Ex Parte Andersen et alDownload PDFPatent Trial and Appeal BoardJan 30, 201713366431 (P.T.A.B. Jan. 30, 2017) 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. 0107/0071 6373 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 13/366,431 02/06/2012 135866 7590 01/31/2017 LAW OFFICE OF LOUIS WOO 717 NORTH FAYETTE STREET ALEXANDRIA, VA 22314 Eric Andersen 01/31/2017 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 ERIC ANDERSEN, RENE ROBERT, GARY SEARLE, and VINCENT WALDRON Appeal 2015-005959 Application 13/366,431 Technology Center 3700 Before DONALD E. ADAMS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134(a) involves claims 13—16 and 18— 28 (App. Br. 5). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The claims are directed to “a device for eliminating gases or air that may be trapped within an intravenous (IV) tube set used to provide 1 Appellants identify the real party in interest as “Smiths Medical ASD, Inc.” (App. Br. 3). Appeal 2015-005959 Application 13/366,431 physiological or cellular fluids to a patient” (Spec. 11). Claims 13 and 20 are representative and reproduced below: 13. A disposable set of fluid transfer tubes that includes a first tubing connectable to at least one infusate reservoir for receiving an infusate, a heat transfer portion for receiving the infusate and for transferring heat to the infusate flowing therethrough and an output portion for outputting the heated infusate, said disposable set further comprising: a housing having an elongated chamber including a top and a bottom, an inlet at a side at a lower portion of said housing connected to said output portion to receive the heated infusate into said housing, said housing having a gas outlet to vent gas from said housing and a fluid outlet at the bottom of said housing to output the infusate to the patient; an actuator movable inside said housing, said actuator having an upper end and a lower end, said upper end having an upper seal for sealing said gas outlet, said lower end having a lower seal for sealing said fluid outlet, said actuator movable between an upper position wherein said upper seal seals said gas outlet and said fluid outlet is opened, and a lower position wherein said lower seal seals said fluid outlet and said gas outlet is opened, said actuator and said housing having similar respective cross sectional configurations with the cross section of said actuator being smaller than the cross section of said housing to enable said actuator to readily fit into and move freely within and longitudinally along the chamber of said housing between the upper position and the lower position; and wherein when the gas inside said housing reaches a predetermined volume, said actuator is moved to said lower position to seal said fluid outlet and to open said gas outlet to vent the gas inside said housing out of said housing. (App. Br. 18.) 20. A disposable fluid transfer set comprising: first tubing connectable to a fluid reservoir for receiving an infusate stored therein, a heat exchanger through which the infusate flows and is heated, a gas valve assembly for receiving the heated infusate from the heat exchanger, wherein said gas valve assembly 2 Appeal 2015-005959 Application 13/366,431 includes a housing having an elongated chamber including a top and a bottom, an inlet at a side at a lower portion of said housing to receive the heated infusate into said housing, a gas outlet to vent gas from said housing and a fluid outlet at the bottom of said housing to output the infusate to the patient, an actuator movable inside said housing having an upper end with an upper seal for sealing said gas outlet and a lower end having a lower seal for sealing said fluid outlet, said actuator movable between an upper position wherein said upper seal seals said gas outlet and said fluid outlet is opened, and a lower position wherein said lower seal seals said fluid outlet and said gas outlet is opened, said actuator and said housing having similar respective cross sectional configurations with the cross section of said actuator being smaller than the cross section of said housing to enable said actuator to readily fit into and move freely within and longitudinally along the chamber of said housing between the upper position and the lower position; and wherein when the gas inside said housing reaches a predetermined volume, said actuator is moved to said lower position to seal said fluid outlet and to open said gas outlet to vent the gas inside said housing out of said housing; and a second tubing in fluid communication with the fluid outlet to feed the heated infusate to a patient. (App. Br. 19.) The claims stand rejected as follows: Claims 13—16, 19, 20, and 22—28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner2 and Hesse.3 Claims 18 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner, Hesse, and Baker.4 2 Rosner, US 4,678,460, issued July 7, 1987. 