COVIDIEN LP

Patent Trials and Appeals Board

Jun 25, 2020

2020000151 (P.T.A.B. Jun. 25, 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.
15/144,927 05/03/2016 WILLIAM J. DICKHANS 356622.USU1 (1988-263) 9716
107146 7590 06/25/2020
Covidien LP
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
RUPPERT, ERIC S
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM J. DICKHANS

Appeal 2020-000151
Application 15/144,927
Technology Center 3700
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien LP.
Appeal Br. 1.
Appeal 2020-000151
Application 15/144,927

2
BACKGROUND
The Specification discloses that “[t]he present disclosure relates to the
use of energy delivery devices. More particularly, the present disclosure is
directed to a bag configured for use with systems for cooling energy delivery
devices.” Spec. ¶ 1.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A kit for use with a recirculating cooling system,
comprising:
a bag including a first wall, a second wall opposite the first
wall, and a side wall defining a reservoir configured to retain a
fluid therein, a first port defined through the first wall and a
second port defined through the side wall or the second wall, the
bag configured to maximize a temperature differential between a
fluid proximate the first port and a fluid proximate the second
port, the bag further including a divider which divides the
reservoir into a first fluid chamber and a second fluid chamber,
the first fluid chamber in fluid communication with the first port
and the second fluid chamber in fluid communication with the
second port, a portion of the divider being at least semi-
permeable to permit fluid to flow between the first fluid chamber
and the second fluid chamber, the divider configured to prevent
fluid from flowing directly from the first port to the second port,
wherein the bag is collapsible.
Appeal Br. 17.
Appeal 2020-000151
Application 15/144,927

3
REJECTIONS2
1. The Examiner rejects claims 1–3 under 35 U.S.C. § 103 as unpatentable
over Kaveckis3 in view of Scott.4
2. The Examiner rejects claims 4, 5, and 7 under 35 U.S.C. § 103 as
unpatentable over Kaveckis in view of Scott and Balding.5
3. The Examiner rejects claim 6 under 35 U.S.C. § 103 as unpatentable over
Kaveckis in view of Scott,6 Balding, and Noda.7
4. The Examiner rejects claims 8–10 under 35 U.S.C. § 103 as unpatentable
over Kaveckis in view of Scott and Baust.8
5. The Examiner rejects claims 8, 11, and 15 under 35 U.S.C. § 103 as
unpatentable over Kaveckis in view of Scott and Neilson.9

2 The Examiner indicates that rejections under 35 U.S.C. § 112 have been
withdrawn. See Adv. Act. 2. Although the Examiner only references a
rejection under 35 U.S.C. § 112(b), we consider this a typographical error as
the amendment that obviated the rejection would obviate the rejection under
35 U.S.C. § 112(a) for the same reasons, i.e., because the amendment deletes
the language at issue in both rejections. See Final Act. 2–3; see also
Amendment filed July 30, 2018.
3 Kaveckis et al., US 2014/0276792 A1, pub. Sept. 18, 2014.
4 Scott et al., US 2006/0293734 A1, pub. Dec. 28, 2006.
5 Balding, WO 01/03606 A2, pub. Jan. 18, 2001.
6 With respect to Rejections 3–5, we consider the rejections to also be in
view of Scott because the claims rejected each depend from claim 1,
although the Examiner does not refer to Scott in the heading or body of any
of these rejections. The Examiner also does not provide any explanation as
to how the art replied upon cures the deficiency in Kaveckis for which the
Examiner relies on Scott in the rejection of claim 1. See Final Act. 6–10.
7 Noda et al., US 7,097,657 B2, iss. Aug. 29, 2006.
8 Baust et al., US 2015/0282858 A1, pub. Oct. 8, 2015.
9 Neilson et al., US 6,007,571, iss. Dec. 28, 1999.
Appeal 2020-000151
Application 15/144,927

4
DISCUSSION
With respect to claim 1, the Examiner finds that Kaveckis teaches a
kit for use with a recirculating cooling system including a bag as claimed,
except that the Examiner acknowledges that Kaveckis does not teach that the
bag includes a permeable or semi-permeable membrane to permit flow of
fluid therethrough. Final Act. 4 (citing Kaveckis ¶¶ 11, 82; Fig. 4).
However, the Examiner finds that Scott teaches an air trap in a cooling
device that includes a semi-permeable membrane for trapping air bubbles
entrained in the circuit before entering the pump. Id. at 5 (citing Scott
¶¶ 144, 145, 154; Fig. 11B). The Examiner determines that it would have
been obvious to modify Kaveckis’ system to include a semi-permeable
membrane, as taught by Scott, in order to trap air bubbles in the system
before entering the pump. Id. The Examiner further explains that this
modification would have been advantageous over Kaveckis’ method of
purging air from the system because it would be less disruptive than
stopping the system, reversing the pump, and purging the air. Ans. 10.
We agree with and adopt the Examiner’s findings with respect to the
rejection of claim 1. See Final Act. 4–5; Ans. 10–12.
Appellant first argues that the proposed combination “would render
Kaveckis’ device unsatisfactory for its intended purpose.” Appeal Br. 7.
Appellant asserts that Kaveckis’ device is designed to push fluid through the
heat exchanger in reverse in order to expel from the system and that
Kaveckis teaches a system that ensures that fluid exiting the heat exchanger
and entering the pump contains as little air as possible. Id. at 8–9.
Appellant argues:
If, as proposed by the Examiner, Kaveckis is modified to
include the air trap 685 of Scott, any air disposed downstream of
Appeal 2020-000151
Application 15/144,927

