Ex Parte Parnagian

Board of Patent Appeals and Interferences

Jun 13, 2012

10934712 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EDWARD PARNAGIAN
__________

Appeal 2011-004138
Application 10/934,712
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
door for a port in a patient monitoring instrument. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
The Specification states that one conventional patient monitor “draws
the patient’s breath into the patient monitor where it is analyzed and
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Application 10/934,712

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expelled” (Spec. 1: 29 to 2: 2). The Specification states that patient monitors
commonly used in hospitals “generally leave the gas inlet and outlet ports
for gas sampling unprotected, as there is generally little risk of
contamination” in that setting (id. at 2: 5-9), although one commercially
available monitor covers the inlet port with a hinged door that must be
opened with one hand while the collection tube is inserted with the other
hand (id. at 2: 9-14).
The Specification discloses a patient monitoring instrument in which a
“spring-loaded door covers the unused ports and can be easily opened with
the connector end of a gas sample collection tube. . . . The sample collection
tube can be easily connected with only one hand by touch alone.” (Id. at
2: 33 to 3: 8.) Specifically, the instrument includes a door having on its edge
“a semi-circular alignment ramp 84 . . . [that] enables the door 80 to be
opened with a collection tube luer held in one hand of a user. The alignment
ramp can be located on the front of the door by touch alone and also serves
to guide the collection tube luer to the luer receptacle 88 of the inlet port
90.” (Id. at 7: 28-33.)
Claims 1-19 are on appeal. Claims 1 and 10 are representative and
read as follows:
1. A patient monitoring instrument, comprising:
a case;
an opening in the case forming a first port;
a door mounted on the outside of the case and having an edge
extending around the entire periphery of the door, the door being
mounted so that it is moveable between at least first and second
positions, the door covering the first port in the first position and
uncovering the first port in the second position;
a spring resiliently biasing the door to the first position; and
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a concave contour formed on the edge of the door at a location
that is positioned adjacent the first port when the door is in the second
position, the contour being positioned so that it partially surrounds the
first port when the door is in the second position.

10. A method for engaging a tube within a first port of a patient
monitoring instrument which is protected by a spring-loaded door
when not in use, the spring-loaded door having a contour formed
along a portion of an edge of the door, the method comprising;
engaging the contour of the spring-loaded door with the tube;
pressing the tube against the contour to open the door and
expose the first port; and
engaging the first port with the tube.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1-3, 6, and 16-18 based on Williams,1 Poirier,2 and Flaherty3
(Answer 3);
• Claims 1-6, 16, 18, and 19 based on Gardenier,4 Williams, Poirier,
and Flaherty (Answer 6-7);
• Claims 7-9 based on Williams, Poirier, Flaherty, and Bell5 (Answer
9);
• Claims 10, 11, 14, and 15 based on Williams and Bradney6 (Answer
10);

1 Williams, US 5,277,195, Jan. 11, 1994
2 Poirier, US 4,793,818, Dec. 27, 1988
3 Flaherty et al., Patent Application Publication US 2005/0083527 A1, Apr.
21, 2005
4 Gardenier, US 2,484,217, Oct. 11, 1949
5 Bell, US 6,039,696, Mar. 21, 2000
6 Bradney et al., US 6,208,264 B1, Mar. 27, 2001
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Application 10/934,712

