Ex Parte Murphy et al

Board of Patent Appeals and Interferences

Aug 22, 2012

10494584 (B.P.A.I. Aug. 22, 2012)

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.
10/494,584 05/05/2004 John C. Murphy 1750-SPL 6709
7590 08/23/2012
Francis A. Cooch Office of Patent Counsel
The Johns Hopkins University
Applied Physics Laboratory
11100Johns Hopkins Road
Laurel, MD 20723-6099
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
08/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN C. MURPHY, RAFAL P. SZCZEPANOWSKI,
WOLFGER SCHNEIDER, RICHARD A. MEYER,
JUSTIN C. McARTHUR, and MICHAEL POLYDEFKIS
____________

Appeal 2010-004995
Application 10/494,584
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
BRADFORD E. KILE, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-3, 5-7, 10-15, 17-25, 29-33, and 36-38.
Claims 4, 8, 9, 16, 26-28, 34, and 35 have been cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b) (2011).

REJECTIONS
Claims 1, 7, 12, 14, 15, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Guillemin (US 2,728,337, iss. Dec. 27, 1955),
Strian (US 4,763,666, iss. Aug. 16, 1988) and Li (US 6,245,093 B1, iss. Jun.
12, 2001).
Claims 2, 3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guillemin, Strian, Li, and Scher (US 3,533,397, iss. Oct.
13, 1970).
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guillemin, Strian, Li, and Nakagawa (US 5,140,979, iss.
Aug. 25, 1992).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Guillemin, Strian, Li, and Johansson (WO 99/63888, pub. Dec. 16, 1999).
Claims 18, 20-23, 25, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guillemin, Strian, Li, and vanHooydonk (US 5,902,251,
iss. May 11, 1999).
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Guillemin, Strian, Li, vanHooydonk, and Scher.
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Claims 30-33 and 36-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guillemin, Li, Scher, and Stern (US 6,413,255 B1, iss.
Jul. 2, 2002).

CLAIMED SUBJECT MATTER
Claims 1, 20, and 30 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A device operable to assess temperature
response of small neural fibers, the device
comprising:
a heat source;
a skin contacting probe tip comprising at
least one skin contacting region operatively
connected to the heat source and operable to apply
a heat to regions of skin having varying surface
areas, wherein the skin contacting probe tip is
interchangeable;
a temperature sensor comprising a surface
mount thermistor arranged in the vicinity of the
probe tip and operable to detect a temperature of
the probe tip;
a controller operatively connected to the
heat source and the temperature sensor, the
controller utilizing both proportional and integral
feedback to maintain a target temperature of the
probe tip; and
a retractable probe sleeve integral to the
device and operable to shield at least a portion of
the probe tip when the probe tip is not in use.

Claim 20 recites “[a] device operable to assess temperature response
of small neural fibers” and includes “a retractable probe tip sleeve integral to
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the device.” Claim 30 recites “[a] method for testing patient response to
excitation of neural fibers” and includes the step of “applying force to a
retractable probe tip shield, the shield being integrated in a device with the
probe tip, to permit the probe tip to contact the region of the patient's skin.”

