Ex Parte Imose

Patent Trials and Appeals Board

Feb 15, 2019

10551668 - (D) (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/551,668 09/30/2005
134795 7590 02/20/2019
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Kazuo Imose
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.
880212-0135-USOO 5514
EXAMINER
JANG, CHRISTIAN YONGKYUN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
DCipdocket@michaelbest.com
sbj ames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUO IMOSE 1
Appeal2017-009954
Application 10/551,668
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 from the Examiner's
rejection of claims to a method for determining and treating sleep
disturbances which have been as directed to non-statutory subject matter and
as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellant identifies the Real Party in Interest as Teijin Pharma Limited of
Tokyo, Japan. Appeal Br. 4.
2 We have considered and herein refer to the Specification of Sept. 30, 2005
("Spec."); Final Office Action of Jan. 2, 2015 ("Final Act."); Appeal Brief
of Apr. 2, 2015 ("Appeal Br."); Examiner's Answer of May 18, 2015
("Ans."); and Reply Brief of July 18, 2017 ("Reply Br.").
Appeal2017-009954
Application 10/551,668
We AFFIRM.
STATEMENT OF THE CASE
The Specification describes a method and apparatus for "carrying out
oxygen therapies in which an oxygen-enriched gas is supplied for respiration
of a patient in order to calm a sleep respiratory disturbance that is a
complication symptom of chronic heart failure." Spec. 1.
Claims 26-31 and 33-35 are on appeal. 3 Claim 264 is representative
and reads as follows:
26. A patient selecting method comprising:
a step (a) of using an apparatus to measure arterial
oxygen saturation in a subject;
a step (b) of using a monitoring system to measure an
electrocardiogram wave form of the subject and to measure
respiratory airflow of the subject, the step (a) occurring before
the step (b );
a step ( c) of using said electrocardiogram wave form to
determine an existence in the subject of an enhanced state of
sympathetic nerves, the step (b) occurring before the step( c ).
The claims stand rejected as follows:
Claims 26-33 and 25 have been rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
3 Claims 36-45 are pending in the application but have been withdrawn from
consideration. Final Act. 1.
4 Claim 26 as set forth in the Claims Appendix reflects an amendment to
claim 26 incorporating the limitations of dependent claim 34 into claim 26.
See, Appeal Br. 4. As discussed more fully below, that amendment was not
entered by the Examiner. As the Amendment was not entered, for purposes
of this appeal, we will consider the claims as presented in the last
amendment enter by the Examiner. Amendment in Response to Non-Final
Office Action under 37 C.F.R. § 1.11, filed Sept. 9, 2014.
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Application 10/551,668
Claims 26-28, 30, and 31 have been rejected under 35 U.S.C. §
I03(a) as unpatentable over Lavie. 5
Claim 29 has been rejected under 35 U.S.C. § I03(a) as unpatentable
under 35 U.S.C. § I03(a) over Lavie in view of Ong6 and IBM. 7
Claim 33 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Lavie in view of Westbrook. 8
Claims 34 and 35 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over La vie in view of Ong.
DISCUSSION
Before we begin our analysis, it is important to address the status of
the claims. Simultaneous with the filing of this appeal, Appellant filed an
amendment9 incorporating the limitations of dependent claim 34 into
independent claim 26. Amend. 9. The amendment also added new claim
46. Amendment 7. In an Advisory Action 10 the Examiner declined to enter
the amendment as new claim 46 added limitations not recited in the earlier
claims. Advisory Act. 1.
5 Lavie et al., US 2003/0004423 Al, published Jan. 2, 2003 ("Lavie").
6 Ong et al., US 6,158,433, issued Dec. 12, 2000 ("Ong").
7 Lenovo, 8MB USB Memory Key- Overview, Dec. 17, 2009, found at
http ://www-3 07.ibmcom/pc/ support/ site. wss/ document.do ?sitesty le= len ...
The Examiner has referred to this reference as "IBM". For consistency, we
shall do the same in this Appeal.
8 Westbrook et al., US 2002/0165462 Al, published Nov. 7, 2002
("Westbrook").
9 Amendment After Final, filed April 2, 2015 ("Amend.").
10 Advisory Action mailed Mar. 22, 2016 ("Advisory Act.").
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Appeal2017-009954
Application 10/551,668
Appellant, however, has argued this appeal as if the amendment to
claim 26 was entered. See, e.g., Appeal Br. 4 ("Currently pending claim 26
is prior claim 34."). In the Reply Brief, Appellant states that only claim 34
is the subject of this Appeal. Reply Br. 3. However, claims 26-31, 33, and
35 are still pending and have been finally rejected. Ans. 2. Addressing only
the rejection of claim 34 would result in piecemeal examination which is to
be avoided. MPEP § 707.07(g). Therefore, we will address all the
rejections in our decision.
Appellant has failed to present any substantive arguments with respect