3 Hesse et al., US 3,543,752, issued Dec. 1, 1970. 4 Baker, US 6,229,957 Bl, issued May 8, 2001. 3 Appeal 2015-005959 Application 13/366,431 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) We adopt Examiner’s findings concerning the scope and content of the prior art (Final Act.5 2—11; Ans.6 2—11) and provide the following findings for emphasis. FF 1. Rosner [r] elates to parenteral fluid warming and delivery equipment and more particularly to a portable apparatus for the rapid, massive warming and infusion into patients during trauma, surgery and other massive blood loss situations of cold banked blood and other unwarmed parenteral fluids for purposes of massive fluid resuscitation. (Rosner 1: 7—13.) 5 Examiner’s August 7, 2014 Final Office Action. 6 Examiner’s March 25, 2015 Examiner’s Answer, incorporating Examiner’s Final Act. by reference (see e.g., Ans. 2). 4 Appeal 2015-005959 Application 13/366,431 FF 2. Rosner’s Figures 1, 5, 17, 18, and 20 are reproduced below: FIG-1 Rosner’s “FIG. 1 is a right side elevational view of a portable massive parenteral fluid warming and infusion apparatus constructed in accordance with [Rosner’s] invention” (Rosner 5: 27—30; see generally Final Act. 2). 5 Appeal 2015-005959 Application 13/366,431 Rosner’s “FIG. 5 is a block diagram of the parenteral fluid circuit of [Rosner’s] apparatus” (Rosner 5: 37—38; see generally Final Act. 2). Rosner’s “FIG. 17 is a plan view of a bubble trap and eliminator” (Rosner 6 4; see generally Final Act. 2). 6 Appeal 2015-005959 Application 13/366,431 Rosner’s “FIG. 18 is a cross-sectional view taken on the line 18—18 of FIG. 17 showing the internal construction of the bubble trap and eliminator” (Rosner 6: 5—7; see generally Final Act. 2—3). FIG20 Rosner’s “FIG. 20 is a cross-sectional view taken on the line 20—20 of FIG. 18 showing the valve guide of the bubble trap and eliminator” (Rosner 6: 10—12; see generally Final Act. 3). 7 Appeal 2015-005959 Application 13/366,431 FF 3. Examiner finds that Rosner discloses a disposable set of fluid transfer tubes [] that includes a first tubing 133 (Fig 5) connectable to at least one infusate reservoir 89 (Fig 1,5) for receiving an infusate [], a heat transfer portion 93 (Fig 1,5) for receiving the infusate and for transferring heat to the infusate flowing therethrough, and an output portion 106 (Fig 5) for outputting the heated infusate [wherein the], disposable set further comprises: a housing 100/160+158+170 (Fig 5[,] 18) having an elongated chamber 160 (Fig 18) including a top 158 (labeled in Fig 17 and seen in Fig 18) and a bottom 170 (Fig 18), an inlet 101 (Fig 18) connected to [the] output portion of [the] tubing (indirectly, as seen in Fig 5) to receive the infusate into [the] housing [which], ha[s] a gas outlet 159 (Fig 18) to vent gas from said housing [] and a fluid outlet 178 (Fig 18) at the bottom of [the] housing (as seen in Fig 18) to output the infusate to the patient []; an actuator 162 (Fig 18) movable inside [the] housing [], [the] actuator having an upper end and a lower end (as seen in Fig 18), [the] upper end having an upper seal 168 (Fig 18) for sealing said gas outlet [], said lower end having a lower seal 169 (Fig 18) for sealing said fluid outlet [], said actuator movable between an upper position wherein said upper seal seals [the] gas outlet and [the] fluid outlet is opened [], and a lower position wherein said lower seal seals [the] fluid outlet and [the] gas outlet is opened [], [the] actuator and [the] housing having similar respective cross sectional configurations (both are cylindrically-shaped, as seen in Fig 20) with the cross section of [the] actuator being smaller than the cross section of [the] housing (as seen in Fig 20) to enable [the] actuator to readily fit into and move freely within and longitudinally along the chamber of [the] housing between the upper position and the lower position[]; and wherein when the gas inside [the] housing reaches a predetermined volume, [the] actuator is moved to [the] lower position to seal [the] fluid outlet and to open [the] gas outlet to vent the gas inside [the] housing out of [the] housing. (Final Act. 2—3, citing Rosner 8: 35—64; 13: 52—53 and 56—60; and 14: 9— 27.) 