Ex Parte Jayne et al

Patent Trials and Appeals Board

Apr 23, 2019

12372523 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/372,523 02/17/2009
154242 7590 04/25/2019
Physio-Control
c/o Miller Nash Graham & Dunn LLP
111 S.W. Fifth Avenue
Suite 3400
Portland, OR 97204
FIRST NAMED INVENTOR
Cynthia Jayne
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.
130472.000205 9794
EXAMINER
MARLEN, TAMMIE K
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/25/2019 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):
eofficeaction@appcoll.com
patdocketing@millernash.com
becky.summers@millernash.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYNTHIA JAYNE, RONALD E. STICKNEY,
RICHARD C. NOV A, STEPHEN W. RADONS, DAVID R. HAMPTON,
D. CRAIG EDWARDS, JOSEPH L. SULLIVAN,
and STEVEN E. SJOQUIST1
Appeal 2018-0031 72
Application 12/372,523
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for performing external chest compression on a person, which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 Appellants identify the Real Party in Interest as Physio-Control. Appeal
Br. 3.
Appeal 2018-0031 72
Application 12/372,523
STATEMENT OF THE CASE
Claims 1-17, 19-3 8, and 41-50 are on appeal. Claims 1 and 41 are
illustrative and read as follows:
1. A device for performing external chest compression (ECC) on a
person, the device comprising:
a backboard structured to support the person thereon and to extend
across a posterior portion of the person;
at least one chest compression member integrated within and rigidly
connected to at least one of two rigid arms configured to extend across an
anterior portion of a chest of the person,
the two rigid arms also attached to the backboard at respective first
ends, the combination of the backboard and the two rigid arms surrounding
the person's chest, the chest compression member configured to deliver
chest compressions to the person by pushing down on the anterior portion of
the person's chest while the posterior portion of the person's chest remains
stationary against the backboard; and
at least one wheel attached to the backboard, the wheel structured to
facilitate movement of the backboard along a surface while the person is
supported on the backboard.
41. A device for performing external chest compression (ECC) on a
person, the device comprising:
a backboard structured to support the person thereon and to extend
across a posterior portion of the person;
at least one chest compression member integrated within a rigid arm
configured to extend across an anterior portion of a chest of the person, the
rigid arm also attached to the backboard at a first end, the combination of the
backboard and the rigid arm extending around at least a portion of the chest
of the person, the chest compression member configured to deliver chest
compressions to the person by pushing down on the anterior portion of the
chest of the person while the posterior portion of the chest of the person
remains stationary against the backboard; and
at least one wheel attached to the backboard, the wheel structured to
facilitate movement of the backboard along a surface while the person is
supported on the backboard.
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Appeal 2018-0031 72
Application 12/372,523
Claims 12, 19, and 31 are also independent and, like claim 1, require
"two rigid arms" ( claim 12) or "a pair of rigid arms" ( claims 19 and 31 ).
The claims stand rejected as follows:
Claims 1-9, 11-14, 17, 19-38, 41-47, 49, and 50 under 35 U.S.C.
§ 103(a) as obvious based on Barkalow,2 Sebelius,3 and Reinhold4 (Non-
Final Action5 3);
Claims 10, 16, and 48 under 35 U.S.C. § 103(a) as obvious based on
Barkalow, Sebelius, Reinhold, and Lennox6 (Non-Final Action 9);
Claims 10, 16, and 48 under 35 U.S.C. § 103(a) as obvious based on
Barkalow, Sebelius, Reinhold, and Worthen7 (Non-Final Action 10); and
Claim 15 under 35 U.S.C. § 103(a) as obvious based on Barkalow,
Sebelius, Reinhold, and Nova8 (Non-Final Action 11).
DISCUSSION
The Examiner has rejected all of the claims on appeal as obvious
based on Barkalow, Sebelius, and Reinhold, by themselves or combined
with a further reference. Regarding claims 1-17 and 19-38, the same issue is
dispositive for all of the rejections.
