Ex Parte Schermeier et alDownload PDFPatent Trial and Appeal BoardNov 21, 201412061894 (P.T.A.B. Nov. 21, 2014) Copy Citation 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.) Appeal 2012-010594 Application 12/061,894 2 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; Appeal 2012-010594 Application 12/061,894 3 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. Appeal 2012-010594 Application 12/061,894 4 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. Appeal 2012-010594 Application 12/061,894 5 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 Appeal 2012-010594 Application 12/061,894 6 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 Appeal 2012-010594 Application 12/061,894 7 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 Appeal 2012-010594 Application 12/061,894 8 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 Appeal 2012-010594 Application 12/061,894 9 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 Appeal 2012-010594 Application 12/061,894 10 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 Appeal 2012-010594 Application 12/061,894 11 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. Appeal 2012-010594 Application 12/061,894 12 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. Appeal 2012-010594 Application 12/061,894 13 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 Appeal 2012-010594 Application 12/061,894 14 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). Appeal 2012-010594 Application 12/061,894 15 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. Appeal 2012-010594 Application 12/061,894 16 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 Appeal 2012-010594 Application 12/061,894 17 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. Appeal 2012-010594 Application 12/061,894 18 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. Appeal 2012-010594 Application 12/061,894 19 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 Appeal 2012-010594 Application 12/061,894 20 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 Appeal 2012-010594 Application 12/061,894 21 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. Appeal 2012-010594 Application 12/061,894 22 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. Appeal 2012-010594 Application 12/061,894 23 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) cdc Copy with citationCopy as parenthetical citation