Ex Parte Kopperschmidt

Patent Trial and Appeal Board

Oct 24, 2013

11128088 (P.T.A.B. Oct. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/128,088 05/11/2005 Pascal Kopperschmidt 2565/131 7098
26646 7590 10/24/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
BASS, DIRK R
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
10/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PASCAL KOPPERSCHMIDT
____________

Appeal 2012-004611
Application 11/128,088
Technology Center 1700
____________

Before HUBERT C. LORIN, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004611
Application 11/128,088
2
On February 28, 2011, the Examiner finally rejected claims 7-12 and
19-25 of Application 11/128,088 under 35 U.S.C. § 102(b) as anticipated or
under 35 U.S.C. § 103(a) as obvious. Appellant1 seeks reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’088 application describes apparatus that are used for the
extracorporeal treatment of blood, i.e., hemodialysis, hemofiltration, or
hemodiafiltration (a combination of hemodialysis and hemofiltration).
Spec. 1-2. During these treatment processes, a portion of the plasma water
is removed from the treated blood. Id. at 2. This fluid is replaced by the
addition of substitution fluid to the blood. Id. To properly monitor the
treatment process, it is necessary to know whether the substitution fluid is
added to the blood before or after the dialyser or filtration unit. Id. The
’088 application describes blood treatment machines that automatically
detect whether the substitution fluid is added to the blood before or after the
dialyser or filtration unit.
Claims 7 and 19 are the ’088 application’s only independent claims
and are reproduced below:
7. A device for the extracorporeal treatment of blood
comprising:

1 Fresenius Medical Care Deutschland GMBH is identified as the real party
in interest. (App. Br. 2.)
Appeal 2012-004611
Application 11/128,088
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a dialyser or filter divided by a membrane into a first chamber
and a second chamber;
an extracorporeal blood stream including the first chamber;
a fluid system including the second chamber;
a substituate pump connected to a substitution fluid line leading
to the extracorporeal blood stream upstream or downstream of
the dialyser or the filter; and
a device configured to determine if a substitution fluid is
supplied upstream or downstream of the dialyser or filter,
wherein the device comprises:
a control unit for at least one of shutting off the substituate
pump and starting up the substituate pump;
a measuring unit for measuring the pressure in the
extracorporeal blood stream downstream of the dialyser or the
filter; and
a means for detecting a supply of substitution fluid upstream or
downstream of the dialyser or the filter by determining an
increase or decrease in the pressure after at least one of the
shutting off the substituate pump which has been previously
started up and the starting up the substituate pump which has
been previously shut off.
(App. Br. 18 (Claims App’x) (emphasis added).)
19. A device for the extracorporeal treatment of blood
comprising:
a dialyser or filter divided by a membrane into a first chamber
and a second chamber;
an extracorporeal blood stream including the first chamber;
a fluid system including the second chamber;
a substituate pump that produces an oscillating pressure signal,
said substitute pump arranged in a substitution fluid line, said
substitution fluid line leading to the extracorporeal blood
stream upstream or downstream of the dialyser or the filter; and
Appeal 2012-004611
Application 11/128,088
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a device configured to determine if a substitution fluid is
supplied upstream or downstream of the dialyser or filter,
wherein the device comprises:
a measuring unit for measuring the pressure in the
extracorporeal blood stream downstream of the dialyser or the
filter; and
an evaluation unit comprising:
a means for performing a frequency analysis of the
oscillating pressure signal;
a means for obtaining a value attributable to the
substituate pump based on the frequency analysis;
a means for comparing the value attributable to the
substituate pump to a characteristic reference signal; and
a means for determining if the substitution fluid is
supplied upstream or downstream of the dialyser or the
filter by a comparison of the value attributable to the
substituate pump to the characteristic reference signal.
(Id. at 20 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 7-12 were rejected under 35 U.S.C. § 102(b) as anticipated
by Zhang.2 (Ans. 4.)
2. Claims 19-25 were rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zhang and Gross.3 (Ans. 6.)

