Ex Parte McCombie et al

Patent Trial and Appeal Board

Feb 22, 2019

13399586 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/399,586 02/17/2012 Devin McCombie
35938 7590 02/26/2019
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
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.
TWI-54000-UT 6389
EXAMINER
FARDANESH, MARJAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
docketing© acuity lg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEVIN MCCOMBIE, GUNNAR TROMMER, JIM MOON,
MARSHALL DHILLON, SCOTT CLEAR, and JULIAN GROELI
Appeal2017-003886 1
Application 13/399,5862
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1--4 and 7-16, the only claims pending in the application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). An oral
hearing was held on February 11, 2019.
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Feb. 5, 2016), Appellants' Reply Brief ("Reply Br.," filed Jan. 3, 2017), the
Examiner's Answer ("Ans.," mailed Nov. 2, 2016), and the Final Office
Action ("Final Act.," mailed Jan. 5, 2015).
2 Appellants identify "Sotera Wireless, Inc." as the real party in interest for
this appeal. Appeal Br. 4.
Appeal2017-003886
Application 13/399,586
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' "claims on appeal relate to medical systems for
noninvasively monitoring blood pressure and oxygen saturation and methods
of use thereof. The systems and methods of the claims utilize a pulse
oximetry sensor having a specific configuration." Appeal Br. 4.
Apparatus claim 1 and method claim 14 are the independent claims on
appeal. Claim 1, reproduced below with added emphasis, is illustrative of
the subject matter on appeal.
1. A physiological probe configured for securing to a
subject's digit comprising:
a sensor module comprising
(a) electronic circuitry which comprises (i) at least one
source of electromagnetic radiation, and (ii) a photodetector
configured to detect radiation from the at least one source of
electromagnetic radiation after it has interacted with the
subject's tissue, thereby acquiring data relating to at least one
physiologic property of the subject, wherein the photodetector
is operably connected to a connection cable for delivery of
photodetector signals to an external processing unit, and
(b) a flexible enclosure providing a cover for the
electronic circuitry, wherein the flexible enclosure comprises (i)
at least one aperture through which the at least one source of
electromagnetic radiation emits radiation for irradiating the
subject's tissue, (ii) at least one aperture through which the
photodetector receives radiation after it has interacted with the
subject's tissue, and (iii) an aperture through which the
connection cable passes; and
a cradle module comprising
(a) at least first and second rigid housing members mated
to one another via a hinge region to form an approximately
semicircular ring which is configured to releasably receive the
sensor module, wherein the hinge region is configured to
provide, when secured to the subject's digit, a range of
adjustment in a diameter of the ring while physically
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Application 13/399,586
constraining an included angle measured between the at least
one source of electromagnetic radiation and the photodetector
within a predetermined range, wherein the predetermined
range of the included angle measured between the source(s) of
electromagnetic radiation and the photodetector is between
about 60° and about 30°.
Appeal Br. 15, Claims App.
Rejections
Claims 1--4 and 7-16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Lindekugel (US 2005/0075550 Al, pub. Apr. 7, 2005).
Final Act. 3-6.
Claims 1--4 and 7-16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Medina (US 7,412,272 B2, iss. Aug. 12, 2008). Id.
at 6-9.
ANALYSIS
The Examiner bears the initial burden of showing a prima facie case
of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). For
the following reasons, we are persuaded "[t]he Examiner has not met the
initial burden of establishing a primafacie case of obviousness." Appeal
Br. 7; Reply Br. 4.
Claim Interpretation
Independent claim 1 requires, in part,
wherein the hinge region is configured to provide, when
secured to the subject's digit, a range of adjustment in a
diameter of the ring while physically constraining an included
angle measured between the at least one source of
electromagnetic radiation and the photodetector within a
predetermined range, wherein the predetermined range of the
included angle measured between the source( s) of
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Application 13/399,586
electromagnetic radiation and the photodetector is between
about 60° and about 30°.
Appeal Br. 15, Claims App. (emphasis added). According to the
Specification,
to increase the amount of radiation that passes through the
artery and capillaries in the tissue, and thereby optimize signal
quality, the cradle acts to maintain the LEDs 106, 107 and
photodiode 108 at an included angle (.theta.) of approximately
35-55 degrees. As shown in FIG. 4C, the 'included angle
.theta.' refers to the angle formed between a first line drawn
parallel to the planar surface comprising the radiation source
and a second line drawn parallel to the planar surface
comprising the photodetector.
Spec. ,r 39.
The Federal Circuit has held that "configured to" language requires
that the specific element is not only "capable of' performing the recited
function, but is also specifically designed to accomplish the function
claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d.
1335, 1349 (Fed. Cir. 2012) (The phrase "configured to" is construed more
narrowly than "capable of' such that the structure must be designed to
accomplish the specified objective, not simply that it can be made to serve
that purpose.). As such, we construe the claimed hinge region as specifically
designed to provide, when secured to the subject's digit, a range of
adjustment in a diameter of the ring while physically constraining an
included angle measured between the source of electromagnetic radiation
and the photodetector that is within the predetermined range between
about 60° and about 30°.
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Application 13/399,586
Obviousness over Lindekugel
In rejecting independent claim 1, the Examiner finds Lindekugel' s
"hinge region ( 50) is configured to provide a range of adjustment in a
diameter of the ring while physically constraining an included angle
measured between the at least one source of electromagnetic radiation and