4
• Claims 10, 13, and 15 based on Gardenier, Williams, and Bradney
(Answer 13); and
• Claim 12 based on Williams, Bradney, and Bell (Answer 14).
I.
The Examiner has rejected the apparatus claims on appeal (claims 1-9
and 16-19) as obvious based on Williams, Poirier, and Flaherty, by
themselves or further combined with Gardenier or Bell. The same issue is
dispositive for all three rejections.
The Examiner finds that Williams discloses a patient monitoring
instrument with a port covered by a door (Answer 4) and Poirier discloses a
door mounted on the outside of a device and having a spring biasing it to the
closed position (id. at 5). The Examiner concludes that it would have been
obvious to modify Williams’ instrument to have a door like that taught by
Poirier (id.).
The Examiner also finds that “Flaherty teaches a door 70 having a
concave contour formed on the edge of the door (see entire document,
especially fig. 11 of Flaherty)” (id.). The Examiner concludes that it would
have been obvious “to combine the concave contour of Flaherty with the
door of Williams, as modified, in order to facilitate opening of the door”
(id.).
Appellant argues that the Examiner has not made a prima facie case of
obviousness because, among other things, none of the references disclose the
“concave contour” limitation of the claims (Appeal Br. 10-11). Appellant
argues that the Examiner “relies only on Flaherty et al. Fig. 11 to
characterize the detent on the inside surface of the open door 70 as
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Application 10/934,712

7
II.
Issue
The Examiner has rejected claims 10, 11, 14, and 15 as obvious based
on Williams and Bradney; claims 10, 13, and 15 as obvious based on
Gardenier, Williams, and Bradney; and claim 12 as obvious based on
Williams, Bradney, and Bell. Appellant relies on the same arguments with
respect to all three rejections (Appeal Br. 15-17), so we will address them
together.
The Examiner finds that Williams discloses a patient monitoring
instrument with a port covered by a door, but does not disclose that the door
is spring-loaded (Answer 10-11). The Examiner finds that Bradney
discloses a device having a spring-loaded door or cover (id. at 11), and
concludes that Bradney’s door would be appropriate, and therefore obvious,
to use on Williams’ device (id.).
The Examiner also concludes that it would have been obvious to open
the spring-loaded door by engaging the contour of the door with a tube,
since it is well known to use a tool to perform a normally hand-
operated task, and since the tube is capable of engaging the
door contour, it, therefore, would have been obvious to one of
ordinary skill in the art at the time of invention to use the tube
to engage the contour and open the door so as to minimize
human contact with the interior portions of the medical device.
(Id. at 12).
Appellant contends that “Bradney is non-analogous art to which one
of ordinary skill in the art would not look to combine with Williams”
(Appeal Br. 15). Appellant also contends that Williams’ description of its
method for preparation for use does not include a door opening step,
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Application 10/934,712