8 Appeal 2015-005959 Application 13/366,431 FF 4. Examiner finds that “Rosner does not disclose that the inlet is located at a side at a lower portion of [the] housing” and relies on Hesse to make up for this deficiency in Rosner (Final Act. 3). FF 5. Hesse “is concerned with [the infusion] of liquids into veins, arteries or muscles of animal or human bodies over a longer period of time with more or less exact dosage of the quantities of liquid infused per time unit” (Hesse 1: 2—5; see Final Act. 3^4 (Hesse discloses “a substantially similar housing” as is disclosed by Rosner)). FF 6. Hesse’s Figure 1 is reproduced below: Hesse’s “FIG. 1 is a front view representation showing the parts visible and accessible on the front side of the mounting panel of an infusion apparatus for medical purposes with attached liquid supply container and cannula” (Hesse 2: 54—57; see generally Final Act. 4). 9 Appeal 2015-005959 Application 13/366,431 FF 7. Examiner finds that Hesse discloses a housing 35 (Fig 1) with an actuator 85 (Fig 1) therein, wherein the housing has an elongated chamber 155 (Fig 1) including a top 42 (Fig 1) and a bottom 70 (Fig 1), a gas outlet 41 (Fig 1) at the top of [the] housing, a fluid outlet 72 (Fig 1) at the bottom of [the] housing, and an inlet 71 (Fig 1) located at a side at a lower portion of said housing ... for the purpose of allowing fluid to flow into the housing resulting in an actuator floating according to the fluid level in the housing. (Final Act. 4, citing Hesse 3: 14—21 and 5: 37-44.) FF 8. Examiner finds that because “inlet 71 isn’t in the center of the bottom 70, it is considered at ‘a side’ at a ‘lower portion’ because bottom 70 is in the lower half of the chamber” (Final Act. 4, citing Hesse’s Fig. 1; see also Ans. 3 (Hesse’s “location of inlet 71 is ‘at a side of a lower portion of [the bottom 70 of Hesse’s] housing’” and “is to the side of the central axis of the chamber . . . and thus[,] this lowest boundary is necessarily in a lower portion of the housing”)). FF 9. Examiner finds that Rosner and Hesse [both disclose a device comprising] an inlet located at the top of a housing and an inlet located at a side at a lower portion of a housing, [which] are both capable of allowing fluid to flow into a housing such that an actuator will float according to the level of fluid in the housing. (Final Act. 4, citing Rosner 14: 9—27 and Hesse 5: 37-44.) FF 10. Examiner finds that the combination of Rosner and Hesse “do[es] not disclose that the tube is received by an air detector that provides a redundant check on whether there is any air emboli present in the infusate from said fluid outlet” and relies on Baker to make up for this deficiency in the combination of Rosner and Hesse (Final Act. 11). 10 Appeal 2015-005959 Application 13/366,431 FF 11. Baker “relates to warming devices required for safely warming physiological fluids, inclusive of blood and non-blood related products, prior to their infusion to a patient” (Baker 1: 5—8). FF 12. Baker’s Figure 1 is reproduced below: Baker’s “FIG. 1 is a diagrammatic representation of the physiological fluid warming device of [Baker’s] invention” (Baker 4: 51—52; see generally Final Act. 11). FF 13. Examiner finds that Baker disclose an apparatus (Fig 1) comprising an air detector 110 (Fig 1) for receiving an infusate from a fluid outlet (coming from heat exchanger 106, Fig 1) to provide a redundant check on whether there is any air emboli present in the infusate [] for the purpose of preventing flow of air-infused infusate into the patient’s body. (Final Act. 11, citing Baker 5: 47—63.) 