Ex Parte Sano et al

Board of Patent Appeals and Interferences

Sep 15, 2010

11061446 (B.P.A.I. Sep. 15, 2010)

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.
11/061,446 02/22/2005 Yoshihiko Sano 245402010300 5557
7590 09/15/2010
Barry E. Bretschneider
Morrison & Foerster LLP
Suite 300
1650 Tysons Boulevard
McLean, VA 22102
EXAMINER
NATNITHITHADHA, NAVIN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
09/15/2010 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 YOSHIHIKO SANO, TAKEFUMI NAKANISHI,
TAKAHIDE TANAKA, YUKIYA SAWANOI, KENJI EDA,
MINORU TANIGUCHI, HIROYA NAKANISHI, TOMONORI INOUE,
and TETSUYA NAKADA
____________

Appeal 2009-007873
Application 11/061,446
Technology Center 3700
____________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007873
Application 11/061,446

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
final decision rejecting claims 1-6 under 35 U.S.C. § 103(a) as being
unpatentable over Kaspari (US 5,533,511, issued Jul. 9, 1996), Ogura (US
5,649,536, issued Jul. 22, 1997) and Lin (US 2002/0087054 A1, publ. Jul. 4,
2002), or in the alternative, over Kaspari, Ogura and Brown (US 5,899,855,
issued May 4, 1999). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
Claim 1 is illustrative of the claims on appeal:
1. A blood pressure measurement device,
comprising:
a main body unit fixed to said blood
pressure measurement device and a display unit
removably mounted on said blood pressure
measurement device; wherein
said main body unit includes
a cuff mounted on a region for measurement
of a living body, a control unit for measuring a
blood pressure of said living body with adjusting a
pressure of said cuff for blood pressure
measurement, and a main body operation unit
operated to externally provide an instruction for a
blood pressure measurement operation of said
control unit,
said cuff is integrally attached to said main
body unit so as to form a single piece when
attached, and
said display unit includes a storage unit for
storing data of blood pressure measurement with
said control unit, a display portion for displaying
measurement data in said storage unit, and a
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display operation unit operated to externally
provide an instruction for a display operation of
said display portion.

ISSUES
The Appellants do not appear to argue the rejections of dependent
claims 2-6 separately from the rejection of independent claim 1. Claim 1 is
representative for purposes of the rejection under § 103(a). See 37 C.F.R.
§ 41.37(c)(1)(vii). The two issues in this appeal are:
First, would Kaspari and Ogura have taught away from
the combination proposed by the Examiner because the
combination of Kaspari and Ogura would have been
unsatisfactory for Kaspari’s intended purpose? (See Br. 4).
Second, do the evidence and technical reasoning
underlying the rejection of representative claim 1 adequately
support the Examiner’s conclusion that the subject matter of
claim 1 would have been obvious? (Br. 5-6).

FINDINGS OF FACTS
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. We adopt and incorporate by reference the Examiner’s findings
in the Examiner’s Answer from page 4, line 8 to page 5, line 16.
2. We adopt and incorporate by reference the Examiner’s findings
in the Examiner’s Answer on page 6, lines 6-17.
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3. We adopt and incorporate by reference the Examiner’s findings
in the Examiner’s Answer beginning from “Kaspari discloses that the
control housing . . . ” on page 7, lines 24-27 to page 8, line 7.
4. Kaspari identifies contexts, including surgery and drug therapy,
where it is desirable to detect sudden changes in blood pressure
immediately. (see Kaspari, col. 1, ll. 45-55). Nevertheless, the benefits and
capabilities with which Kaspari lauds Kaspari’s device are not limited to the
surgical or drug treatment contexts. (See Kaspari, col. 4, ll. 27-35)
5. Lin discloses storing medical compliance data or health
parameter data from a measuring device in a memory of a portable device
such as a personal digital assistant (“PDA”) which may be brought to a
doctor. Lin also discloses transmitting the medical compliance data and the
health parameter data from the PDA via a communications link to a central
computer. (Lin, para. [0022]).
6. Brown discloses using a video game controller 12 having a
display and internal memory for displaying medical information received
from a data management unit 10. The video game controller includes a
detachable cable 14 for establishing communication between the video game
controller 12 and the data management unit 10. (E.g., Brown, col. 9, ll. 1-30
and col. 10, l. 25 – col. 11, l. 3).

