Karen West et al.

Patent Trials and Appeals BoardMay 21, 2021

2020005750 (P.T.A.B. May. 21, 2021)

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. 14/106,691 12/13/2013 Karen West 6172-002-US 7321 94956 7590 05/21/2021 The Law Offices of Eric W Peterson 2441 E Street, #201 SAN DIEGO, CA 92102 EXAMINER THEIS, MATTHEW T ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 05/21/2021 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 KAREN WEST and BARBARA MCKEE Appeal 2020-005750 Application 14/106,691 Technology Center 3700 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals, under 35 U.S.C. § 134(a), from the Examiner’s decision to reject claims 1–14, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Karen West and Barbara McKee, the named inventors. Appeal Br. 2. Appeal 2020-005750 Application 14/106,691 2 CLAIMED SUBJECT MATTER The claims are directed to a cuff device for securing a cord of a nurse call button to a portion of a body. Spec., 2:13–18. Claim 1, reproduced below, is illustrative of the claimed subject matter, and is the sole independent claim pending: 1. A cuff device for securing a cord of a nurse call button to a wrist, said device comprising: a strap having an interior surface, an exterior surface, a first end, and a second end, wherein said strap is configured to encircle the wrist, a padded portion engaged to the interior surface of the strap, a cuff fastening mechanism configured to releaseably secure the cuff device to the wrist, and a cord fastener securing a cord of a call button to the strap, wherein said cuff device is configured to secure the distal end of the call button cord next to a hand. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Widman US 4,671,787 June 9, 1987 Abel US 5,163,914 Nov. 17, 1992 Bell et al. (“Bell”) US 5,615,811 Apr. 1, 1997 Walsh et al. (“Walsh”) US 2005/0001109 A1 Jan. 6, 2005 Niedzielski et al. (“Niedzielski”) US 2008/0063151 A1 Mar. 13, 2008 REJECTIONS Claim 1, 4–9, and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Widman, Walsh, and Niedzielski. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as unpatentable over Widman, Walsh, Niedzielski, and Bell. Appeal 2020-005750 Application 14/106,691 3 Claims 10 and 12–14 are rejected under 35 U.S.C. § 103 as unpatentable over Widman, Walsh, Niedzielski, and Abel. OPINION Claims 1, 4–9, 11 The Examiner rejects claims 1, 4–9, and 11 as unpatentable over Widman in view of Walsh and Niedzielski. Non-Final Act. 3. Appellant argues these claims as a group. See Appeal Br. 4–12. We select independent claim 1 as the representative claim, with claims 4–9 and 11 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Examiner’s Rejection In rejecting claim 1, the Examiner finds that “Widman discloses a cuff device structurally capable of securing a cord of a nurse call button to a wrist” and finds that Niedzielski “teaches the ability to have a call button attached to a securing device to a patient.” Non-Final Act. 3 (citing in-part Niedzielski ¶15). In combining Widman with Niedzielski, the Examiner reasons that a skilled artisan would have used Widman’s device to “attach a cord of a nurse call device to a patient via the cuff device in order to allow the device to be held within reach of the wearer.” Non-Final Act. 3–4. The Examiner explains, “the modified device of Widman is structurally capable of securing the distal end of a call button cord next to a hand.” Answer 4; see also Non- Final Act. 3–4. The Examiner relies on Walsh’s teaching of a soft padded portion “engaged to the interior surface of [a] strap” and further proposes to modify Appeal 2020-005750 Application 14/106,691 4 Widman’s device to include a padded portion on an interior surface of a strap for “enhancing the comfort of the wearer.” Non-Final Act. 3. Analysis Appellant presents numerous arguments, which we address separately, below. First, Appellant contends that the Examiner failed to address “whether the device described in the Widman application was ‘configured to’ secure the distal end of the IV tube next to a hand.” Appeal Br. 5. Appellant argues that the Examiner failed to sufficiently explain why the ordinary artisan would have modified Widman to secure an IV tube near a hand. Id. (citing In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014)). We are not persuaded by Appellant’s arguments. Instead, we agree with the Examiner that Widman teaches “a cuff device configured to secure the IV tube next to a hand as securing the cuff device and IV tube in a similar configuration as shown in Fig. 8, but at a location of the wrist (as noted in the passage above) would place the distal and of the IV tube next to the patients hand.” Ans. 8. Notably, we find the structure of Widman’s device and its operation to be similar to that described in Appellant’s Specification. Compare, e.g., Widman, Figs. 5–6, with Spec., 8:12–18. Widman discloses, “[t]he first leg of the IV loop is captured between the upper flap sub-element 16 of the first fastener assembly by folding down the hook elements of the flap 16 in the direction of the arrow 46 onto the receiving loop elements 14.” Widman, 4:20–24. We agree with the Examiner’s finding that Widman’s device can be used on the wrist. Answer 4 (citing Widman, 2:50–51) (“The support Appeal 2020-005750 Application 14/106,691 5 wrap may be utilized in