Ex Parte Moss

Patent Trial and Appeal BoardNov 8, 2013

11952563 (P.T.A.B. Nov. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GERALD MOSS ____________ Appeal 2011-010955 Application 11/952,563 Technology Center 3700 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing of the Decision on Appeal entered September 26, 2013, which affirmed rejections on grounds of obviousness. Appellant contends that we overlooked Appellant’s prior argument that the combination of references does not teach the claimed invention (Req. Reh’g 2-5). We find no point of law or fact which we overlooked or misapprehended in arriving at our Decision. Appeal 2011-010955 Application 11/952,563 2 BACKGROUND Appellant claims a gastrointestinal aspiration catheter and methods of using the catheter. The Examiner rejected the claims as obvious over varying combinations of Fearnot,1 Peacock,2 O’Keefe,3 Vitullo,4 and Park.5 In the Examiner’s view, the evidence showed that the prior art taught (1) a tube of resilient material, (2) a spring extending through the tube, (3) the spring including a helical coil of wire having first and second number of turns, (4) an orifice which extends through a distal portion of the tube, and between adjacent coils of the spring perpendicular to the tube longitudinal axis, (5) and the tube having a wall thickness of less than about 0.008 inches (Ans. 4- 5). The Panel concluded that the record supported the Examiner’s finding that orifices perpendicular to the longitudinal access of a tube provides greater perfusion, such that the skilled artisan would have found it obvious to add orifices to a catheter in order to increase perfusion in a target area (Ans. 5; Dec. 2). We also found that the record did not support Appellant’s contention that the references themselves must contain some suggestion or desirability for the combination (Dec. 2). 1 Fearnot et al., US 5,069,674, issued Dec. 3, 1991. 2 Peacock, III et al., US 6,777,644 B2, issued Aug. 17, 2004. 3 O’Keefe et al., Transnasal Endoscopic Placement of Feeding Tubes in the Intensive Care Unit, 27 JOURNAL OF PARENTERAL AND ENTERAL NUTRITION 349-354 (2003). 4 Vitullo et al., US 6,896,671 B2, issued May 24, 2005. 5 Park et al., US 6,159,187, issued Dec. 12, 2000. Appeal 2011-010955 Application 11/952,563 3 Accordingly, the Examiner’s findings and reasoning were adopted (Dec. 2) and the rejection was affirmed. GROUNDS PRESENTED. Appellant requests rehearing on the grounds that the Board overlooked Appellant’s argument that the combination of references failed to teach the claimed invention (Req. Reh’g 2, 3). Appellant contends: 1. That the Decision “does not address the missing rationale for the combination of Fearnot with any or all of the references.” (Req. Reh’g 3, 5.) 2. That “[t]he catheter of Fearnot delivers only a small volume of liquid unlike” gastrointestinal aspiration catheters, and the secondary references do not overcome this deficiency (Req. Reh’g 2, 5). DISCUSSION On consideration, we find that, given the totality of the references, the Examiner provided sufficient articulated reasoning with rational underpinning to sustain the rejection based on obviousness. The Examiner established that the references account for all claim limitations and provides reasonable rational for making the combination. Specifically, the Examiner concluded that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to have an orifice which extends through the distal portion of the tube and between adjacent coils of the spring perpendicular to the tube Appeal 2011-010955 Application 11/952,563 4 longitudinal axis as taught by Peacock in Fearnot’s catheter to increase perfusion in a target area. (See Ans. 5, 7, 11.) It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the device taught by Fearnot’s with Keefe’s [sic] method to provide a catheter that would resist high pressure levels, doing so would allow adequate fluid flow without rupturing the catheter during the performance of Keefe’s [sic] method. (Ans. 6-7.) “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Furthermore, “[c]ommon sense teaches … that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. We find that the Examiner has met the initial burden of presenting a prima facie case of obviousness, and thereby properly shifted the burden of coming forward with rebuttal or argument onto Appellant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Appellant, however, has not provided persuasive reasoning or rebuttal evidence to overcome the Examiner’s prima facie case. Appellant contends that unlike the catheter of O’Keefe “[t]he catheter of Fearnot delivers only a small volume of liquid unlike gastrointestinal aspiration catheters” (Req. Reh’g 2, see also 5). Appellant is asking that we accord weight to the limitation “gastrointestinal catheter,” specifically, that the limitation intimates a particular size or the ability to process a particular volume of liquid. Appeal 2011-010955 Application 11/952,563 5 However, what is important is the meaning the combination of references has to the ordinary artisan given the recited claim limitations. As noted by the Examiner, “[t]he appellant is not claiming the size of the catheter and therefore the argument that the catheter of Fearnot would only deliver a small volume of liquid, unlike gastrointestinal aspiration catheters, is not found persuasive, since the catheter of Fearnot meets the rest of the limitations” (Ans. 11). The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to use the device taught by Fearnot’s with Keefe’s [sic] method to provide a catheter that would resist high pressure levels, doing so would allow adequate fluid flow without rupturing the catheter during the performance of Keefe’s [sic] method.” (Ans. 6-7.) The Examiner’s position is that “[d]ue to the small diameter of the Fearnot catheter it can be inserted through the nasal passage to the gastrointestinal tract.” (Id. at 12.) We agree with the Examiner’s position that the claims do not make reference to either size or feeding volume for the gastrointestinal feeding catheter. Therefore, notwithstanding Appellant’s contention to the contrary, Appellant failed to establish an evidentiary basis on this record to support a conclusion that the device suggested by the combination of Fearnot and O’Keefe would not deliver some undefined volume of feed to a patient as is required by Appellant’s claimed invention. We have considered the reasons Appellant provides as grounds for reversal, but adhere to the original Decision and affirm the Examiner rejections of the claims as obvious. Therefore, Appellant’s request has been granted to the extent that the decision has been reconsidered, but such request is denied with respect to Appeal 2011-010955 Application 11/952,563 6 making any modifications to the decision affirming the Examiner’s rejections. DENIED cdc