Schwaibold, MatthiasDownload PDFPatent Trials and Appeals BoardDec 27, 201914670737 - (D) (P.T.A.B. Dec. 27, 2019) Copy Citation 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. Appeal 2019-001315 Application 14/670,737 2 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 Appeal 2019-001315 Application 14/670,737 3 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 Appeal 2019-001315 Application 14/670,737 4 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. Appeal 2019-001315 Application 14/670,737 5 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 Appeal 2019-001315 Application 14/670,737 6 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 Appeal 2019-001315 Application 14/670,737 7 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 Copy with citationCopy as parenthetical citation