Ex Parte Schweikert

Patent Trial and Appeal BoardSep 28, 2012

10950999 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TIMOTHY SCHWEIKERT ____________________ Appeal 2010-008769 Application 10/950,999 Technology Center 3600 ____________________ Before LINDA E. HORNER, PATRICK R. SCANLON, and BRADFORD E. KILE, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008769 Application 10/950,999 2 STATEMENT OF THE CASE Timothy Schweikert (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 18, 38-46 and 48-55 under 35 U.S.C. § 103(a) as being unpatentable over Funk et al. (US 5,203,056, iss. Apr. 20, 1993) (hereinafter “Funk”), Olive (US 4,497,124, iss. Feb. 5, 1985) and Poulsen (US 5,309,604, iss. May 10, 1994). Claims 1-17, 19-37 and 47 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and denominate our affirmance of the rejection of claims 18 and 39 as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter relates to an information-bearing article (also referred to as an information ring) “for use with tubing such as a medical catheter and may be used separately or in combination with a tubing clamp” and a conduit assembly including such an information-bearing article or information ring. Spec., paras. [0007] (as amended), [0008]. Claims 41- 43 and 51 are independent. Claim 41, reproduced below, is illustrative of the subject matter on appeal. 41. A conduit assembly comprising: a fluid-conducting conduit having a first end and a second end, wherein the conduit further comprises a first fitting fixedly connected to the first end of the conduit and a second fitting fixedly connected to the second end of the conduit; an information ring comprising: a body having a first end and a second end, wherein the body includes: Appeal 2010-008769 Application 10/950,999 3 a first body face extending between the first end and the second end; and a second body face extending between the first end and the second end, and wherein the body has an opening extending therethrough between the first body face and the second body face; and a first indicia portion at the first end of the body, wherein the first indicia portion has a first indicia face bearing indicia thereon, wherein the body has a first body portion proximate the first end and a second body portion proximate the second end, wherein the first body portion has one of a male and a female connector and the second body portion has the other of the male connector and the female connector, wherein the male connector is insertable into the female connector, such that the first body portion is connected to the second body portion; and a conduit clamp having first and second openings, wherein the conduit extends through the first and second openings, and wherein the conduit clamp includes a clamping section activatable between clamping and unclamping states with respect to the fluid-conducting conduit, wherein the first body portion is disposable on one side of the conduit between the first and second openings and the second body portion is disposable on an opposing side of the conduit between the first and second openings such that the male connector is inserted into the female connector, and wherein the information ring is adapted so as not to interfere with activation of the clamping section. Appeal 2010-008769 Application 10/950,999 4 Independent claim 42 is directed to a conduit assembly comprising fluid-conducting conduit, a two-piece information ring and a conduit clamp. Independent claim 43 is directed to an information-bearing article comprising first and second interconnecting bodies at least one of which has an outwardly-facing surface bearing indicia. Independent claim 51 is directed to the combination of a clamp for fluid-conducting tubing and an information-bearing article comprising first and second interconnecting bodies at least one of which has an outwardly-facing surface bearing indicia. ANALYSIS Independent claims 41-43 and 51 The Examiner finds that Funk discloses a conduit assembly comprising a conduit (the hose 14 of Funk), a clamp (10) through which the conduit extends, and an information ring having a body (insert member 20). Ans. 3. The Examiner further finds that Funk does not disclose the following three features: a two-piece information ring having male and female connectors, fittings connected to the ends of the conduit, and placing indicia on the ring body. Ans. 3-4. The Examiner determines that Olive discloses a body having first and second body portions with male and female connectors for attaching the two body portions together over a tube and concludes it would have been obvious to make the body of Funk into two body portions having male and female connectors because this modification would allow the body 20 to be attached to and removed from the conduit 14 “in an easier and more convenient manner.” Ans. 3. The Examiner then finds that Poulsen teaches placing fittings on the end of a conduit and concludes that, in view of the teaching of Poulsen, it would have been obvious to attach fittings to the ends Appeal 2010-008769 Application 10/950,999 5 of the Funk conduit 14 to permit connection to medical devices in a more secure and useful manner. Ans. 4. Lastly, the Examiner finds that Olive discloses placing