Ex Parte SCHOELLER et al

Patent Trials and Appeals Board

Mar 28, 2019

14479846 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/479,846 09/08/2014
13897 7590 04/01/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Bernd SCHOELLER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6580-PSOl 79 1021
EXAMINER
WEI,ZENGPU
ART UNIT PAPER NUMBER
2192
NOTIFICATION DATE DELIVERY MODE
04/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND SCHOELLER and THOMAS MARX
Appeal2018-005518 1
Application 14/479,846
Technology Center 2100
Before MICHAEL J. STRAUSS, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) the Examiner's final
rejection of claims 1-30, all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
September 15, 2017) and Reply Brief ("Reply Br.," filed April 11, 2018);
the Final Office Action ("Final Act.," mailed April 17, 2017); the
Examiner's Answer ("Ans.," mailed February 12, 2018); and the originally-
filed Specification ("Spec.," filed September 8, 2014). Rather than repeat
the Examiner's findings and determinations and Appellants' contentions in
their entirety, we refer to these documents.
2 Appellants assert Loewenstein Medical Technology S.A. is the real party-
in-interest. App. Br. 3.
Appeal2018-005518
Application 14/479,846
STATEMENT OF THE CASE
Appellants' recited devices and methods relate to "updating medical
apparatus, in which an operating program stored in the apparatus is at least
partially replaced by a new operating program." Spec., 1 :9-12
As noted above, claims 1-30 are pending. Claims 1, 10-12, 22, and
23 are independent. App. Br. 29, 30-32, 33-34 (Claims App.). Claims 2-9
depend directly from claim 1, and claims 24--30 depend directly or indirectly
from claim 23. Id. at 29-35.
Claim 1, reproduced below, is illustrative.
1. A method for updating an electronic ventilation device,
wherein the method comprises, while performing an update,
at least partially replacing an operating program which is at
least partially stored in a rewritable memory3 of the
ventilation device by a new operating program, the new
operating program being transferred to the ventilation device
online and/ or being stored on a data carrier and being
transferred to the rewritable memory by a reading device.
Id. at 29.
REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name Number Issued/Published Filed
Al-Ali4 US 2008/0091092 Al Apr. 1 7, 2008 Oct. 12, 2007
3 Appellants amended independent claims 1 and 10 after the final rejection
to replace the phrase "variable memory" with "rewritable memory." The
Examiner confirmed entry of this amendment on May 11, 2018. This
amendment rendered moot the rejection of claims 1-10 under 35 U.S.C.
§ 112, ,r 2. Final Act. 2; App. Br. 9-10.
4 All reference citations are to the first named inventor only.
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Application 14/479,846
Name Number
Feldhahn US 2007/0193580 Al
Stender US 2007 /0027506 Al
De Vries US 2006/0144396 Al
Cohen US2006/0031094 Al
Amely-Velez US 6,704,601 Bl
Kaib US 2003/0095648 Al
Pawlikowski US 2002/0077856 Al
Causey US 2002/0002326 Al
Holowko us 6,039,251
Issued/Published Filed
Aug. 23, 2007 Jul. 29, 2006
Feb. 1,2007 Aug. 1, 2005
Jul. 6, 2006 Sep.23,2005
Feb.9,2006 Aug. 6,2004
Mar. 9, 2004 Aug. 9, 2001
May 22, 2003 Nov. 27, 2002
Jun.20,2002 Dec. 10, 2001
Jan.3,2002 Aug.23,2001
Mar. 21, 2000 Apr. 16, 1998
The Examiner rejects the pending claims on the following grounds.
(1) Claim 1 stands rejected under the judicially-created doctrine of
obviousness-type double patenting in view of claim 1 of Patent No. US
8,863,106 B2. Final Act. 3.
(2) Claims 1, 3, 4, 6, and 7 stand rejected under 35 U.S.C. § I03(a)
as rendered obvious over the combined teachings of Stender and De Vries.
Ans. 2.
(3) Claims 2, 8, and 9 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the combined teachings of Stender, De Vries, and
Pawlikowski. Id.