The Examiner finds that Barkalow discloses a device meeting most of
the requirements of claim 1, including "at least one chest compression
2 US 4,273,114, iss. June 16, 1981.
3 US 2003/0181834 Al, pub. Sept. 25, 2003.
4 US 4,060,079, iss. Nov. 29, 1977.
5 Office Action mailed Nov. 30, 2016.
6 US 2004/0158303 Al, pub. Aug. 12, 2004.
7 US 6,149,670, iss. Nov. 21, 2000.
8 US 6,334,070 Bl, iss. Dec. 25, 2001.
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Appeal 2018-0031 72
Application 12/372,523
member 19 integrated within and rigidly connected to at least one rigid
arm 13 configured to extend across an anterior portion of a chest of the
person and attached to the backboard at a first end." Non-Final Action 3-4.
The Examiner finds, however, that Barkalow's device does not include a
second rigid arm or a wheel.
The Examiner finds that Sebelius discloses a similar device that
includes "chest compression member 300 integrated within and rigidly
connected to at least one of two rigid arms 210/220 configured to extend
across an anterior portion of the person's chest, the two rigid arms also
attached to the backboard." Id. at 4-5. The Examiner concludes that it would
have been obvious "to substitute the chest compression member apparatus of
Sebelius for that of Barkalow, in order to improve the accuracy of the chest
compressions by fixing the patient in relation to the treatment unit." Id. at 5.
The Examiner also finds that Reinhold discloses a stretcher that includes
wheels, and concludes that it would have been obvious to modify the device
suggested by the other references to include wheels. Id.
Appellants argue, among other things, that the cited references do not
teach or suggest a chest compression member integrated within and rigidly
connected to "'at least one of two rigid arms ... '." Appeal Br. 15.
Appellants urge that "one of skill in the art would not have modified the
Barkalow design to add the teachings or Sebelius or Reinhold" and therefore
the claims are patentable over the cited references. Id. at 18.
An invention "composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007). Rather, "it can be important to identify a reason that would have
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Appeal 2018-0031 72
Application 12/372,523
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." Id. "[T]here must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." Id. (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
"Motivation to combine is a factual determination as to whether there
is a known reason a skilled artisan would have been motivated to combine
elements to arrive at a claimed combination." Arctic Cat, Inc. v. Bombardier
Recreational Prods., Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017). "In
rejecting an application, factual determinations by the PTO must be based on
a preponderance of the evidence." In re Oetiker, 977 F.2d 1443, 1449 (Fed.
Cir. 1992) (J. Plager, concurring). "An examiner bears the initial burden of
presenting a prima facie case of obviousness." In re Huai-Hung Kao, 639
F.3d 1057, 1066 (Fed. Cir. 2011).
Here, we conclude that the Examiner has not carried the initial burden
of showing prima facie obviousness. The Examiner acknowledges that
Barkalow' s device has only a single arm, and relies on Sebelius as disclosing
a device with two arms, as recited in independent claims 1, 12, 19, and 31.
Non-Final Action 4. The Examiner reasons that it would have been obvious
to modify Barkalow's device to include at least two rigid arms based on
Sebelius' disclosure that its device "improv[ es] the accuracy when providing
chest compressions by fixing the patient in relation to the treatment unit."
Id. at 5.
Sebelius does indeed state that "[ a ]n object of [its] invention is to
improve the accuracy when providing external treatment to a patient by
means of a treatment unit. An aspect of the object is to provide fixation of
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Appeal 2018-0031 72
Application 12/372,523
the patient in relation to a treatment unit." Sebelius ,i 8. Sebelius' Figure 9 is
reproduced below:
,z.1~ .... ~:,.<--, 3':c,o
··.
~
.•.. /1 L;;-j l
~-=--·-~~--···~-~----·· 1 ---~ ~- .. .,.~·· "";' '"-,.......,.. ...... /!
\.,_._ •.. , .... __ ......... ---- .. ..
~--· _ .. ..,,
r~·\a~ '·1
....,
"FIG. 9 shows schematically a patient lying in the support structure
10 comprising a treatment unit 300 according to an embodiment of the
invention." Id. ,i 59. Sebelius states that the embodiment shown in its Figure
9 includes "arm fastening means 250 ... for fixating the patient's arm or
wrist when for example the patient is transported on a stretcher, whereby it
is almost impossible for the patient to move in relation to the treatment unit
330 [sic, 300]." Id.
Thus, Sebelius describes the property of fixing the patient in relation
to the treatment unit as being a result of the arm fastening means of its
device, not the presence of two arms rather than one. The Examiner's
finding that a person of ordinary skill in the art would have modified
Barkalow' s device to have two rigid arms in order to prevent patient
movement is therefore not supported by the evidence provided by Sebelius,
and the Examiner has not pointed to other evidence supporting this finding.