ANALYSIS
First Issue
The Appellants contend that “incorporating the teachings of Ogura
into the device of Kaspari in the manner suggested by the Examiner would
render Kaspari unsatisfactory for its intended use.” (Br. 4). The Appellants
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contend that “[i]ncorporating Ogura's cuff 14 on Kaspari's device in the
manner suggested by the Examiner would require placing the entire device
on the patient's bed, which would get in the way of the doctor performing
surgery or other treatment.” (Br. 5). This contention is not persuasive
because the intended purpose disclosed by Kaspari for Kaspari’s device is
broader than the Appellants allege.
The Examiner finds that Kaspari’s main body unit 24 can be mounted
at the patient’s bed, or other suitable location, including an area in close
proximity to the patient arm. (FF 3). The Examiner also finds Ogura
teaches keeping the patient’s arm in a natural posture which ensures that the
blood pressure measurements are accurate. (Id.). The Examiner correctly
concludes that “modifying Kaspari with Ogura's configuration would permit
the subject to keep his or her natural posture whether lying down on the bed
or any other posture” so as to ensure accurate measurements. (Ans. 8).
The Appellants appear to rely on Kaspari’s description of the structure
of a preferred embodiment of the device, along with speculation concerning
advantages which the arrangement of that preferred embodiment might
possess in a particular setting, to unduly narrow the “intended purpose” for
Kaspari’s device. (Compare Br. 4-5 with Kaspari, col. 11, ll. 33-35 and col.
11, l. 65 – col. 12, l. 3). Although Kaspari identifies contexts, including
surgery and drug therapy, where it is desirable to detect sudden changes in
blood pressure immediately, the intended purpose of Kaspari’s device is not
limited to the surgical or drug treatment contexts as the Appellants appear to
allege. (See FF 5). The Appellants fail to provide a persuasive argument
that the nature of the devices disclosed by Kaspari and Ogura would not
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have discouraged one of ordinary skill in the art from combining the
teachings of Kapari and Ogura in the fashion proposed by the Examiner.

Second Issue
The Examiner reasons that it would have been obvious “to modify
Kaspari’s display unit 25 with Lin’s PDA or Brown’s hand held unit in order
to store health parameter data of a patient in a memory of a portable device,
such as a PDA or hand held device, which may be brought to the doctor.”
(Ans. 6). The Examiner articulates reasoning with some rational
underpinning sufficient to support the legal conclusion of obviousness. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
The Appellants point out that Kaspari’s control and display panel
manage the operation of Kaspari’s device. They contend that modifying
Kaspari’s device to permit a doctor to disconnect and carry off the control
and display panel could render the device inoperative. (Br. 6). The
Appellants also contend that Kaspari’s display panel “has access to the RAM
in the housing 24 and [the display panel] has no need to include a memory
unit of its own.” (Id.) To the contrary, they argue that one of ordinary skill
would have reason not to modify Kaspari’s display panel to include memory
because the modification would increase the size of the unit. (Id.)
The contentions are not persuasive. Kaspari’s removable control and
display device 25 appears to communicate with the housing 24 by means of
a signal conductor. (FF 4). Both Lin and Brown teach hand held display
units communicating with data storage devices either wirelessly or through
detachable signal conductors. (FF5 and 6). Both Lin and Brown also teach
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including memory in the hand held units. (Id.) Detachment and removal of
the control and display panel 25 from the housing 24 would not have
rendered the blood pressure measurement system inoperable, since the same
panel 25 or another such panel might have been re-attached to the housing
24 to control the blood pressure measurement system. Furthermore, the
Examiner’ reasoning explains why one of ordinary skill in the art would
have had reason to combine the teachings of Kaspari, Ogura and either Lin
or Brown so as to include a storage device or memory in the control and
display panel. As the Examiner explains, the storage device would have
provided a portability feature allowing data stored in the device to be viewed
outside the immediate area of the housing 24.

CONCLUSIONS
Kaspari and Ogura would not have taught away from the combination
proposed by the Examiner.
The evidence and technical reasoning underlying the rejection of
representative claim 1 adequately support the Examiner’s conclusion that the
subject matter of claim 1 would have been obvious.
We sustain the Examiner’s rejection of claims 1-6 under § 103(a) as
being unpatentable over the combined teachings of Kaspari, Ogura and Lin
and, in the alternative, over the combined teachings of Kaspari, Ogura and
Brown.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-6.
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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) (2009).

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AFFIRMED

Klh

BARRY E. BRETSCHNEIDER
MORRISON & FOERSTER LLP
SUITE 300
1650 TYSONS BOULEVARD
MCLEAN, VA 22102
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