Ex parte HITE et al.

Board of Patent Appeals and Interferences

Jul 21, 1998

08170503 (B.P.A.I. Jul. 21, 1998)

Application for patent filed December 20, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LARRY L. HITE
and
STEPHEN M. BECK

_____________
Appeal No. 96-1391
Application 08/170,5031
______________
ON BRIEF
_______________
Before CALVERT, STAAB and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 96-1391
Application 08/170,503
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 11, all the claims in the application. In the examiner’s
answer, the examiner states that claims 5 to 11 are allowed,
leaving claims 1 to 4 for our consideration.
Claim 1, the only independent claim on appeal, is
illustrative of the subject matter in issue:
1. A femoral artery compression device for post
operative use in closing an incision, puncture or cut in the
femoral artery, comprising:
inflatable means for adjustably creating compressive
pressure,
first means for receiving said compressive pressure
and applying that pressure to said femoral artery,
self contained means for applying reduced tempera-
tures at least to the tissue adjacent to said femoral artery,
and
adjustable means for securing said first means and
said self contained means to a predetermined location adjacent
said femoral artery.
Appeal No. 96-1391
Application 08/170,503
This was a new ground of rejection made in the exam-2
iner’s answer. Appellants filed a reply to this new ground,
and the examiner issued a supplemental answer (Paper No. 11).
3
The references applied by the examiner in rejecting
the claims now before us are:
Sconce 3,901,225 Aug. 26,
1975
Byrd 5,228,448 July 20,
1993
Claims 1 to 4 stand rejected as follows:
(1) Claims 1 and 4, anticipated by Sconce, under
35 U.S.C. § 102(b);
(2) Claims 2 and 3, unpatentable over Sconce in view
of Byrd, under 35 U.S.C. § 103.2
We have fully considered the record in light of the
arguments presented in appellants’ brief and reply brief, and
in the examiner’s answer and supplemental answer. Our conclu-
sions as to each of the two grounds of rejection are discussed
under separate headings below.
Rejection (1)
Appeal No. 96-1391
Application 08/170,503
4
As appellants correctly state on page 5 of their
brief:
In order to properly reject claims under
[35 U.S.C.] 102(b), the single cited refer-
ence must show each and every feature of
the claimed invention either expressly or
under principles of inherency. Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 771 [,
218 USPQ 781, 789] (Fed. Cir. 1983) [,
cert. denied, 465 U.S. 1026 (1984)]. If an
element of the claim is expressed in terms
of a means plus function, “absent structure
which is capable of performing the func-
tional limitation of the ’means,’” the
prior art reference is not anticipating.
In re Mott, 557 F.2d 266, 269 [, 194 USPQ
305, 307] (C.C.P.A. 1977). Means plus
function limitations of a claim “cannot be
met by an element in a reference that per-
forms a different function, even though it
may be part of a device embodying the same
general overall concept.” RCA Corp. v.
Applied Digital Data Systems, et al., 730
F.2d 1440, at footnote 5 [, 221 USPQ 385,
389 n.5] (Fed. Cir. 1984). When anticipa-
tion is based upon principles of inherency,
the structure of the prior art reference
must necessarily function in accordance
with the function of the limitations of
the claims in issue. In re King, 801 F.2d
1324, 1326 [, 231 USPQ 136, 138] (Fed.
Cir. 1986).
Appeal No. 96-1391
Application 08/170,503
5
However, applying these principles, we do not agree with
appellants that Sconce is not anticipatory of claims 1 and 4.
Appellants argue that Sconce does not disclose or
teach using the inflatable device disclosed “for post opera-
tion nor in closing an incision, puncture or cut in the femo-
ral artery,” as recited in the preamble of claim 1. Neverthe-
less, Sconce does disclose an inflatable splint for immobiliz-
ing an injured extremity and for “applying thermal [e.g.,
cold] pressure to an injured area” of an immobilized extrem-
ity, including a bladder releasably secured “around an injured
arm or leg” and which “also can act as a tourniquet by re-
stricting the flow of blood to the injured area in accordance
with the amount of pressure it exerts” (col. 1, lines 4 to
13). Sconce further expressly discloses application of the
splint to a patient’s leg as follows: The splint “can be
applied in a large number of configurations throughout the
body, such as at the . . . legs of the patient” (col. 1, lines
33 to 36) and “the [inflatable] bladder [of the splint] can
surround various areas of any extremity of a patient which may
Appeal No. 96-1391
Application 08/170,503
6
become injured, such as a patient’s . . . leg” (col. 2, lines
56 to 59).
Since Sconce discloses that his inflatable splint
may be applied to the leg, and the femoral artery is located
in the leg, it follows that Sconce’s splint is capable of
performing the functions of the means recited in claim 1,
i.e., it has (1) inflatable means 12, 14 “for adjustably
creating compressive pressure”; (2) a cold pack 63 or 64 which
receives the compressive pressure and would be capable of both
“applying that pressure to said femoral artery” and of “apply-
ing reduced temperatures at least to the tissue adjacent to
said femoral artery”; and (3) tabs 22, 26 capable of “securing
[the device] to a predetermined location adjacent said femoral
artery.” Appellants argue that Sconce does not refer to the
femoral artery or to localized compression to close an inci-