(4) Claims 5, 10-12 and 22 stand rejected under 35 U.S.C. § I03(a)
as rendered obvious over the combined teachings of Stender, De Vries, and
Holowko. Id.
(5) Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the combined teachings of Stender, De Vries,
Holowko, and Causey. Id.
(6) Claims 15-20 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the combined teachings of Stender, De Vries,
Holowko, and Feldhahn. Id. at 3.
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(7) Claim 21 stands rejected under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, Holowko,
Feldhahn, and Al-Ali. Id.
(8) Claims 23, 24, and 26 stand rejected under 35 U.S.C. § 103(a)
as rendered obvious over the combined teachings of Stender, De Vries, and
Kaib. Id.
(9) Claim 25 stands rejected under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, Kaib, and Amely-
Velez. Id.
(10) Claim 27 stands rejected under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, Kaib, and Cohen.
Id.
(11) Claim 28 stands rejected under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, Kaib, and
Causey. Id.
(12) Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
rendered obvious over the combined teachings of Stender, De Vries, Kaib,
and Pawlikowski. Id.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Unless otherwise indicated, we adopt the Examiner's
findings in the Answer as our own and add any additional findings of fact
appearing below for emphasis. We address the rejections below.
ANALYSIS
A. Obviousness-Type Double Patenting
The Examiner finds that
Claim 1 is non-provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
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unpatentable over claim 1 of US Patent No 8,863,106. Although
the conflicting claim is not identical, they are not patentably
distinct from each other because claim 1 of US Patent No
8,863,106 contains most elements in claim 1 of this instant
app li cation.
Final Act. 3. Appellants respond that "[t]his rejection is not submitted for
review" and state "Appellants will decide on an appropriate reaction to this
rejection once an agreement on allowable claims has been reached." App.
Br. 10. Under the circumstances of this appeal, and to avoid a summary
affirmance of the Examiner's double patenting rejection, Appellants had
two choices: (1) commit to filing a terminal disclaimer or (2) argue the
merits of the terminal disclaimer, i.e., why the double patenting rejection is
wrong on the merits. Appellants did neither. Therefore, we affirm the non-
provisional, obviousness-type double patenting rejection of claim 1 based
onclaim 1 of Patent No. US 8,863,106B2. SeeExparteinvistaNorth
America S.A.R.L., 2014-002277, slip op. at 5 (PTAB Mar. 14, 2016).
B. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
1. Claims 1, 3, 4, 6, and 7
The Examiner determines that claim 1 is rendered obvious over the
combined teachings of Stender and De Vries. Final Act. 4--5; see Ans. 4--6.
In particular, the Examiner finds that Stender teaches at least partially
replacing an operating program, which is at least partially stored in a
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variable memory of a medical device with a new operating program. Final
Act. 4 ( citing Stender ,r 9). The new operating program is transferred to the
medical device "online and/or being stored on a data carrier and being
transferred to the variable memory by a reading device." Id. ( quoting App.
Br. 29 (Claims App.)). Although the Examiner acknowledges that Stender
does not expressly teach "an electronic ventilation device" (id.), Stender
explains that "it should be noted that the term 'medical device' is intended to
broadly cover any medical device, including, but not limited to, medical
imaging devices" (Stender ,r 21 ( emphases added)). Moreover, the
Examiner asserts that De Vries expressly teaches "an electronic ventilation
device" (De Vries ,r,r 9-14, 38, Figs. 1-5) and that it is desirable to provide
software updates to such ventilation devices (id. ,r 62). Final Act. 4--5.
Because, like the claimed subject matter, both Stender and De Vries describe
updating software in medical devices (see Stender ,r 9; De Vries ,r 62), we are
persuaded that they are analogous art (Final Act. 4; Ans. 5; but see Reply
Br. 4--5), and also agree with the Examiner's conclusion that a person of
ordinary skill in the art would have had reason to combine their teachings to
achieve the limitations of claim 1. Final Act. 4--5; see KSR, 550 U.S. at 417
("For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."); see also
Pawlikowski ,r 22 (Pressure support systems, such as ventilation devices,
were known to be medical devices.).