11 Appeal 2015-005959 Application 13/366,431 ANALYSIS The rejection over the combination of Rosner and Hesse: Based on the combination of Rosner and Hesse, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify Rosner to include the inlet at a side at a lower portion of the housing, as [disclosed] by Hesse, [because] such a change of location of the inlet would provide the same result as in Rosner of allowing fluid flow into the housing resulting in an actuator floating according to the fluid level in the housing. (Final Act. 4, citing Hesse 3: 14—21 and 5: 37-44.) Claims 13 and 20: We agree with Examiner’s finding that Appellants’ contentions regarding “turbulence” relating to Rosner’s device lacks evidentiary support on this record (see Ans. 2; cf. App. Br. 11). In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence”). As Examiner explains, Appellants’ “claim[s 13 and 20 are] not written in a manner that requires the term ‘side’ to be a structure; rather the phrase ‘at a side’ only requires that the inlet not be in the center” (Ans. 3). Therefore, we are not persuaded by Appellants’ contention that the combination of Rosner and Hesse fails to disclose a structure commensurate in scope with Appellants’ claimed invention because the combination of Rosner and Hesse suggest a device comprising a “fluid inlet” that is positioned off center to, or to one side of, the bottom of the device suggested by the combination of Rosner and Hesse rather than on a side of the device’s housing (see App. Br. 12—13; Reply Br. 1—3). 12 Appeal 2015-005959 Application 13/366,431 For the foregoing reasons, as well as those set forth by Examiner, we are not persuaded by Appellants’ contention that “[Ejxaminer has simply declared by fiat that the bottom of the Hesse housing is a side of the housing” (see Ans. 3—5; see also FF 8; cf. App. Br. 12, n. 2; Reply Br. 4). In this regard, we agree with Examiner’s reasoning that the claims involved in Appeal 2012-0015507 defined the term “side” ... in a manner different from the way it is recited in the present claims and[,] therefore[,] the interpretation of the term ‘side’ in the present claims is not required to be the same as the interpretation of the term ‘side’ that was applied in the [] claims [of Appeal 2012-001550], (Ans. 6; cf. App. Br. 13, n. 3; Reply Br. 5—6.) Further, “while it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). Moreover, “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Therefore, we are not persuaded by Appellants’ contentions regarding what they intended the term “side” to mean in the context of the claims before this panel for review (see Reply Br. 1—3). See In re Morris, 127 F.3d 1048, 1054—56 (Fed. Cir. 1997) (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their 7 Application 12/320,348, which is a divisional of the Application before this Panel for review. An opinion reversing the rejections of record in Appeal 2012-001550 was entered March 13, 2013. 13 Appeal 2015-005959 Application 13/366,431 interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.”) For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention that the devices disclosed by Rosner and Hesse “are substantially different” (see Ans. 4; cf. App. Br. 12, n. 1). Further, for the foregoing reasons and absent evidence to the contrary, we are not persuaded by Appellants’ contention that the devices disclosed by Rosner and Hesse are not substantially similar, as described by Examiner, simply because one locates an inlet at the top of the housing, while the other locates an inlet at the bottom of the housing (see Reply Br. 3 4). In addition, Appellants fail to provide persuasive evidence or argument as to why the location of the particular inlet identified by Appellants would have led a person of ordinary skill in this art away from making the modifications proposed by Examiner, which are based on the combination of Rosner and Hesse (id.). For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention regarding a pump (see Ans. 5; cf. App. Br. 12—13; Reply Br. 4—5). In this regard, we recognize Appellants’ contentions that Rosner’s “use of an inflatable cuff to force [] fluid inside a fluid bag to drip into a drip chamber” and that “[s]uch squeezing of the fluid bag does not make the pressurized infuser cuff a pump” (Reply Br. 4—5). Appellants fail to provide persuasive evidence or argument to support a conclusion that squeezing a bag to force fluid to flow is materially different, in the context of Appellants’ claimed invention and arguments, to the use of pump to force fluid to flow. 14 Appeal 2015-005959 Application 13/366,431 For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention regarding cross-sectional configurations (see Ans. 6— 7; cf. App. Br. 13—14). Claims 15 and 24\ We are not persuaded by Appellants’ contentions that “[t]he Rosner device does not have a shaft