Ex Parte Mirisoloff

Patent Trials and Appeals Board

Jan 24, 2019

13215610 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/215,610 08/23/2011
29149 7590 01/28/2019
LEE & HA YES, P.C.
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Jason Lee Mirisoloff
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.
10078.US01/W053-0009US 2536
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LEE MIRISOLOFF
Appeal2018-000237 1
Application 13/215,610
Technology Center 3700
Before: LINDA E. HORNER, JAMES P. CAL VE, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 21-24, 26-31, and 33-36. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief indicates that Welch Allyn, Inc. is the real party in
interest. Appeal Br. 5.
Appeal2018-000237
Application 13/215,610
CLAIMED SUBJECT MATTER
The claims are directed to a system for unassisted blood pressure
measurement. Spec. ,r 1. Claim 1, reproduced below with emphasis added,
is illustrative of the claimed subject matter:
1. A blood pressure cuff, comprising:
a substantially cylindrical sleeve configured to accept a
limb of a patient, the sleeve including
a central axis,
an inflatable bladder having a first end, and a second
end disposed opposite the first end, wherein an inner surface of
an exterior of the bladder comprises at least a portion of an
exterior surface of the sleeve, and
an elastic panel including first and second
outermost ends extending substantially parallel to the central
axis, the elastic panel being directly connected to a surface of the
bladder intermediate the first and second ends of the bladder
such that the first and second outermost ends contact the bladder;
and
a tail connected to the second end of the bladder, the tail
including a longitudinal axis disposed transverse to the central
axis of the sleeve.
Appeal Br. 49 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schenker
Hurwitz
Vivenzio
US 3,279,459 Oct. 18, 1966
US 3,669,096 June 13, 1972
US 2010/0298725 Al Nov. 25, 2010
REJECTIONS
I. Claim 36 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Application 13/215,610
II. Claims 1-5, 21-24, 26-31, and 33-36 are rejected under 35
U.S.C. § 103(a) as unpatentable over Vivenzio and Schenker, alone, or with
evidence from Hurwitz.
OPINION
Rejection I, Written Description
The Examiner finds that the original disclosure does not provide
adequate written description for the requirement that "the elastic panel [ of
claim 1] is made from a first recyclable material and the bladder [ of claim 1]
is made from a second material different from the first material," as set forth
in dependent claim 36. Final Act. 3 (quoting claim 36). In the Answer, the
Examiner explains that "the specification as filed only [ uses the term
'recyclable'] once (paragraph 17), [and] it is unclear how support can be
concluded based on this passage or the laundry list of materials in paragraph
2 8 to show possession of the scope that the elastic panel is a different
recyclable material than the material of the bladder structure." Ans. 3. The
Examiner finds that the Specification does not set forth which of the
disclosed "laundry lists" of materials is recyclable. See Ans. 4.
Appellant contends that support for claim 36 can be found in Figure 2
and in paragraphs 17, 18, 25, 28, and 41 of the Specification. See Appeal
Br. 16-18. With regard to the requirement that the elastic panel be made
from recyclable material, Appellant points to paragraph 17. Appeal Br. 16-
17.
Although we appreciate the Examiner's position that the particular
combination of an elastic panel made from a recyclable material and a
bladder made from another material is not specifically set forth in the
Specification, we understand the various lists of materials discussed in
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Application 13/215,610
paragraphs 17, 18, and 28 of the Specification to mean that the elastic panel
can be made from any of the materials in its associated list, and the bladder
may be made from any of the materials in its associated list. In other words,
the Specification provides written description for many different
combinations in which the elastic panel and the bladder are made from
different materials. As for support for claiming that the material of the
elastic panel is both (i) different from the material of the bladder and
(ii) recyclable, we find that many of the combinations disclosed by the
Specification satisfy this requirement. Paragraph 17 of the Specification
explains that the bladder and the cover2 may be made from recyclable
materials, and examples of these materials include "paper, cloth, mesh,
plastics, and/or polymers such as polyproplylene or polyethelene." Claim 36
does not preclude the bladder from being made from recyclable material. In
other words, claim 36 allows for the second material (used to make the
bladder) to be recyclable, or not, but requires the first material (used to make
the elastic panel) to be a recyclable material. Thus, according to Appellant's
Specification, selecting polyethelene for the material of the elastic panel
allows selection of any of at least four other disclosed materials for use in
the bladder while satisfying the requirements of claim 3 6 that the elastic
panel and bladder are made from different materials. Accordingly, we agree
with Appellant that the original disclosure provides adequate written
description for claim 36, and we do not sustain Rejection I.
2 Paragraph 28 of the Specification teaches that the elastic panel may be
made from any of the materials disclosed for making the cover.
