11264420 (B.P.A.I. Jun. 25, 2012)

Ex Parte Parsee et al

Board of Patent Appeals and InterferencesJun 25, 2012

11264420 (B.P.A.I. Jun. 25, 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. 11/264,420 11/01/2005 Mehryar Michael Parsee 031407.00235 5972 26712 7590 06/25/2012 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER GILBERT, ANDREW M ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 06/25/2012 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 MEHRYAR MICHAEL PARSEE, CHARLES GREY, and SAB MIRZA ____________________ Appeal 2010-007641 Application 11/264,420 Technology Center 3700 ____________________ Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007641 Application 11/264,420 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18-30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claimed subject matter relates to infusion pumps having function keys for recalling critical operational data during medication infusion. See Spec. para. [0004]. Claim 18 is reproduced below with the key disputed limitation emphasized: 18. An infusion pump having a configuration state during which configuration data is input to the pump for controlling a subsequent infusion operation and an infusion state during which the pump executes an infusion operation in accordance with inputted configuration data, the infusion pump comprising: a housing configured to receive a tube through which infusion fluid is pumped; a data processor contained within the housing; a display electrically connected to the data processor and affixed to the housing; a plurality of function keys electrically connected to the data processor and affixed to the housing, wherein at least one of the function keys is operable while the infusion pump is in the configuration state to input an alphanumeric character to said data processor, and is operable while the infusion pump is in the infusion state to cause a predetermined information screen to be displayed by the display. Appeal 2010-007641 Application 11/264,420 3 REJECTIONS Appellants seek review of the following rejections: (1) Claims 18-30 under 35 U.S.C. § 102(b) as being anticipated by Ford (US Patent No. 5,681,285, iss. Oct. 28, 1997). Ans. 3. (2) Claims 18-30 under § 102(b) as being anticipated by Marttila (US Patent No. 5,685,844, iss. Nov. 11, 1997). Ans. 5. ANALYSIS Claims 18-30 as anticipated by Ford The Examiner found, and we agree, that Ford discloses that “during the infusion state, the function key allows the user to display hidden data which is a predetermine [sic] information screen to be displayed.” Ans. 8; Col. 10, ll. 41-43. The Examiner also found that Ford’s key is operable to input an alphanumeric character during a configuration state. Ans. 3, 8. In particular, the Examiner found “the user could enter a numeric value for the infusion rate (e.g. 5 mL/hr) by pressing ‘5’ and then hit to confirm the value causing the value to be inputted in the data processor and then to begin the infusion.” Ans. 8. This finding is not supported by the reference. Ford discloses that when a user enters a volume limit in mL (an alphanumeric character) the user presses and then to initiate infusion. Col. 21, ll. 10-30; fig. 24. Ford does not disclose pressing the key as part of this operation. Contra. Ans. 8. Accordingly, Ford fails to disclose at least one function key that is operable while the infusion pump is in the configuration state to input an Appeal 2010-007641 Application 11/264,420 4 alphanumeric character, and is operable while the infusion pump is in the infusion state to cause a predetermined information screen to be displayed. For the foregoing reasons, we find that the Examiner erred in finding that Ford discloses all of the limitations recited in independent claim 18, and we do not sustain the rejection of independent claim 18 and its dependent claims 19-30 under § 102(b) as anticipated by Ford. Claims 18-30 as anticipated by Marttila Appellants argue claims 18-30 as a group on the basis of claim 18 (App. Br. 4). We select independent claim 18 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner found that at least one of Marttila’s function keys (numeric keys 0-9 of keypad 16) is operable to input an alphanumeric character when in the configuration state, and is operable to cause a predetermined information screen to be displayed when in the infusion state. Ans. 10, 11. In particular, the Examiner found, and we agree, that Marttila discloses that at least one of numeric keys 0-9 of keypad 16 can be used during a configuration state to assign a protocol to a selected speed protocol. Advisory Action 2. The Examiner also found, and we agree, that Marttila discloses that the same numeric key may be used to bring up a specific protocol for review and that “a selected speed protocol may be reviewed at any time without any effect on the current protocol (e.g., during an infusion state).” Ans. 11. Appellants first contend that the number key used to bring up the protocol for review is not operable in the infusion state “without first depressing another function key [e.g., the “REVIEW” button].” Rep. Br. 4. Appeal 2010-007641 Application 11/264,420 5 Appellants secondly contend that the number key used to bring up the protocol for review is merely operable to input an alphanumeric character, rather than being “repurposed during an infusion state.” Rep. Br. 4. The requirement that the function key be operable without first depressing another function key and/or that the function key be repurposed during an infusion state is not recited in the claims. Unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellants’ attempt to distinguish the claimed subject matter from the prior art based on features that are not in the claims is not persuasive. Predetermined information screens in accordance with the claimed subject matter can comprise “[a]ny suitable, relevant information stored in memory module 134 or being processed in monitor and control unit 130 . . . shown to display 22.” See Spec. para. [0056]. By entering the speed control number using a number on the keypad in order to review a speed protocol, the control 10 for the pump 23 of Marttila either (i) displays a warning to the operator indicating that an invalid speed protocol number has been entered or (ii) displays the selected speed protocol in a review format (Col. 3, l. 58; 11, ll. 44-51). The warning and/or the review format of the speed protocol reasonably comprises a predetermined information screen displayed on the display in accordance with the recited claim language and consistent with Appellants’ Specification. Moreover, a “protocol can be reviewed without affecting the current operation of the pump under control of a different protocol.” (Col. 9, ll. 58-60). Accordingly, the same number key in Marttila (e.g., number key 1, 2, or 3) is operable both to input alphanumeric Appeal 2010-007641 Application 11/264,420 6 characters during the configuration state and to cause a predetermined information screen to be displayed on the display during the infusion state. For the foregoing reasons, we find that the Examiner did not err in finding that Marttila discloses all of the limitations recited in claim 18 and we sustain the rejection of claims 18-30 under § 102(b) as anticipated by Marttila. DECISION The Examiner’s rejection of claims 18-30 under § 102(b) as being anticipated by Ford is REVERSED. The Examiner’s rejection of claims 18-30 under § 102(b) as being anticipated by Marttila is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) . AFFIRMED Klh