to the rejection under 35 U.S.C. § 101 and the first three rejections under 35
U.S.C. § 103(a) except to argue that the amendment to claim 26 obviates
these rejections. See, Appeal Br. 7-9. Because the amendment has not been
entered and because Appellant has not substantively addressed the
rejections, we summarily affirm the rejection under 35 U.S.C. § 101 and the
first three rejections under 35 U.S.C. § 103(a). 37 C.F.R. § 4I.37(c)(iv).
We now tum to the remaining rejection.
Lavie Combined with Ong
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims 34 and 3 5 would have been obvious over La vie combined with
Ong.
Claim 34 depends from claim 26 and adds the step of "providing said
subject with an oxygen-enriched gas from a supplying apparatus after said
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Application 10/551,668
enhanced state of sympathetic nerves of the subject has been determined in
step (c)."
The Examiner finds
Lavie teaches a patient selecting method comprising the steps
of measuring arterial oxygen saturation (205), measuring ECG
([0066]) and airflow (207), and using the ECG waveform to
determine an existence in the subject of an enhanced state of
sympathetic nerves ([0066]). While Lavie does not explicitly
teach that oxygen saturation is measured prior to measuring of
ECG and airflow, the recited claim does not show how the
oxygen saturation measured relates at all with any of the
parameters measured in step b. As such, one of ordinary skill in
the art would recognize that it is merely a design element to
measure arterial oxygen saturation prior to measuring the ECG
and respiratory airflow, as there is no bearing on the
measurement order on the results.
Final Act. 3--4. The Examiner goes on to find
Lavie teaches the determination of an enhancement of
sympathetic nerves in conjunction with a transition of
respiratory flow (Fig. 8b ). It does not explicitly teach the supply
of oxygen-rich gas when such a state is determined. Ong
teaches a CP AP ventilation system that is activated in the event
of patient apnea ( claim 20). As such, it would have been
obvious to modify Lavie with Ong to allow for therapeutic
treatment during times of sleep disordered breathing.
Final Act. 5-6.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
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Appeal2017-009954
Application 10/551,668
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. Final Act. 3-6. We find the Examiner has
established that the matter of the claims would have been prima facie
obvious to one of ordinary skill in the art at the time the invention was made
over Lavie and Ong. Appellant has not produced evidence showing, or
persuasively argued, that the Examiner's determinations on obviousness are
incorrect. Only those arguments made by Appellant in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim
34 as representative; therefore, claim 35 falls with claim 34. We address
Appellant's arguments below.
Appellant contends that although Lavie teaches measuring oxygen
levels in the blood and conducting an ECG, nothing in Lavie or Ong teaches
measuring oxygen levels before conducting an ECG. Appeal Br. 11-14.
We are unpersuaded by Appellant's argument.
We find that the reasoning in Burhans, a case in which there were four
process steps, and each of the steps was disclosed in the prior art, differing
only order of the steps, to be applicable here. In re Burhans, 154 F.2d 690,
692 (CCPA 1946). The court was unpersuaded of patentability, finding that
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Application 10/551,668
"[t ]here is no merit in the point here in the absence of any proof in the record
that the order of performing the steps produces any new and unexpected
results." Id. We conclude that the same reasoning applies in the instant case
because Appellant has offered no credible evidence that performing these
known steps in the order recited in the claims produces any unexpected
results.
Appellant contends that the third step of the claimed method -
providing the patient oxygen after an enhanced state of the sympathetic
nerves has been determine demonstrates the relationship between the steps
of measuring oxygen concentration and using an ECG. Appeal Br. 12.
Appellant argues that this supports Appellant's contention that the step must
be performed in order. Id. Again, we are unpersuaded. Appellant has not
produced any evidence that the performance of the first two steps in the
order recited in the claims produces a different result, let alone an
unexpected result, than if they were performed simultaneously or in reverse
order.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 34 would have been
obvious over Lavie combined with Ong.
Claim 35 has not been argued separately and therefore fall with claim
34. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 101.
We affirm the rejections under 35 U.S.C. § 103(a).
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Appeal2017-009954
Application 10/551,668
TIME PERIOD FOR RESPONSE
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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