured to be disposed on a portion of a
patient’s body; and
a light sheet disposed on the sensor pad and having a first
substrate and a second substrate at least partially spaced from one
another, wherein the light sheet includes a light source and a light
detector and wherein the light source and the light detector are
disposed between the first and second substrates such that the
light source is configured to emit near-infrared light through the
first substrate into the patient’s body and the light detector is
configured to detect near-infrared light reflected from the
patient’s body through the first substrate,
wherein the first substrate includes a first layer having a
conductive pattern and a second layer having a conductive
pattern and wherein the first layer and the second layer are
separated by a non-conductive spacer material,
wherein the light source and light detector are both
electrically connected between the second substrate and the
second layer of the first substrate.
Examiner’s Rejections
1. Claims 1, 3, 4, 6—12, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hicks2 and Malita.3 (Ans. 2—5.)
2. Claims 5, 15, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hicks, Malita, and Medina.4 (Id. at 6—8.)
2 Hicks et al., US 6,745,061 Bl, issued June 1, 2004 (“Hicks”).
3 Malita, US 5,388,357, issued Feb. 14, 1995.
4 Medina, US 2009/0323067 Al, pub. Dec. 31, 2009.
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Appeal 2016-003217
Application 12/832,346
DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Analysis
The Examiner’s rejection relies on a sensor embodiment in Hicks that
includes a light sheet having first and second substrates, with a light source
(LEDs) and light detector disposed between the substrates. (Ans. 2—3.) That
sensor embodiment is illustrated by Fig. 12 of Hicks below, wherein 80 and
94 identify the substrates, and 72 identifies electrical traces for connecting
the active components, such as LED 40. (Hicks col. 12,11. 30-41.)
Figure 12 above illustrates a plan view of an oximetry sensor.
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Appeal 2016-003217
Application 12/832,346
The Examiner finds that Hicks discloses all of the elements of
independent claims 1 and 12, except for
wherein the first substrate includes a first and second layer
having a conductive pattern and wherein the first layer and the
second layer are separated by a non-conductive spacer material
and wherein the light source and light detector are both
electrically connected between the second substrate and the
second layer of the first substrate.
(Ans. 3.) The Examiner thus combines Hicks with Malita,5 finding that:
Malita discloses a diode connected] in series with a capacitor;
the diode is an LED light source; the capacitor is the first
substrate with conductive layers and non-conductive spacer
between conductive layers; the two plates are conductive layers
and the dielectric between the plates is non-conductive spacer;
the two lines with space in between.
{Id. at 4 (emphasis added).)
The Examiner references Figures 7A—C (below) of Malita in support
of that finding, showing capacitor 54 (FIG. 7 A) and LEDs 32:
FIG. 7A
56'^ffcsVV\,
FIG. 7B
32f ft32
FIG. 7C
C
HF
R
fit
Figures 7A, 7B, and 7C above illustrate electrical circuit diagrams.
Based on those findings, the Examiner concludes that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Hicks to include wherein
5 Malita is directed to a kit using LED units for retrofitting illuminated signs,
such as a conventional EXIT sign. (See Malita Title and Abstract.)
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Appeal 2016-003217
Application 12/832,346
the first substrate includes a first and second layer having a
conductive pattern and wherein the first layer and the second
layer are separated by a non-conductive spacer material and
wherein the LED/diode are both electrically connected between
the second substrate and the second layer of the first substrate
as taught by Malita because this allow[s] control of voltage for
the diodes to prevent overload [of] the diodes.
(Ans. 4 (citing Malita col. 7,11. 35—47).)
Thus, according to the Examiner, “Hicks in view of Malita would
replace Hicks[’] first substrate with Malita’s substrate (Figs. 7A—C, the top
line is the first conductive layer, the bottom line is the second conductive
layer) which has first and second layer with conductive pattern.” (Ans. 12.)
Appellants argue that “[i]t would not be possible for a person of
ordinary skill in the art to simply replace Hicks’ ‘clear substrate’ 80 with
Malita’s conventional capacitor 54, as urged by the Examiner.”6 (Reply Br.