indicia on the face of a body and concludes that it would have been obvious to modify Funk by placing indicia on a face of the body 20 to convey information to observers and users of the conduit assembly.1 Id. Two-piece insert Appellant takes issue with modifying Funk to make the insert member 20 a two-piece structure, noting that the insert member 20 of Funk provides side walls to the clamp 10 to prevent bending of the conduit 14. App. Br. 6. Based on this, Appellant asserts: the insert member must have substantial rigidity and strength to resist lateral forces of the conduit as it buckles or is urged sideways during clamping into engagement with the side walls, and is disclosed in the reference to be a one-piece article consistent with this expressly desired and needed property of resisting the conduit buckling. Id. However, Funk does not expressly state that the insert member must be a one-piece article in order to resist buckling and in fact does not discuss any particular structural requirements to resist buckling. We thus do not agree that “splitting the one-piece insert disclosed in Funk et al into two parts that are separable from each other, would be against the express desires of the reference.” Id. The Examiner notes that the modification merely would require that the two pieces have a separation force greater than the force that 1 We note that the Examiner makes these findings and conclusions “[i]n regard to claims 37, 43 and 51,” but independent claims 41 and 42 also recite indicia on the information ring (and claim 37 has been cancelled). We thus treat these findings and conclusions as applying to all independent claims 41-43 and 51. Appeal 2010-008769 Application 10/950,999 6 would be encountered during normal operation of the clamp. Ans. 6. A person having ordinary skill in the art would be able to devise or engineer such a two-piece insert. Contrary to Appellant’s assertion (see Reply Br. 2), this endeavor would not require “an undue level of experimentation.” Furthermore, Appellant’s assertion that the combination would require an undue level of experimentation is not persuasive because no evidence in support of the assertion is provided. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”) (citation omitted). Furthermore, Appellant’s statement that “it may be possible” that there is no level of separation resistance sufficient to resist buckling but still allow intentional separation by a practitioner (id.) is unpersuasive because it is speculation not based on any evidence. There is no indication that buckling of Funk’s conduit 14 would create such a level of force, and indeed it seems unlikely a “very soft and correspondingly flexible hose” (Funk, col. 1, l. 17) would create significant buckling forces. We also are not persuaded by Appellant’s argument that the Examiner has not explained why a person having ordinary skill in the art would want to modify Funk’s insert member 20. App. Br. 6. The Examiner indicates it would have been obvious to combine Funk and Olive because the modification would allow the insert body 20 of Funk to be attached to and removed from the conduit 14 in an easier and more convenient manner. Ans. 3, 5-6. This rationale provides adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to make the insert member 20 of Funk a two-piece structure. Appellant has not apprised us of error in the Examiner’s rationale. Appeal 2010-008769 Application 10/950,999 7 Appellant argues that there is no teaching or suggestion in Funk to make the one-piece insert member 20 out of two parts, and there is no teaching or suggestion in Olive to make a previously one-piece article into a two-piece article. App. Br. 8-9. We are not persuaded by Appellant’s argument because it fails to address the Examiner’s proposed combination of the references. One cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant further argues that there is no teaching or suggestion to combine Funk and Olive, noting that the insert of Funk is inserted within the clamp after being attached to the conduit, while the two portions of Olive’s badge are affixed around and outside of the Y-connector already secured to the tubing. App. Br. 9. However, Appellant overlooks the fact that Funk’s insert 20, while located within the clamp, is also affixed around and outside of the conduit 14 and is similar to Olive’s badge in this respect. The distinction noted by Appellant would not prevent a person having ordinary skill in the art from considering the teachings of Olive in connection with Funk. Appellant argues that Olive does not disclose “securing the two-part badge directly to a conduit but around the outside of a Y-connector,” and the Y-connector thus has three, rather than two, openings. App. Br. 7; Reply Br. 3. However, this argument by Appellant does not address the rejection as set forth by the Examiner. The Examiner relies on Olive for teaching that it would have been obvious to make Funk’s insert 20 into a two-piece article for the purpose of facilitating attachment and removal. Ans. 3. The Appeal 2010-008769 Application 10/950,999 8 rejection is not based on replacing Funk’s insert 20 with the two-piece badge taught by Olive. As noted by the Examiner, the test for obviousness is not whether