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implying that the door had previously been opened and “[b]ecause the tube
is unneeded prior to preparation for use, there is no need or impetus to use
the tube to either engage or open the door” (id. at 16).
The issue with respect to this rejection is: Has the Examiner provided
an adequate basis for concluding that the method of claim 10 would have
been obvious to a person of ordinary skill in the art?
Findings of Fact
1. Williams discloses a portable spirometer for measuring parameters
of pulmonary function (Williams, col. 1, l. 66 to col. 2, l. ).
2. Williams’ device includes “[a]n aperture 15 . . . forming the
opening to a bore 17. . . . A short tube 19 either of disposable cardboard or
reusable plastic is provided for insertion in bore 17 to facilitate blowing into
the spirometer.” (Id. at col. 3, ll. 34-39.)
3. Williams discloses that a “small door 21 is slidably received in
front wall 11 and arranged to be moved by a handle or projection 23 back
and forth to facilitate covering and uncovering aperture 15” (id. at col. 3, ll.
39-42).
4. Bradney discloses a system for verifying a person’s identity in
point-of-sale transactions (Bradney, col. 1, ll. 7-12).
5. Bradney’s system includes a “card key containing a machine-
readable code that is . . . an encrypted data set representing the user’s
thumbprint” (id. at col. 2, ll. 1-4).
6. Bradney discloses that the “system senses the user’s thumbprint on
or adjacent to the card key. . . . The code and thumbprint are simultaneously
read” to verify the user’s identity. (Id. at col. 2, ll. 4-10.)
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7. Bradney discloses that, in a preferred embodiment, the “card key
comprises a body 46, preferably of molded plastic or metal, and a spring-
loaded sliding cover 48” over the thumbprint-reading scan window (id. at
col. 5, ll. 47-49).
Principles of Law
A proper § 103 analysis requires “a searching comparison of the
claimed invention – including all its limitations – with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
Although factfinders must avoid “the distortion caused by hindsight
bias,” id., “[r]igid preventative rules that deny factfinders recourse to
common sense . . . are neither necessary under [controlling] case law nor
consistent with it.” Id.
Analysis
We agree with the Examiner that the method of claim 10 would have
been obvious to those of ordinary skill in the art in view of Williams and
Bradney. Williams discloses a device having a door that must be opened in
order to insert a tube for measurement of lung parameters, and Bradney
discloses a device having a sliding, spring-loaded door that is moved aside to
expose a thumbprint-reading scan window. As the Examiner concluded,
those skilled in the art would have recognized that a sliding, spring-loaded
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door would also have been suitable for use in Williams’ device, and
therefore such a door would have been an obvious modification to make.
We also agree that pushing the door open with the sampling tube,
rather than the user’s hand, would have been among the obvious ways in
which to use the device suggested by Williams and Bradney. Williams
discloses that the door is opened so that a tube can be inserted into the
opening, and it would be readily apparent to a person using the device that
the handle of the door could be effectively pushed using either a finger or a
cardboard or plastic tube. Using a tube to push open a sliding door is well
within the range of “creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418.
We are not persuaded by Appellant’s argument that Bradney and
Williams are non-analogous art (Appeal Br. 15). Both Bradney and
Williams address solutions to the problem of keeping a sampling locus
covered except when a sample (thumbprint in Bradney, expelled breath in
Williams) is intended to be measured. The references would therefore have
been recognized as reasonably pertinent to a particular problem. See In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)(“[T]he reference must either
be in the field of the applicant’s endeavor or, if not, then be reasonably
pertinent to the particular problem with which the inventor was
concerned.”).
We are also not persuaded by Appellant’s argument that, because
Williams does not describe opening the door in its method of preparation for
use, “there is no need or impetus to use the tube to either engage or open the
door” (Appeal Br. 16). Williams states that the purpose of the door is to
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keep foreign matter out of the interior of the instrument when it is not in use
(Williams, col. 3, ll. 43-44). Given that purpose, it would have been obvious
to keep the door closed until it was time to insert the sampling tube.
With regard to claim 11, Appellant argues that Williams’ handle
would not guide the tube into engagement with the port, as required by the
claim, because “mere incidental contact between tube and projection is not
‘guiding’” (Appeal Br. 16-17).
This argument is also unpersuasive. Williams shows its handle as
projecting perpendicularly from the sliding door. The handle would
therefore prevent a tube from moving sideways out of alignment with the
aperture in Williams’ spirometer. Appellant has provided no persuasive
reason for concluding that this function does not meet the limitation of
“guid[ing]” the tube.
With regard to claim 15, Appellant argues that “neither Williams nor
Bradney et al. suggest any tactile engagement of anything at all” (Appeal Br.
17).
Claim 15 is directed to the “method of claim 10, wherein engaging the
contour is done tactility [sic, tactilely?].” The claim thus requires the
“engaging” step of claim 10 to involve the sense of touch, but it does not
limit the step to exclude using any of the other senses. Appellant has
provided no persuasive reason to conclude that a person using a cardboard or
plastic tube to push open a sliding door would not receive feedback through
their sense of touch during the process. The argument is therefore
unpersuasive.
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Conclusion of Law
The Examiner has provided an adequate basis for concluding that the
methods of claims 10, 11, and 15 would have been obvious to a person of
ordinary skill in the art. Claim 14 falls with claim 10 because it was not
argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
With regard to the rejections based on Gardenier, Williams, and
Bradney, or Williams, Bradney, and Bell (Answer 13-15), Appellant has
waived the opportunity to present additional arguments based on Gardenier
or Bell. See Appeal Br. 17.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a) applied to claims
10-15, but reverse the rejections applied to claims 1-9 and 16-19.
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-IN-PART

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