Ex Parte Field et al

Patent Trial and Appeal Board

Mar 11, 2013

10803882 (P.T.A.B. Mar. 11, 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.
10/803,882 03/19/2004 Stephen James Field 0119/0034 7153
21395 7590 03/11/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
ROY, BAISAKHI
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
03/11/2013 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 STEPHEN JAMES FIELD, RICHARD HINGLEY,
STEPHEN JAMES LODGE, and THOMAS CUTHBERT MILLS
__________

Appeal 2011-013229
Application 10/803,882
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device or catheter, which have been rejected for anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in
part.
STATEMENT OF THE CASE
Claims 1 and 3-18 are on appeal. Claims 1, 13, and 15 are
representative and read as follows:
Appeal 2011-013229
Application 10/803,882

2
1. A medical device comprising an elongate portion of plastics
material, the portion being extruded with at least a first, inner layer of a
plastics material and a second layer of a plastics material on an outside of
the inner layer, wherein one of said layers is substantially free of gas
bubbles, wherein the other of said layers of the device is coextruded with the
one of the layers to include gas bubbles dispersed within the material of said
other layer to increase the visibility of the device under ultrasound imaging,
and wherein said layer substantially free of gas bubbles is thinner than said
other layer such that the layer containing gas bubbles is covered at a surface
by the thinner of the layers.

13. A device according to Claim 1, wherein the device is a catheter
having a bore extending along its length.

15. A device according to Claim 13, wherein said plastics material is
transparent to the eye, and wherein the density of bubbles is such as to
permit material within the catheter to be viewed by the eye.

The claims stand rejected as follows:
• Claims 1, 3-8, 12-14, and 16-18 under 35 U.S.C. § 102(b) as
anticipated by Arterburn
1
(Answer 4);
• Claims 9-11 under 35 U.S.C. § 103(a) as obvious based on
Arterburn and Bland
2
(Answer 6); and
• Claim 15 under 35 U.S.C. § 103(a) as obvious based on Arterburn
and Smith
3
(Answer 7).
I.
The Examiner has rejected claims 1, 3-8, 12-14, and 16-18 as
anticipated by Arterburn (Answer 4). The Examiner finds that “Arterburn

1
Arterburn, US 4,644,977, issued Feb. 24, 1987.
2
Bland et al., US 6,071,580, issued June 6, 2000.
3
Smith, US 6,840,090 B2, issued Jan. 11, 2005.
Appeal 2011-013229
Application 10/803,882

3
discloses a device which includes [an] inner layer of plastic and a second
layer of plastic wherein one of the layers or the inner layer 18 is free of gas
bubbles and the other layer or second layer 20 includes gas bubbles” (id. at
5). The Examiner also found that Arterburn described foam layers 14 and
20 (id.). The Examiner reasons that the foamed layer in Arterburn‟s device
would inherently increase visibility under ultrasound imaging (id.), and that
the “term „medical device‟ in the preamble does not limit the device. Even
if it did, the tube in the reference could be used in a medical environment if
necessary.” (Id. at 6.)
We agree with the Examiner that claim 1 encompasses Arterburn‟s
device. Arterburn discloses a lightweight, abrasion- and stain-resistant hose
(Arterburn, col. 1, ll. 35-39) that comprises inner and outer cover layers with
a foamed layer in between (id. at col. 1, ll. 48-52). Arterburn exemplifies a
hose in which the inner, nonfoamed layer has a thickness of 0.015 inch and
the foamed layer has a thickness of 0.04 to 0.06 inch (id. at col. 4, ll. 8-11)
and the layers are coextruded (id. at col. 4, l. 14). Arterburn thus describes a
product meeting all of the structural limitations of claim 1.
Appellants argue, however, that the requirement in claim 1 of
increased visibility under ultrasound imaging is a proper functional
limitation (Appeal Br. 14), and “Arterburn fails to disclose anything
remotely having to do with ultrasound imaging” (id. at 14-15).
This argument is unpersuasive. Claim 1 is directed to a product, not a
method of using a product in conjunction with ultrasound imaging. The
Examiner concluded that Arterburn‟s product would necessarily have
increased visibility under ultrasound imaging because it has the same
Appeal 2011-013229
Application 10/803,882