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Application 13/215,610
Rejection II, Obviousness of the Claimed Subject Matter
Claim 1
The Examiner finds that Vivenzio teaches many of the elements
required by claim 1, but does not teach an elastic panel directly attached to
the bladder, as recited. Final Act. 5. The Examiner relies on the teachings
of Schenker or those of Schenker and Hurwitz (regarding the location of the
connection) to remedy this deficiency. Id. at 5-6 (citing Schenker, 1:29--45,
3:8-19, Figs. 2, 3, 8, 10 and Hurwitz, Figs. 1, 3, 4, 5). The Examiner
reasons that adding an elastic panel ( as taught by Schenker) to the structure
of Vivenzio would be a combination of "prior art elements according to
known methods to yield predictable results using an elastic section on a
pressure cuff in order for the same cuff to be used on differing sized arms
and to allow a patient to more easily measure his or her own blood
pressure." Final Act. 5-6. The Examiner does not find that any of the cited
references discloses the particular location of the connection between the
elastic panel and bladder, i.e., the elastic panel being directly connected to
the bladder intermediate the first and second ends of the bladder, as recited
in claim 1. Id. at 6. However, the Examiner determines that, in the
proposed combination to Vivenzio, the added elastic panel would be directly
connected to a surface of the bladder as recited in claim 1. Id.
(a)3
Appellant does not contest the Examiner's findings of fact regarding
the structure disclosed by Vivenzio, Schenker, and Hurwitz. See Appeal Br.
18-27. Instead, Appellant points out that none of the cited references
3 Appellant uses headings beginning with letters a---d to identify the
arguments made against the rejection of claim 1. See Appeal Br. 2 and 19-
25. We use the same identifiers.
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Appeal2018-000237
Application 13/215,610
discloses an elastic panel directly connected to a surface of a bladder. Id. at
19. This assertion does not address the Examiner's rejection, which does not
find that any of the references teaches an elastic panel so connected. See
Final Act. 5-6. Appellant also asserts "there are several reasons why the
Vivenzio cuff does not include, and would not be modified to include, such
an elastic panel." Id. at 19. We address these contentions below.
(b)
Appellant contends that the cuffs disclosed by Vivenzio "are either
made from a single type of material 'to facilitate recycling by having all
components classified under a single recycling code,' or the cuffs 'can be
treated with an additive that enables the sleeve member to become
biodegradable after a predetermined and finite period of time."' Appeal Br.
20 (quoting Vivenzio ,r,r 7, 44). In contrast, Appellant asserts, Schenker and
Hurwitz "both describe the use of at least two different types of materials to
facilitate expansion of the cuffs disclosed therein, and neither of these
references provides any indication that at least the stretchable ( e.g., elastic)
portion of the disclosed cuffs is made from a recyclable or biodegradable
material." Based on the above, Appellant contends that providing either a
biodegradable cuff or a recyclable cuff is an express design goal 4 of
Vivenzio and modifying the structure disclosed by Vivenzio based on the
teachings of Schenker and Hurwitz would undermine this goal. See id. at
20-22.
4 When discussing whether the proposed modification undermines a design
goal in Vivenzio, Appellant refers to MPEP § 2143.01 (V), which relates to
modifications that render a reference being modified unsuitable for its
intended purpose. See Appeal Br. 21-22; see also MPEP § 2143.01 (V).
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Application 13/215,610
In response, the Examiner finds that Vivenzio teaches using elements
other than the cuff itself, such as non-woven fabric, a film, fasteners,
adhesives, and clips that are not the same material as the cuff. Ans. 9 ( citing
Vivenzio ,r,r 9, 49). The Examiner also finds that Vivenzio teaches attaching
a stethoscope pocket that is formed of similar (not identical) material as
sheet 154 or bladder sheet 155 of Vivenzio. Ans. 10. Thus, the Examiner
finds, Vivenzio teaches "it is preferred that the cuff structures forming the
bladder be of the same material, which is a material that promotes
recyclability, not that all materials associated with the cuff structures must
be the same material as is evident from the usage of fasteners and additional
materials." Id.
In reply, Appellant contends that the Examiner improperly focuses on
whether Vivenzio prefers ( or requires) the use of a single material and does
not adequately address Appellant's contentions regarding biodegradability.
Reply Br. 6-7. Appellant reiterates that "[ m ]odifying the Vivenzio cuff to
include the materials described in either Hurwitz or Schenker would not
result in an ecologically friendly cuff, and such a combination would be
contrary to the express design goals noted in Vivenzio." Id. at 6.
We do not agree with Appellant's arguments on this point. The
Examiner's finding that Vivenzio discloses the use of adhesives, clips, and
hook and loop fasteners is supported by a preponderance of the evidence.
See Vivenzio ,r,r 9, 49. Accordingly, we agree with the Examiner's finding
that Vivenzio does not require the entire cuff to be made of a single material.
Appellant does not assert that Vivenzio requires these additional components
to be biodegradable or recyclable. Consequently, even assuming arguendo
that the elastic panel added by the Examiner would be a different material
from the material of the remainder of the cuff and that the elastic panel
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Application 13/215,610
would not be biodegradable, we do not agree that the addition of the elastic
panel would necessarily undermine an express design goal of Vivenzio.
