Ex Parte Andersen et al

Patent Trial and Appeal Board

Jan 30, 2017

13366431 (P.T.A.B. Jan. 30, 2017)

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
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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.
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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).
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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).
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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).
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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).
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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.)
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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).
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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).
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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.)
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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).
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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.
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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.
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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
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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).
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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.
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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
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