4
structure as claimed (Answer 5-6), which is consistent with the
Specification‟s description of known plastic devices that have increased
ultrasound visibility because they incorporate bubbles (Spec. 1-2).
Appellants have provided no persuasive basis for concluding that the
Examiner‟s reasoning is faulty.
Appellants also argue that claim 1 is directed to a “medical device,”
which means “devices that are meant to be inserted into the human body and
accordingly have to have an elastic property so that the devices can follow
the contours of the interior organs of the patient into which the devices are to
be inserted” (Appeal Br. 15). Appellants argue that “no person skilled in the
art could have construed the hose disclosed by Arterburn to be a medical
device” (id.).
We disagree. The broadest reasonable interpretation of a “medical
device” is a device with a medical application. Appellants have not pointed
to an express definition in the Specification that would limit the claimed
device to one that is meant to be inserted into the human body, or to one
with particular elastic properties. The Specification states, for example, that
medical devices include cables (Spec. 8). In any case, Arterburn discloses a
hose that has “an inner diameter of 5/8 inch or less” (Arterburn, col. 4, ll. 7),
which is reasonably interpreted as a size capable of insertion into the human
body.
Finally, with respect to claim 1, Appellants argue that Arterburn‟s
hose differs from the product of claim 1 because “the Arterburn hose
requires (1) a reinforcement layer, and (2) an outer layer that does not have
foams” (Appeal Br. 17). Claim 1, however, uses the transition term
Appeal 2011-013229
Application 10/803,882

5
“comprising,” and therefore encompasses products that include the recited
elements together with other elements such as a reinforcement layer and an
outer, unfoamed layer. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d
1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term
„comprising‟ is well understood to mean „including but not limited to‟.”).
With regard to claim 4,
4
Appellants point out that the claim requires
“that the second layer provides an outer surface of the device” (Appeal Br.
19). Appellants argue that Arterburn does not disclose any embodiments
with an outer surface having gas bubbles (id.), and that “even though
acknowledging that all layers may be foamed to minimize the cost,
Arterburn nonetheless teaches against the foaming of the inner and outer
surfaces as such foaming would make the outer layer permeable to fluids”
(id.).
This argument is not persuasive. Claim 1 does not require the
“second layer” to be the layer containing gas bubbles. The claim recites an
“inner layer,” and a “second layer” on the outside of the inner layer,
“wherein one of said layers is substantially free of gas bubbles” and the
layers are coextruded “such that the layer containing gas bubbles is covered
at a surface by the thinner,” bubble-free layer. Claim 1 thus reads on an
embodiment in which the inner layer is the bubble-containing layer and is
covered on its outer surface by the bubble-free layer. Cf. Arterburn, col. 4,
ll. 14-16 (“foamed layer 14 . . . coextruded with the nonfoamed outer cover
16”). Although Appellants argue that Arterburn‟s embodiments have more

4
Appellants actually present this argument with respect to claim 3 but the
relevant limitation is in claim 4, not claim 3.
Appeal 2011-013229
Application 10/803,882

6
than two layers (Appeal Br. 19), claim 4 encompasses such embodiments for
the reason discussed above with respect to claim 1.
With regard to claim 13, Appellants point out that the claim recites a
catheter (Appeal Br. 19). Similarly, Appellants point out that claims 16-18
recite a catheter or an embryo transfer catheter (id. at 13). Appellants argue
that “the examiner has failed to take into account the preamble of the claims
in evaluating the claims” (id. at 15). Appellants argue that “no person
skilled in the art could have construed the hose disclosed by Arterburn to be
. . . a catheter” (id.) because catheters are “meant to be inserted into the
human body and accordingly have to have an elastic property so that the
devices can follow the contours of the interior organs of the patient into
which the devices are to be inserted” (id.).
We agree with Appellants that the preambles of claims 13 and 16-18
are entitled to some weight in the interpretation of the claims; that is, the
claims should not be read to encompass all products comprising an elongate
shaft having the recited layers. See Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If the claim preamble, when
read in the context of the entire claim, recites limitations of the claim, or, if
the claim preamble is „necessary to give life, meaning, and vitality‟ to the
claim, then the claim preamble should be construed as if in the balance of
the claim.”).
A catheter is “a tubular medical device for insertion into canals,
vessels, passageways, or body cavities for diagnostic or therapeutic purposes
Appeal 2011-013229
Application 10/803,882

7
(as to permit injection or withdrawal of fluids or to keep a passage open).”
5

Appellants have not argued that an “embryo transfer catheter” (see claim 17)
differs structurally from a “catheter.” Thus, claims 13 and 16-18 are
directed to devices that are capable of insertion into, e.g., a body cavity, for a
diagnostic or therapeutic purpose.
As discussed above with respect to claim 1, Arterburn discloses a hose
having “an inner diameter of 5/8 inch or less” (Arterburn, col. 4, ll. 7), which
is reasonably interpreted as a size capable of insertion into a body cavity.
Appellants have not provided evidence or any persuasive technical reason
for concluding that Arterburn‟s hose is incapable of being used for any
diagnostic or therapeutic purpose. Therefore, we conclude that the broadest
reasonable interpretation of claims 13 and 16-18 encompasses the hose
disclosed by Arterburn.
With regard to claim 15, the Examiner finds that “Arterburn does not
teach of a transparent tube . . . [but] Smith teaches a plumbing system that
incorporates a transparent hose 38 so that the plumber can determine
visually whether there is water in the hose (col. 2 lines 30-34)” (Answer 7).
The Examiner concludes that it would have been obvious to make
Arterburn‟s hose transparent “for maintenance purpose and ensuring that
undesired material does not penetrate inside the hose and ensure proper
drainage through the hose” (id.). We agree with the Examiner‟s fact-finding
and conclusion.
Appellants argue that “[g]iven the multiple layers of the Arterburn
hose, and the fact that each of the Arterburn hoses requires a reinforcement

