Ex Parte Turnbull

Patent Trial and Appeal Board

May 30, 2017

13138699 (P.T.A.B. May. 30, 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.
0119/0101 5230
EXAMINER
TORRES DIAZ, ARNALDO
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
13/138,699 09/20/2011
135866 7590 05/30/2017
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
Christopher Stratton Turnbull
05/30/2017 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 CHRISTOPHER STRATTON TURNBULL
Appeal 2016-005776
Application 13/138,6991
Technology Center 3700
Before RICHARD J. SMITH, RACHEL H. TOWNSEND, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
assembly of a medico-surgical tube and medico-surgical introducer
apparatus. The Examiner rejected the claims on appeal under 35 U.S.C.
§ 102(b) as anticipated and under 35 U.S.C. § 103(a) as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Smiths Medical
International Limited. App. Br. 3.
Appeal 2016-005776
Application 13/138,699
STATEMENT OF THE CASE
Claims 9—16 are on appeal. Claim 9 is illustrative and reads as
follows:
9. An assembly of a medico-surgical tube and medico-
surgical introducer apparatus including an elongate rod, a video
camera mounted towards a patient end of the rod and a flexible
electrical cable extending along the rod, characterized in that the
apparatus includes an electrical connector fixedly mounted at the
machine end of the rod and electrically connected with the
electrical cable so that the electrical cable is enclosed within the
rod, that the electrical connector is adapted to be connected with
a mating connector connected by a cable with a display unit
arranged to provide a visual display of the field of view of the
camera, and that lateral dimensions of the connector on the rod
are such that the medico-surgical tube can be slid over the
connector and onto the rod after disconnecting the mating
connector.
App. Br. 15.
The claims stand rejected as follows:
Claims 9—11 and 13—16 under 35 U.S.C. § 102(b) as anticipated by
Kimmel.2
Claim 12 under 35 U.S.C. § 103(a) as obvious over Kimmel.
THE CLAIMED ASSEMBLY
The claimed invention relates to a “medico-surgical introducer
apparatus of the kind including an elongate rod, a video camera mounted
towards a patient end of the rod and a flexible electrical cable extending
2 Kimmel et al., US Patent Publication No. 2007/0175482 Al, published
Aug. 2, 2007 (“Kimmel”).
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Appeal 2016-005776
Application 13/138,699
along the rod.” Spec. 1. Figure 1 (reproduced below) depicts a “side
elevation view of the apparatus.” Id. at 3.
S
The apparatus of Figure 1 comprises two parts, a “bendable introducer 1
with an electrical connector 2 at its machine end 3” and a “video display unit
4 with a cable 5 extending from the unit and terminated at one end by an
electrical connector 6 mated to the connector 2 on the introducer 1.” Id.
TFIE PRIOR ART
Kirnmel discloses an “apparatus for introducing an airway tube, such
as an endotracheal tube, into a patient’s trachea, wherein the apparatus
includes visualization capability that assists in placing the airway tube.”
Kirnmel 11. Figures 1A and IB (reproduced below) provide “perspective
and schematic views, respectively, of [Kirnmel’s] airway introducer
apparatus.” Id. at 121.
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Appeal 2016-005776
Application 13/138,699
The apparatus of Figures l A and IB comprises “an elongated body 11
having distal end 12 and proximal end 13.” Id. at % 30. The apparatus
“further comprises conduit 15 having connector 16 for transferring data to a
video monitor.” Id. at 132. “Connector 16 may be selectively coupled to
connector 17 to communicate with monitor 18 via conduit 19.” Id. The
connectors 16 and 17 may be a “RCA jack, RCA plug, or similar apparatus
that preferably allows rapid connection,” while the conduit “preferably
comprises a wire, cable, or other medium for transmitting electrical signals.”
Id at 133.
In finding claims 9—11 and 13—16 anticipated by Kimmel, the
Examiner found that Kimmel’s electrical connector (element 16 in Figures
1A and IB) was “fixedly mounted at the machine end of the rod,” as
required by claim 9. Final Act.3 3. The Examiner reasoned that the
3 Office Action mailed March 25, 2015.
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Appeal 2016-005776
Application 13/138,699
connector 16 was “fixedly mounted” to the elongated body 11 because it
was attached “in a secured manner (as opposed to loose, detachable or not
fixed in place).” Ans. 4. Appellant argues that Kimmel’s electrical
connector is not “fixedly mounted” at the machine end of the body and thus
that Kimmel cannot anticipate claims 9—11 and 13—16. We find that
Appellant has the better position.
We begin by construing the claims. In this regard, we construe the
phrase “an electrical connector fixedly mounted at the machine end of the
rod” to require that the electrical connector be fastened securely upon the
machine end of the rod. This construction is consistent with the subsequent
claim requirement that the “lateral dimensions of the connector on the rod
are such that the medico-surgical tube can be slid over the connector,” which
presupposes that the connector is “on the rod.” It is also consistent with how
the electrical connector is depicted in Figures 1 and 3—6, each of which
depicts the electrical connector (element 2) as being directly attached to the
end of the rod. It is further consistent with the plain and ordinary meaning
of the terms “fixedly” and “mounted,” as reflected in the dictionary
definitions provided by Appellant (see Reply Br. 3—6), and with the use of
the term “fixedly mounted” in the Specification. See, e.g., Spec. 4 (“The
connector 2 is fixedly mounted at the rear, machine end 3 of the rod 10. The
connector 2 has a low profile, that is, its diameter or external lateral
dimensions are not significantly larger than those of the rod 10 itself so that
an endotracheal tube 50 (Figs 5 and 6) can be slid readily over the connector
when it is disconnected from the mating connector 6.”).
The electrical connector in KimmeFs apparatus is not fastened
securely upon the machine end of the body of the apparatus. Rather the
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Appeal 2016-005776
Application 13/138,699
connector (element 16 in Figures 1A and IB) is attached to a conduit
(element 15) — which Kimmel teaches may be a wire or cable — that dangles
loosely from the body (element 11) of the apparatus. Because Kimmel does
not anticipate the claimed apparatus under our claim construction, we
reverse the Examiner’s rejection of claims 9—11 and 13—16.4
OBVIOUSNESS
Claim 12 depends from claim 9 and adds the requirement that the
“length of the rod is substantially 720 mm.” In finding claim 12 obvious
over Kimmel, the Examiner applied the art as discussed in connection with
claim 9. Final Act. 6. As the Examiner’s rejection of claim 12 does not
address any of the deficiencies discussed above, we reverse the Examiner’s
rejection of claim 12 for the reasons already discussed.
SUMMARY
For the reasons provided herein we reverse the Examiner’s decision to
reject: claims 9—11 and 13—16 under 35 U.S.C. § 102(b) as anticipated by
Kimmel and the Examiner’s decision to reject claim 12 under 35 U.S.C.
§ 103(a) as obvious over Kimmel.
REVERSED
4 In the Final Action, the Examiner identified a prior art reference (Hassidov,
PG Pub 2010/0204546) as disclosing a “rigidly mounted electrical
connector” that “performs equally the same as intended.” Final Act. n. 1.
The Examiner, however, does not articulate an obviousness argument based
on Hassidov or otherwise explain whether or how Hassidov renders the
claimed apparatus unpatentable. As the issue is not properly before us, we
take no position on whether Hassidov, alone or in combination with
Kimmel, renders the claimed apparatus unpatentable.
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