Ex Parte O et al

Patent Trial and Appeal Board

Jan 29, 2013

11557376 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN J. O’MAHONY, STEVEN BEMARD,
and SEAN P. SKUBITZ
____________

Appeal 2011-004091
Application 11/557,376
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-37 (App. Br. 5;
Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a dual lumen catheter. Claim 1 is
representative and is reproduced in the Claims Appendix of Appellants’
Brief.

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Application 11/557,376

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Claims 1-13, 16, 19, 21-23, 28, 30, and 32-37 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Martin.
1

Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Boyd.
2

Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Helfer.
3

Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Martin and Abrahamson.
4

Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Gaskill.
5

Claims 24-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Beisel.
6

Claims 29 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Martin and O’Connor.
7

We affirm.

The rejection over Martin:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

1
Martin, US 5,188,593, issued February 23, 1993.

2
Boyd et al., US 5,558,644, issued September 24, 1996.
3
Helfer, US 4,857,054, issued August 15, 1989.
4
Abrahamson, US 5,489,278, issued February 6, 1996.
5
Gaskill, III, US 4,911,717, issued March 27, 1990.
6
Beisel, US 5,947,940, issued September 7, 1999.
7
O’Connor et al., US 5,545,151, issued August 13, 1996.
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FACTUAL FINDINGS (FF)
FF 1. Martin suggests “a dual lumen catheter … fully capable of
withdrawing blood and returning treated blood through a peripheral vein of a
patient” (Ans. 3; see also Martin, col. 1, ll. 16-24 (“[M]ultiple lumen
catheters are … widely used in medical procedures … wherein it is desirable
… to introduce blood into a vein or other vessel of a patient through a first
lumen while simultaneously removing a corresponding amount of blood
from … a second lumen of the catheter”); Martin, Abstract (“A dual lumen
catheter, for insertion into a vein of a patient””)).
FF 2. Martin’s dual lumen catheter comprises a first and second lumen,
wherein one of the lumens “continues as a single lumen … distal to the dual
lumen section” (id. at 3-4).
FF 3. “Martin does not expressly disclose the … catheter[’s] insertable
length range” (id. at 4).
FF 4. Examiner finds that “[t]he insertable length range of the catheter
depends o[n the] anatomical parameters of the particular vessel the catheter
is intended to be inserted in” (id.).
FF 5. “Martin does not expressly disclose the particular parameter of the
catheter diameter range” (id. at 5).
FF 6. Examiner finds that “the catheter diameter range depends o[n] the
particular vessel caliber the catheter is intended to be inserted in” (id.).
FF 7. Martin fails to expressly disclose “the particular parameter of the
distance between the inlet opening of the catheter and [the] outlet opening of
the catheter” (id. at 6).
FF 8. Examiner finds that “[t]he working interval between [the] inlet
opening of the catheter and outlet opening of the catheter depends o[n] the
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physiological and anatomical parameters of the blood flow in the particular
vessel” (id.).
ANALYSIS
Examiner concludes that Martin suggests a dual lumen catheter
comprising two lumens, wherein one lumen continues as a single lumen
distal to the dual lumen section (Ans. 3-4; FF 1-2). In addition, Examiner
concludes that at the time Appellants’ invention was made, it would have
been prima facie obvious to arrange and/or modify Martin’s device to
comprise a catheter tube having: (1) an insertable length of at least 10 cm;
(2) a diameter along the insertable length of the catheter of no more than 6
French; and (3) an opening of a first lumen 10 cm proximal to the opening of
a second lumen to accommodate the anatomical parameter of a particular
vessel in a patient (Ans. 4-6; FF 3-8). In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (“[I]t is not inventive to discover the optimum or workable
ranges by routine experimentation.”) (quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955)).
Appellants present separate arguments for the following groups of
claims: (I) claims 1-4, 6-13, 16, 19-23, 30-32, and 34-37 and (II) claims 5
and 33. Claims 1 and 5 are representative.

Claim 1:
We are not persuaded by Appellants’ contention that Martin fails to
“Disclose A Catheter Having A Withdrawal Lumen Extending Beyond An
Infusion Lumen” (App. Br. 13; Reply Br. 3-4). Appellants’ contention fails
to identify a structural difference between the device set forth in Appellants’
claim 1 and the device suggested by Martin. “[T]he patentability of
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apparatus … claims depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Notwithstanding the nomenclature
Appellants chose to label the various lumens of Martin’s device, there is no
persuasive evidence or argument on this record to support a conclusion that
(1) the structure of Appellants’ device is not prima facie obvious over
Martin’s device and (2) Martin’s device is not capable of functioning as
intended by Appellants (Cf. FF 1). For the foregoing reasons, Appellants’
contention, that they intend to attach/couple Martin’s catheter to a secondary
apparatus in a manner that is “contrary to conventional wisdom”, fails to
establish a non-obvious structural difference between Appellants’ claimed
device and the device suggested by Martin (Reply Br. 4).
We are not persuaded by Appellants’ contention that at the time of
Appellants’ claimed invention, it would not have been prima facie obvious
to a person of ordinary skill in this art to arrange, or modify, Martin’s
catheter to have a diameter of no more than 6 French along its insertable
length, or any other reasonable diameter, to accommodate a peripheral vein,
or other vessel, of a patient for the purpose that those of ordinary skill in this
art widely used multiple lumen catheters (see App. Br. 14-16; Reply Br. 2-3;
Cf. FF 1 and 6). See Geisler, 116 F.3d at 1470. See also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).

