10396135 (B.P.A.I. Jun. 11, 2009)

Ex Parte Angel

Board of Patent Appeals and InterferencesJun 11, 2009

10396135 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte LUIS F. ANGEL1 ____________________ Appeal 2009-0601 Application 10/396,135 Technology Center 3700 ____________________ Decided2: June 11, 2009 ____________________ Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and JAMESON LEE, and RICHARD TORCZON, Administrative Patent Judges. MOORE, Vice Chief Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE 2 1 The real party in interest is Board of Regents, The University of Texas Systems. (App. Br. 2). 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-0601 Application 10/396,135 2 The Appellant appeals under 35 U.S.C. § 134 (2002) from a final 1 rejection of claims 1-2, 4-18 and 20-37.3 We have jurisdiction under 35 2 U.S.C. § 6(b) (2002). 3 The Appellant’s claims are directed to a tracheal breathing tube 4 having additional conduits. The tube allows not only for ventilation of a 5 patient, but also for suctioning of fluids and manipulation of instrumentation 6 inserted in an air passage of the patient. (Spec. p. 1, ll. 11-12). 7 Claims 1, 17 and 37 are the only independent claims in the 8 application. The Appellant argues claims 1 and 17 together and claims 8, 26 9 and 37 together. The Appellant makes no substantive arguments regarding 10 the remaining rejections or claims. We therefore select claims 1 and 8 11 representative claims upon which to decide the issues properly raised in the 12 claims on appeal. 37 C.F.R. §41.37(c)(1)(vii)(2006). 13 Representative Claim 1 reads as follows: 14 1. An airway assembly comprising: 15 a first conduit comprising reinforcement to inhibit 16 collapse of the first conduit, wherein the reinforcement 17 comprises one or more rings positioned in the first conduit; 18 an expandable member coupled to the first conduit, 19 wherein the expandable member is configured to expand 20 against an air passage to inhibit fluid flow past the expandable 21 member; 22 a second conduit comprising a distal end that extends 23 beyond the expandable member, wherein at least a part of the 24 second conduit is positioned external to a lumen of the first 25 conduit and wherein the second conduit is configured to 26 provide for removal of at least one fluid distal to the expandable 27 member; and 28 3 Claims 3, 19 and 38-42 have been canceled. (App. Br. 2). Appeal 2009-0601 Application 10/396,135 3 a third conduit comprising a distal end that terminates 1 proximal to the expandable member, wherein at least a part of 2 the third conduit is positioned external to the lumen of the first 3 conduit; 4 wherein one or more of the first conduit, the second 5 conduit, and the third conduit comprise an outer coating 6 composed of a material having a relatively low coefficient of 7 friction. 8 9 Representative Claim 8 reads as follows: 10 8. The airway assembly of claim 1, wherein the distal end 11 of the second conduit terminates at a distance greater than about 12 0.01 cm and less than about 0.5 cm from a distal end of the first 13 conduit. 14 15 (App. Br. p. 20, Claims Appendix). 16 17 THE EVIDENCE 18 19 The Examiner relies upon the following as evidence in support of the 20 rejections: 21 McGrail 4,584,998 Apr. 29, 1986 22 Heinen, Jr. 5,372,131 Dec. 13, 1994 23 Frass 5,499,625 Mar. 19, 1996 24 Pagan 6,148,818 Nov. 21, 2000 25 Weaver 6,770,066 B1 Aug. 03, 2004 26 27 THE REJECTIONS 28 29 The following rejections are before us for review: 30 1. Claims 8, 26 and 37 stand rejected under 35 U.S.C. § 112, first 31 paragraph, as failing to comply with the written description requirement. 32 Appeal 2009-0601 Application 10/396,135 4 2. Claims 1, 2, 5-6, 8-9, 13, 16-18, 20-21, 26-27, 30, 34 and 37 stand 1 rejected under 35 U.S.C. § 103(a) over the combination of Heinen, Pagan 2 and Weaver. 3 3. Claims 4, 7, 10, 12, 22-25, 28-29, 31-32 and 34 stand rejected under 4 35 U.S.C. § 103(a) over the combination of Heinen, Pagan, Weaver and 5 McGrail. 6 4. Claims 11, 14-15, 33 and 35-36 stand rejected under 35 U.S.C. § 7 103(a) over the combination of Heinen, Pagan, Weaver and Frass. 8 We REVERSE the written description rejection of claims 8, 26 and 37 9 under 35 U.S.C. § 112, first paragraph, and AFFIRM the art rejections of 10 claims 1-2, 4-18 and 20-37 under 35 U.S.C. § 103(a). 