11754541 (P.T.A.B. Aug. 5, 2013)

Ex Parte Matthiessen et al

Patent Trial and Appeal BoardAug 5, 2013

11754541 (P.T.A.B. Aug. 5, 2013)

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. 11/754,541 05/29/2007 Hans Matthiessen 72497 7594 23872 7590 08/05/2013 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER MATTER, KRISTEN CLARETTE ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 08/05/2013 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 HANS MATTHIESSEN, DIETER WEISMANN, and MARCUS EGER ________________ Appeal 2011-012929 Application 11/754,541 Technology Center 3700 ________________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012929 Application 11/754,541 2 SUMMARY Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-6, 10, 13-18, 22-24, 27, and 28.1 Specifically, claims 1, 2, 4-6, 14, 15, 17, 18, 22, and 28 stand rejected as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Wenkebach et al. (US 2003/0196663 A1, October 23, 2003) (“Wenkebach”). Claims 3 and 16 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Wenkebach and Loeb et al. (US 2005/0075531 Al, April 7, 2005) (“Loeb”). Claims 10, 23, and 24 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Wenkebach and Gebelein, Jr. (US 3,651,460, March 21, 1972) (“Gebelein”). Claims 13 and 27 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Wenkebach and Jafari et al. (US 6,626,175 B2, September 30, 2003) (“Jafari”). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of rejection. NATURE OF THE CLAIMED INVENTION Appellants’ invention is directed to a device for supplying a patient with breathing gas, in which an initially high initial pressure Paw(t=0) applied from the outside is automatically lowered by means of a control circuit to a lower inspiratory pressure Paw(t) as soon as a pulmonary internal pressure 1 Claims 8, 9, 11, 12, 20, 21, 25, and 26 are canceled. The Examiner’s rejection of claims 7 and 19 under 35 U.S.C. § 112 (second paragraph) and 35 U.S.C. § 103 are withdrawn. Ans. 4. Appeal 2011-012929 Application 11/754,541 3 Plung(t) threatens to exceed a predetermined pulmonary target pressure Plung,soll. Abstract. GROUPING OF CLAIMS Claim 1 is representative of the rejected claims. Claim 1 recites: 1. A device for supplying a patient with breathing gas for setting a desired pulmonary target pressure (Plung,soll), the device comprising: a breathing gas delivery means for delivering breathing gas with an inspiratory pressure (Paw(t)); internal pressure determination means for determining a pulmonary internal pressure (plung(t)) during a respiration cycle; means for setting one of the pulmonary target pressure (Plung,soll) that is desired during the phase of inspiration and the inspiratory pressure (Paw(t)) to an initial pressure (Paw(t=0)) above said pulmonary target pressure (Plung,soll), said pulmonary target pressure corresponding to a predetermined lung pressure; and control means for regulating said inspiratory pressure (Paw(t)) on the basis of said pulmonary internal pressure (Plung(t)) and said pulmonary target pressure (Plung,soll), said pulmonary internal pressure corresponding to a pressure at an interior surface of one or more lungs of the patient. App. Br. 40. Appeal 2011-012929 Application 11/754,541 4 ISSUES AND ANALYSES A. Independent claim 1 Issue Appellants argue that the Examiner erred in finding that Wenkebach discloses the limitation of claim 1 reciting “control means for regulating said inspiratory pressure (Paw(t)) on the basis of said pulmonary internal pressure (Plung(t)) and said pulmonary target pressure (Plung,soll).” App. Br. 14. We therefore address the issue of whether the evidence of record supports the position of the Examiner. Analysis Appellants argue that Wenkebach does not disclose a means for determining an internal pulmonary pressure that is established at a surface of at least one of a patient’s lungs wherein a control means regulates an inspiratory pressure of a breathing gas based on the determined internal pulmonary pressure. App. Br. 14. According to Appellants, Wenkebach only discloses providing a brief disturbance in a breathing gas supply during expiration to determine the muscle pressure of a patient, wherein the breathing gas supply is increased or decreased based on the patient's muscle pressure. App. Br. 14-15. Appellants contend that Wenkebach fails to provide any disclosure of a control means that regulates breathing gas pressure based on a desired pulmonary target pressure and a pressure operative at a surface of a patient's lungs as claimed. App. Br. 15. The Examiner responds that the pulmonary internal pressure recited in claim 1 is merely an internal pressure “corresponding” to a pressure at an interior surface of the lungs. Ans. 11. The Examiner finds that Wenkebach Appeal 2011-012929 Application 11/754,541 5 discloses determining airway pressure (PAW), breathing gas flow (d/dt V), resistance (RL), and compliance (C). Id. The Examiner finds that, from these determined values, Wenkebach discloses that another airway pressure is calculated (PAWc) and subtracted from the first airway pressure (PAW) to determine a muscle pressure (PMUS). Id. The Examiner finds that Wenkebach discloses that the breathing gas pressure is increased and/or decreased as PMUS deviates from a pulmonary target pressure (Po). Id. The Examiner further finds that, since PMUS = PAWc - PAW, PMUS therefore corresponds to an internal pulmonary pressure. Ans. 11. According to the Examiner, regardless of how internal airway pressure is directly being measured by Wenkebach, the airway pressure is going to directly relate to the pressure at an interior surface of one or more lungs of a patent [sic]. Id. It is the Examiner’s position, therefore, that Wenkebach discloses determining