Ex Parte Henry

Patent Trial and Appeal Board

Dec 1, 2014

11594415 (P.T.A.B. Dec. 1, 2014)

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.
11/594,415 11/08/2006 Donald A. Henry 10923/060 (PA-5859-RFB) 5447
48004 7590 12/01/2014
BGL/Cook - Indianapolis
BRINKS GILSON & LIONE
CAPITAL CENTER, SUITE 1100
201 NORTH ILLINOIS STREET
INDIANAPOLIS, IN 46204-4220
EXAMINER
HUNTLEY, DANIEL CARROLL
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
12/01/2014 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 DONALD A. HENRY
____________

Appeal 2012-007022
Application 11/594,4151
Technology Center 3700
____________

Before DEMETRA J. MILLS, CHRISTOPHER G. PAULRAJ, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–6, 10, 11, 14–16, 18–21, and
23–25. Appellant seeks reversal of the Examiner’s rejections, pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification generally relates to a blood flow monitor with a
visual display. (Spec. ¶ 2.) Claim 1 is representative:
1. A blood flow monitor for detecting a blood flow rate
down to zero flow, within a single blood vessel, comprising:

1 According to Appellant, the real party in interest is Cook Vascular
Incorporated. (Br. 4.)
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a transducer probe directly contactable on a single blood vessel,
a visual display, and a speaker;
a probe monitoring circuit in electrical communication with
said probe, where the probe monitoring circuit is configured to
transmit a burst signal at a predetermined first frequency and
receive a reflected signal at a second frequency;
a mixer comprising an input in electrical communication with
the probe monitoring circuit and an output in electrical
communication with a first signal path and a second signal path,
where the mixer is configured to compare the difference
between the first frequency and the second frequency to
determine a frequency shift, the frequency shift representative
of a blood flow rate within the single blood vessel, wherein the
frequency shift has a range between zero to indicate a zero flow
rate and an upper limit frequency with a threshold frequency
therebetween, where the threshold frequency is a frequency that
is at least audible in said speaker, the mixer further configured
to output a signal at a frequency of the frequency shift to each
of the first and second signal paths;
the first signal path including the speaker in electric
communication with the output of the mixer, the speaker
configured to produce an audible sound in response to the
frequency shift signal having a frequency between the threshold
frequency and the upper limit frequency to audibly indicate said
blood vessel having a blood flow rate; and
the second signal path including a signal processing circuit
comprising an input in electrical communication with the
output of the mixer and an output in electrical communication
with the visual display, where the signal processing circuit is
configured to drive the visual display with a signal in response
to the frequency shift signal having a frequency between zero
and the threshold frequency to visually indicate the blood vessel
having a blood flow,
wherein the visual display is configured to provide incremental
visual indication of the blood flow rate when said blood flow
rate is within a range from a blood flow rate associated with
said threshold frequency down to said zero flow rate.
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(Br. 41–42 (Claims App.) (emphasis added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–6, 10, 14–16, 18–21, and 23–25 are rejected under
35 U.S.C. § 103(a) as unpatentable over Moehring.2 (Ans. 5.)
2. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Moehring in view of Abend.3 (Ans. 9.)
3. Claim 1 is alternately rejected under 35 U.S.C. § 103(a) as
unpatentable over Moehring in view of Shuros.4 (Ans. 10.)
DISCUSSION
Moehring is the primary (or sole) reference for each of the three
obviousness rejections maintained on appeal by the Examiner. (See Ans. 5–
10.) Moehring generally describes an ultrasound system for monitoring
blood flow, with a graphical display presenting depth and spectrogram
information. (Moehring Abstract.) However, as the Examiner
acknowledges, Moehring “do[es] not explicitly teach the visual display is
configured to provide incremental visual indication of the blood flow rate
from a threshold frequency down to zero flow rate,” (Ans. 6), as required in
some fashion by limitations of each of independent claims 1, 14,5 and 19.6

