Ex Parte Utterberg

Board of Patent Appeals and Interferences

May 24, 2012

11607407 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID S. UTTERBERG
____________

Appeal 2011-002531
Application 11/607,407
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-3 (App. Br. 3).
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a blood set. Claim 1 is representative and
is reproduced in the “CLAIMS APPENDIX” of Appellant‟s Brief.
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Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kawano
1
and Prager.
2

We affirm.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. “Tubular [e.g. blood] sets are commonly used for conveying blood
between a patient and extracorporeal blood treatment apparatus such as
dialyzers” (Spec. 1: ¶ [0002]).
FF 2. Prior to use, “saline solution must be used to prime the set‟s fluid
pathway, displacing all air” (id. at ¶ [0003]; Kawano, col. 1. 67- col. 2, l. 2).
FF 3. Kawano suggests “a blood set and is relevant to the technology of
[Appellant‟s] . . . application” (App. Br. 7; see generally Ans. 4).
FF 4. For clarity, Kawano‟s FIG. 2 is reproduced below:

1
Kawano, US 4,867,739, issued September 19, 1989.
2
Prager, US 4,257,416, issued March 24, 1981.
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“FIG. 2 is an outlined view showing a whole device according to
[Kawano‟s] . . . invention” (Kawano, col. 2, ll. 56-57).
FF 5. Kawano‟s blood set comprises “[a] blood inlet 23 and a blood outlet
24 . . . equipped with shunt adapters 9, 9a, respectively” (id., col. 3, ll. 16-
17; see generally Ans. 4).
FF 6. Kawano‟s blood set comprises an “inlet line 17 and [an] . . . outlet
line 18,” which are connected to blood processor 15 that “purifies the blood
by filtrating or dialyzing while the blood passes through the hollow fibers”
(id. at ll. 17-18; col. 2, ll. 63-67; see generally Ans. 4-5).
FF 7. Kawano‟s “inlet line 17 branches, from the main tube, a
communicating tube 20 to . . . a priming line which is connected at its end
portion with a bag 19 . . . filled with . . . physiological saline solution” (id. at
ll. 22-26; see generally Ans. 4-5).
FF 8. Kawano‟s blood set comprises “luer connectors 32 at the ends of . . .
branch[ ] lines 10, 14, 14a, [and] 16” (id. at col. 4, ll. 13-14; see generally
Ans. 4-5).
FF 9. “Examiner interprets the shunt adapter 9 as capable of removable
sealed connection with other connectors” (Ans. 5).
FF 10. Kawano‟s blood set comprises clamps 4 and 4a (Kawano, col. 2, l. 6
and col. 4, l. 9).
FF 11. Examiner finds that Kawano fails to suggest “a clamp positioned on
the first branch tube” (id. at 6).
FF 12. Examiner finds that Prager suggests a medical tubing set that is
equipped with clamps (id.).
FF 13. Examiner finds that Kawano suggests “set tubing carrying a length
of roller pump tubing as an integral part thereof”, a “first branch tube
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Application 11/607,407

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connecting with the set tubing at a position adjacent to one end of the roller
pump tubing”, “a degassing chamber carried in communication with the set
tubing between the ends of the set”, and a “first branch tube connecting with
. . .[the] set tubing at a position between . . . [the] patient connector and . . .
[the] degassing chamber” (id. at 5).
ANALYSIS
Kawano suggests a blood set (FF 3). Kawano‟s blood set comprises
set tubing having two ends (i.e., blood inlet 23 and blood outlet 24) with a
patient connector on one of the ends (i.e. shunt adaptor 9 on blood inlet 23)
(FF 4-5; Cf. Reply Br. 3 (“„set tubing‟ should be that which has both patient
ends, or connectors for use in connect[ion] with arterial and venous portions
of the extracorporeal circuit”)). Kawano‟s blood set comprises a first branch
tube (i.e., the tubing that includes Kawano‟s element 8) that connects with a
source of physiological solution in Kawano‟s bag 19, wherein the first
branch tube is located between ends 23 and 24 of the set tubing (FF 4-7).
Kawano‟s blood set comprises a second branch tube 10 (FF 8). Kawano
suggests a second connector 32, communicating via the second branch tube
10 that is in branching relation with the first branch tube (FF 4-8).
Kawano‟s second connector (i.e. luer connector 32) on branch tube 10 is
adapted for removable, sealed connection with the patient connector (i.e.
shunt adapter 9) (FF 4, 5, 8, and 9). As Examiner reasons:
Since the claims are directed to a device and not necessarily a
method of using, the claims are interpreted based on the
structures and their functions. In this case, Kawano discloses
all the necessary structures to form a priming loop, since the
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connector on shunt adapter 9 and luer connector 32 can connect
fluidly and form a priming loop.

