Ex Parte Thomas

Patent Trial and Appeal BoardJun 14, 2017

12296754 (P.T.A.B. Jun. 14, 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. 12/296,754 10/10/2008 Sean Julian Thomas 7978-3001-1 1371 29318 7590 06/15/2017 TA1UFS n NTFVFNN EXAMINER REISING ETHINGTON P.C. HOEKSTRA, JEFFREY GERBEN P.O. BOX 4390 TROY, MI 48099 ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 06/15/2017 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 SEAN JULIAN THOMAS Appeal 2015-007922 Application 12/296,754 Technology Center 3700 Before EDWARD A. BROWN, BRANDON J. WARNER, and SEAN P. O’HANLON, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Sean Julian Thomas (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 33—59, which are all the pending claims. See Appeal Br. 5—9. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Syripump Limited. Appeal Br. 2. Appeal 2015-007922 Application 12/296,754 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates to tubes for delivering fluid to a predetermined location not normally in view or not practicably able to be viewed by an operator placing such tubes,” as in the case of a feeding tube, “to facilitate placement and/or avoid misplacement of the portion of the tube through which the fluid exits.” Spec., p. 1,11. 3—8. Claim 33, reproduced below with line breaks added, is illustrative of the subject matter on appeal. 33. A feeding tube position confirmation device, operable to confirm, by a user, the position of a predetermined portion of a medical feeding tube in a predetermined portion of the digestive system or respiratory system of a human or animal body, characterised in that the position confirmation device comprises an input optical waveguide and an output optical waveguide dimensioned to be insertable into the lumen of said feeding tube, the position confirmation device further comprising sensor means disposed on at least one of the input and output optical waveguides at a position thereon which corresponds to the predetermined portion of the said feeding tube, the sensor means comprising a color change indicator operable to change color relative to the chemical content of the environment proximate thereto, wherein the input optical waveguide is operable to carry light to the sensor means and wherein the color change indicator is operable to change to a predetermined color upon detection of a predetermined chemical content, the sensor means thus causing a change in the color of the input light to provide an output light of a predetermined color indicative of the position of the predetermined portion of said feeding tube being at the predetermined portion of the digestive system or respiratory system, the output light being carried to the proximal end of the position confirmation device, by the output optical waveguide, 2 Appeal 2015-007922 Application 12/296,754 at which the output light is viewed by the user to determine the position of the said feeding tube in the human or animal body, the position confirmation device further comprising an optical reflector used to facilitate reflection of the input light to the output light at the sensor means. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Peterson US 4,200,110 Hirschfeld US 4,577,109 Henley US 5,085,216 Kimball US 6,162,494 Apr. 29, 1980 Mar. 18, 1986 Feb. 4, 1992 Dec. 19, 2000 Bruce W. Thomas, DO and Robert E. Falcone, MD, Confirmation of Nasogastric Tube Placement by Colorimetric Indicator Detection of Carbon Dioxide: A Preliminary Report, Journal of the American College of Nutrition, Vol. 17, No. 2, pp. 195—197 (1998) (“Thomas”). REJECTIONS The following rejections are before us for review: I. Claims 33—40, 44—55, and 58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Henley and Kimball. Final Act. 2—5. II. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Hirschfeld. Id. at 5—6. III. Claims 41, 42, 56, and 57 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Thomas. Id. at 6. 