Claim 5:
In addition to the foregoing, we are not persuaded by Appellants’
contention that at the time of Appellants’ claimed invention, it would not
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have been prima facie obvious to a person of ordinary skill in this art to
arrange, or modify, Martin’s catheter to have an opening of a first lumen 10
cm proximal to the opening of a second lumen to accommodate a peripheral
vein, or other vessel, of a patient for the purpose that those of ordinary skill
in this art widely used multiple lumen catheters (see App. Br. 16-17; Cf. FF
1 and 8). See Geisler, 116 F.3d at 1470. See also KSR, 550 U.S. at 421.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Martin is affirmed. Claims 2-4, 6-13,
16, 19-23, 30-32, and 34-37 are not separately argued and fall with claim 1.
Claim 33 is not separately argued and falls with claim 5.

The rejection over the combination of Martin and Boyd or Helfer:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 9. Examiner relies on Martin as discussed above (Ans. 15).
FF 10. Examiner relies on Boyd and Helfer to suggest a catheter in
combination with a blood pump, which is capable of applying a pressure in
the range of negative 100 to negative 300 (Boyd), or negative 150 to
negative 200 (Helfer), millimeters of mercury to a lumen of a catheter (id.).
ANALYSIS
Examiner reasons that the requirement in Appellants’ claim 14,
wherein a blood pump applies a negative pressure to an inlet of a withdrawal
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lumen “is not [a] structural limitation but [is instead a] recitation with
respect to the manner in which … [the] claimed apparatus is intended to be
employed, which does not differentiate the claimed apparatus from a prior
art apparatus satisfying the claimed structural limitations” (Ans. 24). The
same is true of Appellants’ claim 15. Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d at 809. In addition, Examiner concludes
that, at the time Appellants’ claimed invention was made, it would have
been prima facie obvious to combine Martin’s catheter with a blood pump,
capable of applying a pressure in the range of negative 100 to negative 300
(Boyd), or negative 150 to negative 200 (Helfer), millimeters of mercury to
a lumen of a catheter (see generally id.; see also id. at 15-16).
For the foregoing reasons we are not persuaded by Appellants’
contention that “a person of ordinary skill would not have found obvious
applying a negative pressure, such as disclosed in Boyd [(or Helfer)], to the
farthest extending lumen in Martin” (App. Br. 17 and 18). For the same
reasons, we are not persuaded by Appellants’ contention that Examiner
“dismisse[d] the requirement in dependent claim 14 for a blood pump that
applies a negative pressure of 100 to 300 millimeters of mercury to the
withdrawal lumen” (Reply Br. 4).
To be complete, we are not persuaded by Appellants’ unsupported
contention that “Martin teaches applying a positive pressure to the farthest
extending lumen” (App. Br. 17 and 18; Reply Br. 4). In re Geisler, 116 F.3d
at 1471 (Argument by counsel cannot take the place of evidence).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness.
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The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Boyd is affirmed.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Helfer is affirmed.

The rejection over Martin and Abrahamson:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 11. Examiner relies on Martin as discussed above (Ans. 16).
FF 12. Examiner relies on Abrahamson to suggest a catheter, wherein the
“catheter tube has a constant outside diameter section extending along its
insertable length to a distal tip portion of the catheter” (id.).
ANALYSIS
Based on the combination of Martin and Abrahamson, Examiner
concludes that, at the time of Appellants’ claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to modify
Martin’s catheter tube to have “[a] constant outside diameter section
extending along its insertable length to a distal tip portion of the catheter, as
taught by Abrahamson” (App. Br. 17). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416.
For the foregoing reasons, we are not persuaded by Appellants’
contention that “Abrahamson does not suggest that the catheter disclosed in
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Martin [may] be modified to have an extraction (withdrawal) lumen extend
beyond the return (infusion) lumen” (App. Br. 18).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Martin and Abrahamson is affirmed.
Claim 18 is not separately argued and falls with claim 17.

The rejection over the combination of Martin and any one of Gaskill, Beisel,
or O’Connor:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 13. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 18-23).
ANALYSIS
Appellants do not argue the rejection of dependent: (1) claim 20; (2)
claims 24-28; or (3) claims 29 and 31, separately from the rejection of claim
16 (App. Br. 18-19). Arguments not made are waived.
For the reasons set forth above, Appellants failed to identify error in
Examiner’s prima facie case of obviousness. Therefore, we find that the
preponderance of evidence falls in favor of Examiner.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness.
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Application 11/557,376

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The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Gaskill is affirmed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and Beisel. Claims 23-27 are not separately
argued and fall with claim 24.
The rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Martin and O’Connor. Claim 31 is not separately
argued and falls with claim 29.

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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