(id. at 8; FF 4-9.)
While Kawano suggests a blood set comprising clamps, Kawano fails
to exemplify a clamp on the first branch tube (FF 10-11). However, as
Examiner explains, “Prager controls flow selectively with clamps widely
known in the art. That is, a clamp is placed wherever fluid control is
needed. Depending on the location of desired fluid flow, a caregiver will
actuate a clamp to start or stop flow” (id. at 9; FF 12; App. Br. 7 (Prager
suggests “using a clamp during priming”)). Therefore, at the time of
Appellant‟s claimed invention, it would have been prima facie obvious to a
person of ordinary skill in this art to utilize a clamp to close a portion of the
first branch tube when the second connector is in removable sealed
connection with the patient connector.
Appellant contends that the patient connector, identified by Examiner,
is attached to Kawano‟s heparin (i.e. branch) line 10 and “if the line were a
heparin line, it would not be a patient connector” (App. Br. 7; Cf. Ans. 8).
While it is true that Examiner directed Appellant‟s attention to Kawano‟s
branch line 10, Kawano‟s tubing comprises other ends equipped with
connectors, such as blood inlet 23 equipped with shunt adapter 9 (FF 5; see
also Ans. 8). Appellant fails to explain why blood inlet 23 equipped with
shunt adaptor 9 is not a patient adaptor that falls within the scope of
Appellant‟s claim 1.
The combination of Kawano and Prager suggests, inter alia, set tubing
with connectors and clamps (FF 3-18). As Examiner explains, a person of
ordinary skill in this art would have realized that the tubing, connectors, and
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clamps suggested by the combination of Kawano and Prager can be
connected in a variety of orientations (Ans. 8-9). Appellant‟s claimed
invention is not directed to a method of using a blood set (see Claim 1; Ans.
8). Accordingly, for the reasons set forth above, we are not persuaded by
Appellant‟s intimation that because “[n]either reference teaches or suggests
any two „ends‟ being connected, let alone connecting a patient end with a
branch tube,” doing so would not have been prima facie obvious to a person
of ordinary skill in this art at the time Appellant‟s invention was made (App.
Br. 9; Reply Br. 4-5). Further, because Appellant‟s claim 1 does not require
the first branch to be “separate from the set tubing”, we are not persuaded by
Appellant‟s contention to the contrary (id. at 3).
For the foregoing reasons, the combination of Kawano and Prager
suggests each element of Appellant‟s claimed invention. Accordingly, we
are not persuaded by Appellant‟s suggestion that Kawano fails to suggest
“set tubing” within the scope of Appellant‟s claimed invention (Reply Br. 3).
For the same reasons, we are not persuaded by Appellant‟s contention that
blood inlet 23 and connector 32 are most certainly not adapted for
removeable, sealed connection” (id. at 4).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kawano and Prager is affirmed.
However, because our reasoning differs from Examiner‟s we designate our
affirmance a new ground of rejection. Claims 2 and 3 are not separately and
fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 the 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. . . .

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; 37 C.F.R. § 41.50(b)

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