Appellants agree with the Examiner that Stender does not expressly
teach "an electronic ventilation device," but contend that Stender's teaching
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regarding "medical devices" should be limited to "medical imaging
devices." App. Br. 11 (citing Stender ,r 21). Stender's explicit statement
that the term "medical devices" should be interpreted "broadly" and is not
limited to "medical imaging devices" demonstrates the error in Appellants'
contention. Stender ,r 21.
Further, Appellants contend that De Vries teaches a "portable"
ventilation device (see De Vries ,r 38), rather than a ventilation device, as
recited in claim 1. App. Br. 11. We note, however, that neither the language
of claim 1 nor the Specification's disclosure excludes "portable" ventilation
devices, from the recited "ventilation device." See id. at 29 (Claims App.);
Spec., 2: 13-20. Therefore, we are persuaded that the "electronic ventilation
device" recited in claim 1 reads on DeVries's portable ventilator.
In addition, Appellants note that Stender teaches updating medical
devices located in a plurality of countries from multiple servers. App.
Br. 11-12 (citing Stender, Fig. 1). Consequently, Appellants contend that a
person of ordinary skill in the art would have had no reason "to consider the
highly sophisticated system disclosed therein ( comprising three different
servers in different countries) for updating a comparatively simple portable
ventilation device such as that disclosed by De VRIES." Id. at 12; see Reply
Br. 4. We note, however, that the language of claim 1 focuses on the receipt
of the update by the "electronic ventilation device" and does not limit the
source of the updates or the number of devices receiving the updates. App.
Br. 29 (Claims App.); see Spec., 2:21-3: 1.
Thus, we are not persuaded that the Examiner erred in determining
that the combined teachings of Stender and De Vries render independent
claim 1 obvious, and we sustain that rejection. Appellants do not contest the
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rejections of dependent claims 3, 4, 6, and 7, apart from their contentions
with respect to independent claim 1. Therefore, we sustain the rejections to
those dependent claims, as well.
2. Claims 2, 5, 8, and 9
The Examiner determines that claims 2, 5, 8, and 9 are rendered
obvious over the teachings of Stender and De Vries, in combination with
those of Pawlikowski or Holowko. Final Act. 7-1 O; see Ans. 6-7.
Appellants contend that the Examiner erred in rejecting these claims in view
of Appellants' contentions regarding independent claim 1. App. Br. 13-14.
In particular, Appellants contend that neither Pawlikowski nor Holowko
supply the limitations of independent claim 1 missing from the combined
teachings of Stender and De Vries. Id.
For the reasons given above, we are persuaded that the combined
teachings of Stender and De Vries render independent claim 1 obvious. We
also are persuaded that the Examiner has shown that Pawlikowski or
Holowko teach the additional limitations of claims 2, 5, 8, and 9 and a
person of ordinary skill in the art would have had reason to combine the
teachings of the applied references in the manner proposed by the Examiner.
Therefore, we sustain the obviousness rejections of these claims.
3. Independent Claims 10---12 and 22
The Examiner relies on substantially the same combination of the
teachings of Stender and De Vries to teach the majority of the limitations of
each of claims 10-12 and 22. Final Act. 10-15; see Ans. 7. The Examiner
acknowledges, however, that the combined teachings of Stender and
De Vries do not explicitly teach a control device that evaluates an input or
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one or more codes, for example, by comparing the one or more codes to a
reference value, in order to cause performance of one or more functions. See
App. Br. 30-32 (claims 10-12), 33-34 (claim 22) (Claims App.). The
Examiner finds that Holowko teaches the missing limitations of these
independent claims. Final Act. 11-15; see Ans. 7. Moreover, because, like
Stender and De Vries, Holowko teaches methods for remote access to
medical devices, the Examiner concludes that a person of ordinary skill in
the art would have had reason to combine the teachings of Stender, De Vries,
and Holowko to achieve the devices recited in claims 10-12 and 22. Final
Act. 11-15; see Holowko, 1 :48-51 ("The system also allows the health care
provider to diagnose an alarm status from a remote location, as well as to
change existing programs for the medical equipment.").
