Ex Parte Schermeier et al

Patent Trial and Appeal Board

Nov 21, 2014

12061894 (P.T.A.B. Nov. 21, 2014)

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.
12/061,894 04/03/2008 Olaf SCHERMEIER 72861 9276
23872 7590 11/21/2014
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
11/21/2014 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte OLAF SCHERMEIER, HENNING GERDER, and
HANS ULLRICH HANSMANN1
__________

Appeal 2012-010594
Application 12/061,894
Technology Center 3700
__________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–15 and 21–25 as unpatentable. We have jurisdiction
under 35 U.S.C. § 6(b). This case was argued before the Board on
November 13, 2014.
We affirm and designate a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

1 According to Appellants, the Real Party in Interest is Dräger Medical
GmbH. (App. Br. 1.)
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STATEMENT OF THE CASE
Appellants’ invention relates to “a Y-piece for medical respiration
(also known as ventilation) systems, which is usually arranged as a
pneumatic bridging element between the breathing tube at or to the patient
and an inspiration branch and an expiration branch from or to a respirator or
anesthesia apparatus.” (Spec. ¶ 2.)
The independent claims on appeal read as follows (formatted):
1. A Y–piece for a medical respiration system, the Y–piece
comprising:
an inspiration branch;
an expiration branch;
a Y–piece contactless connection element portion; and
an electrical interface providing a connection between
one or more sensors connected to said Y–piece
and
a contactless connection element portion of a flexible
breathing tube connected to at least one of said
inspiration branch and said expiration branch via
said Y–piece contactless connection element
portion,
said connection of said electrical interface being
provided for a non-respiration sensor spaced from
the Y–piece.

21. A medical respiration system comprising:
a housing with a patient side branch, with
an inspiration branch in communication with said
patient side branch, and with
an expiration branch in communication with said
patient side branch;
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a housing contactless connection mounted on said
housing and arranged on one of said inspiration branch
and said expiration branch,
said housing contactless connection being formed to
transfer signals to a tube of the medical respiration
system, wherein
the tube is connected to said one of said
inspiration branch and said expiration branch,
and
the transfer of signals to the tube is performed
without electrical contact;
an electrical interface arranged on said housing,
said electrical interface providing a non-respiration
connector for a non-respiration sensor,
said electrical interface also transferring signals from
said non-respiration connector to said housing
contactless connection.
The following grounds of rejection are before us for review:
I. Claims 1–3, 6–7, 9–10, and 12–15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gerder,2 Rice,3 Doyle,4 and Banner.5
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerder, Rice, Doyle, and Banner, as applied to claim 1 above, and in
further view of Chalvignac6 and Tiedje.7

2 Gerder et al., US 2004/0182392 Al, published September 23, 2004.
3 Rice et al., US 2007/0265877 Al, published November 15, 2007.
4 Doyle, US 7,617,824 B2, issued November 17, 2009.
5 Banner et al., US 2004/0003813 Al, published January 8, 2004.
6 Chalvignac, US 2010/0024824 Al, published February 4, 2010.
7 Tiedje, US 2010/0024819 Al, published February 4, 2010.
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III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerder, Rice, Doyle, and Banner, as applied to claim 1 above, and in
further view of Chalvignac.
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerder, Rice, Doyle, and Banner, as applied to claim 1 above, and in
further view of Tillotson.8
V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gerder, Rice, Doyle, and Banner, as applied to claims 1 and 10
above, and in further view of Tiedje and Cohen.9
VI. Claims 21 and 23–24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerder, Rice, Banner, and Chalvignac.
VII. Claims 22 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerder, Rice, Banner, and Chalvignac, as applied to
claim 21 above, and further in view of Tiedje.

FINDINGS OF FACT
FF1. The Examiner’s rejections and response to Appellants’ arguments are
set forth in the Examiner’s Answer. Except as otherwise noted below,
we adopt as our own the Examiner’s factual findings and legal
conclusions.
Specification
FF2. The Specification discloses a single Figure, reproduced below.