11 ISSUES 12 Has the Appellant established that the Examiner erred in determining 13 that the claim phrase “greater than about 0.01 cm and less than about 0.5 cm 14 from a distal end of the first conduit” is not adequately described in the 15 original written description of the claimed invention? 16 Has the Appellant established that the Examiner erred in determining 17 that it would have been obvious to one of ordinary skill in the art at the time 18 the invention was made to combine the known elements of the prior art for 19 their known functions? 20 FINDINGS OF FACT 21 The record supports the following findings of fact by a preponderance 22 of the evidence. 23 I. Written Description Findings 24 Appeal 2009-0601 Application 10/396,135 5 1. Claims 8, 26, and 37 recite an airway assembly wherein the distal 1 end of the second conduit terminates at a distance “greater than about 0.01 2 cm and less than about 0.5 cm from a distal end of the first conduit.” (App. 3 Br., Claims Appendix, p. 21, Claim 8)(emphasis added). 4 2. The claim limitation “greater than about 0.01 cm and less than 5 about 0.5 cm from a distal end of the first conduit” recited in claims 8, 26 6 and 37 was originally recited in each of claims 8, 26 and 37 as filed in the 7 original specification. (Spec., pp. 16, 18-19)(emphasis added). 8 II. Obviousness Findings 9 3. Heinen describes an intratracheal tube for ventilating the lungs of 10 a patient. (Heinen Abstract). 11 4. Heinen describes that the "tube is generally triangular in 12 crossection [sic] to facilitate insertion of the tube through the glottis of the 13 patient.” (Id.). 14 5. Heinen also describes that the tube comprises three lumen or 15 conduits, including a ventilation lumen. (Heinen 2:57-63). 16 6. Heinen describes that the tube additionally comprises an inflatable 17 cuff, i.e., an expandable member. (Id. 2:60-63). 18 7. Heinen describes that all or part of the three lumens/conduits can 19 be substantially encapsulated by a sheath. (Id. 3:28-29). 20 8. Heinen also describes that the three lumen tube “can be 21 sufficiently stiff to serve as injection or suction passageways.” (Id. 3:44-46). 22 9. Pagan describes an endotracheal tube wherein the wall of the tube 23 includes a reinforcing element of a canted helix form. (Pagan Abstract, 24 1:28-29). 25 Appeal 2009-0601 Application 10/396,135 6 10. Pagan describes that a canted helix is shaped as if one side of a 1 conventional helix has been pushed longitudinally relative to the other side. 2 (Id. 2:31-33). 3 11. Pagan also describes that “[i]t is known for medical tubes to be 4 reinforced by the inclusion of a helical reinforcing element.” (Id. 1:8-9). 5 12. Pagan states that “[s]uch a reinforcing element increases crush 6 resistance,” and “reduces the risk that the tube will be occluded by lateral 7 forces.” (Id. 1:9-13). 8 13. Pagan describes that a canted reinforcement element gives the 9 tube a greater resistance to crushing in the canted plane by, for example, 10 teeth biting the tube. (Id. 2:51-65). 11 14. Weaver describes applying a coating on a multi-lumen endoscopic 12 catheter to reduce the durometer (i.e., hardness) of the catheter and to impart 13 “kink resistance and suppleness to the catheter.” (Weaver Title and 9:22-14 24). 15 15. Weaver describes that the catheter coating that “has been found to 16 yield a lower coefficient of friction than that of comparable Teflon® 17 catheters.” (Id. 9:22-26). 18 PRINCIPLES OF LAW 19 An applicant satisfies the written description requirement of 35 U.S.C. 20 § 112, first paragraph, if, inter alia, the disclosure of the application as 21 originally filed reasonably conveys to those skilled in the relevant art that 22 the applicant had possession of the claimed invention as of the filing date of 23 the original application. In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996). 24 Appeal 2009-0601 Application 10/396,135 7 An artisan having ordinary skill must be presumed to know something 1 about the art apart from what the references disclose. In re Jacoby, 309 F.2d 2 513, 516 (CCPA 1962). 3 ANALYSIS 4 I. The Written Description Rejection. 5 Claims 8, 26 and 37 stand rejected under 35 U.S.C. § 112, first 6 paragraph, as failing to comply with the written description requirement. 7 Specifically, the Examiner found that the claim element reciting that 8 the second conduit stops ‘at a distance greater than about 0.01 cm and less 9 than about 0.5 cm from a distal end of the first conduit’ was not described in 10 the specification in such a way as to reasonably convey to one skilled in the 11 art that the inventor had possession of the claimed invention at the time the 12 application was filed. (Final Rejection, Apr. 4, 2006, pp. 2-3). 