Because the Examiner has not provided adequate evidence or sound
technical reasoning to show that a device meeting all of the limitations of
Appellants' claims 1-17 and 19-38 would have been obvious based on the
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Appeal 2018-003172
Application 12/372,523
cited references, we reverse the rejection of these claims under 35 U.S.C.
§ 103(a).
However, our reasoning above does not apply to claim 41, which only
requires a single arm. Sebelius' teachings therefore are not required in order
to render the invention defined by claim 41 obvious to a person of ordinary
skill in the art.
Barkalow discloses "a cardiac compressor and defibrillator
comprising a reciprocal cardiac compressor for cyclically compressing a
patient's chest." Barkalow 2:67 to 3:1. Barkalow's Figure 1 is reproduced
below:
FIG I
Figure 1 shows "a combination cardiac compressor and ventilator or
cardiopulmonary resuscitator unit." Id. at 4:17-19. "The CPR unit includes a
platform or base 12 for supporting the back of a patient, a removable
upstanding column or support 13 and an overhanging beam or arm 14
mounted to column support 13 with a releasable collar 15." Id. at 4: 19-23.
Support 13 is attached to base 12. Id. at 4:32-33.
The outer end of arm 14 includes pneumatic power cylinder 17, which
operates to shift extendable "piston plunger 18 and the compressor pad 19
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Appeal 2018-0031 72
Application 12/372,523
... towards the platform 12 to compress the sternum and thus the heart of
the patient." Id. at 4:23-29.
[T]o employ the apparatus ... the patient is placed ... with his
back on platform 12. The cardiac compressor is then adjusted
so that the compressor pad 19 is immediately over the lower
portion of the patient's sternum 46. Arm 14 of the cardiac
compressor is vertically adjusted on columnar support 13 so
that the pad 19 contacts the breast bone or sternum when the
pad and plunger are in the raised position .... [T]he cardiac
compressor equipment is actuated and adjusted to create the
desired chest deflection.
Id. at 7:44-59.
The Examiner concludes that the chest compression member 17 /18/19
of Barkalow's device is "integrated within a rigid arm configured to extend
across an anterior portion of a chest of the person, the rigid arm also attached
to the backboard at a first end," as recited in claim 41. Specifically,
(a) "arm part 14 ... is part of the rigid arm as claimed and ... extends
across the anterior portion of the patient's chest" (Ans. 4);
(b) "the term 'integrated' means that the various parts or aspects are
linked or coordinated. The arm and chest compressor of Barkalow are
considered to be 'integrated' because they are attached to, or linked to, one
another" (id. at 3); and
(c) the
connection between the chest compression member and the arm
of Barkalow is rigid because while the chest compression
member is able to be moved along the arm [13], once the
patient has been positioned and the spacing of the chest
compression member has been established, the chest
compression member is essentially locked on to the arm in
order for the chest compressions to be delivered.
Id. at 4.
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Appeal 2018-0031 72
Application 12/372,523
That is, releasable collar 15 is loosened to adjust the height of arm 14
( and chest compression member 17 /18/19) vertically, after which collar 15 is
locked onto support 13 to allow the device to administer chest compressions.
Thus, when Barkalow's device is in operation, elements 13, 14, and 15 form
a single, rigid unit ( an arm that extends across an anterior portion of the
patient's chest) that allows the force generated by pneumatic power cylinder
17 to be transferred through compressor pad 19 in order to compress the
patient's chest. We agree with the Examiner that the configuration of
Barkalow' s device when it is in operation meets the broadest reasonable
interpretation of "a rigid arm configured to extend across an anterior portion
of a chest of the person, the rigid arm also attached to the backboard at a first
end."
We also agree with the Examiner that the broadest reasonable
interpretation of a chest compression member "integrated within" a rigid
arm reads on the configuration of Barkalow' s device. Appellants'
Specification does not expressly define the term "integrated within" but
states that the "invention provides an integrated device for performing
external chest compression (ECC) and defibrillation on a person. The
integrated device can include a backboard, at least one chest compression
member operably coupled to the backboard, and a defibrillator module
operably coupled to the backboard." Spec. ,-J 9 (emphasis added). Thus,
consistent with the Examiner's interpretation of the phrase, the Specification
uses "integrated" to mean that certain elements are coupled (i.e., linked or
attached) to one another.