the arm, wrist, hand or leg of a patient, as necessary.”). Widman thus discloses a strap “configured to encircle the wrist,” as claimed, with no modification necessary to secure an IV tube, or cord, near a patient’s hand. Therefore, Widman is configured to secure a tube, or cord, to a wrist, as one possible placement on the patient’s body. We disagree with Appellant’s contention that “[t]here is no question that the Widman application does not disclose a wrap that secures the distal end of the IV tube next to a hand.” Appeal Br. 5. Appellant further argues that the Examiner arrived at the proposed combination through impermissible hindsight, on the basis that the references do not recognize the same problem or solution that Appellant’s did. Appeal Br. 6–8. We disagree. It is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“[N]either the particular motivation nor the avowed purpose of [Appellant] controls” in an obviousness analysis). In the present case, the Examiner reasons that it would have been obvious to “take the device of Widman and use the teaching of Niedzielski and attach a cord of a nurse call device to a patient via the cuff device in order to allow the device to be held within reach of the wearer of such a device in order to contact a nurse.” Answer 4. We note that Niedzielski describes the difficulty of patients trying to “detect” a device to activate a call signal in low-light Appeal 2020-005750 Application 14/106,691 6 situations, and teaches “[a]n optional clip 118 is releasably connected to cable 116 to allow the call button device 40 to be attached, for example, to a blanket, clothes, or a bed.” Niedzielski ¶ 15 (emphasis added). Rather than relying on impermissible hindsight, the Examiner relies on Niedzielski’s teaching of securing a call button cord to a patient’s clothing. Appellant next argues, “the evidence of long-standing but unmet need and how the claimed invention solves this need argue strongly in favor of nonobviousness on the basis of secondary considerations.” Appeal Br. 8. The specific need, according to Appellant, is “a device to secure a call bell to the patient in order for the patient to call the nurse and avoid injury.” Id. at 11 (emphasis added). In support of this argument, Appellant cites seven “cases involving a patient who suffered server injury because the patient was unable to reach their call bell and two administrative cases in which health care providers were cited in violation of health care codes for failing to meet the standard of care,” and provides declarations by Nancy Pedersen (“Decl. of Pedersen”) and Karen West (one of the named inventors, “Decl. of West”) (collectively, the “Declarations”). Id. at 9–11. To establish a long-felt and unmet need, the following elements must be proven. First, the need must have been persistent and recognized by skilled artisans. In re Gershon, 312 F.2d 535, 538 (CCPA 1967). Second, the long-felt need must not have been satisfied by another before the claimed invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved.”). And third, the claimed invention must satisfy the need. In re Cavanagh, 436 F.2d 491, 496 Appeal 2020-005750 Application 14/106,691 7 (CCPA 1971). Each of these elements is established based on the preponderance of the evidence of record. We agree with Appellant that the seven cases cited support a finding that, at least in some instances, a nurse call button was not placed sufficiently close to a patient to avoid patient injury. See Appeal Br. 9–11. We disagree with Appellant, however, that these “cases demonstrate a long felt need . . . of a device to secure a call bell to the patient.” Id. at 11. As explained above, to establish long-felt and unmet need, the need must not have been satisfied by another before the claimed invention. See Newell, 864 F.2d at 768 (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved.”). In the present case, Widman discloses using “ordinary adhesive tape” to “strap [] items to the patient” (Widman, 1:15–19) and Niedzielski discloses “[a]n optional clip 118 is releasably connected to cable 116 to allow the call button device 40 to be attached, for example, to a blanket, clothes, or a bed” (Niedzielski ¶ 15 (emphasis added)). The cited prior art thus proposes two methods to attach a device to a patient, using tape or a clip. Turning to the Declarations, they offer statements that there was a long-felt need for a device that can secure a call bell cord to a patient, and that previous methods used to secure a call bell cord to a patient were ineffective. See Decl. of Pedersen §§ 6, 8; see also Decl. of West §§ 7, 9. The Declarants explain that using safety pins to secure the call bell cord to a patient can be dangerous to the patient, and that wrapping the call bell cord multiple times around the patient’s bedside rail and taping the call bell cord to the patient’s bedside rail or bedside table were all ineffective because any Appeal 2020-005750 Application 14/106,691 8 movement on the patient’s part may make the call bell no longer visible and/or accessible. See Decl. of Pedersen § 9; see also Decl. of West § 10. We are not persuaded by the Declarants’ statements. The Declarations presume that the solutions taught in Widman and Niedzielski use safety pins, taping around a bed rail or bedside table, or wrapping the cord around a bed