OPINION
The Examiner finds that the combined teachings of Guillemin and
Strian disclose a device operable to assess temperature response of small
neural fibers including a heat source 54, a skin contacting probe 16a, and
temperature sensor 53, but lacks “a retractable probe sleeve integral to the
device”, as recited in claim 1. See Ans. 4-6. The Examiner alleges Li’s
optional cap 2 remedies this deficiency with respect to claim 1 by finding
that “Li teaches a retractable probe sleeve (2 in figure 1) integral to the
device [(housing)] (1) (e.g. the cap is fastened to the device as best seen in
Figure 1).” Ans. 6; see Li, fig. 1, col. 6, ll. 8-10.
The Appellants contend that the combined teachings of Guillemin,
Strian, and Li, as applied by the Examiner, would not have resulted in “a
retractable probe sleeve integral to the device,” as recited in claim 1 because
Li’s optional, removable cap cannot be considered integral or retractable.
See App. Br. 8. We agree with the Appellants for the following reasons.
First, the Examiner determines that Li’s optional cap 2 is “‘integral’
to the device” because it is “a component portion of the teachings of Li's
probe sleeve, probe tip, and device.” Ans. 16-17. In support of this finding,
the Examiner appears to construe the term “integral” according to its plain
meaning and various case holdings. Ans. 16. Nonetheless, the finding that
Li’s “optional” cap is an “integral” component seems unsound as Li’s cap 2
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is an “optional” part of the device. Being “optional” highlights the fact that
the cap is a separate structure from “housing 1[,] which contains all
remaining components of the invention.” Li, col. 6, ll. 9-10.
Second, the Examiner determines Li’s optional cap 2 is retractable
because “[i]t is pulled back in a direction away from the device in order to
be removed.” Ans. 18. For the purposes of this appeal only, assuming the
finding that Li’s cap is retractable is adequately supported, then Li’s cap
would have to be removed from housing 1 to be retractable. See Ans. 16.
Indeed, Li’s Figure 1 depicts the optional protective cap 2 as completely
separated from housing 1. Once the optional cap 2 is removed and
completely separated from housing 1, it seems strained to also find Li’s
optional cap 2 as being “integral” with housing 1.
For reasons provided above, the Examiner’s finding that Li’s optional
removable cap is integral is not supported by a preponderance of the
evidence. Thus, we cannot sustain the rejection of claims 1, 7, 12, 14, 15,
17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Guillemin, Strian,
and Li.
As for the rejections of claims depending from independent claim 1,
those rejections also rely on the unsubstantiated finding discussed above.
More notably, with regard to the rejection of claims 10 and 11 as
unpatentable over Guillemin, Strian, Li, and Nakagawa, although we agree
with the Examiner’s finding that “Nakagawa teaches urging a probe tip into
contact with the skin against an extending force (column 3, lines 40-50)
produced by a spring (7)” (Ans. 8), we do not agree with the Examiner’s
determination that the combination of known prior art elements would have
yielded a predictable result to automatically cover and uncover the probe tip
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during use (see Ans. 8-9) because we cannot reconcile the modification of
the device of Guillemin and Strian, as modified by Li’s non-integral
removable cap 2 and further modified by Nakagawa’s spring 7. Nakagawa’s
spring 7 urges sleeve (head guide 5) in an extended position via an extending
force (Nakagawa, col. 3, ll. 40-56, fig. 1), and if Li’s cap 2 was urged into
position in a similar manner, cap 2 would not expose Li’s probe tip 6. In
other words, Li’s cap 2 is pulled away from housing 1 to expose the probe
tip 6 (see Li, fig. 1), whereas Nakagawa’s sleeve 5 is pushed (i.e.,
retreats/retracts) into its housing (e.g. head guide retaining member) 4 to
expose its probe tip (vibrating head) 20 (Nakagawa, col. 3, ll. 40-56, fig. 1).
Since Nakagawa’s spring 7 would urge Li’s cap 2 to seemingly never expose
probe tip 16a of Guillemin and Strian as modified by Li’s cap 2, we cannot
reconcile the Examiner’s reasoning with respect to the rejection of claims 10
and 11. As such, the Examiner’s additional reasoning, specific to the
rejections of claims 10 and 11, does not remedy the unsubstantiated finding
as discussed above with regard to claim 1. Thus, for the above reasons, we
cannot sustain the rejections under 35 U.S.C. § 103(a) of: claims 2, 3, 5, and
6 as unpatentable over Guillemin, Strian, Li, and Scher; claims 10 and 11 as
unpatentable over Guillemin, Strian, Li, and Nakagawa; claim 13 as
unpatentable over Guillemin, Strian, Li, and Johansson; and claim 18 as
unpatentable over Guillemin, Strian, Li, and vanHooydonk.
For the rejection of independent claim 20, the Examiner relies on the
unsubstantiated finding that Li’s optional cap 2 corresponds to “a retractable
probe sleeve integral to the device.” Ans. 9-10. The addition of the
teachings of vanHooydonk and Scher, respectively, does not remedy the
deficiencies of the combined teachings of Guillemin, Strian, and Li. Thus,
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we cannot sustain the rejections under 35 U.S.C. § 103(a) of: claims 20-23,
25, and 29 as unpatentable over Guillemin, Strian, Li, and vanHooydonk;
and, claim 24 as unpatentable over Guillemin, Strian, Li, vanHooydonk, and
Scher.
Lastly, for the rejection of independent claim 30, the Examiner relies
on the removal of Li’s optional cap 2 from housing 1 to correspond to the
step of “applying force to a retractable probe tip shield, the shield being
integrated in a device with the probe tip, to permit the probe tip to contact
the region of the patient's skin.” See Ans. 12. For the same reasons as
discussed above, the finding that Li’s optional cap 2 is “integrated in a
device” is not supported by a preponderance of the evidence. The addition
of the teachings of Scher and Stern, respectively, does not remedy the
deficiencies of the combined teachings of Guillemin and Li. Thus, we
cannot sustain the rejection of claims 30-33 and 36-38 under 35 U.S.C.
§ 103(a) as unpatentable over Guillemin, Li, Scher, and Stern.

NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Claims 1, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guillemin, Strian, and Nakagawa.
For claim 1, we adopt and incorporate by reference the Examiner’s
determinations in paragraphs five and six of the Examiner’s Answer starting
at page 4 and ending at page 6. In summary, the Examiner modifies
Guillemin’s diagnostic device “applying controlled measured heat quantities
to point areas of skin for testing purposes” (col. 1, ll. 15-18), including: a
heat source 54, a skin contacting probe 16a, and temperature sensor 53, with
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Strian’s teaching of a controller1 “to achieve the predictable result[] of
automatically maintain[ing] a target temperature so that the heater of
Guillemin need not be manually turned on and off by an operator.” Ans. 6;
see also Strian, col. 1, ll. 35-40. We also agree with the Examiner that
Guillemin, as modified by Strian, lacks: “a retractable probe sleeve integral
to the device and operable to shield at least a portion of the probe tip when
the probe tip is not in use” as recited in claim 1; “wherein the probe tip is
urged into contact with the skin against an extending force on the retractable
sleeve” as recited in claim 10, which depends from claim 1; and “a spring
operable to urge the retractable sleeve in an extended position” as recited in
claim 11, which depends from claim 1. See Ans. 6; see also Ans. 8.
In addition, we agree with the Examiner that “Nakagawa teaches
urging a probe tip into contact with the skin against an extending force
(column 3, lines 40-50) produced by a spring (7).” Ans. 8. More
specifically, Nakagawa discloses a massager having a head 20 that
stimulates skin and a head guide 5, which advances and retreats via a coil
spring 7 (Nakagawa, col, 3, ll. 40-56, fig. 1); and when the top end of the
head guide 5 is pushed backwards “the head guide 5 itself moves back
resisting the resilient force of the spring 7. Upon release of the pushing
force, the head guide 5 returns to a front position.” Nakagawa, col, 3, ll. 47-
50. Moreover, Nakagawa’s disclosure of covering a probe tip, when it is not
in use by using a spring (spring 7) that urges a sleeve (head guide 5) in a
position to protect a probe tip (head 20), is known in the prior art. It is

1 Strian’s controller includes: current amplitude controller 46, control
devices 52, 54, and programming device 56, which may include a computer
and a digital-analog-converter. Col. 4, ll. 19-36.
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further notable that Nakagawa’s sleeve 5 and spring 7 correspond to “a
retractable probe sleeve integral to the device and operable to shield at least
a portion of the probe tip when the probe tip is not in use,” as recited in
claim 1. Further, Nakagawa’s sleeve 5 and spring 7 correspond to the
limitations of claims 10 and 11, “wherein the probe tip is urged into contact
with the skin against an extending force on the retractable sleeve” and “a
spring operable to urge the retractable sleeve in an extended position,”
respectively. Hence, it would have been obvious to one of ordinary skill in
the art at the time of the invention to integrate Guillemin’s diagnostic device,
as modified by Strian, with Nakagawa’s retractable sleeve in order to urge
the sleeve into a position to protect the probe tip.
For the foregoing reasons, claims 1, 10, and 11 are rejected under 35
U.S.C. § 103(a) as unpatentable over Guillemin, Strian, and Nakagawa.
As a board of appeal, we are primarily a tribunal of review. Although
we decline to reject every claim under our discretionary authority under 37
C.F.R. § 41.50(b), we emphasize that our decision does not mean the
remaining claims are patentable. As such, we have not considered the
patentability of the remaining claims. We leave it to the discretion of the
Examiner to reconsider the patentability of the remaining claims. See MPEP
§ 1213.02.

DECISION
We REVERSE the Examiner’s rejections of claims 1-3, 5-7, 10-15,
17-25, 29-33, and 36-38.
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We enter a NEW GROUND OF REJECTION of claims 1, 10, and 11
under 35 U.S.C. § 103(a) as unpatentable over Guillemin, Strian, and
Nakagawa pursuant to our authority under 37 C.F.R. § 41.50(b) (2011).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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