2 U.S. Patent No. US 6,616,611 B1, issued Sept. 9, 2003.
3 U.S. Patent No. US 6,682,483 B1, issued Jan. 27, 2004.
4 U.S. Patent Application Pub. No. US 2007/0088214 A1, published Apr. 19,
2007.
5 Claim 14 recites a processing circuit, including scaling logic “configured to
generate a scaled signal capable of driving a visual display that is
incremental, the scaled signal indicative of the frequency shift in the range
between zero and the threshold frequency in order to visually represent the
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Indeed, Moehring expressly filters out low-frequency signals: “to
avoid display of spurious information, signals that may be intense but low
velocity (such as due to tissue motion) are ignored and not displayed in the
depth-mode display. . . .” (Moehring col. 4, ll. 22–26; see also id. col. 11, ll.
2–4 (providing exemplary filter cutoffs at 100 Hz, 200 Hz, and 300 Hz).)
Nonetheless, the Examiner finds that one of ordinary skill in the art would
have found it obvious to try a method of visually displaying data from a
threshold frequency down to zero while “refining efforts to reduce the
negative effects of tissue/probe motion and noise not indicative of blood
flow” that are described in Moehring, thus providing a “display of
raw/unfiltered data from zero frequency to a defined upper threshold
frequency.” (Ans. 6; see also id. at 10.)
Appellant argues, and we agree, that Moehring teaches away from the
claimed invention. (See Br. 23–28.) “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As explained above, Moehring
expressly excludes displaying low- and zero-frequency data. In contrast, the

blood flow rate associated with the blood vessel when said blood flow rate is
in a range from a blood flow rate associated with said threshold frequency
down to said zero flow rate.” (Claims App. (emphases added).)
6 Claim 19 recites a method of monitoring blood flow rate, wherein one of
the steps is “driving a visual display configured to provide incremental
visual indication of the blood flow rate within the body vessel when the
frequency shift is within a range from the threshold frequency down to zero
frequency to represent a low flow rate associated with the blood vessel. . . .”
(Claims App. (emphases added).)
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claims and the Specification consistently focus on displaying low-frequency
signals, which can correspond to lower blood flow rates. (See, e.g., Spec.
¶¶ 7–8 (discussing need to detect lower frequency responses, such as below
100 Hz, especially for larger blood vessels); see also id. at ¶¶ 22, 26.)
The Examiner responds that the low-frequency data deemed to be
noise by Moehring are “not representative of blood flow but instead tissue
motion, and therefore, the signal present fully represents blood flow.” (Ans.
10.) Thus, the Examiner argues that Moehring does not teach away from the
claimed invention. (Ans. 11.) But while Moehring gives tissue motion as an
example of a low-frequency noise source, Moehring’s system nonetheless
excludes all low-frequency signals, regardless of source. (See Moehring,
col. 4, ll. 48–50 (“Detected signals having a power below the noise
threshold . . . are ignored.”).) The Examiner cites no support in Moehring
for the proposition that Moehring “only removes data that do[] not represent
blood flow,” (Ans. 11), and we see none. Accordingly, we disagree with the
Examiner that Moehring’s data “fully represent[] blood flow” after removal
of the low frequencies (id.).
With respect to claim 1, the Examiner further notes that it is an
apparatus claim, and finds that the “wherein the visual display is configured
to provide incremental visual indication of the blood flow rate when said
blood flow rate is within a range from a blood flow rate associated with said
threshold frequency down to said zero flow rate” limitation includes
functional language not defining additional structure. (Ans. 11.) This is
unavailing because the presence of functional language in an apparatus
claim does not excuse the absence of a prima facie case of obviousness.
Although claims directed to an apparatus must be distinguished from the
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prior art in terms of structure rather than function, to satisfy the functional
limitations in an apparatus claim, the prior art apparatus must be capable of
performing the claimed function. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). In addition, the mere capability of performing the claimed
function is not the complete inquiry; the Examiner should additionally
determine whether it would have been obvious to modify the prior art
system to arrive at the claimed system. See In re Giannelli, 739 F.3d 1375,
1380 (Fed. Cir. 2014). As “[p]hysical capability alone does not render
obvious that which is contraindicated,” id., the Examiner’s assessment that
Moehring is “capable of” the functions recited in claim 1, (Ans. 11), is
insufficient in view of our conclusion that Moehring teaches away from
those very functions.
As Moehring teaches away from the claimed invention, we conclude
that the Examiner failed to establish a prima facie case of obviousness based
on Moehring alone or in combination with the other cited references, which
do not cure the deficiencies of Moehring. Accordingly, we reverse the
Examiner’s rejections.

CONCLUSION
The Examiner’s final rejections of claims 1–6, 10, 11, 14–16, 18–21,
and 23–25 as obvious are reversed.

REVERSED

cdc