that extends from a lower surface of float 171, or a lower sphere that attaches to the shaft” and “Hesse []fail[s] to show a shaft that extends from the lower surface of those floats (85 and 485), assuming that the reverse triangular shaped lower portion of those floats may be considered a lower surface,” which are not commensurate in scope with Appellants’ claimed invention (App. Br. 14—15). As Examiner explains, Appellants’ claimed invention “do[es] not require ‘a shaft that extends from a lower surface of a float’; rather, the claims recite ‘a lower sphere attached to a shaft that extends from a lower surface of [the] actuator’” (Ans. 7). In this regard, Examiner explains that “item 162 of Rosner is the ‘actuator’, item 171 is the ‘lower sphere’ and item 167 is the ‘shaft’ and . . . lower sphere 171 is attached to shaft 167 and shaft 167 extends from a lower surface of actuator 162” {id., citing Rosner’s Fig. 18; see FF 2). Claims 16 and 25: We are not persuaded by Appellants’ contention that “[EJxaminer is picking and choosing only the components in the different embodiments [of Hesse] need[ed]” to support Examiner’s position (App. Br. 15). As Examiner explains, on this record, “[i]t is appropriate to use multiple embodiments from one secondary reference to teach various unrelated 15 Appeal 2015-005959 Application 13/366,431 features as long as the features found in the multiple embodiments would not affect the functioning and/or use of one another and as long as a motivation and/or rationale for each modification is provided” (Ans. 8). We agree. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, for the reasons stated by Examiner, we are not persuaded by Appellants’ contentions regarding picking and choosing or that the modification of Rosner’s device made obvious by Hesse “would destroy the guided up/down movements of the Rosner device” (see Ans. 8; cf. App. Br. 15). Claim 26: For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention that Rosner’s “device . . . does not have any funnel shaped portion that extends to the fluid outlet” and “Hesse likewise fails to disclose a bottom funnel portion” (see Ans. 9; cf. App. Br. 15). Claim 28: Absent evidence to the contrary, for the reasons set forth by Examiner, we are not persuaded by Appellants’ contention that “[t]he combination of Rosner and Hesse [] would not have suggested the claimed offset positioning between the upper and lower seals of Claim 28” (see Ans. 9; cf App. Br. 15—16). 16 Appeal 2015-005959 Application 13/366,431 The rejection over the combination of Rosner, Hesse, and Baker. Based on the combination of the combination of Rosner, Hesse, and Baker, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify [the device suggested by the combination of Rosner and Hesse] to include an air detector, as [disclosed] by Baker, for the purpose of preventing flow of air- infused infusate into the patient’s body” (Final Act. 11, citing Baker 5: 58— 63). For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention that the addition of Baker’s air detector 110, into the device suggested by the combination of Rosner and Hesse would not result in a device that comprises a redundant check for the presence of air in the fluid from the heat exchanger (see Ans. 10; cf. App. Br. 16—17). Nevertheless, to the extent that the combination of Rosner and Hesse fails to suggest an air detector, Baker makes up for such a deficiency. In that regard, a person of ordinary skill in this art would have found it prima facie obvious to include two of Baker’s air detectors in the device suggested by the combination of Rosner and Hesse to provide a redundant check for the presence of air in the fluid from the head exchanger. See In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced, and we are of the opinion that such is not the case here”). CONCEUSION OF FAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. 17 Appeal 2015-005959 Application 13/366,431 The rejection of claims 13, 15, 16, 20, 24, 25, 26, and 28 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner and Hesse is affirmed. Claims 14, 19, 22, 23, and 27 are not separately argued and fall with claims 13 and 20 respectively. The rejection of claims 18 and 21 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner, Hesse, and Baker is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 18 Copy with citationCopy as parenthetical citation