the photodetector within a predetermined range ([0030]-[0042])." Final
Act. 4--5; Ans. 5. The Examiner acknowledges that "Lindekugel fails to
explicitly disclose that the predetermined range of the included angle
measured between the source( s) of electromagnetic radiation and the
photodetector is between about 60° and about 30° as in claim 1," but
concludes that
without criticality and unexpected results one with ordinary
skills in the art at the time invention was made would have
provided different angle between the light source and the
photodetector depending on the diameter of the measurement
site, in order to place the emitter and the detector spaced apart
and obtain more accurate measurements.
Final Act. 4--5; Ans. 5.
Appellants argue
there is no hinge region in Lindekugel that is configured to
provide, when secured to the subject's digit, a range of
adjustment in a diameter of the ring that is physically
constrained to provide the included angle measured between the
source( s) of electromagnetic radiation and the photodetector
[that] is between about 60° and about 30° as recited in the
rejected claims.
Reply Br. 4 ( emphasis omitted). According to Appellants, "the devices
disclosed in Lindekugel are designed to be secured to the subject in a single
manner- by closure of a housing around a finger until it is snapped shut."
Appeal Br. 8 ( emphasis omitted) ( citing Lindekugel ,r,r 9, 13 ). We agree.
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Application 13/399,586
Contrary to the Examiner's finding, Lindekugel fails to disclose a
hinge region ( 50) configured to or specifically designed to provide a range
of adjustment in a diameter of the ring while physically constraining an
included angle measured between the at least one source of electromagnetic
radiation and the photodetector within a predetermined range, as called for
in claim 1. Lindekugel is directed to "a clip-type sensor holder ... that clips
around a portion of a patient appendage without necessarily applying a
clamping force to that appendage[,] to reduce or eliminate vasoconstriction."
Lindekugel, Abstract. Lindekugel describes "a hinge [region] 50 that allows
the top and bottom members 30, 40 to move between open and closed
positions" (id. ,r 31 ), such that "[ w ]hen in the closed position, these opposing
members are sized to receive a patient appendage (e.g., a finger)
therebetween" (id. ,r 9). This configuration is illustrated in Figures IA and
1 C of Lindekugel.
As Appellants observe, "the source of electromagnetic radiation and
the photodetector are always held so that they directly face one another -
they are opposed to one another to provide a transmission measurement.
The optical path is direct and fixed at 180°." Appeal Br. 8-9. Although
Lindekugel' s hinge region 50 is configured to accommodate an expanded
range in patient appendage sizes, Lindekugel fails to disclose that hinge
region 50 is specifically designed to provide, when secured to the subject's
digit, a range of adjustment in a diameter of a ring while physically
constraining an included angle measured between the at least one source of
electromagnetic radiation and the photodetector within a predetermined
range. Because Lindekugel's hinge region 50 is not specifically designed to
maintain light emitter 104 and photodetector 106 at an included angle within
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Application 13/399,586
a particular range, let alone between about 60° and about 30°, the
Examiner's finding as to this disputed limitation of claim 1 is unsupported
by the evidence of record.
Accordingly, we do not sustain the rejection of independent claim 1 as
unpatentable over Lindekugel, as well as independent claim 14, which
includes a physiological probe according to claim 1. For the same reasons,
we do not sustain the rejection of dependent claims 2--4, 7-13, 15, and 16.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims
are nonobvious if the independent claims from which they depend are
b . ") nono v10us.... .
Obviousness over Medina
As we construed above, claim 1 requires that the claimed hinge region
is configured or specifically designed to provide, when secured to the
subject's digit, a range of adjustment in a diameter of the ring while
physically constraining an included angle measured between the source of
electromagnetic radiation and the photodetector that is within the
predetermined range between about 60° and about 30°.
In rejecting claim 1, the Examiner acknowledges that "Medina fails to
explicitly disclose that the angle measured between the source( s) of
electromagnetic radiation and the photodetector is between about 60
degree[s] and about 30°." Final Act. 8; Ans. 8-9. To cure this deficiency,
the Examiner reasons that "Medina is capable of accommodating different
shapes and sizes of digits (i.e.[,] [u]pon insertion of the appendage, the
opposing surfaces may elastically deform relative to one another allowing
those surfaces to apply a compressive retaining force to the patient
appendage." Ans. 12-13.
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However, as discussed above, "configured to" language requires that
the specific element is not only "capable of' performing the recited function
but is also specifically designed to accomplish the function claimed. As
such, the "configured to" language of claim 1 is construed more narrowly
than "capable of," such that Medina's structure must be specifically
designed to accomplish the specified objective not simply that it is capable
of being made to serve that purpose. Because the Examiner's analysis began
with the improper premise that "configured to" meant "capable of," the
Examiner's finding as to the mere capability of Medina's hinge region is not
the proper inquiry. And because the initial burden of showing that Medina's
hinge region is specifically designed to provide, when secured to the
subject's digit, a range of adjustment in a diameter of the ring while
physically constraining an included angle measured between the source of
electromagnetic radiation and the photodetector that is within the
predetermined range between about 60° and about 30° was not met, a prima
facie case of obviousness has not been established.
Accordingly, we do not sustain the rejection of independent claims 1
and 14, including claims 2--4, 7-13, 15, and 16, which depend from either
claim 1 or 14.
DECISION
The decision to reject claims 1--4 and 7-16 is reversed.
REVERSED
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