8 Tillotson et al., US 5,676,132, issued October 14, 1997.
9 Cohen, US 7,286,871 B2, issued October 23, 2007.
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The disclosed Figure shows “a schematic view showing the design and the
arrangement of Y–piece between the patient-side respiration tube and the
inspiratory or expiratory flexible breathing tube according to the invention.”
(Spec. ¶ 23.) Y–piece 1 comprises inspiratory leg 21, expiratory leg 22, and
a patient-side connection to breathing tube 2. (Id. ¶ 24.) Flexible breathing
tube 3 connects Y–piece 1 to a respirator or anesthesia apparatus 5 via
pneumatic port 6. (Id. ¶ 25.) The connection between breathing tube 3 and
Y–piece 1 includes contactless connection element 4 for data and/or energy
transmission. (Id. ¶ 26.) Electric terminal 7 for data exchange and supply
voltage via wire lines in flexible breathing tube 3 is provided at the
respirator or anesthesia apparatus 5. (Id. ¶ 25.) The Y–piece further
includes electronic unit 8 having electric plug mounts and providing an
electric interface for one or more of sensors 9–12 for sensing ECG (9),
oxygen partial pressure (10), temperature (11), or blood pressure (12) (i.e., a
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sphygmomanometer). (Id. ¶ 27, abstract.) Y–piece 1 further includes breath
flow sensor 15 and, optionally, pressure sensor 16 for detecting respiration
pressure. (Id. ¶ 28–30.) Electronic unit 13 is functionally connected to
sensors 9–12, 15, and 16 and includes a display function. (Id. ¶ 32.) Energy
storage means 14 may be integrated into Y–piece 1 to maintain operation of
the sensor system during manual respiration with a manual breathing bag,
for example, during transportation of the patient. (Id. ¶ 35.)
Gerder
FF3. Gerder states that in prior art medical respirators
An inspiration tube and an expiration tube are connected to
one another via a Y-piece, with a flow sensor and a
respiration tube being connected to the end of the Y-piece
pointing toward the patient. The flow sensor detects the gas
flow both during the inspiration phase and during the
expiration phase. The electric contacting of the flow sensor is
achieved via a cable connection, which extends from the
respirator to the flow sensor.

(Gerder ¶ 2.)
FF4. Gerder teaches that a contactless connection for the respirator Y-tube
is advantageous because
[A] separate cable connection extending in addition to the
breathing gas tube is avoided due to the combination of a
signal line for sensor data, which extends along the breathing
gas tube, with a contactless interface between the breathing
gas tube and the sensor means, and, on the other hand, that
the sensor data can be directly transmitted to the respirator
via the contactless interface and the breathing gas tube. For
example, an optical interface, which is characterized in that it
is especially insensitive to external disturbing effects,
especially magnetic fields, is suitable for use as a contactless
interface. For actuating the optical interface, the sensor
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means has an energy supply of its own, e.g., in the form of a
battery.

(Id. ¶ 8.)
Rice
FF5. Rice teaches a respirator Y-piece having contactless connection
elements connected to both the inspiration and expiration limbs of the
breathing tubes. (Rice Figs. 1–3.) The Examiner finds that Rice teaches
electrical interface elements integrally attached to the housing of the Y-
piece. (Ans. 6; see also Rice ¶¶ 19–21.)
Banner
FF6. Banner teaches a ventilator control system comprising at least one
ventilator setting control, a plurality of sensors, a processing subsystem
and a feedback system for providing the appropriate quality and quantity
of ventilation support for a patient. (Banner ¶¶ 2, 17.) Banner Figure 3 is
reproduced below.