3 Appeal 2015-007922 Application 12/296,754 IV. Claim 59 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Peterson. Id. at 7. ANALYSIS Rejection I— Claims 33—40, 44—55, and 58 as unpatentable over Henley and Kimball Appellant presents argument against the rejection of independent claim 33 (see Appeal Br. 5—9), and relies on this argument directed to claim 33 when addressing the rejection of claims 34-40, 44—55, and 58 (see id. at 9). We select claim 33 as representative of the issue that Appellant presents in the appeal of this rejection, with claims 34-40, 44—55, and 58 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determined that a combination of teachings from Henley and Kimball renders obvious the subject matter of claim 33. Final Act. 2-4. Appellant asserts that the rejection is improper because the combination of teachings “would create a device that is inoperable for its intended purpose.” Appeal Br. 7; see id. at 7—8; Reply Br. 2—3. After careful consideration of the record before us, Appellant’s argument does not apprise us of error in the Examiner’s factual findings from Henley and Kimball, which are supported by a preponderance of the evidence, or the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on the prior art teachings. In short, we sustain the rejection of claim 33 based on the reasoned position set forth therein and in light of the Examiner’s responses to Appellant’s argument. See Final Act. 2-4; Ans. 3^4. We address Appellant’s principal assertion below simply as a matter of emphasis. 4 Appeal 2015-007922 Application 12/296,754 Specifically, Appellant asserts that a device created from the applied combination of teachings “would have Henley’s stiffening means 21 and Kimball’s fiber 12 and sensing chemistry layer 20 and overcoat layer 22,” such that “Kimball’s fiber 12 would be placed alongside Henley’s stiffening means 21 and would be attached to it so that the fiber 12 could be extracted with the stiffening means 21.” Appeal Br. 8. Appellant then alleges, without any technical explanation, that somehow placing Henley’s stiffening means 21 and Kimball’s fiber 12 (as a conventional component of a known optical pH sensor) “alongside each other and attaching them together would thwart the stiffening means’ insertion into the patient, and would thwart the fiber 12 from sending optical signals.” Id. (emphasis added). However, Appellant does not explain—nor do we discern—why each component would not simply retain its customary functional capabilities. Regarding the combination of teachings applied in the rejection presented, we agree with the Examiner that “[tjhere is no rationale or evidence to support Appellant’s argument that placing the fiber taught by Kimball alongside the stiffening means in the device of Henley would thwart the stiffening means’ insertion into the patient or that such a construction would thwart the fiber from sending optical signals.” Ans. 3. Further, we agree with the Examiner’s logical position that the functionality of Kimball’s optical pH sensor “wouldn 7 be affected if the fibers taught by Kimball were simply located alongside the stiffening means in the device of Henley or the fibers taught by Kimball were attached to the stiffening means.” Id. (emphasis added). Moreover, Appellant does not explain how combining the teachings of Henley and Kimball to substitute one known pH sensor for another (see Final Act. 3^4; Ans. 3 4) in a predictable and 5 Appeal 2015-007922 Application 12/296,754 operable manner would be beyond the level of ordinary skill in the art. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also Ans. 4 (the applied combination of teachings “is well within the grasp of one of ordinary skill in the art because considering alternate pH sensors is routine at best when regarding pH based tracking of a feeding tube through the GI tract”). We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons discussed supra and those well expressed in the Examiner’s Answer. After careful consideration of all the evidence, Appellant’s assertion does not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of claim 33, and of claims 34-40, 44—55, and 58 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Henley and Kimball. Rejections II—IV— Claims 41—43, 56, 57, and 59 as unpatentable over Henley, Kimball, and one of Hirschfeld, Thomas, and Peterson With respect to the rejections of these claims, Appellant does not provide any substantive arguments for Rejections II—IV apart from the arguments discussed supra for claim 33 in Rejection I. See Appeal Br. 9. Accordingly, for the same reasons, we likewise sustain these rejections. DECISION We AFFIRM the Examiner’s decision rejecting claims 33—40, 44—55, and 58 under 35 U.S.C. § 103(a) as being unpatentable over Henley and Kimball. 6 Appeal 2015-007922 Application 12/296,754 We AFFIRM the Examiner’s decision rejecting claim 43 under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Hirschfeld. We AFFIRM the Examiner’s decision rejecting claims 41, 42, 56, and 57 under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Thomas. We AFFIRM the Examiner’s decision rejecting claim 59 under 35 U.S.C. § 103(a) as being unpatentable over Henley, Kimball, and Peterson. 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)(l)(iv). AFFIRMED 7