rail or bedside table. See Decl. of Pedersen § 9; see also Decl. of West § 10. They do not. To reiterate, there are other devices for securing a call button to a patient, taught by the cited references, such as tape or a clip for attachment to the patient’s clothing. Indeed, Widman discloses using “ordinary adhesive tape” to “strap [] items to the patient” (Widman, 1:15–19) and Niedzielski discloses “[a]n optional clip 118 is releasably connected to cable 116 to allow the call button device 40 to be attached, for example, to [a patient’s clothing] (Niedzielski ¶ 15). The cited prior art thus proposes two methods to attach a device to a patient, using tape or a clip, and the Declarants’ statements fail to persuade us that these solutions were ineffective. Upon consideration of Appellant’s secondary consideration evidence, we conclude that, on the whole, Appellant’s evidence does not outweigh the evidence of obviousness established by the Examiner in the combination of Widman, Walsh, and Niedzielski. Appellant’s evidence does not establish that the long-felt need had not have been satisfied by Widman’s and Niedzielski’s teachings of taping or clipping a call button cord to a patient. See Newell Companies, 864 F.2d at 768 (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved.”). Appeal 2020-005750 Application 14/106,691 9 For these reasons, Appellant has not identified error in the Examiner’s rejection. Thus, we sustain the rejection of claim 1, and of claims 4–9 and 11, which fall with claim 1, as obvious over Widman, Walsh, and Niedzielski. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 3 The Examiner rejects claims 2 and 3 as unpatentable over Widman, Walsh, Niedzielski, and Bell. Non-Final Act. 5. Appellant does not present additional arguments contesting the rejection of these claims. See Appeal Br. 12. Accordingly, Appellant does not persuade us of Examiner error in the rejection of claims 2 and 3 as unpatentable over Widman, Walsh, Niedzielski, and Bell. Claims 10, 12–14 Dependent claim 10 recites, “[t]he device of claim 1 wherein the cord fastener is configured to slideably secure[] the distal end of the cord to the strap whereby the distal end of the cord slides in relation to the strap.” To satisfy this limitation, the Examiner proposes to modify Widman’s device, based on Abel’s teaching, “and attach a medical device cord thereto in such a way that it can slide thereby reducing the chances of causing excessive tension on the cord.” Non-Final Act. 7. Appellant argues that modifying the Widman device to slideably secure the cord would render the Widman device unsatisfactory for its intended purpose. Appeal Br. 15. According to Appellant, “Widman discloses the purpose of the support wrap is to firmly secure the distal end of Appeal 2020-005750 Application 14/106,691 10 the intravenous tube in order to prevent trauma to the lining of the venal wall and surrounding tissue due to contact of the tube by other objects.” Id. We disagree with Appellant. Appellant’s argument presumes that allowing a tube to slide within Widman’s support wrap would cause trauma to the lining of the venal wall and surrounding tissue. Id. We disagree. Although the Examiner’s proposed modification would permit a tube (or cord) to slide along the axial direction relative to its support wrap, the modification would not permit the tube (or cord) to slide laterally in a way that would cause trauma to a vein. We further agree with the Examiner’s finding that “Widman contemplates at least some movement of the cord relative to the device noting ‘The loop capturing fasteners at the one end of the support wrap of this invention are designed to be at a sufficient distance apart from one another that even if the loop is somehow pulled tight against the support wrap, the tubing will not kink’.” Ans. 10 (citing Widman, 2:59–63). Widman discloses, “flange element 44 which is attached to the IV tubing approximate to the needle 42 which serves to prevent the IV tubing from being pulled through the fastener elements of the support wrap.” Widman, 4:13–17 (emphasis added); see also id. at Figs. 3–9. Flange 44 is not part of the support wrap, but is instead part of the IV tube, and its presence suggests that the tube would otherwise be capable of sliding within Widman’s wrap. In other words, because Widman’s device contemplates its IV tube as sliding within its wrap, Appellant’s contention that allowing sliding would cause trauma to the wearer’s venal wall contradicts Widman’s teachings. Rather, Widman’s device remains securely fastened to its IV tube even if the tube may slide in the axial direction. Appeal 2020-005750 Application 14/106,691 11 Appellant does not present separate arguments contesting the rejection of claims 12–14. See Appeal Br. 13–16. Accordingly, Appellant does not persuade us of Examiner error in the rejection of claims 12–14 as unpatentable over Widman, Walsh, Niedzielski, and Abel. For the foregoing reasons, affirm the rejection of claims 10 and 12–14 as unpatentable over Widman, Walsh, Niedzielski, and Abel. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–9, 11 103 Widman, Walsh, Niedzielski 1, 4–9, 11 2, 3 103 Widman, Walsh, Niedzielski, Bell 2, 3 10, 12–14 103 Widman, Walsh, Niedzielski, Abel 10, 12–14 Overall Outcome 1–14 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED