Schwaibold, Matthias

Patent Trials and Appeals Board

Dec 27, 2019

14670737 - (D) (P.T.A.B. Dec. 27, 2019)

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.
14/670,737 03/27/2015 Matthias Schwaibold 6580-P50218 4081
13897 7590 12/27/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
CHIUSANO, ANDREW TSUTOMU
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHIAS SCHWAIBOLD
____________

Appeal 2019-001315
Application 14/670,737
Technology Center 2100
____________

Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN,
SCOTT B. HOWARD, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, and 4–16, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as
LOEWENSTEIN MEDICAL TECHNOLOGY S.A. Appeal Br. 3.

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STATEMENT OF CASE
Introduction
Appellant’s Specification relates to a device for artificial respiration.
Spec. page 1, line 10.
Representative Claims
Representative claims 1 and 15 under appeal read as follows:
1. A device for artificial respiration, wherein the device comprises
a blower connected to a control, both the control and the blower being
arranged in a housing and the control being connected to at least one
indicating device and also at least one operating element, wherein the
indicating device is formed as a display that has a touchscreen function
and, using a symbol-based operating structure, can be used as an input
device in such a way that respective symbols visualize an assigned
function and that a hierarchically structured operating capability is
generated by the control, and wherein a possibility for selecting different
languages is provided for a patient menu and an expert menu, a language
for the menu concerned being selected by an input button and the input
button being connected by logic circuitry to a language selection menu,
in which the user can select the language, the input button being also
connected by logic circuitry to a language memory wherein, after
confirmation of a language selected, this language is loaded from the
memory and used.

15. A method for indicating user interface information for a
respirator comprising a blower connected to a control, both the control
and the blower being arranged in a housing, and the control being
connected to at least one indicating device and also at least one operating
element, wherein the method comprises providing the indicating device
in the form of a display that has a touchscreen function and, using a
symbol-based operating structure, can be used as an input device in such
a way that respective symbols visualize an assigned function and that a
hierarchically structured operating capability is generated by the control,
the touchscreen function providing a possibility for selecting different
languages for a patient menu and an expert menu, wherein a language for
the menu concerned can be selected by an input button and the input
button is connected by logic circuitry to a language selection menu, in
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which the user can select the language, the input button being also
connected by logic circuitry to a language memory and wherein, after
confirmation of a language selected, this language is loaded from the
memory and used.

References and Rejections on Appeal
Claims 15 and 16 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the applicant
regards as the invention.
Claims 1, 2, 4, 6, 10, and 12–16 are rejected under 35 U.S.C. § 103 as
being unpatentable over Frame et al. (US 2015/0020801 A1; published Jan.
22, 2018) in view of Setzer et al. (US 2008/0072902 A1; published Mar. 27,
2008).
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Frame in view of Setzer as applied to claim 1 above, and further in view of
Milne et al. (US 2014/0012150 A1; published Jan. 9, 2014).
Claims 7–9 are rejected under 35 U.S.C. § 103 as being unpatentable
over Frame et al. in view of Setzer as applied to claim 1 above, and further
in view of Gejdos et al. (US 2011/0246242 A1; published Oct. 6, 2011).
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Frame in view of Setzer as applied to claim 10 above, and further in view of
Brewer et al. (US 2002/0056452 A1; published May 16, 2002).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. With respect to the rejections under
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35 U.S.C. §§ 112(b) and 103(a), we agree with the Examiner’s findings and
conclusions and adopt them as our own.
Rejection under 35 U.S.C. § 112(b)
The Examiner finds:
Claims 15-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
112 (pre-AIA), second paragraph, as being indefinite. . . .
Claims 15-16 are directed toward a method, but the only
method steps are “providing the indicating device in the form of
a display” (claim 15) and “providing a number of input
buttons” (claim 16). The remainder of claims recite hardware
components and functional capabilities.

Final Act. 2.