13 According to the Examiner, the originally filed disclosure does not 14 provide any evidence or support for the range of 0.01 cm to 0.5 cm. 15 Therefore, the Examiner determined that the claims failed the written 16 description requirement by introducing new matter. (Id. p. 3). 17 The Appellant asserts that the Examiner’s rejection is erroneous 18 because the claims as originally filed contained the disputed claim limitation 19 reciting the range of 0.01 cm to 0.5. According to the Appellant, “[i]n 20 establishing a disclosure, applicant may rely not only on the description and 21 drawing as filed but also on the original claims if their content justifies it.” 22 (App. Br. p. 7)(quoting MPEP § 608.01(l)). 23 We agree with the Appellant. 24 Appeal 2009-0601 Application 10/396,135 8 The disputed claim limitation “greater than about 0.01 cm and less 1 than about 0.5 cm from a distal end of the first conduit” recited in claims 8, 2 26 and 37 was specifically recited in claims 8, 26 and 37 as filed in the 3 original specification. (Spec., pp. 16, 18-19). Claims as filed in the original 4 specification are part of the disclosure. See In re Gardner, 475 F.2d 1389, 5 1391 (CCPA 1973). Original claims 8, 26, and 37 disclose the subject 6 matter considered new matter by the examiner of present claims 8, 26, and 7 37. 8 Therefore, we conclude that the Examiner erred in determining that 9 the Appellant’s original disclosure fails to comply with the written 10 description requirement. Accordingly, we reverse the Examiner’s written 11 description rejection. 12 II. The Obviousness Rejections. 13 Claims 1-2, 4-18 and 20-37 stand rejected under 35 U.S.C. § 103(a) 14 over differing combinations of Heinen, Pagan, Weaver, McGrail, and Frass. 15 (Final Rejection, Apr. 4, 2006, pp. 3-17). We address those rejections 16 seriatim below. 17 A. The Rejection of Claims 1, 2, 5, 6, 8, 9, 13, 16-18, 20, 21, 26, 27, 18 30, 34, and 37 under 35 U.S.C. §103(a) over the combination of Heinen, 19 Pagan, and Weaver. 20 Heinen describes an airway assembly comprising: a first conduit 21 comprising reinforcement to inhibit collapse of the first conduit; an 22 expandable member coupled to the first conduit, wherein the expandable 23 member is configured to expand against an air passage to inhibit fluid flow 24 past the expandable member; a second conduit comprising a distal end that 25 Appeal 2009-0601 Application 10/396,135 9 extends beyond the expandable member, wherein at least a part of the 1 second conduit is positioned external to a lumen of the first conduit and 2 wherein the second conduit is configured to provide for removal of at least 3 one fluid distal to the expandable member; and a third conduit comprising a 4 distal end that terminates proximal to the expandable member, where at least 5 a part of the third conduit is positioned external to the lumen of the first 6 conduit. (Id. p. 4). 7 Heinen Figure 3 is reproduced below and more clearly illustrates these 8 separate conduits and the expandable member: 9 10 Figure 3 is a cross-sectional view of a human head and trachea with a 11 tube inserted therein. 12 Regarding the reinforcement of the first conduit, the Examiner 13 specifically found that Heinen describes that each of the conduits/lumens 14 Appeal 2009-0601 Application 10/396,135 10 “can be sufficiently stiff to serve as injection or suction passageways.” 1 (Id.)(citing Heinen 3:44-46). 2 As regards to helical reinforcement, the Examiner relied upon Pagan, 3 and found that the reference states, ‘it is known for medical tubes to be 4 reinforced by the inclusion of a helical reinforcing element. Such a helical 5 reinforcing element helps to reduce the risk that the tube will be occluded by 6 lateral forces and thereby enables the tube to have a thinner wall.’ (Id. pp. 4-7 5)(quoting 1:8-12). 8 The Examiner then concluded that it would have been obvious to one 9 having ordinary skill in the art at the time of invention to modify Heinen’s 10 airway assembly to include ring members, as taught by Pagan and known in 11 the art, to increase the structural stability of the conduit and reduce the 12 thickness of the conduit tube lining. (Id. p. 5). 