Ex Parte Schwaibold et al

Patent Trial and Appeal Board

Aug 16, 2016

12225980 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/225,980 0610112009
13897 7590 08/18/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Matthias Schwaibold
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-P50101 3755
EXAMINER
MAHMOOD, NADIA AHMAD
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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 MATTHIAS SCHWAIBOLD, DIRK SOMMERMEYER, and
BERND SCHOLLER
Appeal 2014-006705 1,2
Application 12/225,980
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4, 8-11, and 13-34. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Specification ("Spec.," filed June 1,
2009), Appeal Brief ("Appeal Br.," filed Jan. 24, 2014), and Reply Brief
("Reply Br.," filed May 23, 2014), as well as the Final Office Action ("Final
Action," mailed Oct. 24, 2013) and the Examiner's Answer ("Answer,"
mailed Apr. 8, 2014).
2 According to Appellants, "[t]he real party in interest ... is Weinmann
Gerate fur Medizin GmbH & Co. KG." Appeal Br. 3.
Appeal2014-006705
Application 12/225,980
According to Appellants, their invention is directed to "a system for
determining a reference value of biophysical data (body parameters) of an
individual for determining individual risk," where the risk relates to
"suffering secondary diseases that adversely affect quality of life or life
expectancy." Spec. 1, 6-7. Independent claims 1, 9, 11, 16, 31, and 32 are
the only independent claims under appeal. See Appeal Br., Claims App. We
reproduce independent claim 1, below, with formatting added, as
representative of the appealed claims.
1. A device for determining a reference value of
biophysical data of an individual for determining an individual
risk, said device comprising:
at least one sensor for noninvasive measurement of at least
three signals, which are CWF (continuous wave fluctuation),
Sp02, heart rate; and
an evaluation unit connected to the sensor, where the
evaluation unit has at least one analyzer adapted to determine
signal ranges that are definable by signal analysis,
wherein the evaluation unit includes a comparator adapted
to coordinate the signal ranges by taking additional parameters
into account, and to produce a result that is output as an index
value,
wherein the sensor is a pulse oximeter adapted to record a
plethysmogram and Sp02,
wherein the evaluation unit extracts CWP' s (continuous
wave parameters) from the plethysmogram, the evaluation unit
extracting the following as CWP' s: pulse wave amplitude, a
ratio of different integrals over different intervals of the
plethysmogram, a quantity related to PTT (pulse transit time), the
evaluation unit being adapted to compute a CWF (continuous
wave fluctuation) signal from the CWP's as a function of time,
wherein the CWF signal contains information about
fluctuations of the plethysmogram or the CWP's derived from
the plethysmogram, the signals being analyzed by pattern
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Appeal2014-006705
Application 12/225,980
recognition and compared with stored values, the comparison
providing a result that yields a patient-specific risk index that is
suitable for predicting a risk of cardiovascular disease.
Id.
REJECTIONS AND PRIOR ART3
The Examiner rejects the claims as follows:
claims 1, 4, 8-11, 13-27, 29, 31, 32, and 34 under 35 U.S.C. § 103(a)
as unpatentable over Yeo (EP 1440653 Al, pub. July 28, 2004) and Almog
(US 6,340,346 Bl, iss. Jan. 22, 2002); and
claims 2, 3, 28, 30, and 33 under 35 U.S.C. § 103(a) as unpatentable
over Yeo, Almog, and Griffin (US 6,216,032 B 1, iss. Apr. 10, 2001 ).
See Final Action 3-7.
ANALYSIS
Independent claim 1 recites, in relevant part, measuring Sp02 (i.e.,
oxygen saturation). See Appeal Br., Claims App.; see Spec. 27. Appellants
argue that the Examiner's rejection of claim 1 is in error because, even
assuming that the Examiner is correct that i) Yeo' s device may be modified
to measure Sp02 and ii) Almog teaches measuring Sp02, there is no reason
to modify Yeo's device to measure Sp02. See Appeal Br. 13-17. More
specifically, Appellants contend that "[i]n particular, YEO is directed to a
3 We note that although the Final Action does not indicate on page 3 that
claim 4 is rejected based on a combination of Yeo and Almog, the
subsequent discussion on page 5 indicates that the claim is rejected. We also
note that although the Final Action indicates on page 3 that claim 30 is
rejected based on Yeo and Almog, it appears from the discussion on pages 6
to 7 that the claim is rejected based on Yeo, Almog, and Griffin.
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Appeal2014-006705
Application 12/225,980
method and apparatus for evaluating human stress" (id. at 13), and neither
Yeo nor Almog discusses "that Sp02 is a parameter which would be helpful
in evaluating a human subject's (current) level of stress" (id. at 15). Based
on our review of the portions of the references cited by the Examiner (see,
e.g., Final Action 3-5; see also, e.g., Answer 2-3), we agree with
Appellants, and, thus, we determine that the Examiner fails to provide a
reason to combine the references which has a rational underpinning. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We note that in
response to Appellants' specific arguments in the Appeal Brief that there is
no reason to modify Yeo' s device to measure Sp02, the Examiner simply
reiterates the finding that Almog discloses measuring Sp02, without
addressing why it would have been obvious to modify Yeo as the Examiner
proposes. See Answer 2-3.
Further, in the Final Action, the Examiner's reason for combining the
references is because "such a modification would provide the predictable
results of specifically recording oxygen readings [that] would be pertinent to
predicting risk of cardiovascular disease." Final Action 4--5; see also
Answer 3--4. But, the Examiner fails to establish, by a preponderance of the
evidence, that it would be "predictable" to measure Sp02 in order to
determine a risk of cardiovascular disease. See Appeal Br. 17-18; see also
Reply Br. 6. For example, the Examiner does not appear to cite any portion
of either reference which establishes that Sp02 measurements may be used
to determine a risk of cardiovascular disease.
Thus, based on the forgoing, we do not sustain the obviousness
rejection of claim 1. Further, we do not sustain the rejection of independent
claims 9, 11, 16, 31, and 32, which recite similar limitations and which the
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Application 12/225,980
Examiner rejects for similar reasons as claim 1. Still further, we do not
sustain the rejections of any of the remaining claims, which depend from the
independent claims, for the same reasons we do not sustain the independent
claims' rejections.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1--4,
8-11, and 13-34.
REVERSED
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