The Examiner also finds “these claims are indefinite because they are
process claims, but it is unclear what the steps in the claim actually are, and
when infringement would occur.” Ans. 3.
Because Appellant is attempting to claim both a system and a method
for using that system, we agree with the Examiner. See IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding
invalid the following hybrid claim as covering both a system and a method:
“The system of claim 2 [including an input means] wherein the predicted
transaction information comprises both a transaction type and transaction
parameters associated with that transaction type, and the user uses the input
means to either change the predicted transaction information or accept the
displayed transaction type and transaction parameters.” (emphasis omitted));
see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1318 (Fed. Cir. 2011). In each of these cases, the Federal Circuit held
claims indefinite for combining two classes of invention.
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This rule is well recognized and has been incorporated into the MPEP
§ 2173.05(p)(II) (“A single claim which claims both an apparatus and the
method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or
pre-AIA 35 U.S.C. 112, second paragraph.”).
Accordingly, we do sustain the Examiner’s rejection of claims 15 and
16 under 35 U.S.C. § 112(a).
Rejections under 35 U.S.C. § 103
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Br. 8–16; Reply Br. 2–3) that the Examiner has erred,
but we disagree with Appellant’s arguments. The Examiner has provided a
comprehensive response, supported by sufficient evidence, to each of the
contentions raised by Appellant. See Ans. 3–4. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (id.). We
highlight the following points for emphasis.
In rejecting claim 1, the Examiner finds Frame teaches all the recited
claim limitations except for “wherein the indicating device is formed as a
display that has a touchscreen function,” for which the Examiner relies on
Setzer. See Final Act. 4–5. The Examiner finds the combination would
have been obvious to one of ordinary skill in the art “having the teachings of
Frame and Setzer before him at the time of filing, to modify the indicating
device as disclosed by Frame to include a touchscreen function as taught by
Setzer.” Id. at 5. The examiner further finds “[o]ne of ordinary skill in the
art would be motivated to modify the indicating device of Frame to include
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the touchscreen function of Setzer because it provides an easier to use
ventilator interface (Setzer, paras. 02–03).” Id..
Appellant contends
the device recited in instant claim 1 provides the possibility of
separately selecting (1) a language for a patient menu and (2) a
language for an expert menu. This is illustrated in e.g., instant Figure
15 which shows a possible embodiment where the virtual buttons for
the (previously selected) language for the expert and the
(previously selected) language for the patient are side by side.
Switching between the two languages merely requires touching the
virtual button for the expert or touching the virtual button for the
patient.

Reply Br. 3 (emphasis ours).
The Examiner finds, and we agree

Appellant’s argument rests on features that are not actually in
the claim. In particular, Appellant argues that, “[t]here is
nothing in the above passage of FRAME that suggests that
there are two different language menus . . . the device recited in
instant claim 1 provides the possibility of separately selecting
(1) a language for a patient menu and (2) a language for an
expert menu” App. Br. 10. However, the claim simply states,
“providing a possibility for selecting different languages for a
patient menu and an expert menu.” Frame discloses menus that
are available to a patient and another control menu available to
an expert like the owner or distributor of the medical device.
Frame, ¶ [0116]. Frame also discloses that the language of the
device can be changed. Frame, ¶ [0119]. Thus, this Frame
provides the possibility of selecting the language for both types
of menus.

Ans. 4.
In other words, with respect to Appellant’s contention about
“separately selecting,” we agree with the Examiner that the broadest
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reasonable interpretation of the claim language, consistent with the
Specification, does not preclude Frame’s menus available to a patient and
another menu available to an expert.
Therefore, Appellant’s arguments do not persuade us of error in the
Examiner’s position with respect to the rejection of independent claims 1
and 15, as well as the dependent claims, which are not argued separately.
See Appeal Br. 14–16. We, therefore, sustain the 35 U.S.C. § 103 rejections
of claims 1, 2, and 4–16.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C §  Reference(s)/Basis Affirmed Reversed
15, 16 112(b)  Indefiniteness 15, 16
1–2, 4, 6,
10, 12–16
103 Frame, Setzer 1, 2, 4, 6, 10,
12–16

5 103 Frame, Setzer, Milne 5

7–9 103 Frame, Setzer, Gejdos 7–9

11 103 Frame, Setzer, Brewer 11

Outcome

1, 2, 4–16

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)(iv).

AFFIRMED