a pulmonary internal pressure (PMUS) “‘corresponding to a pressure at an interior surface of one or more lungs of the patient’ as required by the claim language.” Id. We are not persuaded by the Examiner’s reasoning. Wenkebach discloses that: The muscle pressure PMUS, i.e., the percentage of the airway pressure caused by the patient's own effort, is subsequently determined as the difference from the calculated airway pressure PAWc and the actually measured airway pressure PAW. The control proper is now performed as a function of the muscle pressure PMUS determined. The at least one parameter of the breathing gas supply is now changed such that the breathing gas supply is increased during the subsequent phases of inspiration when the muscle pressure PMUS is above a set point Po, and the at least one parameter of the breathing gas supply is changed such that the breathing gas supply is reduced during the subsequent phases of inspiration when the Appeal 2011-012929 Application 11/754,541 6 muscle pressure PMUS is blow the set point Po until the muscle pressure PMUS reaches the set point Po. Wenkebach, ¶ [0011] (emphasis added). Wenkebach further discloses that: [T]he muscle pressure PMUS is a meaningful value when information is to be obtained on the patient’s respiratory efforts. If the muscle pressure PMUS is maintained at a preset value, which is usually zero or very low in practice, it is guaranteed in this manner that the patient must make only little respiratory effort of his own and the so-called “ventilator fighting” is avoided. Wenkebach, ¶ [0016]. Thus, Wenkebach discloses that PMUS is the amount of musculature effort exerted by a patient whose breathing is assisted by a ventilator. While this is undoubtedly related to the air pressure in the lungs, Wenkebach is not directed to calculating that pressure, but rather the patient’s contribution to a portion of that pressure. Wenkebach, ¶ [0011]. The Examiner does not point to, nor can we find, any disclosure of Wenkebach that teaches the calculation of internal pulmonary pressure. A claim is anticipated under 35 U.S.C. § 102(b), when a single prior art reference discloses, either expressly or inherently, each and every limitation of the claim. See Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992). In the instant appeal, we find that the Examiner has failed to present a prima facie case that Wenkebach discloses the limitation of claim 1 reciting “control means for regulating said inspiratory pressure (Paw(t)) on the basis of said pulmonary internal pressure (Plung(t)) and said pulmonary target pressure (Plung,soll).” We consequently reverse the Examiner’s rejection of claim 1. Appeal 2011-012929 Application 11/754,541 7 B. Independent claims 14 and 28 Appellants make essentially identical arguments with respect to independent claims 14 and 28, viz., that Wenkebach fails to disclose determination of the internal pulmonary pressure, (Plung(t)). App. Br. 20, 26. For the reasons set forth supra, we agree with Appellants’ reasoning and reverse the Examiner’s rejection of claims 14 and 28. C. Dependent claims 2-6, 10, 13, 15-18, 22-24, and 27 Dependent claims 2-6, 10, 13, 15-18, 22-24, and 27 each depend from independent claims 1, 14, or 28. Because, for the reasons we have set forth supra, we find that the Examiner erred in finding that Wenkebach anticipates the limitations of claim 1, 14, and 28, we likewise reverse the rejections of dependent claims 2-6, 10, 13, 15-18, 22-24, and 27. NEW GROUND OF REJECTION We enter the following new ground of rejection for independent claim 1 under the provisions of 37 C.F.R. § 41.50(b). Claim 1 is rejected as unpatentable for failing to meet the requirements of 35 U.S.C. § 112(f). Section 112(f) states (in relevant part): An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112(f). Appeal 2011-012929 Application 11/754,541 8 Claim 1 recites, in relevant part: control means for regulating said inspiratory pressure (Paw(t)) on the basis of said pulmonary internal pressure (Plung(t)) and said pulmonary target pressure (Plung,soll), said pulmonary internal pressure corresponding to a pressure at an interior surface of one or more lungs of the patient. App. Br. 40. The limitation’s “control means for” language, with the accompanying functional language, is unaccompanied by language reciting the structure necessary to perform the recited function of the limitation signifies that the claim is drafted in “means-plus-function” format. MPEP § 2181. We therefore construe the claim term “control means for” to cover only structures actually disclosed in the specification and equivalents. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). We are unable to discern any structure in Appellants’ Specification that corresponds to, or describes, the “control means” recited in claim 1. We therefore find that the limitation is not modified by language defining sufficient structure, material, or acts for achieving the specified function, and therefore find that the limitation does not meet the requirements of 35 U.S.C. § 112(f). See Donaldson, 16 F.3d at 1195. We therefore enter a new ground of rejection for claim 1. We have entered the new grounds only for independent claim 1 and leave it to the Examiner to evaluate the patentability of the other claims in view of Appellants’ Specification. DECISION The Examiner’s rejection of claims 1, 2, 4-6, 14, 15, 17, 18, 22, and 28 under 35 U.S.C. § 102(b) is reversed. Appeal 2011-012929 Application 11/754,541 9 The Examiner’s rejection of claims 3, 10, 13, 16, 23, 24, and 27 under 35 U.S.C. § 103(a) is reversed. We have also entered a new ground of rejection under 35 U.S.C. § 112(f) for claim 1. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). REVERSED 37 C.F.R. § 41.50(b) msc