14006343 - (D) (P.T.A.B. Jul. 29, 2019)

Nathan Francis. O'Connor

Patent Trials and Appeals BoardJul 29, 2019

14006343 - (D) (P.T.A.B. Jul. 29, 2019)

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. 14/006,343 09/20/2013 Nathan Francis O'Connor 2011P00284WOUS 5082 24737 7590 07/29/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER HO, TAN-UYEN THI ART UNIT PAPER NUMBER 3782 NOTIFICATION DATE DELIVERY MODE 07/29/2019 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NATHAN FRANCIS O’CONNER ____________ Appeal 2017-007971 Application 14/006,3431 Technology Center 3700 ____________ Before STEFAN STAICOVICI, ARTHUR M. PESLAK, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nathan Francis O’Conner (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision (filed May 5, 2016, hereinafter “Final Act.”) rejecting claims 1–18 under 35 U.S.C. § 103(a) as unpatentable over Lapoint (US 2012/0060838 A1, pub. Mar. 15, 2012) and Fausett (US 2012/0245490 A1, pub. Sept. 27, 2012). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Koninklijke Philips N.V. Appeal Br. 1 (filed Oct. 27, 2016). Appeal 2017-007971 Application 14/006,343 2 INVENTION Appellant’s invention relates to a system and method for coaching expecting mothers during childbirth by using information associated with labor contractions to prompt a particular breathing behavior and recommend one or more body positions. Spec. ¶ 17. Claims 1, 6, and 11 are independent. Claim 1 is reproduced below as an example of the claimed subjected matter and is annotated to highlight the dispositive claim language that is at issue in this appeal, which is present in each of the independent claims. 1. A system configured to coach a subject during childbirth, the system comprising: a pressure generator configured to generate a pressurized flow of breathable gas for delivery to an airway of the subject during childbirth; and a processor configured to control the pressure generator to adjust one or more gas parameters of gas in the pressurized flow of breathable gas, wherein the processor is configured to receive information about labor contractions from a contraction monitor, the contraction monitor configured to monitor the labor contractions and generate output signals related to the labor contractions, and wherein the processor is further configured to communicate recommended body positions for the subject based on the labor contractions. Appeal Br. 18 (Claims App.). ANALYSIS The Examiner determines that independent claims 1, 6 and 11 are unpatentable because the claimed subject matter would have been obvious to a person of ordinary skill in the art in view of the teachings of Lapoint and Appeal 2017-007971 Application 14/006,343 3 Fausett. Final Act. 2–5. At least in part, the Examiner reached this conclusion by finding that, although Lapoint fails to disclose a processor “configured to communicate recommended body positions for the subject based on the labor contractions,” Fausett teaches this recited claim limitation. Id. at 3–4, 7, 10–11 (citing Fausett ¶¶ 3, 6, 27, 29, 41, 49, Fig. 1). The paragraphs from Fausett that the Examiner cites disclose a processor configuration that communicates real-time feedback about the effectiveness of the mother’s expulsive efforts (i.e., “pushing”) to push the fetus down the birth canal during labor. See Fausett ¶¶ 6, 27, 49. From this disclosure, the Examiner finds that Fausett teaches, “wherein the processor (86) is further configured to communicate (via monitor unit (33)) recommended body positions (i.e. push (102)) for the subject based on the detected movement (68) (labor contractions).” Id. at 4, 7, 11. Appellant argues that this finding is incorrect because “an expulsive push during childbirth is [an] action, not a body position, as recited in claim 1.” Appeal Br. 7. Thus, the dispositive issue for this appeal is whether interpreting “body position” to cover expulsive pushing during childbirth comports with the Examiner’s mandate to give the claims their broadest reasonable interpretation. In the Answer, the Examiner clarifies that “a body position is interpreted as any movement of the human body, including contraction of a muscle, which is a condition with respect to [a] situation (i.e. relaxed vs. contracted).” Ans. 3. To support this interpretation, the Examiner identifies that “the specification has not defined nor provided any guidance as to what the recommended body positions are” and that “position is defined as [a] condition with reference to place; location; situation (dictionary.com).” Id. The Examiner explains that a mother’s expulsive efforts or “pushing” during Appeal 2017-007971 Application 14/006,343 4 childbirth are within the broadest reasonable scope of the recited “body position” because “the mere act of pushing during childbirth requires muscles transitioning between a contracted state and a relaxed state, which would also be a condition with respect to location.” Id. Although we appreciate the Examiner’s position that the Specification does not provide much in the way of a definition or examples of a body position, this does not justify adopting an interpretation of “body position” that covers any movement of the human body, including contraction of a muscle, which is a condition with respect to [a] situation (i.e. relaxed vs. contracted). To illustrate the breadth of the Examiner’s construction, we note that it not only covers pushing during childbirth, but also any alteration to breathing parameters because changing breathing likewise involves movement of the human body, including contractions of a muscle. In fact, the breadth of the Examiner’s construction would even cover altering how quickly someone blinks their eyes. We find no support for such a broad construction. In the context of coaching a subject during childbirth, the plain meaning of “body position” refers to “a certain arrangement of bodily parts.” See Position Definition, MERRIAM-WEBSTER.COM, https://www.merriam- webster.com/dictionary/position (last visited on July 10, 2019). Although the Specification does not provide much guidance regarding the scope of “body position,” it does make clear there is a distinction between breathing and body positions. See Spec. ¶¶ 17, 55, 59. For example, at paragraph 59, the Specification distinguishes between information for breathing (i.e., “to begin exhaling, to end exhaling, to begin inhaling, to end inhaling”) and information of “a recommended body position.” In the context of the claims Appeal 2017-007971 Application 14/006,343 5 and the Specification, we determine the Examiner erred by adopting a construction of “body position” that encompasses any movement of the human body, including contractions of a muscle. The Examiner has not presented any persuasive evidence that a skilled artisan would have understood that the act of “pushing” during childbirth to describe a particular arrangement of body parts. Therefore, because the Examiner’s finding that Fausett discloses a processor “configured to communicate recommended body positions for the subject based on the labor contractions” depends on an erroneous interpretation of the phrase “body position,” and because there is no evidence that a skilled artisan would have understood “pushing” during childbirth to be a body position, we do not sustain the obviousness rejection of independent claims 1, 6, and 11, as well as the remaining claims depending therefrom. DECISION We reverse the Examiner’s decision to reject claims 1–18. REVERSED