2 DE 102 13 179 C1, published Aug. 7, 2003. All citations to Zhang are to
the translation that is of record in this application.
3 U.S. Patent Application Publication No. 2002/0174721 A1, published Nov.
28, 2002.
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Application 11/128,088
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DISCUSSION
For the following reasons, we reverse the Examiner’s rejections of the
’088 application’s claims.
Rejection 1. The Examiner rejected claim 7 as anticipated by Zhang.
(Ans. 4-6, 9-12.) We reverse this rejection because the Examiner has
misconstrued the claim. Due to this error, the Examiner’s rejection of claim
7 is erroneous because the Examiner has not established that the prior art
describes every element of claim 7. Because claims 8-12 depend from
claim 7, we also must reverse the rejection of these claims as anticipated by
Zhang.
The dispute between Appellant and the Examiner regarding claim 7
centers upon the following claim language:
a means for detecting a supply of substitution fluid upstream or
downstream of the dialyser or the filter by determining an
increase or decrease in the pressure after at least one of the
shutting off the substituate pump which has been previously
started up and the starting up the substituate pump which has
been previously shut off.
Claim 7 (emphasis added). The Appellant and the Examiner agree that this
language must be construed according to 35 U.S.C. § 112, ¶ 6. (App. Br. 9;
Ans. 9.)
“To anticipate a claim reciting a means-plus-function limitation, the
anticipatory reference must disclose the recited function identically.”
Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1372 (Fed.
Cir. 2002); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931,
934 (Fed. Cir. 1987) (holding that a means-plus-function limitation covers
structure that performs the identical function and is the same structure
described in the specification or an equivalent thereof). Therefore, the
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Application 11/128,088
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proper identification of the claimed function is a necessary predicate to the
anticipation analysis. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331,
1339 (Fed. Cir. 2003) (comparing properly construed claims with the prior
art is necessary in an anticipation analysis).
As the Federal Circuit has explained:
The court must construe the function of a means-plus-function
limitation to include the limitations contained in the claim
language, and only those limitations. It is improper to narrow
the scope of the function beyond the claim language. It is
equally improper to broaden the scope of the claimed function
by ignoring clear limitations in the claim language.
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed.
Cir. 2002) (citations omitted, emphasis added); see also Lockheed Martin
Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003).
In this case, however, the Examiner argues that the italicized portion
of the claim language is not part of the recitation of the function of the
claimed means but, rather, is a statement of intended use. (Ans. 5, 9.) In so
doing, the Examiner has impermissibly broadened the claim’s scope.
When the prior art is considered with the proper claim construction in
mind, it is clear to us that Zhang does not perform the claimed function and,
therefore, cannot anticipate claim 7 of the ’088 application. Because Zhang
does not anticipate claim 7, it also does not anticipate claims that depend
from claim 7. Accordingly, we reverse the rejection of claims 7-12 of the
’088 application.
Rejection 2. The Examiner rejected claims 19-25 of the ’088
application as obvious over the combination of Zhang and Gross. We also
reverse this rejection.
Appeal 2012-004611
Application 11/128,088
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Claim 19, the only independent claim subject to this rejection, is
directed to a blood treatment apparatus that determines whether the
substitution fluid is added to the blood before or after the dialyser and/or the
filtration unit by performing a frequency analysis of the oscillating pressure
signal present in the apparatus, obtaining a value attributable to the
substituate pump from the frequency analysis, and comparing that value with
a characteristic reference signal.
The Examiner rejected claim 19 as obvious over the combination of
Zhang and Gross. In making this rejection, the Examiner relies upon an
evaluation unit described in Zhang as describing or suggesting the means for
obtaining a value attributable to the substituate pump and the means for
comparing that value to a characteristic reference signal. (Ans. 7.) The
Examiner concedes that Zhang does not disclose a means for performing a
frequency analysis. (Id.) The Examiner relies upon Gross for its disclosure
of a facility for Fourier analysis of pressure waves in a system for the
extracorporeal treatment of blood. (Id.) The Examiner then argues that
[I]t would have been obvious to a person of ordinary skill to use
the facility for a fourier [sic] analysis to compare the pressure
signals of the pumps in the means for comparing the pressure
signals in the evaluation unit of Zhang. As the substitution of
the analysis and evaluation of pressure signals in an
extracorporeal circuit of Gross with the comparing means of
Zhang is no more than mere application of a known technique
to a piece of prior art ready for improvement. [sic]
(Id. at 7-8.)
This argument, however, is not persuasive for at least two reasons.
First, the Examiner misunderstands the role played by Zhang’s
evaluation unit. As Zhang describes the evaluation unit’s function, it
determines whether the substitution fluid is being added to the blood before
Appeal 2012-004611
Application 11/128,088
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or after the treatment unit by comparing data it receives from a monitoring
unit with a prespecified limit. Zhang ¶¶ [0039], [0040]. Zhang’s evaluation
unit, therefore, cannot describe or suggest the claimed “means for obtaining
a value attributable to the substituate pump based on the frequency
analysis.” The Examiner’s conclusion regarding obviousness is, therefore,
based upon an erroneous factual determination.
Second, and more importantly, the Examiner has not provided any
explanation why, in the absence of hindsight, a person of ordinary skill in
the art would have modified Zhang’s device to incorporate Gross’s facility
for conducting a Fourier analysis of the frequency of pressure waves
observed in the apparatus for the purpose of determining whether the
substituate is added to the blood before or after it passes through the
treatment unit. Gross uses its frequency analysis to detect the presence of
constrictions in the tubing that comprises the extracorporeal blood circuit.
Gross ¶¶ [0002]-[0003], [0009]. The Examiner has not identified any
description or suggestion in the prior art that a frequency analysis could be
used to determine any property of the substituate supply system. The
Examiner’s conclusory statement that the person of ordinary skill in the art
would have made such a change “to produce a sensitive system for the
detection of changes in the pressure signals in an extracorporeal circuit” is
insufficient. (Ans. 7.) See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).
Because claim 19 is not obvious over the combination of Zhang and
Gross, claims 20-25, which depend from claim 19, also are not obvious. We
Appeal 2012-004611
Application 11/128,088
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therefore reverse the Examiner’s rejection of claims 19-25 of the ’088
application.
CONCLUSION
For the foregoing reasons, we reverse the rejections of claims 7-12 as
anticipated by Zhang and of claims 19-25 as obvious over the combination
of Zhang and Gross.

REVERSED

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