12320348 (P.T.A.B. Mar. 12, 2013)

Ex Parte Andersen et al

Patent Trial and Appeal BoardMar 12, 2013

12320348 (P.T.A.B. Mar. 12, 2013)

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. 12/320,348 01/23/2009 Eric Andersen 0107/0055 8132 21395 7590 03/13/2013 LOUIS WOO LAW OFFICE OF LOUIS WOO 717 NORTH FAYETTE STREET ALEXANDRIA, VA 22314 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 03/13/2013 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 ANDERSEN, RENE ROBERT, GARY SEARLE, and VINCENT WALDRON ____________ Appeal 2012-001550 Application 12/320,348 Technology Center 3700 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-12 and 17-19 (App. Br. 5; Ans. 3).1 We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to an apparatus for preventing gas from being input to a patient being infused with an infusate (claims 1-8 and 18) and a 1 Pending claims 13-16 stand withdrawn from consideration (App. Br. 5; Ans. 3). Appeal 2012-001550 Application 12/320,348 2 fluid warmer (claims 9-12 and 19). Claims 1 and 9 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1-12 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner2 and Hesse.3 Claims 1-12 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner, Hesse, and Baker.4 We reverse. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Appellants’ figure 5 is reproduced below: “Fig. 5 is a cross-sectional view showing the gas vent valve assembly of … [Appellants’] invention” (Spec. 7: ¶ [0021]). 2 Rosner, US 4,678,460, issued July 7, 1987. 3 Hesse et al., US 3,543,752, issued December 1, 1970. 4 Baker, US 6,229,957 B1, issued May 8, 2001. Appeal 2012-001550 Application 12/320,348 3 FF 2. Appellants’ disclose a “gas vent valve assembly ha[ving] a valve body housing [30] that has a fluid inlet [32] at a side thereof, a gas outlet [34] at its top and a fluid outlet [36] at its bottom” (id. at ¶ [007] and ¶¶ [0028]-[0039]). FF 3. Rosner’s figure 18 is reproduced below: Rosner’s “FIG. 18 is a crossectional view [of Rosner’s bubble trap and eliminator] … showing the internal construction of the bubble trap and eliminator” (Rosner, col. 6, ll. 5-7). FF 4. Examiner finds that while “Rosner discloses an apparatus … for preventing gas from being input to a patient being infused with an infusate … comprising … an inlet 101 … to enable the infusate to flow into … [a] housing [160] from … [the top] of … [the] housing” to outlet ports 164 for connecting lines for infusing parenteral fluid into a patient; “Rosner does not disclose that the inlet is located at a lower portion of … [the] housing” (Ans. 5-6; see also id. at 11-12; Rosner, col. 13, ll. 59-60). Appeal 2012-001550 Application 12/320,348 4 FF 5. Hesse’s figure 1 is reproduced below: Hesse’s “FIG. 1 is a front view representation showing the parts visible and accessible on the front side of the mounting panel of an infusion apparatus for medical purposes with attached liquid supply container and cannula” (Hesse, col. 2, ll. 54-57). FF 6. Examiner finds that Hesse suggests a housing 35 that is substantially similar to Rosner’s, which comprises “a fluid outlet 72 … and an inlet 71 … located at … [the bottom] of … [the] housing (Ans. 7; see also id. at 12-13). FF 7. Examiner finds that the Random House Dictionary5 defines the term “side” as “one of the surfaces forming the outside of or bounding a thing, or one of the lines bounding a geometric figure” (id. at 18). FF 8. Examiner finds that the Collins English Dictionary6 defines the term “side” as “a line or surface that borders anything” (id.). FF 9. Examiner finds that Appellants’ invention “as presently claimed [does not require] the ‘side of said housing’ … to be a lateral side of the 5 Random House Dictionary (2011), http://dictionary.reference.com/browse/side. 6 Collins English Dictionary (2009), htt;://dictionary.reference.com/browse/side. Appeal 2012-001550 Application 12/320,348 5 housing and does not eliminate the top and bottom surfaces from being ‘sides’” (id. at 18). FF 10. Examiner finds that the combination of Rosner and Hesse fails to suggest an air detector and relies on Baker to make up for this deficiency in the combination of Rosner and Hesse (Ans. 16). ANALYSIS Based on the combination of Rosner and Hesse, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify Rosner to include an inlet at a lower portion of the housing, as taught by Hesse…, for the purpose of allowing flow into the housing,” and that such a modification is simply the rearrangement of parts, which involves only routine skill in the art (Ans. 7, citing In re Japikse, 181 F.2d 1019 (CCPA 1950); see also id. at 9). Initially, we recognize, but are not persuaded by, Examiner’s reliance on Japikse to support a conclusion that the rearrangement of parts involves only routine skill in the art (id.). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, (2007) (Obviousness requires a teaching that all elements of the claimed invention are found in the prior art and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). On this record, Examiner provided no comparison between the facts of Japikse and the facts of the underlying application to explain how the holding of Japikse applies to the claims on Appeal 2012-001550 Application 12/320,348 6 appeal (see App. Br. 15 (“no matter how much leeway is given to ‘design choice’, with Rosner and Hesse before him, a person skilled in the art could not have come up with the claimed structure of the instant invention”)). In addition, Examiner failed to establish an evidentiary basis on this record to support a conclusion that the placement of the inlet on the side of the device would have been an obvious equivalent to the placement of the inlet on the top or bottom of the device as suggested by the combination of Rosner and Hess. At best, Examiner attempts to support the rejections of record with an interpretation of the term side that is contrary to the manner in which this term is used in Appellants’ Specification and Claims, which refer to a housing comprising a: (1) top, (2) bottom, and (3) side (see Ans. 18; FF 9; Cf. FF 1-2; Claims 1 and 9). Therefore, we are not persuaded by Examiner’s reliance on Rosner, who suggests a fluid inlet at the top of a housing, or Hesse, who teaches a fluid inlet at the bottom of a housing, to suggest a fluid inlet at the side of a housing (see Ans. 7, 9, and 18; FF 9). Examiner’s reliance on Baker to suggest an air detector fails to make up for the foregoing deficiencies in the combination of Rosner and Hesse. CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. The rejection of claims 1-12 and 17 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner and Hesse is reversed. The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over the combination of Rosner, Hesse, and Baker is reversed. REVERSED lp