Barkalow does not disclose that its device includes a wheel, as required
by claim 41. However, as the Examiner found, Reinhold discloses a device
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Appeal 2018-0031 72
Application 12/372,523
that includes a backboard and a chest compression member mounted on a
stretcher unit that has wheels to facilitate movement of a patient. Non-Final
Action 5. Therefore, it would have been obvious to mount Barkalow' s device
on a wheeled stretcher in order to facilitate movement of a patient.
Appellants argue that
[ e Jach portion of the Barkalow device is releasable or moveable
with respect to the chest compressor and the platform on which
the patient is positioned. The Barkalow chest compressor 19,
which the Office equated with Appellant's claimed chest
compression member, is releasably mounted to the rigid arm 13
that the Office equated with Appellant's rigid arm. Having a
releasable connection between the chest compression member
and the arm to which it is attached means it is not integrated, as
Appellant recites in independent claim 41.
Appeal Br. 24-25.
However, as discussed above, Appellants' Specification uses the term
"integrated" to describe different components of a device that are attached to
each other, just as chest compressor 19, arm 14, and support 13 are attached,
and therefore integrated, in Barkalow's device in its in-use configuration.
Appellants point to no other basis for a narrower claim interpretation.
Appellants' argument regarding the broadest reasonable interpretation of
"integrated" is therefore unpersuasive.
Appellants also argue that
one of skill in the art would not have combined Reinhold with
Barkalow because it is not reasonable to add a wheel or wheels
to a backboard of a single arm ECC device design that has the
known drawback of causing patients to move during
administration of chest compressions. Adding a wheel would
increase rather than decrease the known problems of single arm
ECC devices, such as the Barkalow device.
Appeal Br. 26.
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Application 12/372,523
This argument is also unpersuasive, because Appellants do not point
to evidence that supports the position that Barkalow' s device was known to
cause patients to move during administration of chest compressions, or that
mounting Barkalow's device on a wheeled stretcher would cause any
problems with using the modified device to administer chest compressions.
"Attorneys' argument is no substitute for evidence." Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
We therefore affirm the rejection of claim 41 under 35 U.S.C.
§ 103(a) based on Barkalow, Sebelius, and Reinhold. Although we do not
find Sebelius' disclosure necessary to support the rejection of claim 41, our
analysis does not change the basic thrust of the rejection, and therefore does
not constitute a new ground of rejection. See In re Kronig, 539 F.2d 1300,
1302 (CCPA 1976) ("[T]he ultimate criterion of whether a rejection is
considered 'new' in a decision by the board is whether appellants have had
fair opportunity to react to the thrust of the rejection.").
Claims 42-47, 49, and 50 fall with claim 41 because they were not
argued separately. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner's rejection of
claim 48 includes either Lennox or Worthen but Appellants have waived
arguments based on Lennox or Worthen. Appeal Br. 12, 26. We therefore
affirm the rejections of claim 48 for the reasons discussed in the Non-Final
Action and above.
SUMMARY
We reverse the rejection of claims 1-9, 11-14, 1 7, and 19-3 8 under
35 U.S.C. § 103(a) based on Barkalow, Sebelius, and Reinhold; the rejection
of claims 10 and 16 under 35 U.S.C. § 103(a) based on Barkalow, Sebelius,
Reinhold, and Lennox; the rejection of claims 10 and 16 under 35 U.S.C.
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Application 12/372,523
§ 103(a) based on Barkalow, Sebelius, Reinhold, and Worthen; and the
rejection of claim 15 under 35 U.S.C. § 103(a) based on Barkalow, Sebelius,
Reinhold, and Nova.
We affirm the rejection of claims 41-47, 49, and 50 under 35 U.S.C.
§ 103(a) based on Barkalow, Sebelius, and Reinhold; the rejection of claim
48 under 35 U.S.C. § 103(a) based on Barkalow, Sebelius, Reinhold, and
Lennox; and the rejection of claim 48 under 35 U.S.C. § 103(a) based on
Barkalow, Sebelius, Reinhold, and Worthen.
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. § l .136(a).
AFFIRMED-IN-PART
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