13 Finally, the Examiner found that the use of conduit coating was 14 known at the time of the invention and that Weaver specifically describes 15 using a coating on a multi-lumen catheter to reduce the durometer (i.e., 16 hardness) of the catheter and to impart “kink resistance and suppleness to the 17 catheter.” (Id.; Weaver 9:22-24). Weaver also describes that its coating 18 “has been found to yield a lower coefficient of friction than that of 19 comparable Teflon® catheters.” (Weaver 9:22-26). 20 According to the Examiner, it would have been obvious to one of 21 ordinary skill in the art at the time of the invention to modify the system of 22 Heinen and Pagan by coating the conduits as known in the art and as taught 23 by Weaver to facilitate the manipulation of the assembly during placement. 24 (Final Rejection, p. 5). 25 Appeal 2009-0601 Application 10/396,135 11 We now turn to the specific allegations of error. 1 Arguments regarding Claims 1 and 17 2 The Appellant asserts that the Examiner erred in rejecting claims 1 3 and 17 as obvious over the cited prior art because “the cited art does not 4 appear to disclose” rings and an outer coating having a low coefficient of 5 friction. (App. Br. 10). 6 This argument is not persuasive. The proper focus in an obviousness 7 analysis focuses on whether the combination of art would have rendered the 8 claimed invention obvious to the skilled artisan at the time the invention was 9 made, not whether the cited art “appears to disclose” each element of the 10 claims. 11 Pagan describes helical reinforcing elements for crush resistance (as 12 in biting) and Weaver describes a coating on a multi-lumen catheter with a 13 low coefficient of friction. The Examiner expressly found it would have 14 been obvious to include ring members in view of this disclosure. (Final 15 Rejection, p. 6, ll. 6-10). 16 The Appellant has made no persuasive argument that the claimed tube 17 with reinforcing rings would not have been obvious to one of ordinary skill 18 in the art over the combination of cited references, including the described 19 helical reinforcing element of Pagan. 20 The same is true of the claimed tube with an outer low friction 21 coating. The Appellant has made no persuasive argument that the Examiner 22 erred in determining that the combination of references, including the 23 description in Weaver of a low friction coating on a catheter, renders the 24 subject matter of the claims obvious. 25 Appeal 2009-0601 Application 10/396,135 12 Accordingly, we are unpersuaded by this first contention. 1 The Appellant next argues that “modification of Heinen in view of 2 Pagan’s teaching destroys the intent, purpose and/or function of the 3 invention disclosed in Heinen (i.e., a triangular shaped tube), and is therefore 4 not proper.” (App. Br. p. 12). According to the Appellant, modifying Pagan 5 in view of Heinen would require fitting Pagan’s helical reinforcement “into a 6 tube which has a triangular shape, instead of a circular shape.” (Id.). The 7 Appellant also urges that Pagan does not teach or suggest that “such a 8 modification could be accomplished,” or that “such a modification would 9 provide the desired result.” (Id.). 10 Initially, we note that the Appellant has not provided persuasive 11 evidence to support these arguments of counsel. 12 Moreover, Heinen describes “an improved intratracheal tube which is 13 primarily used to ventilate the lungs of a patient.” (Heinen 1:5-7). The 14 Appellant has not directed our attention to any evidence of record that 15 modifying Heinen’s airway assembly to include Pagan’s reinforcement 16 element would “destroy” this purpose. 17 The evidence of record, Heinen, specifically notes that Heinen’s tube 18 is “generally” triangular in cross section. (Heinen 3:51-56). Heinen also 19 describes that “the corners of the triangular cross section can be rounded to 20 minimize the irritation of the glottis and trachea.” (Id.). The Appellant has 21 not established with evidence how modifying Heinen with rings, or even 22 changing its shape, would act to destroy the intent, purpose, or function of 23 Heinen. Moreover, the instant claims do not require that the rings be 24 circular. 25 Appeal 2009-0601 Application 10/396,135 13 Further, the artisan must be presumed to know something about the art 1 apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 2 (CCPA 1962). The law presumes skill on the part of an artisan rather than 3 the converse. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). 4 The Appellant has not established with persuasive evidence that the 5 Examiner erred in finding one of ordinary skill in the art would be capable 6 of making such a combination. Consequently, we conclude that the 7 Appellant has not established error on the part of the Examiner. 8 Arguments Pertaining to Claim 37 9 The Appellant states that Claim 37 describes a “combination of 10 features including: ‘a second conduit comprising a distal end that extends 11 beyond the expandable member, stops greater than about 0.01 cm and less 12 than about 0.5 cm from a distal end of the first conduit, and wherein at least 13 a part of the second conduit is coupled to an outer surface of the first 14 conduit’”. (App. Br. at 12). 15 The Appellant next contends that the cited art “does not appear to 16 teach” these elements. (App. Br. at 13). 17 The appellant then repeats this pattern of language for claims 2 and 18 18, claim 5, claim 6, claims 8 and 26, claim 9, claim 13, claim 16, claim 20, 19 claim 21, claim 27, claim 30, and claim 34. 20 As noted in 37 C.F.R. §41.37(c)(vii) “A statement which merely 21 points out what a claim recites will not be considered an argument for 22 separate patentability of the claim.” 23 Again, the Appellant has put forth no convincing argument or 24 persuasive evidence as to how the Examiner erred in concluding the claimed 25 Appeal 2009-0601 Application 10/396,135 14 subject matter would have been obvious in light of the cited combination of 1 references. 2 Accordingly, we affirm the Examiner’s obviousness rejection. 3 B. The Rejection of Claims 4, 7, 10, 12, 22-25, 28-29, 31-32 and 34 4 under 35 U.S.C. § 103(a) over the combination of Heinen, Pagan, Weaver 5 and McGrail. 6 Again, the Appellant has not provided separate argument for this 7 rejection, instead only reciting claim limitations and stating that “[a]pplicant 8 submits, that at least for the reasons cited in the Second Ground of 9 Rejection, the cited art does not appear to teach all of the features in claims 1 10 and 17 and the claims dependent thereon.” (App. Br. 15-16). 11 As this is not a separate argument, we affirm this rejection for the 12 reasons noted above. 13 C. The Rejection of Claims 11, 14-15, 33 and 35-36 under 35 U.S.C. 14 § 103(a) over the combination of Heinen, Pagan, Weaver and Frass. 15 Again, the Appellant has not provided separate argument for this 16 rejection, instead only reciting claim limitations and stating that “[a]pplicant 17 respectfully submits that the cited art does not appear to teach or suggest the 18 combination of features in claims 11, 14, 15, 33, 35, and 36.” (App. Br. at 19 18). 20 As this last contention is not a separate argument asserting error, we 21 affirm this last rejection for the reasons noted above. 22 Appeal 2009-0601 Application 10/396,135 15 CONCLUSION OF LAW 1 On the record before us, the Appellant has shown error on the part of 2 the Examiner in the conclusion that there was inadequate written descriptive 3 support in the specification as filed for claims 8, 26, and 37. 4 On the record before us, the Appellant has not shown error on the part 5 of the Examiner in concluding that it would have been obvious to one of 6 ordinary skill in the art at the time the invention was made to combine the 7 known elements of the prior art for their known functions. 8 DECISION 9 The Rejection of claims 8, 26 and 37 under 35 U.S.C. § 112, first 10 paragraph, as failing to comply with the written description requirement is 11 REVERSED. 12 The Rejection of claims 1, 2, 5-6, 8-9, 13, 16-18, 20-21, 26-27, 30, 34 13 and 37 under 35 U.S.C. §103(a) as being unpatentable over the combination 14 of Heinen, Pagan and Weaver is AFFIRMED. 15 The Rejection of claims 4, 7, 10, 12, 22-25, 28-29, 31-32 and 34 16 under 35 U.S.C. §103(a) as being unpatentable over the combination of 17 Heinen, Pagan, Weaver and McGrail is AFFIRMED. 18 The Rejection of claims 11, 14-15, 33 and 35-36 under 35 U.S.C. 19 §103(a) as being unpatentable over the combination of Heinen, Pagan, 20 Weaver and Frass is AFFIRMED. 21 No time period for taking any subsequent action in connection with 22 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 23 AFFIRMED-IN-PART 24 25 26 Appeal 2009-0601 Application 10/396,135 16 1 sss 2 3 4 cc: 5 6 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C. 7 P.O. BOX 398 8 AUSTIN TX 78767-0398 9