the features of one reference may be bodily incorporated into the other to produce the claimed subject matter but simply what the combination of references makes obvious to one of ordinary skill in the pertinent art. Ans. 6 (citing In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).2 Moreover, Olive’s Y-connector 15 connects tubes 13, 14 to tube 16. Olive, col. 1, ll. 63-66, Fig. 1. Although not expressly stated, it is clear that tube 16, Y- connector 15 and tubes 13, 14 conduct sound from the pickup head 17 to the ear pieces 11, 12. From this, it follows that the Y-connector 15 has internal passages for conducting sound waves. So, although not made of elongated tubing, the Y-connector can be interpreted to be a “conduit.” Accordingly, we conclude a person having ordinary skill in the art would have considered Olive in connection with Funk. Indicia Appellant also takes issue with modifying Funk by placing indicia on the insert member 20, arguing that the Examiner impermissibly uses Olive as a “blueprint” without any teaching or suggestion in either reference. App. Br. 8. However, [a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. 2 See also Keller, 642 F.2d at 425. Appeal 2010-008769 Application 10/950,999 9 Manual of Patent Examining Procedure (MPEP) § 2145, X., A. (8th ed., Rev. 9, August 2012) (quoting In re McLaughlin 443 F.2d 1392, 1395 (CCPA 1971)). We do not agree that the Examiner’s rejection is an improper hindsight reconstruction as it does not include knowledge gleaned only from the Appellant’s disclosure, but rather takes into account the teachings of Funk and Olive, i.e., knowledge which was within the level of ordinary skill at the time the claimed invention was made. Appellant contends that a person having ordinary skill in the art, if wanting to provide indicia to Funk, would continue to mark the conduit or provide a separate two-part member, but would not replace the insert of Funk. App. Br. 9. This argument is not persuasive because it fails to address the Examiner’s proposed combination of the references. The Examiner does not propose replacing Funk’s insert 20 with the Olive’s indicia-bearing badge, but instead concludes it would have been obvious to provide Funk’s insert 20 with indicia per the teaching of Olive. Ans. 4. Appellant also argues that the Examiner’s statement that Figure 2 of Olive shows placing indicia on the face of a body is slightly misleading because Olive shows placing indicia on the badge, not on the Y-connector. Reply Br. 1. We do not see that the Examiner’s statement is in any way misleading. The “body” referred to by the Examiner clearly is the badge 20 (which most closely corresponds to Funk’s insert), not the Y-connector 15. Fittings We disagree with Appellant’s assertion that combination of Poulsen with Funk and Olive is the result of impermissible hindsight. App. Br. 8. The Examiner relies on Poulsen for teaching that it would have been obvious to place fittings on the ends of Funk’s conduit. Ans. 4. We conclude that Appeal 2010-008769 Application 10/950,999 10 this is not an improper hindsight reconstruction because it is based on knowledge which was within the level of ordinary skill at the time the claimed invention was made, not knowledge gleaned only from Appellant’s disclosure. For the reasons discussed supra, we find no error in the Examiner’s rejection of independent claims 41-43 and 51 under 35 U.S.C. § 103(a) as being unpatentable over Funk, Olive and Poulsen. Claims 43 and 45 Appellant argues that neither Funk nor Olive discloses information associated with preselected tubing, as required by claim 43, or two body portions each defining a semi-cylindrical channel, as required by claim 45. App. Br. 10. These arguments are not persuasive because they attack the references individually and fail to address the Examiner’s proposed combination of the references. See Ans.7. Claims 38, 44 and 52 Claims 38, 44 and 52 all require two indicia-bearing faces. Appellant argues this is not disclosed in any of the references relied on by the Examiner or any combination thereof. App. Br. 11. The Examiner’s position is that Olive discloses placing indicia on one face of a body and it would have been obvious to place indicia on opposite sides of Funk’s insert body to make the indicia easier to see, taking Official Notice that it is known to place indicia on opposite sides of articles. Ans. 5. We note that Appellant has not challenged the Examiner’s findings or conclusion on this issue and see no reason to disagree with the Examiner. Appeal 2010-008769 Application 10/950,999 11 Claims 41, 42 and 49 Appellant argues that the latch arms and tabs of Olive are not male and female connectors as required by claims 41, 42 and 49. App. Br. 11. The Examiner takes the position that the tabs 36 formed on the top cap piece 30 of Olive are male connectors and the tab locking retainers 56 formed on the bottom cap piece 50 are female connectors. Ans. 3. During patent examination, claims are given their broadest reasonable construction in light of the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The tabs 36 are received and retained by the tab locking retainers 56. Therefore, the Examiner’s interpretation of the terms “male connector” and “female connector” as encompassing the tabs 36 and tab locking retainers 56, particularly in view of the fact that Appellant fails to point to anything in the Specification that would require these terms to be more narrowly defined. Claims 18 and 39 Claims 18 and 39 recite that the male and female connectors engage with a press fit. The Examiner states that the two body portions 30, 50 of Olive “are pressed together so the connectors are considered to be ‘press fit.’” Ans. 4. We disagree with this position. The term “press fit” is a well- recognized term of art that refers to two elements retained in engagement by friction. The mere fact that the body portions 30, 50 of Olive are “pressed together” does not make the connection a press fit. Olive clearly discloses that the connectors 36, 56 engage in a snap fit. Olive, col. 2, ll. 2-5, 24-25; Fig. 5. However, we conclude that it would have been obvious to a person having ordinary skill in the art at the time the invention was made to replace Appeal 2010-008769 Application 10/950,999 12 the snap fit connection taught by Olive with a well-known press fit because such a modification is the simple substitution of one known element for another that produces predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Accordingly, we sustain the rejection of claims 18 and 39 under 35 U.S.C. § 103(a) as being unpatentable over Funk, Olive and Poulsen, but because our reasoning differs from the Examiner’s, we denominate our affirmance of the rejection of claims 18 and 39 as a new ground of rejection. Claims 41, 42, 48, 49, 53 and 55 Appellant notes that claims 41, 42, 48, 49, 53 and 55 have limitations that require the information bearing article be disposed about the conduit and within the clamp. App. Br. 12. Appellant then argues that “it would strain credulity” to believe a person having ordinary skill in the art would place the badge of Olive within the clamp of Funk. Id. However, this argument again fails to address the rejection as set forth by the Examiner. The Examiner is not proposing to replace Funk’s insert 20 with the two-piece badge taught by Olive, but instead relies on Olive for teaching that it would have been obvious to make Funk’s insert 20 into a two-piece article. Ans. 3. In view of this, Appellant’s argument does not apprise us of error in the Examiner’s rejection. Claims 40 and 50 Claims 40 and 50 recite that the first portion of the information ring body is “cyclically” removable from and connectable with the second Appeal 2010-008769 Application 10/950,999 13 portion. Appellant argues that the insert of Funk is not cyclically securable to a conduit after the catheter assembly has been assembled and that the badge of Olive is not cyclically securable to and around a conduit and within a clamp and removable from a conduit and from within a clamp. App. Br. 12. The Examiner notes that when Funk’s insert is modified in view of Olive to have two body portions, the body portions are capable of being separated and connected together. Ans. 4. To the extent Appellant’s argument attacks the references individually and fails to address the rejection as set forth by the Examiner, we find it unpersuasive. To determine whether the combination of Funk and Olive results in a “cyclically” removable and connectable insert, we first must interpret the claim language at issue. One general dictionary definition of “cyclically” is “in a cyclic or cyclical way; in cycles.” OXFORD ENGLISH DICTIONARY, 2d ed. (1989), http://www.oed.com, accessed September 26, 2012. Considering this definition and the context in which the language is used in Appellant’s Specification (see Spec., para. [0051]), we determine that the broadest reasonable interpretation of the claim language “cyclically removable from and connectable with” means being capable of repeated connection and removal. Olive describes a snap fit connection of the two badge portions designed such that the badge can be “releasably” secured to a stethoscope. Olive, col. 1, ll. 22-24. Olive thus discloses a connection that allows the badge to be repeatedly connected to and removed from the stethoscope. Accordingly, we agree with the Examiner that the combination of Funk and Olive results in a two-piece insert having a first portion that is cyclically removable from and connectable with a second portion. Appeal 2010-008769 Application 10/950,999 14 For all of the reasons discussed supra, we sustain the rejection of claims 18, 38-45, 48-53 and 55 under 35 U.S.C. § 103(a) as being unpatentable over Funk, Olive and Poulsen. We also sustain the rejection of claims 46 and 54, which depend from claims 43 and 51, respectively, and for which Appellant does not set forth any separate arguments. DECISION We AFFIRM the Examiner’s rejection of claims 18, 38-46 and 48-55 under 35 U.S.C. § 103(a) as being unpatentable over Funk, Olive and Poulsen and denominate our affirmance of the rejection of claims 18 and 39 as a NEW GROUND OF REJECTION. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek Appeal 2010-008769 Application 10/950,999 15 review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection3, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Klh 3 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.”