5
the air trap 685 would be unable to be forced out of the supply
line 14 and heat exchanger cartridge 28 of Kaveckis. Indeed, any
air present between the air trap 685 and the pump 30 of Kaveckis
would be permitted to travel into the pump, in contravention of
purpose of Kaveckis’ air purge system.
Id. at 10.
We are not persuaded. The proposed modification by the Examiner
includes an alternative means for preventing air from circulating through the
system. Even if the purpose of Kaveckis’ device may be described as
preventing or purging air in the system, this intent is not defeated by the
modification proposed by the Examiner. Rather, it is simply performed in a
different manner.
Next, Appellant argues that the combination would change the
principle of operation of Kaveckis’ device. Appeal Br. 10. Appellant
asserts that the proposed modification “would change the means by which
air is inhibited from entering the pump 30 of system 101/201.” Id. at 11.
We are not persuaded because Appellant has not adequately explained why
the principle of operation of Kaveckis’ device is related to inhibiting air
from entering the pump. Rather, Kaveckis discloses that the invention is
related to “systems and associated methods for delivering a cooled fluid
during treatment of a patient,” which is accomplished by providing “a
sufficiently compact and efficient closed loop system that allows for control
of the temperature and pressure of a liquid coolant supplied to a treatment
device positioned in a patient.” Kaveckis ¶¶ 3, 9. Kaveckis further discloses
that the heat exchanger may be “a bag removably coupled to the cooling
device with a given biasing force for effectuating heat transfer from fluid
contained in or traveling through the bag.” Id. ¶ 11; see also id. ¶ 31. Thus,
the principle of operation of Kaveckis’ device is providing heat exchange by
Appeal 2020-000151
Application 15/144,927

6
using a heat exchanger in the form of a bag coupled to a cooling device for
providing cooled liquid to a treatment device. Although Kaveckis discloses
the use of a reversible pump to expunge air from the system, we agree with
the Examiner that this is only described by way of example and as an
optional addition to the device. See Ans. 11; see also Kaveckis ¶¶ 31, 71.
Next, Appellant argues that “Kaveckis has already solved the problem
of trapping air bubbles entrained in the circuit before entering the pump” and
thus, the reasoning provided by the Examiner for modifying Kaveckis is
moot. Appeal Br. 13. However, this argument fails to consider the reasons
provided by the Examiner for making the proposed combination. In the
Answer, the Examiner explains that one of ordinary skill in the art would
have recognized the benefits of the proposed modification to Kaveckis
including providing a less disruptive means for preventing air from entering
the system. Ans. 10. More specifically, the Examiner finds that one of
ordinary skill in the art would recognize that Kaveckis’ system requires that
the cooling system be stopped, the pumped reversed, and the system purged
of air before cooling treatment can resume. Thus, even though both
Kaveckis and Scott provide means for removing or preventing air from
entering the system, the Examiner provides a reason why one of ordinary
skill in the art would be motivated to modify Kaveckis’ system in view of
Scott. Appellant does not address this reasoning.
Finally, Appellant argues that the rejection relies on impermissible
hindsight. Appeal Br. 14. However, Appellant merely asserts that this is so
because a person of ordinary skill in the art would not have modified
Kaveckis to include the air trap of Scott. Id. We are not persuaded.
Appellant has not explained how the Examiner has relied on any knowledge
Appeal 2020-000151
Application 15/144,927

7
gleaned only from Appellant’s disclosure in making the rejection. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. With respect to the rejections of the remaining claims, Appellant
argues only that the art of record does not cure the deficiencies in the
rejection of claim 1. Having found not such deficiencies, we are also not
persuaded of error in the rejections of the dependent claims. Accordingly,
we sustain the rejections of claims 1–11 and 15.

CONCLUSION
We AFFIRM the rejections of claims 1–11 and 15.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103 Kaveckis, Scott 1–3
4, 5, 7 103 Kaveckis, Scott,
Balding
4, 5, 7
6 103 Kaveckis, Scott,
Balding, Noda
6
8–10 103 Kaveckis, Scott,
Baust
8–10
8, 11, 15 103 Kaveckis, Scott,
Neilson
8, 11, 15
Overall
Outcome
1–11, 15

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)(l)(iv).
AFFIRMED