Ex Parte Chew

Patent Trial and Appeal Board

Mar 27, 2013

12227342 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/227,342 11/14/2008 Heng Hai Chew 14133-4 9656
80711 7590 03/27/2013
Brinks Hofer Gilson & Lione/Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/27/2013 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 HENG HAI CHEW
__________

Appeal 2011-007620
Application 12/227,342
Technology Center 3700
__________

Before STEPHEN WALSH, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a flow regulating device for an intravenous drip set. The
Patent Examiner rejected the claims for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-007620
Application 12/227,342

2
STATEMENT OF THE CASE
Claims 1-7 are on appeal. Claim 1 illustrates the subject matter on
appeal and reads as follows (emphasis added):
1. A flow regulating device for an intravenous drip set which is attached
on to a tubing of an intravenous drip line in between a bag and a cannula
comprising a main housing unit having a length with a flexible tubing, which
comprises portion of an intravenous line, threaded through the entire length
of the main housing unit, the main housing unit further comprising:
a mobile roller which can rotate and slide along a groove provided
within the main housing unit such that as the mobile roller slides diagonally
along the groove from one end to the other, it gradually compresses the
flexible tubing that is threaded through the entire length of the main housing
unit until the flexible tubing is fully compressed and thereby fluid flow
through the flexible tubing is regulated by adjusting the position of the
mobile roller along the groove provided in the main housing unit; and
a fixed roller which rotates on an axis that is in a fixed position within
the main housing unit,
the fixed roller and the mobile roller being provided on opposite sides
of the flexible tubing within the main housing unit whereby the mobile roller
can be positioned along the groove so that the flexible tubing is squeezed
between the fixed roller and the mobile roller into a totally closed position to
act as a flusher, for the intravenous line, whereby when by sliding the
regulating device along the tubing in one direction allows for flushing of
fluid in the intravenous line.

The Examiner rejected1 claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Adelberg2 and Bierman.3

1 The Appeal Brief requests review of an objection to the drawings. (App.
Br. 5.) As the objection is not a rejection of claims, it is not an appealable
matter; review should be sought by petition, not appeal. See MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition ….”); see also MPEP § 1002.02(c)(4) (petitions relating
to objections or requirements made by Examiners).
2 Kenneth N. Adelberg, US 6,422,529 B1, issued July 23, 2002.
3 Steven F. Bierman, US 5,318,546, issued June 7, 1994.
Appeal 2011-007620
Application 12/227,342

3

DISCUSSION
The Issue
The Examiner’s position is that Adelberg disclosed a flow regulating
device for an intravenous drip set that comprised a mobile roller, but not a
fixed roller. (Ans. 4.) The Examiner found that Bierman disclosed a flow
regulating device for an intravenous drip set that comprised two fixed
rollers. (Id. at 4-5.) The Examiner concluded it would have been obvious
“to modify the device of Adelberg with the fixed roller of Bierman in order
to be able to clamp the tubing with ease.” (Id. at 5.) The Examiner found
that “Adelberg shows the main housing unit is tapered towards an end,” and
concluded “it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the housing to have a larger end
at the fixed roller as the modification would have involved a mere change in
the size of a component generally recognized as being within the level of
ordinary skill in the art.” (Id. at 5.) According to the Examiner:
Adelberg as modified by Bierman would show the fixed roller
is located beyond a position at which when the mobile roller is
located at the position the flexible tube is fully opened, and
wherein the fixed roller is located beyond a position at which
when the mobile roller is located at the position the flexible
tube is fully opened.

(Id.)
Appellant contends: “Neither Adelberg nor Bierman teach or suggest
how to achieve [the claimed] alignment with a combination of movable
roller and a fixed roller.” (App. Br. 11.) “Specifically, merely adding a
fixed roller to Adelberg as the Examiner suggests does not provide sufficient
Appeal 2011-007620
Application 12/227,342

4
guidance as to how to arrange the fixed roller, relative to the movable roller,
so that fluid flow and be regulated and line flushing can be accomplished.”
(Id. at 12.)
We find Appellant’s contentions persuasive. More specifically, we
agree with Appellant that the rejection did not establish that a preponderance
of evidence suggests, prima facie, the obviousness of Appellant’s
arrangement of mobile and fixed rollers. The rejection did not explain, for
example, (i) how adding a fixed roller to Adelberg’s device would have
affected the ability of Adelberg’s device to clamp tubing, or (ii) why
Adelberg’s device modified by a fixed roller “would show” the roller located
where Appellant’s device has it. “Rejections 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),

SUMMARY
We reverse the rejection of claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Adelberg and Bierman.

REVERSED

dm