Ex Parte Stahl

Board of Patent Appeals and Interferences

Jan 17, 2012

10877189 (B.P.A.I. Jan. 17, 2012)

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.
10/877,189 06/24/2004 Thomas Stahl 2565/121 3949
26646 7590 01/17/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
01/17/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS STAHL
__________

Appeal 2011-003114
Application 10/877,189
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/877,189

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 2-5, 7-9, 17, 18, and 20-22.1 An oral hearing was held on
January 5, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to an apparatus for extracorporeal
blood treatment comprising, inter alia, a computing unit configured to determine
whether a filter is present based on a change in at least one of the chemical and
physical properties of the dialysis fluid.
Claim 17, the only independent claim, is illustrative.
17. An apparatus for extracorporeal blood treatment
comprising:
a dialysis fluid preparation device for preparing
fresh dialysis fluid, adapted to change at least one of a
chemical and a physical property of the dialysis fluid;
a filter divided into a first filter chamber and a
second filter chamber by a membrane for filtering
microorganisms, the filter located downstream from the
dialysis fluid preparation device;
a measuring device for measuring a change in the
at least one of the chemical and physical property of the
dialysis fluid, the measuring device located downstream
from the filter;
a dialyzer divided by a semi-permeable membrane
into a first dialyzer chamber and a second dialyzer
chamber, the first dialyzer chamber being arranged in a
dialysis fluid circuit and the second dialyzer chamber

1 Claims 10-16 are also pending but have been withdrawn from consideration.
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being arranged in a blood circuit, the dialyzer located
downstream from the filter; and
a computing unit configured to:
determine at least one reference value
representative of a filter being present;
determine a first time t0 at which the dialysis fluid
preparation device changes the at least one of the
chemical and physical property of the dialysis fluid;
determine a second time t1 at which the measuring
device detects the change in the at least one of the
chemical and physical property of the dialysis fluid;
determine a time interval Δt by subtracting the first
time t0 from the second time t1;
compare the time interval Δt, or a parameter
correlating to the time interval Δt, to the reference value;
and
determine that a filter is present if the time
interval, or a parameter correlating to the time interval,
matches the at least one reference value, or determine
that a filter is not present if the time interval, or a
parameter correlating to the time interval, does not match
the at least one reference value.
App. Br., Claims Appendix (emphasis added).2
The following Examiner’s rejections are before us on appeal:
1) the rejection of claims 2-5, 7-9, 17, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Müller3 and Schal4;

2 Appeal Brief dated August 6, 2010.
3 EP 0 930 080 A1 (“EP 080”). The Examiner relies on US 6,607,697 B1 issued
August 19, 2003, as evidence of the disclosure of EP 080. The Appellant does not
object. Therefore, we will also rely on US 6,607,697 B1 as evidence of the EP 080
disclosure in this Decision on Appeal.
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2) the rejection of claims 18, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Müller, Schal, Krivitski,5 Krensky,6 Schick,7
and Brauer8; and
3) the rejection of claims 4, 17, 18, and 20-22 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Brauer and Schal.
B. ISSUE
The dispositive issue in this appeal is: Does the limitation of “a computing
unit configured to” and the steps that follow this limitation in claim 17 impart
structure to the claimed apparatus and if so, has the Examiner demonstrated that
the structure is rendered obvious by the prior art of record?
C. DISCUSSION
The Examiner finds that Müller and Brauer each disclose an apparatus for
extracorporeal blood treatment comprising a computing unit. Ans. 4, 8.9 The
Examiner does not find that either the computing unit of Müller or the computing
unit of Brauer is configured to perform the steps recited in claim 17. Nonetheless,
the Examiner contends that “[w]hat the computing unit is configured to do is only
an intended use of the computing unit and does not add any further structural
limitations to the computing unit.” Ans. 4-5, 9.

4 US 5,616,248 issued April 1, 1997.
5 US 6,548,017 B2 issued April 15, 2003.
6 US 7,033,539 B2 issued April 25, 2006.
7 US 2002/0043487 published April 18, 2002.
8 US 6,187,207 B1 issued February 13, 2001.
9 Examiner’s Answer dated September 21, 2010.
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The Appellant, on the other hand, contends that the process steps recited in
claim 17 do impart structure to the claimed apparatus. See, e.g., App. Br. 11;
Reply Br. 4.10
The Appellant’s position is consistent with the claim language at issue. The
computing unit recited in claim 17 (e.g., a computer) is configured or otherwise set
up (e.g., programmed) to perform a series of steps to ultimately determine whether
a filter is present in the claimed apparatus. A computing unit that is configured to
perform the steps recited in claim 17 is structurally different from a computing unit
that is not configured or otherwise set up to perform the recited steps. Thus, the
claim language at issue is not merely an intended use but rather imparts structure to
the claimed apparatus.
The Examiner has not directed us to any credible evidence demonstrating
that the computing unit of either Müller or Brauer is configured or otherwise set up
to perform the steps recited in claim 17. Nonetheless, the Examiner contends:
One of ordinary skill in the art would recognize the time
delay of putting a filter into place and the reading of the
conductivity sensor. It would have been readily
recognized by one of ordinary skill that the filter will
change the conductivity of the dialysis fluid. Thus the
recited process is merely making automatic what would
have been done manually.
Ans. 15.
To the extent that some or all of these contentions are true, they fail to
demonstrate that the claimed apparatus would have been obvious to one of
ordinary skill in the art at the time of the Appellant’s invention. In particular, the

10 Reply Brief dated November 17, 2010.
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computing unit recited in claim 17 is configured to determine whether a filter is
present based on a change in at least one of the chemical and physical properties of
the dialysis fluid. The Examiner has not directed us to any credible evidence
demonstrating that such a determination would have been desirable in either the
Müller or the Brauer apparatus. Thus, there is no reason on this record to modify
either apparatus with a computing unit that is configured to perform the steps
recited in claim 17. See Reply Br. 6 (“the Examiner is using hindsight reasoning in
reconstructing the Applicant’s invention”).
For the reasons set forth above, the § 103(a) rejections of claims 2-5, 7-9,
17, 18, and 20-22 are reversed.
D. DECISION
The decision of the Examiner is reversed.

REVERSED

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