2019005347 (P.T.A.B. Mar. 24, 2021)

Medline Industries, Inc.

Patent Trials and Appeals BoardMar 24, 2021

2019005347 (P.T.A.B. Mar. 24, 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. 14/159,777 01/21/2014 Eric Houde 9262-146929-US 1049 19407 7590 03/24/2021 Fitch, Even, Tabin & Flannery, LLP 120 South La Salle Street, Suite 2100 Chicago, IL 60603-3406 EXAMINER CALDERON IV, ALVARO R ART UNIT PAPER NUMBER 2173 MAIL DATE DELIVERY MODE 03/24/2021 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 ERIC HOUDE and KIRSTEN CLEVELAND ____________ Appeal 2019-005347 Application 14/159,777 Technology Center 2100 ____________ Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–7, 11–13, and 25, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Angiodynamics, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-005347 Application 14/159,777 2 STATEMENT OF THE CASE Introduction The present invention relates to “fluid injection systems and methods used to automatically inject various fluids.” Spec. ¶ 2. In particular, an “[a]utomated injection system . . . provides physicians with a simplified interface for selecting fluid sources, such as saline, contrast, or a mixture of both, to inject at high pressures.” Spec., Abstr. Claim 1 is exemplary: 1. A method to provide injection system parameters for injecting a fluid into a patient, comprising: placing a multi-use subassembly into an injector housing, the multi-use subassembly comprising a first fluid barrel and a second fluid barrel, a first valve and a second valve, the injector housing comprising a first valve actuator and a second valve actuator; selecting on a first screen of a user interface a contrast-to-saline ratio of a fluid to be injected by adjusting a percentage of the contrast contained within the fluid and adjusting a percentage of the saline contained within the fluid so that the fluid to be injected is a mixture of both contrast and saline, the first valve actuator moves the first valve to a fill position to fill the first fluid barrel with saline and the second valve actuator moves the second valve to a fill position to fill the second fluid barrel with contrast in order to obtain the selected contrast-to-saline ratio of the fluid to be injected; displaying a second screen of the user interface which is different from the first screen, the second screen having an option to inject the fluid into the patient, selection of the inject option resulting in the first valve actuator to move the first valve to an inject position and the second valve actuator to move the second valve to an inject position in order to inject the fluid. Appeal 2019-005347 Application 14/159,777 3 References and Rejection2 Claims Rejected 35 U.S.C. § References 1–7, 11–13, 25 103 Barron (US 2009/0149743 A1, publ. June 11, 2009), Kalafut (US 2010/0113887 A1, publ. May 6, 2010) ANALYSIS3 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in finding the cited portions of Barron teach the first valve actuator moves the first valve to a fill position to fill the first fluid barrel with saline and the second valve actuator moves the second valve to a fill position to fill the second fluid barrel with contrast in order to obtain the selected contrast-to-saline ratio of the fluid to be injected; . . . selection of the inject option resulting in the first valve actuator to move the first valve to an inject position and the second valve actuator to move the second valve to an inject position in order to inject the fluid, as recited in independent claim 1 (emphases added). See Appeal Br. 12–13; Reply Br. 2–6. The Examiner cites Barron’s paragraphs 176, 186, 198–211, and 223– 236 for teaching the italicized limitations. See Final Act. 4–5.4 In 2 Throughout this opinion, we refer to the (1) Final Office Action dated May 14, 2018 (“Final Act.”); (2) Appeal Brief dated Jan. 4, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated May 2, 2019 (“Ans.”); and (4) Reply Brief dated July 2, 2019 (“Reply Br.”). 3 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. 4 In the Answer, the Examiner further cites Barron’s Figures 22, 23, 30–35, 43–45, and 47–54 (Ans. 7), but such figures illustrate the filling and injection settings of display screens–not the italicized limitations. See Reply Appeal 2019-005347 Application 14/159,777 4 particular, the Examiner finds Barron’s output valves 636a and 636b teach the claimed “first valve” and “second valve,” respectively. See Final Act. 4– 5. We disagree with the Examiner. Starting first with claim construction, we agree with Appellant that the italicized limitations require moving each of “the first valve” and “the second valve” (i) “to a fill position to fill the . . . fluid barrel,” and (ii) “to an inject position” in order to inject the fluid. See claim 1; Appeal Br. 12; Reply Br. 2. Our claim interpretation is consistent with the Specification, which describes moving an exemplary valve 45 (i) to a filling position to fill fluid, and (ii) to an injection position to inject fluid. See Spec. ¶ 92; see also Spec., Figs. 13–14 (illustrating the filling and injection positions of the valve 45). Spec., Fig. 14 (showing the filling position of the valve 45). Br. 5–6; Barron, Figs. 22, 23, 30–35, 43–45, 47–54; Barron ¶¶ 34–35, 42– 47, 54 (explaining the cited figures illustrate display screens). Appeal 2019-005347 Application 14/159,777 5 Spec., Fig. 13 (showing the injection position of the valve 45). Contrary to the claim requirement, Barron teaches moving the output valves 636a and 636b (cited by the Examiner to teach the “first valve” and “second valve,” respectively) to injection positions to inject fluid, and moving different valves (632a and 632b) to filling positions to fill fluid. See Barron ¶ 211 (“system 600 controls the output valves 636a and 636b to control when fluid may be injected into a patient”); Barron ¶ 209 (“[T]he system 600 may open the valve 632a to fill fluid from the reservoir 610 into the syringe assembly 614a. The system 600 may also open the valve 632b to fill fluid from the reservoir 606 into the syringe assembly 614b.”) (emphases added); see also Appeal Br. 13; Reply Br. 5. As a result, we agree with Appellant that the cited Barron portions do not teach Appeal 2019-005347 Application 14/159,777 6 moves the first valve to a fill position to fill the first fluid barrel . . . moves the second valve to a fill position to fill the second fluid barrel . . .; . . . move the first valve to an inject position and . . . move the second valve to an inject position in order to inject the fluid, as required by claim 1. See Appeal Br. 13; Reply Br. 5. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (we will not resort to speculation or assumptions to cure deficiencies in the Examiner’s fact finding or reasoning). We also reverse the Examiner’s rejection of corresponding dependent claims 2–7, 11–13, and 25. CONCLUSION We reverse the Examiner’s decision rejecting claims 1–7, 11–13, and 25 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–7, 11–13, 25 103 Barron, Kalafut 1–7, 11–13, 25 REVERSED