Ex Parte Graskov et al

Patent Trial and Appeal Board

Nov 14, 2013

12051134 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HENNING GRASKOV,
HENRIK EGESBORG HANSEN,
MICHAEL EILERSEN, and
STEFFEN LAV
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Appeal 2011-011625
Application 12/051,134
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Henning Graskov, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1 and 19. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

Appeal 2011-011625
Application 12/051,134
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of controlling data information between two
portable handheld medical apparatuses, wherein the apparatuses
perform a first operation and a second operation, the method
comprising:
providing portable handheld apparatuses comprising:
a first apparatus for performing the first operation, and
a second apparatus comprising a drug administration device for
performing the second operation,
wherein each apparatus provides for at least one of storing,
transmitting, receiving, processing and displaying data information,
and wherein the two apparatuses have a number of interrelated
positions during normal use, and wherein the method further
comprises controlling data information between two portable
handheld medical apparatuses by:
• automatically storing at least first data information relevant to
said first operation in said first apparatus,
• automatically storing at least second data information relevant
to said second operation in said second apparatus, and
• automatically transmitting, via short-range communications
means, data information relevant to at least one of said first and
second operations between said first and second apparatuses

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 11, 2011) and Reply Brief (“Reply Br.,” filed Jun. 16, 2011),
and the Examiner’s Answer (“Answer,” mailed Apr. 18, 2011).
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when said apparatuses are mutually positioned in one of said
number of interrelated positions.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Brown
West

US 6,270,455 B1
US 2002/0013518 A1
Aug. 7, 2001
Jan. 31, 2002
The following rejection is before us for review:
1. Claims 1-36 are rejected under 35 U.S.C. §103(a) as being
unpatentable over West and Brown.2

ISSUE
Did the Examiner err in rejecting claims 1-36 as obvious over the
cited prior art combination?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