Banner Figure 3 shows ventilator 20 comprising ventilator control center
30, processing subsystem 40, and ventilator pneumatics 32, 34, and 36.
(Id. ¶ 31.) Blood pressure signals from one or more non-respiration
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sensors (sphygmomanometer and/or pulse oximeter), along with signals
from respiratory sensors are sequentially received at processing
subsystem 40, ventilator controls 30, and ventilator pneumatics 32, 34,
and 36. (Id. Fig. 3; ¶¶ 34, 38–40.)
Doyle
FF7. Doyle discloses that during the operation of a ventilator, a flexible
hose or conduit typically carries the flow of gas to and from the patient’s
airway via a Y-connector. (Doyle 7:32–53.)
Chalvignac
FF8. Chalvignac teaches a respirator regulatory component comprising a
housing with sensors plugged into the housing. (Chalvignac ¶ 69.)
Tiedje
FF9. Tiedje discloses a ventilator apparatus including ECG sensors 5–9
connected by means 5a–9a to electrical interface 15 of processing unit
11. (Tiedje Figure 1; ¶ 53.)
Cohen
FF10. As noted by the Examiner, “Cohen teaches reducing contamination of
electrical ECG signals (Col. 1, ll. 16-28) using a differential amplifier
(Col. 29, ll. 53-61), compensation circuits (Col. 29, ll. 53-61) and an
analog-digital converter (Col. 11, ll. 23-33).” (Ans. 9.)
Tillotson
FF11. Tillotson teaches a pulmonary interface system including a hot-wire
anemometer to detect the mass of air passing therethrough. (Tillotson
Fig. 5; 4:65–5:35.) “Electrical signals sent by the hot-wire anemometer
22, as well as the expiration and inspiration thermistors 26 and 28 in the
flow direction indicator housing 24 are sent to an external microprocessor
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34 (see FIG. 9) via an electrical cable 36 attached to the flow direction
indicator housing.” (Id. 5:24–28.)
ANALYSIS
Appellants raise seven issues set forth below.
Issue 1: Are claims 21 and 23–24 unpatentable over Gerder, Rice, Banner,
and Chalvignac?
Claim 21
Claim 21 recites an “electrical interface providing a non-respiration
connector for a non-respiration sensor.” The Examiner finds that
[I]t would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify Gerder’s
sensors to add a sphygmomanometer, as taught by Banner,
rather than substituting any sensors of Gerder for a
sphygmomanometer, for the purpose of providing further
monitoring abilities for the safety of the patient because
detecting a user's blood pressure adds safety redundancy to
the ventilation unit and the detected blood pressure signals
can also be accounted for by the ventilator to generate a more
accurate data protocol (Page 2, para 23 Gerder), as Banner
uses multiple respiration and non-respiration signals to
control a ventilator (Fig. 3, Page 4, para 38 Banner).
(Ans. 14; see also id. at 10–11.)
Seizing on the Examiner’s admittedly imprecise distinction between
individual sensors and the electrical interface for those sensors, Appellants
argue that the Examiner finds that one of ordinary skill in the art would seek
to “modify sensors of Gerder in view of Banner” (App. Br. 11, see also
Reply Br. 1–2), as opposed to adding a sphygmomanometer input to the
existing respiratory sensor inputs. As we understand the rejection, however,
the Examiner finds that it would have been obvious to modify the electrical
interface taught by Gerder to accept signals from Banner’s
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sphygmomanometer in order to “generate a more accurate data protocol”
(Ans. 14), “providing further monitoring abilities for the safety of the
patient” (Ans. 10–11; see also App. Br. 11), and “to incorporate as much
patient data as possible into Gerder’s electrical interface to generate the most
optimal data protocol to be sent to the respirator.” (Advisory Action dated
12/8/2011; see also App. Br. 11–12.)
Appellants appear to concede that one of ordinary skill in the art
would consider it obvious to add a sphygmomanometer to Gerder (App. Br.
11; Reply Br. 1), but argue that the Examiner’s reasons for modifying
Gerder to include signals from Banner’s sphygmomanometer are insufficient
because they are “not found in the prior art.” (App. Br. 12.) Appellants
further contend that motivation for combining signals from respirator and
non-respirator sensors is found only in paragraph 8 of the Specification.
(Id.) The referenced paragraph, designated part of the BACKGROUND OF
THE INVENTION, recites:
The separate handling or the separate energy and data supply
and transmission via a plurality of cables from the
commercial power supply to the individual devices as well as
from the devices to the patient is ergonomically unfavorable
and confusing and could lead to errors or accidents.
(Spec. ¶ 8.)