Furthermore, to the extent that the addition of the elastic panel would
decrease the recyclability and/or biodegradability of the structure disclosed
by Vivenzio, this structure would still be able to perform its intended
function as a blood pressure cuff. In other words, the disadvantage argued
by Appellant relates to an incremental improvement in blood pressure cuffs
(biodegradability or recyclability), it does not relate to the suitability of the
structure disclosed by Vivenzio to function as a blood pressure cuff. The
disadvantage of the possible loss of this incremental improvement is
outweighed by the advantage of the Examiner's proposed modification,
specifically, allowing "the same cuff to be used on differing sized arms and
to allow a patient to more easily measure his or her own blood pressure."
Final Act. 6; see In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see
also Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
(c)
Appellant next contends that the proposed modification would
increase the "creep elongation" of the cuffs disclosed by Vivenzio to an
unacceptable level. Appeal Br. 23-24; see also Vivenzio ,r,r 5, 49
( discussing measurement accuracy and the allowable limits of creep
elongation of laminated fabric).
The Examiner points out that the limits Vivenzio imposes on creep
elongation relate to the material of the non-woven sheet discussed in
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Application 13/215,610
paragraph 49 of Vivenzio, not the entire blood pressure cuff system. Ans.
11. The Examiner also finds that the non-woven sheet need not change as a
result of the Examiner's proposed modification to provide an elastic panel in
Vivenzio's blood pressure cuff. Id.
Appellant contends that the disclosure in paragraph 49 is relevant to
the entire cuff system because the non-woven sheet spans the entire length
of this system. Reply Br. 7-8.
The Examiner has the better position on this point because the
proposed modification to include an elastic panel does not affect the creep
elongation of the non-woven sheet disclosed by Vivenzio, and, as shown in
Figure 7 of Vivenzio, cuff 100 wraps around the arm of a patient in a way
that causes cuff 100 to overlap itself. Thus, to the extent the creep
elongation discussed in paragraph 49 of Vivenzio relates to the creep
elongation of the entire cuff as asserted by Appellant, we are not apprised of
any reason the proposed modification would affect this trait. In any event,
Vivenzio describes "creep elongation" in terms of elongation occurring over
a matter of minutes. See Vivenzio ,r 49. Appellant does not adequately
explain how the immediate change in length provided by an elastic panel
that accommodates differently sized patients' arms relates to a relatively
slow ( over a time period of six minutes) creep elongation.
(d)
Appellant next contends, "Vivenzio also notes that the cuffs disclosed
therein may include a socket 110 that is configured to mate with a slotted
portion 126 of the cuff' and "modifying the cuffs described in Vivenzio to
include either the stretchable strip 36 of Schenker or the elastic fabric 8
described in Hurwitz would render at least the slotted portion 126
superfluous." Appeal Br. 25.
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Application 13/215,610
The Examiner finds that slotted portion 126 of Vivenzio and the
elastic panel added by the proposed modification have different functions,
even if they also have a function in common. Ans. 12-13. Namely, the
Examiner finds that the elastic panel enhances the ability of the patient to
use the blood pressure cuff without assistance, and the slotted portion 126
allows extension of a port through the tail of the blood pressure cuff. Id. at
13.
Echoing the argument presented in section (c), Appellant replies that
adding such components to the Vivenzio cuff would increase the elongation
characteristics of the Vivenzio cuff beyond the acceptable levels noted in
Vivenzio. Reply Br. 9. Appellant also reiterates that adding an elastic panel
would render slotted portion 126 of Vivenzio redundant. Id.
For the following reasons, we do not agree with any of Appellant's
arguments under heading (d). The Examiner proposes an improvement to
the blood pressure cuff of Vivenzio, in particular, an enhancement to how a
patient dons the cuff without assistance. Appellant does not dispute that the
Examiner's proposed modification would provide this result. Nor does
Appellant explain persuasively why the increased variability in sizes of arms
accommodated by the modified version of Vivenzio' s blood pressure cuff is
contrary to any stated goal in Vivenzio. In this regard, we see no reason as
to why, in the Examiner's proposed modification, Vivenzio's slot 126 would
not continue to function as it does in its original state.
We have considered all of Appellant's arguments in support of the
patentability of claim 1, but find them unavailing. Accordingly, we sustain
the rejection of claim 1 as unpatentable over Vivenzio and Schenker (and,
alternatively, Schenker and Hurwitz).
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Appeal2018-000237
Application 13/215,610
Claims 2-5, 21-24, 26, 29-31, 33, and 36
Appellant does not make arguments in support of the patentability of
claims 2-5, 21-24, 26, 29-31, 33, and 36 aside from those discussed above
regarding claim 1. See Appeal Br. 27. Accordingly, claims 2-5, 21-24, 26,
29-31, 33, and 36 fall with claim 1.
Claims 27, 28, 34, and 35
In support of the patentability of claims 27, 28, 34, and 35, Appellant
reiterates the same arguments discussed above. See Appeal Br. 27--46.
Accordingly, we sustain the rejection of these claims for the same reasons
discussed above.
DECISION
I. The rejection of claim 36 as failing to comply with the written
description requirement is reversed.
II. The rejection of claims 1-5, 21-24, 26-31, and 33-36 as
unpatentable over Vivenzio and Schenker, alone, or with evidence from
Hurwitz is affirmed.
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
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