5
www.merriam-webster.com/medlineplus/catheter, accessed Mar. 8, 2013.
Appeal 2011-013229
Application 10/803,882

8
layer, it is highly unlikely that the material within the Arterburn hose could
be viewed by the eye” (Appeal Br. 19). However, each of the layers of
Arterburn‟s hose, except for the reinforcement layer, are made of a
“[t]hermoplastic materials such as polyvinyl chloride, polyethylene,” etc.
(Arterburn, col. 4, ll. 44-47). Appellants have not persuasively explained
why the number of layers would affect overall transparency if each of the
layers was made of a transparent thermoplastic material.
Arterburn states that the “reinforcement 12 can be of any desired
configuration such as knit, spiral, or braid; and made of nylon, polyester, or
any textile material” (id. at col. 2, ll. 65-67). Here again, Appellants have
not persuasively explained why the reinforcement layer would necessarily
prevent the contents of the hose from being visible through the wall of the
hose.
Appellants also argue that “common sense suggests that since it is
water that traverses through the Arterburn hose, there really is no need to
look at what is passing through the bore of the hose” and there is no
evidence supporting the motivation to combine Arterburn and Smith as
posited by the Examiner (Appeal Br. 19-20).
This argument is also unpersuasive. Smith discloses that “[i]n a
preferred embodiment of the present invention, the hose is transparent, so
that the plumber can determine visually whether there is water in the hose”
to ensure that drainage is complete (Smith, col. 2, ll. 30-32). Appellants
have not persuasively explained why this property would not have provided
a reason to make Arterburn‟s hose transparent.
Appeal 2011-013229
Application 10/803,882

9
II.
The Examiner has rejected claims 9-11 as obvious based on Arterburn
and Bland (Answer 6). These claims depend from claim 1 and require that
the gas bubbles have a size of 0.1µ to 300µ (claim 9), 1µ to 50µ (claim 10),
or 5µ to 10µ (claim 11). The Examiner finds that Bland discloses an “open
cell thermoplastic foam with pores sized of about 5 micrometers or more
(col. 4 lines 15-22)” (Answer 6), and concludes that it would have been
obvious “to use the foam structure with pores of particular dimension of
Bland et al. such that the Arterburn tube or hose device has the desired
thickness, density and porosity” (id.).
Appellants argue that “Bland is directed to an absorbent open cell
thermoplastic foam that has a high liquid absorption rate and capacity”
(Appeal Br. 20). Appellants argue that “it is highly questionable that a
person skilled in the art would use the Bland foam with the Arterburn
hose. . . . There simply is no suggestion of motivation in either of the
references that Bland can be combined with Arterburn as alleged by the
examiner.” (Id.)
We agree with Appellants that the Examiner has not provided
adequate reasoning to support the conclusion that it would have been
obvious to use Bland‟s foam in the hose disclosed by Arterburn. As
Appellants point out, Bland discloses that its “open-cell thermoplastic foams
. . . exhibit excellent and unexpected absorptive properties and
characteristics” (Bland, col. 3, ll. 13-15), specifically, high absorption rate
and capacity (id. at col. 3, ll. 60-62). Bland discloses that its foams are
Appeal 2011-013229
Application 10/803,882

10
useful in applications such as an insert for a meat tray or a diaper (id. at col.
2, ll. 24-31).
The Examiner has not provided evidence or persuasive technical
reasoning to show that a person of ordinary skill in the art would have
considered Bland‟s foams to have “the desired thickness, density and
porosity” (Answer 6) for use in Arterburn‟s hose. The Examiner also
reasoned that the “references are combined such that the gas bubbles of
Arterburn are of a certain dimension to provide the desired volume to the
foamed layer such that the foamed layer is of a certain thickness and
provides better visibility under ultrasound imaging” (id. at 12). This
reasoning is also unpersuasive because the Examiner has not pointed to any
disclosure in either Arterburn or Bland of using their products in conjunction
with ultrasound imaging.
SUMMARY
We affirm the rejection of claims 1, 4, 13, and 16-18 as anticipated by
Arterburn, and the rejection of claim 15 as obvious based on Arterburn and
Smith. Claims 3, 5-8, 12, and 14 fall with claims 1, 4, and 13 because they
were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
We reverse the rejection of claims 9-11 as obvious based on Arterburn
and Bland.
Appeal 2011-013229
Application 10/803,882

11
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc