Ex Parte O et al

Patent Trial and Appeal Board

Sep 6, 2018

14202624 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/202,624 03/10/2014
69781 7590 09/10/2018
Barnes & Thornburg LLP (Hill-Rom)
11 S. Meridian Street
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Christopher R. O'KEEFE
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.
7175-227626 1758
EXAMINER
THROOP, MYLES A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
indocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. O'KEEFE, FRANKE. SAUSER,
and KRISTOPHER A. KLINK 1
Appeal2018-000258
Application 14/202,624
Technology Center 3600
Before JAMES P. CALVE, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party in interest is Hill-Rom Services, Inc.
App. Br. 2.
Appeal2018-000258
Application 14/202,624
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
21-24, and 30-44. We have jurisdiction under 35 U.S.C. § 6(b).
We summarily reverse and enter a new ground of rejection.
THE INVENTION
The claims are directed to an air fluidized therapy bed having
pulmonary therapy. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A patient support apparatus comprising:
a controller,
a user interface,
a single air supply,
a first flow path pneumatically connecting the
single air supply to the first patient support zone,
a diverter valve positioned in the first flow path,
a second flow path pneumatically connecting the
diverter valve and a second patient support zone,
the first patient support zone comprising an air
fluidization therapy bed including a fluidization
space and a fluidizable medium positioned in the
fluidization space, the air fluidization therapy bed
receiving the a flow of pressurized air from the air
supply, the flow of pressurized air operable to
fluidize the fluidizable medium, and
the second patient support zone comprising a
micro-climate assembly, wherein the controller is
operable, based on inputs to the user interface, to
control the diverter valve to selectively divert a
portion of the flow from the first flow path to the
second patient support zone such that the single air
supply continuously supplies both the air fluidization
therapy bed and the micro-climate assembly.
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Appeal2018-000258
Application 14/202,624
Ellis
O'Reagan
Howell
REFERENCES
US 6,202,672 B 1
US 2008/0263776 Al
US 2011/0138538 Al
REJECTION
Mar. 20, 2001
Oct. 30, 2008
June 16, 2011
Claims 1, 21-24 and 30-44 are rejected under 35 U.S.C. § 103 as
unpatentable over Howell, O'Reagan, and Ellis.
ANALYSIS
New Ground of Rejection under 37 C.F.R. § 41.50(b)
We enter a new ground of rejection for claims 1, 21-24 and 30-44
under 35 U.S.C. § 112(b), as indefinite for failing to particularly point out
and distinctly claim the subject matter which the Appellants regard as the
invention.
Independent claim 1 is drawn to a patient support apparatus
comprising, e.g., a single air supply; a first patient support zone comprising
an "air fluidization therapy bed" that receives air from the single air supply;
a second patient support zone comprising a micro-climate assembly; and a
diverter valve that can be controlled to "selectively" divert a portion of the
air flow from the first support zone to the second support zone such that the
single air supply "continuously supplies both" zones. Independent claim 22
is similar. It is unclear how air can be "selectively" diverted to the micro-
climate assembly and yet be "continuously" supplied to that assembly. The
Specification does not define either "selectively" or "continuously." In fact,
the Specification does not expressly disclose "continuously" supplying air to
both zones. One pertinent definition of "continuous" is "uninterrupted."
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Appeal2018-000258
Application 14/202,624
Continuous Definition, Merriam-Webster.com, see https://www.merriam-
webster.com/dictionary/continuous (last visited Sept. 4, 2018). Thus,
"continuously" supplying air to both patient support zones likely means
supplying the air to both zones without interruption. But "selectively"
diverting air to the second zone encompasses the possibility that air may not
be diverted to the second zone. This is consistent with the Specification,
which does not require that air be diverted to the second zone, but only
discloses that it may be diverted. See Spec. ,r 85 ( disclosing that "[b ]ased on
inputs from a user to a user interface 436, the diverter valve 434 may be
engaged to divert a portion of the air flow from the air supply 30 to the
micro-climate management assembly 416") ( emphasis added). On its face,
it is inconsistent for claim 1 to require that air be supplied to both zones
continuously-without interruption-and yet encompass the possibility that
air may not be supplied to the second zone.
"It is of utmost importance that patents issue with definite claims that
clearly and precisely inform persons skilled in the art of the boundaries of
protected subject matter." MPEP § 2173. During prosecution "[a] claim is
indefinite when it contains words or phrases whose meaning is unclear," id.
§ 2173.0S(e), or ifit is "amenable to two or more plausible claim
constructions," Ex Parte Miyazaki, 89 USPQ2d 1207, 1210 (BPAI 2008)
(precedential). The USPTO bears responsibility for testing claims for
definiteness prior to issuance. See, e.g., In re Zietz, 893 F .2d 319, 321-22
(Fed. Cir. 1989) (holding that during patent prosecution, claim "ambiguities
should be recognized" and "clarification imposed"). Because it is unclear
how air can be both selectively and continuously supplied to the micro-
climate assembly, we reject claims 1 and 22, as well as their dependent
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Appeal2018-000258
Application 14/202,624
claims 21, 23, 24, and 30-40, for failing to comply with the definiteness
requirement of 35 U.S.C. § 112(b ).
The Examiner's Rejection of Claims
1, 21-24 and 3rJ--44 under 35 US.C. § 103
Claims 1, 21-24 and 30-44 are rejected as being indefinite under
35 U.S.C. § 112(b ), discussed above. Further, Appellants' primary
argument in opposition to the Examiner's rejection under 35 U.S.C. § 103(a)
concerns the claim language that we determined to be unclear. See App.
Br. 7 ( arguing that the prior art does not teach a diverter valve that
"selectively divert[ s] a portion of the flow from the first flow path to the
second patient support zone such that the single air supply continuously
supplies both the air fluidization therapy bed and the micro-climate
assembly") ( emphasis added). Because we cannot ascertain the meaning or
scope of this limitation, it is not possible to address this rejection. See In re
Steele, 305 F.3d 859, 862 (CCPA 1962) ("We do not think a rejection under
35 U.S.C. § 103 should be based on ... speculations and assumptions ...
[I]t is essential to know what the claims do in fact cover."). Therefore, we
summarily decline to sustain the rejections of claims 1, 21-24 and 30-44.
It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy of the prior art evidence applied in support of the
rejection before us. Once definite claims are presented, the Examiner is free
to apply the same, different, or additional prior art as the Examiner so
chooses. 2
2 If the Examiner should continue to rely on Ellis to teach the claimed
diverter valve, the Examiner should clarify which of the valves in Ellis'
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Appeal2018-000258
Application 14/202,624
DECISION
For the above reasons, we summarily reverse the Examiner's rejection
of claims 1, 21-24 and 30-44 under 35 U.S.C. § 103. We enter a new
ground of rejection for claims 1, 21-24 and 30-44 under 35 U.S.C. § 112(b).
FINALITY OF DECISION
This decision contains new grounds of rejection under 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.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"; or
"(2) Request rehearing. Request that the proceeding be reheard under
§ 41. 5 2 by the Board upon the same record."
REVERSED
37 C.F.R. § 4I.50(b)
apparatus corresponds to the diverter valve. The Examiner has stated, for
example, that "Ellis Figs. 2-6 teach a diverter valve." Final Act. 4. But
Figures 2---6 of Ellis do not all depict the same structure. Figures 2--4 depict
a "proportional valve," whereas Figures 5 and 6 depict a "pulsating valve."
Ellis 5:1-13. While it appears from the Examiner's statements as a whole
that the Examiner relies on Ellis' pulsating valve, and primarily the
depiction of such valve in Figure 5 of Ellis, it would be helpful for the
Examiner to confirm this and to avoid inadvertently relying on teachings
concerning the proportional valve in the Examiner's analysis.
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