Belmont Instrument, LLC

Patent Trials and Appeals Board

Oct 29, 2020

2020002220 (P.T.A.B. Oct. 29, 2020)

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.
13/999,066 01/09/2014 John Joseph Landy 2012366-0007 3957
24280 7590 10/29/2020
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
AVIGAN, ADAM JOSEPH
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
10/29/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jnease@choate.com
patentdocket@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN JOSEPH LANDY, MICHAEL GILDERSLEEVE, and
YEU WEN TSENG
____________

Appeal 2020-002220
Application 13/999,066
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, 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 13, 14, and 25.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b). We REVERSE.

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 Belmont Instrument,
LLC. Appeal Br. 2.
2 Claims 1–12 and 15–24 are canceled. Amendment 2–3 (filed January 25,
2019).
Appeal 2020-002220
Application 13/999,066

2
In explaining our Decision, we refer to the Specification filed January
9, 2014 (“Spec.”), the Final Office Action mailed April 18, 2019 (“Final
Act.”), the Appeal Brief filed August 13, 2019 (“Appeal Br.”), the
Examiner’s Answer mailed November 29, 2019 (“Ans.”), and the Reply
Brief filed January 24, 2020 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to treating diseases by raising
body temperature. Spec. ¶ 1. Claims 13 and 25 are independent. Claim 13,
reproduced below from page 11 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
13. A process for performing partial body hyperthermia treatment
comprising,
(a) mounting a magnetic induction heater upon an IV pole,
wherein the magnetic induction heater comprises an IV pole entry
space of a size and configuration to receive the IV pole;
(b) providing treatment fluid from a reservoir of a disposable
set;
(c) heating the treatment fluid, by the magnetic induction
heater, to a temperature above a physiological temperature for a body
to be treated;
(d) causing fluid flow for the heated fluid, to a selected portion
of the body to be treated, and from that body portion;
(e) causing the fluid to flow from the body portion to be treated
in a continuous enclosed path to where the fluid is heated and back to
the body portion to be treated, until the treatment is terminated; and
(f) causing the fluid to flow at an operator set rate,
wherein the mounting step comprises positioning the magnetic
induction heater such that the IV pole is received in the IV pole entry
space and such that the magnetic induction heater is positioned on the
IV pole above a base of the IV pole and below the reservoir.
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Application 13/999,066

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REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Shah US 4,532,414 July 30, 1985
Brugger US 2002/0147481 A1 Oct. 10, 2002
Kamen US 2008/0058697 A1 Mar. 6, 2008
REJECTION
Claims 13, 14, and 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kamen, Shah, and Brugger.
ANALYSIS
The Examiner finds that Kamen discloses a partial body hyperthermia
treatment process substantially as recited in claim 13, including, in relevant
part, “mounting a magnetic induction heater (Par. 444, ‘The fluid may be
heated using any method including, but not limited to, induction heating’)
upon an IV pole (Fig. 24, system 10 is attached to . . . an IV pole and
therefore can be considered ‘mounted upon’ the IV pole).” Final Act. 3.
The Examiner finds that Kamen does not disclose, inter alia, that
the magnetic induction heater comprises an IV pole entry space
of a size such that the IV pole is received in the IV pole entry
space[, and] . . . the mounting step comprises positioning the
magnetic induction heater . . . such that the magnetic induction
heater is positioned on the IV pole above a base of the IV pole
and below the reservoir.
Id. at 4. However, the Examiner finds that Shah teaches,
a heater compris[ing] an IV pole entry space of a size such that
the IV pole is received in the IV pole entry space (Fig. 6. fluid
warmer 1 comprises a circular clamp 49 which receives IV pole
3); wherein the heater is mounted upon an IV pole (Fig. 1, fluid
warmer 1 mounted on IV pole) . . . such that the magnetic
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Application 13/999,066

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induction heater is positioned on the IV pole above a base of
the IV pole and below the reservoir (Fig. 1, fluid warmer 1 is
mounted above the base IV pole 3 and below bag-like
receptacle 2).
Id. The Examiner finds that “Kamen and Shah teach different
configurations for portable heat-exchange apparatuses (i.e. the cart
configuration of Kamen and IV pole configuration of Shah).” Id. The
Examiner determines that it would have been obvious “to substitute one
known portable heat exchange configuration for the other in order to achieve
the predictable result of a portable heat-exchanger.” Id. (citing KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398 (2007)).
Appellant contests the Examiner’s rationale articulated in support of
the conclusion of obviousness. See Appeal Br. 7–8; Reply Br. 3–5. In
particular, Appellant asserts that the Examiner has not adequately explained
how the proposed combination of Kamen and Shah amounts to a simple
substitution of elements. See Appeal Br. 8. We agree that the Examiner has
not set forth a sustainable case of obviousness.
Kamen discloses a heat-exchanger system used to heat blood and
provide whole-body hyperthermic treatments. Kamen ¶ 389. Kamen
discloses, in one embodiment, heat-exchanger system 10 including base
unit 11 having a number of interior components, such as heat
exchanger 2541 with heating plates 12, 14. Id. ¶¶ 392–393, 405, Figs. 1,
24, 25.
Shah teaches an in-line fluid warmer for heating parenteral fluids,
such as blood. Shah, code (57). Shah teaches that fluid warmer 1 may be
secured to IV pole 3 using loop-like clamp 49 located on the rear surface of
fluid warmer 1. Id. at 6:34–37; see also id. at Figs. 1, 6.
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Application 13/999,066

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With regard to the proposed modification of Kamen, the Examiner
determines that “one of ordinary skill in the art would understand the system
of Kamen could be converted from the cabinet mounting configuration to the
IV pole mounted configuration using the clamping mechanism disclosed by
Shah.” Ans. 5. According to the Examiner, the proposed modification of
Kamen involves “the substitution of the different mounting configurations
for mounting modular heat exchange components of a heat exchange system
in a portable manner.” Id. In other words, the Examiner’s proposed
modification of Kamen appears to involve reconfiguring its heat exchanger
components so that they are mounted to an IV pole. However, the Examiner
has not explained adequately how such a modification amounts to a mere
simple substitution of one known element for another. See KSR, 550 U.S. at
417. Here, absent improper hindsight reconstruction, we fail to see a
sufficiently reasoned explanation based on some rational underpinning
explaining why one of ordinary skill in the art would have been led to
modify Kamen as proposed by the Examiner, and a reason for such
modification is not otherwise evident from the record. This is especially true
given the embodiment of Kamen relied upon by the Examiner to disclose an
IV pole (see Ans. 4 (citing Kamen, Fig. 24)) does not appear to heat the
contents of the IV bag, begging the question of why a skilled artisan would
relocate the heat exchanger to be mounted on the IV pole.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 13, or its dependent claim 14, as being unpatentable over Kamen,
Shah, and Brugger.
Independent claim 25 contains similar recitations as claim 13, and the
Examiner relies on the same deficient reasoning as for claim 13. See Final
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Application 13/999,066

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Act. 6 (explaining that “Kamen has previously been modified in view of
Shah to mount the induction heater using a clamp”). Accordingly, for the
same reasons as set forth above, we do not sustain the rejection of claim 25
as being unpatentable over Kamen, Shah, and Brugger.
CONCLUSION
In summary,
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
13, 14, 25 103 Kamen, Shah,
Brugger
13, 14, 25
REVERSED