Appellants’ arguments are not persuasive. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). “[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
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person of ordinary skill in the art would employ.” Id. at 418. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. In determining obviousness, “the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, in identifying a reason that would have prompted a person
of ordinary skill in the relevant field to combine the prior art teachings, the
Examiner must show some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR, 550 U.S.
at 418. Here, in citing patient safety and a desire for system optimization,
the Examiner provides more than a mere conclusory statement of why one of
ordinary skill in the art would seek to combine the teachings of Gerder and
Banner. Although these reasons sufficiently support the Examiner’s legal
conclusion of obviousness, we further note that Appellants’ own
Specification indicates, as background, that one of ordinary skill in the art
would understand that multiple cables extending between sensor devices and
a patient cause unfavorable ergonomics, confusion, errors, and accidents.
See Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 959 (Fed.
Cir. 1997) (Discussion in patentee’s Background of the Invention section
indicates that disputed claim limitation was “present in the prior art.”) This
known problem further supports the Examiner’s conclusion that combining
the cited references would have been obvious to a person of ordinary skill in
the art.
In light of the above, we sustain the Examiner’s rejection of claim 21.
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Claim 23
Appellants contend that claim 23, as it depends from claim 21, further
requires “a tube connected to said one of said inspiration branch and said
expiration branch,” and having
a tube contactless connection to receive signals from the
housing contactless connection. The tube contactless
connection receives signals from the non-respiration
connector through the electrical interface and the housing
contactless connection.
(App. Br. 13.) According to Appellants, claim 23 requires that “the non-
respiration signals are transferred away from the patient through the tube
that is connected to the inspiration or expiration branch.” (Id.)
In arguing that the Examiner errs in rejecting claim 23 in light of
Gerder, Rice, Banner, and Chalvignac, Appellants merely state that “[t]he
prior art does not disclose, or suggest, transferring non-respiration signals by
contactless transmission to a tube.” (App. Br. 14.) We do not find
Appellants’ argument persuasive.
Merely reciting the language of the claims and asserting that the cited
prior art does not teach or suggest each claim limitation is insufficient basis
for overcoming rejections over the prior art. See 37 C.F.R.
§ 41.37(c)(1)(vii); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). As Appellants present no substantive
argument with respect to dependent claim 23, we affirm.
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Claim 24
Claim 24, depending from claim 23, recites “a respirator connected to
[a] tube” and “an electrical connector arranged on said tube . . . receiving
signals from said tube contactless connection . . . .” Appellants contend that
the Examiner errs in rejecting claim 24 in light of Gerder, Rice, Banner, and
Chalvignac because Banner Figure 3 shows signals from a
sphygmomanometer “do not go to a respirator or ventilator, but instead go to
a processing subsystem 40 which is spaced from, and separate from, a
ventilator,” and therefore teaches away from the claimed invention. (App.
Br. 14.)
We do not find Appellants’ argument persuasive. Nothing in claim 24
requires the direct input of signals from a sphygmomanometer to a ventilator
as Appellants appear to argue. Moreover, although Appellants contend that
claim 24 requires that signals from a sphygmomanometer go “to a Y-piece
of a respirator, and then to a tube end adjacent respirator,” (id.), Appellants
have not explained why Banner’s processing subsystem 40 cannot be located
on the “Y-piece of a respirator” or “a tube end adjacent respirator.”
For this reason, we affirm the Examiner’s rejection of claim 24.
Issue 2: Are claims 22 and 25 unpatentable over Gerder, Rice, Banner, and
Chalvignac, as applied to claim 21 above and further in view of
Tiedje?
Claim 22
With respect to claim 22, the Examiner finds that “[i]t would have
been obvious to one of ordinary skill in the art at the time the invention was
made to modify the modified Gerder’s electrical connection between the
non-respiration sensor and the non-respiration connector with a wireless
connection, as taught by Tiedje, for the purpose of providing a more reliable
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connection.” (Ans. 12–13.) In contesting the rejection, Appellants argue
that the Examiner “uses Tiedje to disclose a lead between a sensor and a
processing unit. However the processing unit appears to be item 4, and item
4 is not a processing unit on a housing with inspiration/expiration branches.”
(App. Br. 15.)
Contrary to Appellants’ interpretation, Tiedje paragraph 53 states that
“pressure or flow from the ventilator 4 is controlled by a processing unit
11 as shown in FIG. 1.” (Emphasis added.) Thus, while we agree that item
4 is not a processing unit, Appellants’ assertion regarding Tiedje is