Appellants do not contest the Examiner's conclusions with respect to
the teachings of Holowko or the reasons for combining its teachings with
those of Stender and De Vries. App. Br. 15-16. Instead, Appellants contend
that (1) Holowko fails to cure the alleged deficiencies in the combined
teachings of Stender and De Vries and (2) "there is [no] relationship between
the ( apparently highly sophisticated) imaging devices mentioned in
STENDER as examples of a medical device and the 'in-home medical
device' mentioned in the abstract ofHOLOWKO relied upon by the
Examiner." Id. For the reasons discussed above, however, we are not
persuaded that Appellants have identified deficiencies in the combined
teachings of Stender and De Vries. See Ans. 4--6. Further, for the reasons
discussed above, we find Appellants reading of Stender and Holowko overly
narrow and disagree with Appellants contention that there is no relationship
between the teachings of Stender and Holowko. Ans. 7.
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For the reasons given above, we are persuaded that the combined
teachings of Stender, De Vries, and Holowko render independent claims 10-
12 and 22 obvious, and we sustain the obviousness rejections to these
claims.
4. Claims 13-21
The Examiner determines that claims 13-21 are rendered obvious
over the teachings of Stender, De Vries, and Holowko, in combination with
those of Causey, Feldhahn, and/or Al-Ali. Final Act. 15-20; see Ans. 7-9.
Appellants contend that the Examiner erred in rejecting these claims in view
of Appellants' contentions regarding independent claim 12. App. Br. 16-22.
In particular, Appellants contend that neither Causey nor Feldhahn nor Al-
Ali supply the limitations of independent claim 12 missing from the
combined teachings of Stender, De Vries, and Holowko. Id.
For the reasons given above, we are persuaded that the combined
teachings of Stender, De Vries, and Holowko render independent claim 12
obvious. We also are persuaded that the Examiner has shown that Causey,
Feldhahn, and/or Al-Ali teach the additional limitations of claims 13-21 5
and a person of ordinary skill in the art would have had reason to combine
the teachings of the applied references in the manner proposed by the
Examiner. Therefore, we sustain the obviousness rejections of these claims.
5 Appellants contend that the Examiner combines the teachings of too many
references in support of the rejection of claim 21. App. Br. 21; Reply Br. 5-
6. As the Examiner correctly observes, however, reliance on a large number
of references in a rejection does not, without more, weigh against the
obviousness of the claimed invention. Ans. 8-9; see In re Gorman, 933
F.2d 982,986 (Fed. Cir. 1991).
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5. Claims 23, 24, and 26
The Examiner relies on substantially the same combination of the
teachings of Stender and De Vries to teach the majority of the limitations of
independent claim 23. Final Act. 20-23; see Ans. 9. The Examiner
acknowledges, however, that the combined teachings of Stender and
De Vries do not explicitly teach the steps of"( e) verification of the update as
a valid version and identification of the previous version as invalid; and
(f) execution of the updated software or firmware." App. Br. 34 (Claims
App.). The Examiner finds that Kaib teaches these missing steps of
independent claim 23. Final Act. 22-23; see Ans. 9. In particular, Kaib
teaches
After downloading is complete, the integrity of the new operating
software in the alternate memory area is verified by performing
a cyclic redundancy check (CRC) or other error checking
method[.] If the new operating software passes verification, the
method will add a new entry to a boot vector table in the device
that will cause the medical device to execute the new operating
software located in the alternate memory area during the next
power-up sequence.
Kaib, Abstract (emphases added); see id. ,r 13. Moreover, because, like
Stender and De Vries, Kaib teaches methods for remote access to medical
devices, the Examiner concludes that a person of ordinary skill in the art
would have had reason to combine the teachings of Stender, De Vries, and
Kaib to achieve the methods recited in independent claim 23. Final Act. 23;
see Kaib ,r,r 6, 7, 80.