3.) For example, Appellants argue that:
Malita’s conventional capacitor would need to be reconfigured
so that the first and second layers and the dielectric
therebetween all were transparent or sufficiently translucent so
that “near-infrared light[”] could be transmitted “through the
first substrate into the patient’s body ...”, which is not disclosed
by Malita’s conventional capacitor 54.
(Reply Br. 4.)
Appellants also argue that Hicks teaches connecting light sources and
the light detector through electrical traces that are disposed on opposing
6 Appellants contend that the Examiner’s reference to the first substrate of
Hicks refers to clear substrate 80 rather than substrate 94. (Reply Br. 3, n. 1.)
On this record, it is unclear whether the Examiner is referring to a particular
substrate in Hicks in making the proposed replacement, but all of the
independent claims (1, 12, and 16) require that the light source be
“configured to emit near-infrared light through the first substrate.” (Id.)
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Appeal 2016-003217
Application 12/832,346
inner surfaces of the substrates, and that the Examiner’s proposed
modification “would require that Hicks’ electrical connections be made
through the newly-constructed ‘first substrate,’ integrating the ‘first
substrate’ itself as part of the electrical path.” {Id. at 4—5.) But, according to
Appellants, the electrical path taught by Hicks is the electrical traces
disposed on inner surfaces of the substrates, and that “‘clear substrate’ 80 is
a carrier or mounting surface for electrical traces 70-76; it is not itself part of
the electrical path.” {Id. at 5.)
Appellants argue further that:
The Examiner does not offer any reason why it would have
been obvious to a person skilled in the art to make significant
structural and electrical modifications to Hicks when the
purported goal of preventing voltage overload of the diodes
could be accomplished simply by adding a conventional
capacitor like that shown in Malita within the existing electrical
path.
{Id. at 5.)
We find that Appellants have the better position. A prima facie case
for obviousness “requires a suggestion of all limitations in a claim,” CFMT,
Inc. v. Yieldup Inti Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does”
KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, the Examiner’s proposed combination is based on replacing
Hicks’ first substrate with a capacitor as taught by Malita. (See Ans. 12.)
Moreover, as illustrated by Figure 12 above, the text of Hicks relied upon by
the Examiner describes “a sensor where the electrical traces ... as well as
the active sensor components are sandwiched between the first and second
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Application 12/832,346
substrates and are thereby protected from the environment.” (Ans. 3; see
also Hicks col. 5,11. 10—13.) In our view, the Examiner has not shown how
or why a person of ordinary skill in the art would replace one of the Hicks
substrates with a capacitor. (See Reply Br. 4—5.) As Appellants point out,
such a combination would require significant structural and electrical
modifications to Hicks. {Id. at 5.) Moreover, the Examiner does not
persuasively explain how, after such a proposed modification, the light sheet
would still include a light source that (1) is “configured to emit near-infrared
light through the first substrate,” (i.e., through the capacitor), and (2) is
electrically connected between the second substrate and the second layer of
the first substrate, as required by claims 1 and 12. (Ans. 3.)
Accordingly, because the Examiner has failed to present a prima facie
case of obviousness, the rejection of independent claims 1 and 12 is
reversed. Dependent claims 3, 4, 6—11, and 14 stand with claims 1 and 12.
Rejection No. 2
Independent claim 16 includes limitations similar to claims 1 and 12
(Appeal Br. 16), and Appellants rely on the same arguments advanced in
connection with Rejection No. 1. (Appeal Br. 11—12.) Accordingly, claim
16 is nonobvious for the reasons set forth above regarding claims 1 and 12.
Claims 5, 15, and 20 are nonobvious because the respective claims on which
they depend are nonobvious. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988). Accordingly, the rejection of claims 5, 15, 16, and 20 is reversed.
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Application 12/832,346
Conclusions of Law
A preponderance of evidence of record fails to support the Examiner’s
rejection of claims 1 and 12 for obviousness. Dependent claims 3, 4, 6—11,
and 14 stand with claims 1 and 12.
A preponderance of evidence of record fails to support the Examiner’s
rejection of claims 5, 15, 16, and 20 for obviousness.
SUMMARY
We reverse the rejections of all claims on Appeal.
REVERSED
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