otherwise incorrect and not relevant to the rejection.
Appellants further argue that they “find[] no indication in the applied
prior art that Tiedje provides a more reliable connection than any of the
other connections set forth in the remaining prior art. Furthermore,
[Appellants] find[] no indication in the remaining prior art that a more
reliable connection is needed.” (App. Br. 15; see also Reply Br. 2–3.)
As an initial matter, we note that Appellants have provided no
evidence rebutting the Examiner’s finding that one of ordinary skill in the art
would have considered Tiedje’s wired connections more reliable than
wireless connections. Moreover, as noted by the Examiner, Tiedje
paragraph 59 discusses the interchangeability of wired and wireless
communications in the context of a ventilator device. (Ans. 12–13.)
“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR,
550 U.S. at 416, citing United States v. Adams, 383 U.S. 39, 50–51 (1966).
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In light of Tiedje’s teaching regarding the equivalency of wired and wireless
connections, we sustain the Examiner’s rejection of claim 22.
Claim 25
Claim 25, depending from claim 21, requires both a respiration sensor
and a non-respiration sensor arranged on the inspiration/expiration housing,
such that signals from both types of sensor pass through the electrical
interface to the housing contactless connection. Appellants contend that
claim 25 is patentable over the cited references because “[a]ll of the applied
prior art leads a person of ordinary skill to keep signals from respiration and
non-respiration sensors separate while they are adjacent the patient, and
especially to keep signals from non-respiration sensors away from an
inspiration/expiration housing.” (App. Br. 16.)
We do not find Appellants’ argument persuasive. “[T]he
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417. Banner discloses that signals from both respiration and non-respiration
sensors serve as input for controlling respirator functions (FF6) and
Appellants have not demonstrated that combining inputs from those two
types of sensors on the inspiration/expiration housing is beyond the ordinary
technical skill of the relevant artisan. We therefore agree with the Examiner
that it would have been obvious to combine those signals in a single
interface on a housing adjacent to the patient as set forth on pages 12–13 of
the Examiner’s Answer.
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Issue 3: Are claims 1–3, 6–7, 9–10, and 12–15 unpatentable over Gerder,
Rice, Doyle, and Banner?
Claim 1
With respect to claim 1, Appellants contend that the Examiner errs
because “a connection for a non-respiration sensor on an electrical interface
connected to a Y-piece is not found in the applied prior art. . . . Therefore the
applied prior art fails to anticipate all the features of claim 1.” (App. Br. 17.)
The test for obviousness under 35 U.S.C. § 103, however, is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Keller, 642 F.2d at 425 (citations omitted).
Appellants’ arguments regarding claim 1 are similar to those
discussed above with respect to independent claim 21. Finding no reversible
error in with respect to the contested limitation of claim 1, we do not disturb
the Examiner’s finding that
Banner teaches a blood pressure cuff in fig. 3 that leads back
to a processing system and is spaced from the Y-piece. It
would have been obvious to modify the modified Gerder’s
sensors to include a sphygmomanometer, as taught by
Banner, for the purpose of providing further monitoring
abilities for the safety of the patient.
(Ans. 5.)
Claims 2, 3, 6–7, 9–10, and 13–15 directly or indirectly depend from
claim 1. Appellants do not separately argue these claims and they stand or
fall with claim 1.
Claim 12
Claim 12 recites a Y–piece comprising “an electrical energy storage
means connected to said electronic unit.” The Examiner finds that Gerder
discloses an electronic unit, “but is silent regarding an electrical storage
means.” (Ans. 5.) The Examiner further states that “Rice teaches storage
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means on the y-tube (Page 2, para 20)” such that it would have been obvious
to “modify the modified Gerder’s electronic interface with storage means, as
taught by Rice, for the purpose of allowing the device to be moved to
another ventilator with the stored patient information (Page 3, para 27).” (Id.
5–6; Final Rejection 4–5.)
Responding to the rejection of claim 12, Appellants contend that:
Rice discloses information tags, and sensors that read the
information tags. RFID storage tags store information, but
there is no disclosure of these RFID tags storing energy.
Therefore paragraph 20 of Rice does not disclose the energy
storage means, and claim 12 overcomes the rejection.
(Reply Br. 3.)
While Appellants are correct that paragraph 20 of Rice says nothing
about an energy storage means, the use of adjunct battery power is taught by
Banner (Banner ¶ 47) and by Gerder (Gerder ¶¶ 8, 23, 25), such that it would
have been obvious to use “an electrical energy storage means connected to
said electronic unit” as required by claim 12.10
In light of above we sustain the rejection of claim 12 under 35 U.S.C.
§ 103(a) as unpatentable over Gerder, Rice, Doyle, and Banner. Because our
reasoning relies on fact-finding that differs from that of the Examiner, we
designate our affirmance a new ground of rejection under 37 C.F.R. §
41.50(b).