sion, puncture or cut in the femoral artery. However, in
order to anticipate a claimed means plus function, the func-
tion need not be expressly disclosed in the reference. In the
present case, Sconce’s inflatable splint, disclosed as being
applicable to the leg, anticipates the recited means in that
Appeal No. 96-1391
Application 08/170,503
7
it clearly is inherently capable of applying both pressure and
reduced temperatures to the femoral
artery. It is pointed out that appellants are here claiming
apparatus, not a method of use.
With regard to claim 4, the examiner takes the
position that (answer, pp. 6 to 7):
The claimed invention recites no specified
pressure reduction rate achieved by the
quick release element. Thus, in the Exam-
iner’s view, any reduction in compressive
pressure provided by the Sconce reference
is considered to be rapid. Accordingly,
both the release of the tab fasteners [22,
26 of Sconce], even if only one is
released, and the opening of the screw cap
fittings [61 on valves 60 of Sconce] are
considered to provide a “rapid” reduction
in compressive pressure.
We agree. Although the release of Sconce’s tabs or the
opening of the opening of Sconce’s valve screw caps might not
release the pressure as fast as appellants’ disclosed quick
release valve 36, the claim is not so limited. Also, we note
that certainly the release of the last of Sconce’s tabs to be
Appeal No. 96-1391
Application 08/170,503
8
undone would cause a very rapid reduction in compressive pressure.
Accordingly, we conclude that claims 1 and 4 are
anticipated by Sconce, and will sustain rejection (1).
Rejection (2)
The examiner asserts that the subject matter recited
in claims 2 and 3 would have been obvious over Sconce in view
of Byrd because (supplemental answer, p. 2):
Since [sic] the Byrd reference
recognizes that cuffs positioned on a
patient become contaminated with bacterial
colonizations (see column 1, lines 11-23).
In view of this recognition, it is the
Examiner’s position that it would have been
obvious to one skilled in the art to
provide the Sconce device with a sterile
surface to prevent contamination of the
device. The provision of a sterile surface
would not require the use of the Byrd
protective cover, but merely the provision
of sterile overlying sheets.
We note that on pages 9 to 10 of their brief,
appellants argue:
Moreover, the Examiner has ignored the
definition of a “packaging element” in
Claim 2 and the specific orientation of
elements in that packaging element defined
in Claim 3. These features are not found
in Sconce. Instead, the cited reference
shows the thermal elements (64) alone to be
packaged within pockets on the interior
surface of the air bladder. The air
Appeal No. 96-1391
Application 08/170,503
9
bladder itself is not packaged within
another element. This distinction has
practical importance, for example, when
combined with the teaching of using a
sterile packaging surface in contact with
the body tissue. The present invention
provides separate elements such that the
sterile surface can be constructed, cleaned
and/or replaced independently of the air
bladder.
The examiner does not appear to have responded to this
argument.
Looking first at claim 3, it is recited that “said
inflatable means is disposed within said packaging element.”
This limitation is not found in Sconce, since the one wall 14
of the inflatable means constitutes part of the “packaging
element,” rather than the inflatable means being within a
packaging element. We find nothing in the combination of
Sconce and Byrd which would suggest this claimed construction,
and therefore will not sustain the rejection of claim 3.
Claim 2, on the other hand, recites only that “said
inflatable means, first means, and self contained means are
included at least in part within a packaging element”
(emphasis added). This limitation is met by Sconce, in that
Appeal No. 96-1391
Application 08/170,503
10
Sconce’s cold pack 63 or 64, which constitutes both the “first
means” and the “self contained means,” is located within the
“packaging element” formed by walls 14 and 42; therefore, the
three recited means are included “at least in part” within
Sconce’s packaging element in that two of them are so
included.
Column 1, lines 11 to 23 of the Byrd reference,
cited by the examiner, discloses that the blood-pressure cuffs
of sphygmomanometers can become contaminated from use on
patients, and that it has been recommended that the problem be
solved by using a sterilized cuff. Although appellants argue
on page 9 of
their brief that “unless a penetrating wound is involved, the
use of a sterile surface is unnecessary,” Byrd’s teaching is
to the contrary. The noted disclosure of Byrd would, in our
view, have
suggested to one of ordinary skill that other “cuffs,” such as
the inflatable splint of Sconce, may become contaminated by
use on patients, and that the surface which contacts the
Appeal No. 96-1391
Application 08/170,503
11
patient’s skin (i.e., sheet 42 of Sconce) should be
sterilized. We therefore conclude that the subject matter
recited in claim 2 would have been obvious to one of ordinary
skill over Sconce in view of Byrd, and will sustain this
rejection.
Conclusion
The examiner’s decision to reject claims 1, 2 and 4
is affirmed. Her decision to reject claim 3 is reversed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
Appeal No. 96-1391
Application 08/170,503
12
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1391
Application 08/170,503
13
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