Appellants do not contest the Examiner's conclusions with respect to
the teachings of Kaib or the reasons for combining those teachings with
those of Stender and De Vries. App. Br. 22-23. Instead, Appellants contend
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that (1) Kaib fails to cure the alleged deficiencies in the combined teachings
of Stender and De Vries and (2) "there is [no] relationship at all between the
(apparently highly sophisticated) imaging devices mentioned in STENDER
as examples of a medical device and a patient-worn medical device (see,
e.g., title, abstract and paragraph [0003] of KAIB)." Id. For the reasons
discussed above, however, we are not persuaded that Appellants have
identified deficiencies in the combined teachings of Stender and De Vries.
See Ans. 4---6. Further, for the reasons discussed above, we find Appellants
reading of Stender and Kaib overly narrow and disagree with Appellants
contention that there is no relationship between the teachings of Stender and
Kaib. Ans. 9.
For the reasons given above, we are persuaded that the combined
teachings of Stender, De Vries, and Kaib render independent claim 23
obvious, and we sustain the obviousness rejection of this claim. Appellants
do not contest the rejections of dependent claims 24 and 26, apart from their
contentions with respect to independent claim 23. Therefore, we sustain the
rejections to these dependent claims, as well.
6. Claims 25 and 27-30
The Examiner determines that claims 25 and 27-30 are rendered
obvious over the teachings of Stender, De Vries, and Kaib, in combination
with those of Amely-Velez, Cohen, Causey, or Pawlikowski. Final Act. 23-
28; see Ans. 9-12. Appellants contend that the Examiner erred in rejecting
these claims in view of Appellants' contentions regarding independent claim
23. App. Br. 23-28. In particular, Appellants contend that neither Amely-
Velez nor Cohen nor Causey nor Pawlikowski supply the limitations of
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independent claim 23 allegedly missing from the combined teachings of
Stender, De Vries, and Kaib. Id.
For the reasons given above, we are persuaded that the combined
teachings of Stender, De Vries, and Kaib render independent claim 23
obvious. We also are persuaded that the Examiner has shown that Amely-
Velez, Cohen, Causey, or Pawlikowski teach the additional limitations of
claims 25 and 27-30 and a person of ordinary skill in the art would have had
reason to combine the teachings of the applied references in the manner
proposed by the Examiner. Therefore, we sustain the obviousness rejections
to these claims.
CONCLUSIONS
(1) The Examiner did not err in rejecting:
(a) Claim 1 under the judicially-created doctrine of obviousness-
type double patenting in view of claim 1 of Patent No. US
8,863,106 B2;
(b) Claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender and De Vries;
(c) Claims 2, 8, and 9 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, and
Pawlikowski;
(d) Claims 5, 10-12, and 22 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, and
Holowko;
(e) Claims 13 and 14 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries,
Holowko, and Causey;
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(f) Claims 15-20 under 35 U.S.C. § 103(a) as rendered obvious
over the combined teachings of Stender, De Vries, Holowko, and
Feldhahn;
(g) Claim 21 under 35 U.S.C. § 103(a) as rendered obvious over
the combined teachings of Stender, De Vries, Holowko, Feldhahn,
and Al-Ali;
(h) Claims 23, 24, and 26 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, and
Kaib;
(i) Claim 25 under 35 U.S.C. § 103(a) as rendered obvious over
the combined teachings of Stender, De Vries, Kaib, and Amely-
Velez;
U) Claim 27 under 35 U.S.C. § 103(a) as rendered obvious over
the combined teachings of Stender, De Vries, Kaib, and Cohen;
(k) Claim 28 under 35 U.S.C. § 103(a) as rendered obvious over
the combined teachings of Stender, De Vries, Kaib, and Causey;
and
(1) Claims 29 and 30 under 35 U.S.C. § 103(a) as rendered
obvious over the combined teachings of Stender, De Vries, Kaib,
and Pawlikowski.
(2) Claims 1-30 are not patentable.
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DECISION
We affirm the Examiner's rejections of claims 1-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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