10 We note that at oral argument, Appellants provided no argument for why
the electrical storage means element could not be satisfied by the battery
disclosed at Gerder paragraph 8.
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Issue 4: Is claim 4 unpatentable over Gerder, Rice, Doyle, and Banner, as
applied to claim 1 above, and in further view of Chalvignac and
Tiedje?
Claim 4, depending from claim 1, recites that the electrical interface
comprises electric outlets for ECG electrode cables and sensor connections.
Appellants argue that the Examiner errs because there is no suggestion in the
prior art to substitute sensors 15 and 16 of Chalvignac with the ECG
electrode cables of Tiedje. (App. Br. 18; see also Reply Br. 4.) We are not
persuaded by Appellants’ argument. Nor does it accurately reflect the
Examiner’s rejection.
The Examiner finds that one of ordinary skill in the art would have
found it obvious to add sensor outlets as taught by Chalvignac, to the
electrical interface as taught by Gerder “for the purpose of easily replacing
broken sensors due to the easy plug-in nature of the plug outlets.” (Ans. 16.)
The Examiner further finds that it would have been obvious to add the ECG
electrode cables taught by Tiedje to the interface “for the purpose of
providing further monitoring abilities for the safety of the patient,” and
because “adding different types of sensors to an electrical interface for
patient monitoring is obvious in the art in order to monitor different aspects
of a patient’s health.” (Id.)
Once the Examiner sets forth a prima facie case of obviousness, the
burden shifts to the applicant to come forward with arguments and/or
evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688,
692 (Fed. Cir. 1990). Because Appellants do not address the reasoning
underlying Examiner’s well-founded rejection, we affirm.
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Issue 5: Is claim 5 unpatentable over Gerder, Rice, Doyle, and Banner, as
applied to claim 1 above, and in further view of Chalvignac?
Claim 5, depending from claim 1, further comprises a mount for a
sphygmomanometer cuff with a flexible link. Appellants argue that “[a]ny
connections on a housing in Chalvignac are only for sensors that relate to
measuring gas. It would not be obvious to use those connectors for sensors
that measure a parameter other than gas.” (App. Br. 20; see also Reply Br.
4.) But “the [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “If a person
of ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Accordingly, we agree with the Examiner’s finding that it would have
been obvious “to modify Gerder’s interface and sphygmomanometer with
the addition of a corresponding sensor outlet, as taught by Chavignac, [sic]
for the purpose of easily replacing the sphygmomanometer if it breaks and
for providing a quick connection.” (Ans. 16–17.) Moreover, as stated by
the Examiner in connection with claim 4, “adding different types of sensors
to an electrical interface for patient monitoring is obvious in the art in order
to monitor different aspects of a patient’s health. (Ans. 16.)
Issue 6: Is claim 8 unpatentable over Gerder, Rice, Doyle, and Banner, as
applied to claim 1 above, and in further view of Tillotson?
Claim 8, depending from claim 1, limits the generic breath flow
sensor of claim 6 to one or more of a hot wire anemometer, an ultrasound
anemometer, and/or a differential pressure anemometer. Appellants contend
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that the Examiner errs in modifying Gerder’s breath flow sensor with the hot