2 The Examiner presents the statement of the rejection as applying to claims
1-36. See Ans. 4. The Appellants have stated that claims 2-18 and 20-36
were cancelled by an amendment (App. Br. 3) and the Examiner appears to
confirm that intention (Ans. 2). But there is no indication on the record
before us that the amendment canceling these claims was in fact entered.
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ANALYSIS
The Appellants argued claims 1 and 19 as a group (App. Br. 9-14).
We select claim 1, supra, as the representative claim for this group, and
remaining claim 19 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
We begin by construing claim 1. Claim 1 is drawn to a process
comprising two steps.
In the first step, two portable handheld apparatuses are provided. A
first apparatus performs a first operation and a second apparatus performs a
second operation and comprises a drug administration device. Both
apparatuses provide for at least one of storing, transmitting, receiving,
processing and displaying data information, and have a number of
interrelated positions during normal use.
In the second step, data information between the two portable
handheld apparatuses is controlled. This is accomplished by
• automatically storing at least first data information relevant to
said first operation in said first apparatus,
• automatically storing at least second data information relevant
to said second operation in said second apparatus, and
• automatically transmitting, via short-range communications
means, data information relevant to at least one of said first and
second operations between said first and second apparatuses
when said apparatuses are mutually positioned in one of said
number of interrelated positions.
The Examiner’s position is that West discloses all the claim features
but for the second apparatus comprising a drug administration device, for
which Brown is relied upon. See Ans. 5. The Examiner found that
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it would have been obvious to one of ordinary skill in the art to
modify the method of West with the teaching of Brown to
include using an apparatus comprising a drug administration
device [because] [a]s suggested by Brown, one would have
been motivated to include this feature to provide an apparatus
for electronically recording an injection dose delivered to a
patient, and to provide a drug dose measurement and patient
monitoring apparatus that may be easily operated and carried by
a user. (col. 4, lines 45-60).
Ans. 5-6.
The Appellants challenge the rejection on the grounds that (a) West
and Brown “fail to disclose at least ‘automatically storing’ data in the
first/second apparatus” (App. Br. 10-11); (b) “West and Brown “fail to
disclose at least ‘transmitting’ data between two portable apparatus”” (App.
Br. 12-13); and (c) “there is no ‘clear articulation of the reasons(s) why the
claimed invention would have been obvious’” (App. Br. 13-14).
The first ground is unpersuasive as to error in the rejection. The
Appellants take issue with the Examiner’s reliance on West’s disclosure of
patient monitors as corresponding to the handheld portable monitors as
claimed. But the Appellants do not adequately explain the difference.
West’s patient monitors are, as claimed, portable handheld
apparatuses, with each performing an operation and both collect, transmit,
and display data information, and have a number of interrelated positions
during normal use. This is plainly evident by looking at Figure 4, for
example.
The Appellants argue that the West monitors do not automatically
store data. But West (para. [0036]) discloses that the monitors “collect vital
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signs data.” This collected data is sent to a central monitoring station. In
collecting the data, the monitors must necessarily store the data prior to
transmission. See para. [0079] for further details and para. [0074] which
describes the monitors having a memory device.
The Appellants further argue that “[t]here is no figure or description
showing a communication between two patient monitors, every example in
WEST discloses an intermediary central station (25).” App. Br. 11. But the
claim as drafted does not require a direct communication between the two
portable apparatuses. It is sufficient to meet the claim that one apparatus is
transmitting information relevant to it between the two apparatuses. The
claim states: “automatically transmitting, via short-range communications
means, data information relevant to at least one of said first and second
operations between said first and second apparatuses when said apparatuses
are mutually positioned in one of said number of interrelated positions”
(claim 1, emphasis added).
To the extent that the Appellants are arguing that the central station
does not act as an intermediary that communicates with more than one
monitor, we read West as suggesting otherwise. See, e.g., para. [0113] (“In
the event the primary central station determines that another patient monitor
is monitoring the same patient, an alarm or other indication may be
displayed at the primary central station and/or the patient monitor so that a
different patient ID may be selected.”).
The second ground is also unpersuasive as to error in the rejection.
The Appellants argue that the cited prior art does not disclose “automatic
communication between portable handheld apparatuses.” App. Br. 12.
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The Appellants begin by arguing that the claimed method involves
“handheld” portable apparatuses which “provides the appropriate degree of
size to the term [“portable”]” (App. Br. 12). But West’s patient monitors
appear to be “handheld” and the scope of claim terms “handheld” and
“portable” as reasonably broadly construed appear to cover it. See West, fig.
5.
The Appellants further argue that the cited prior art fails to disclose
automatic transmission between the two handheld portable apparatuses. As
to transmission between the apparatuses, for the reasons explained earlier,
West discloses transmission of information between patient monitors, albeit
indirectly.
As to automatic transmission, the ordinary and customary meaning of
the term “automatic” is an action done without conscious thought. Given the
computerized nature of West’s patient monitors and the manner with which
these devices monitor data and transmit the collected data, one of ordinary
skill in the art would understand the West apparatus to perform
automatically as that term is used in the claim and as one of ordinary skill
would reasonably broadly construe it.
The third ground is also unpersuasive as to error in the rejection. The
Appellants argue that “the Final Rejection is silent as to the reasoning why
one of ordinary skill in the art would make such a modification [i.e., include
Brown’s drug administration device in West].” App. Br. 13. We disagree.
The Examiner very clearly provided an apparent reasoning with
logical underpinning for the modification. See Ans. 5-6. The Appellants also
argue that there is no expectation of success that the modification would lead
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one of ordinary skill to the claimed method. We disagree.
The claimed method employs two apparatuses, one of which
comprises a drug administration device. In our view, one of ordinary skill in
the art with West and Brown in hand would be led, as expected, to a method
employing patient monitors that includes a drug administration device, not
just to a method employing two patient monitors (West). The Appellants
have not come forward with sufficient reasoning or objective evidence
showing, instead, unexpected results for the claimed combination.
Accordingly, for the foregoing reason, we are not persuaded as to
error in the rejection.
CONCLUSION
The rejection of claims 1-36 under 35 U.S.C. §103(a) as being
unpatentable over West and Brown is affirmed.

DECISION
The decision of the Examiner to reject claims 1-36 is affirmed.

AFFIRMED

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