wire anemometer taught by Tillotson because doing so “would not provide
further monitoring abilities.” (App. Br. 20–21.) We do not find Appellants’
argument persuasive.
Appellants have not provided any evidence that substituting a hot wire
anemometer for the more generic breath flow sensor taught by Gerder
provides any patentable distinction. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR, 550 U.S. at 416. In addition, we agree with
the Examiner’s finding that one or ordinary skill in the art would have been
motivated to make this substitution because “substituting a flow sensor with
a hot wire anemometer yields a predictable result of detecting a user’s breath
flow.” (Ans. 17.)
Issue 7: Is claim 11 unpatentable over Gerder, Rice, Doyle, and Banner, as
applied to claims 1 and 10 above, and in further view of Tiedje and
Cohen?
Claim 11 requires that an electronic unit mounted on a Y-piece
include “an ECG operating electronic unit containing a differential
amplifier, compensation circuits and an analog-digital converter and a
control computer.” Appellants do not dispute the Examiner’s finding that
the individual elements are taught in Cohen, but argue that because Cohen
exemplifies an ECG operating electronic unit “separate from a patient, and
especially separate from a Y-piece,” one of ordinary skill in the art “would
not be led to incorporate an ECG operating electronic circuit into an
electronic unit mounted on a Y-piece for the purpose of reducing signal
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noise.” (App. Br. 21–22.) For the reasons set forth on pages 9 and 17 of the
Examiner’s rejection, we do not find Appellants’ arguments persuasive.
SUMMARY
I. We affirm the rejection of claims 1–3, 6–7, 9–10, and 12–15 under
35 U.S.C. § 103(a) as unpatentable over Gerder, Rice, Doyle, and
Banner. Because our reasoning with respect to the rejection of claim
12 differs from that of the Examiner, we designate our affirmance
with respect to that claim a new ground under 37 C.F.R. § 41.50(b).
II. We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Gerder, Rice, Doyle, and Banner, as applied to
claim 1 above, and in further view of Chalvignac and Tiedje.
III. We affirm the rejection of claim 5 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gerder, Rice, Doyle, and Banner, as
applied to claim 1 above, and in further view of Chalvignac.
IV. We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Gerder, Rice, Doyle, and Banner, as applied to
claim 1 above, and in further view of Tillotson.
V. We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Gerder, Rice, Doyle, and Banner, as applied to
claims 1 and 10 above, and in further view of Tiedje and Cohen.
VI. We affirm the rejection of claims 21 and 23–24 under 35 U.S.C.
§ 103(a) as unpatentable over Gerder, Rice, Banner, and Chalvignac.
VII. We affirm the rejection of claims 22 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Gerder, Rice, Banner, and Chalvignac, as applied
to claim 21 above, and further in view of Tiedje.
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TIME PERIOD FOR RESPONSE
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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 the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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….
Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.

AFFIRMED; 37 C.F.R. § 41.50(b)

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