10535600 (B.P.A.I. Aug. 16, 2012)

Ex Parte Houston et al

Board of Patent Appeals and InterferencesAug 16, 2012

10535600 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOHN GRAEME HOUSTON, ROBERT GORDON HOOD, and PETER ARNO STONEBRIDGE ____________________ Appeal 2010-005308 Application 10/535,600 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JOHN W. MORRISON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005308 Application 10/535,600 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 16-27. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a helical formation for a conduit. The sole independent claim, claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A method of imparting spiral flow on blood passing through blood flow tubing comprising the step of providing within the blood flow tubing a helical formation formed from a biocompatible material and comprising an elongate member defining at least a portion of a helix wherein the elongate member comprises an inwardly extending portion which extends along the length of the elongate member, the inwardly extending portion extending inwardly from the internal side walls of the blood flow tubing for a distance equal to between 40% and 60% of the distance from the longitudinal axis of the blood flow tubing to an internal side wall. REJECTION Claims 16-27 stand rejected under 35 U .S.C. § 103(a) as being unpatentable over Tayside1 (EP 1,254,645 A1, published Nov. 6, 2002) in view of Kuhlmann2 (DE 597,472, published Jan. 18, 1936). Ans. 3. 1 We refer to this reference as “Tayside,” as the Examiner and Appellants have done, and we note that Houston appears to be the first named inventor and that Tayside is the first name of Tayside Perth. Tayside p.1. 2 References to Kuhlmann are to the English translation entered May 19, 2005. Appeal 2010-005308 Application 10/535,600 3 OPINION The Examiner correctly found that Tayside discloses the basic helical blood flow-inducing stent having a ridge 153 or “inwardly extending portion” as claimed. Ans. 4; Tayside fig.1, p. 6 paras. [0031]-[0032]. The Examiner also correctly found that Tayside expressly suggests optimization of, inter alia, ridge size, in order to, for example, mimic a typical healthy blood flow, or reduce noise or vibration. Tayside p. 2, para. [0009], p. 3, paras. [0019], [0026]. While Tayside suggests such optimization, Tayside does not appear to perform it or to suggest any specific values for the ridge height, i.e., “between 40% and 60% [of the tube radius]” as recited. Kuhlmann is directed to optimizing the spiral depth h to create maximum vortex and heat emission with low flow resistance. Kuhlmann p. 1. The optimum workable height h found by Kuhlmann is one-quarter the pipe diameter—squarely within Appellants’ claimed range. It is often said that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). The evidentiary record before us goes even further. Not only are the general conditions disclosed by Tayside, Tayside provides an express suggestion to modify the parameter in question, ridge height, and evidences a recognition that such a modification will affect the characteristics of the vortex formed thereby. See, e.g., In re Antonie, 559 F.2d 618 (CCPA 1977)(A particular parameter must first be recognized as a result-effective variable before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation). Even further, 3 It is noted that grooving 14 and/or ridging 15 appears to be mislabeled as the more general helical-flow inducing means 12 in Figure 2. Appeal 2010-005308 Application 10/535,600 4 Kuhlmann provides evidence as to the predictable result one would expect from choosing the exact value chosen by Appellants. It is not necessary that Kuhlmann’s purpose for doing so be the same as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. Contra App. Br. 12; see, e.g., In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). We do not find Appellants’ arguments concerning the age or field of Kuhlmann (App. Br. 11-12) to be persuasive. First, “[t]he mere age of the references is not persuasive of the unobviousness of the combination of their teachings.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Second, the use of helical-flow inducing tubing for blood flow applications is demonstrated by Tayside. Kuhlmann would anticipate the claim if it also disclosed such. The failure of a single reference to anticipate is not demonstrative of error in reaching a conclusion of obviousness based on the combined teachings of multiple references. Both Appellants’ own Specification (p. 1, ll. 6-8) and Tayside (p. 3, paras. [0027]-[0028]) evidence the fact that fluid flow applications unrelated to blood flow would logically have commended themselves to an inventor’s attention when considering the problem of creating a spiral blood flow. We do not find any persuasive evidence of record to establish that the characteristics of blood and blood vessels are so drastically different from those of other fluids and vessels insofar as spiral flow formation is concerned, that one of ordinary skill would have entirely disregarded teachings related to inducing spiral flow in those other fluids and vessels. Appellants’ argument concerning rigidity (App. Br. 12) is also unpersuasive. First, the absence of rigidity in the tubing does not appear to be an element of the claimed method . Second, Kuhlmann does not appear to Appeal 2010-005308 Application 10/535,600 5 discuss rigidity or lack thereof. Third, Tayside already discloses bio- appropriate tubing. The spiral depth h taught by Kuhlmann can be incorporated without incorporation of the specific pipe used in Kuhlmann. We fail to see how such incorporation is “akin to” oversizing a stent (App. Br. 12). While the affidavit of Sumaira Macdonald appears to evidence little more than an expert’s opinion on the legal conclusion of obvious, which is neither necessary nor controlling (Avia Group Intern., Inc. v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988)), the Examiner correctly determined it was untimely. Entry of affidavits filed prior to, with, or after a notice of appeal but before the filing of an appeal brief are discussed in our rules. See 37 C.F.R. §§ 41.33(d)(1) and (2); MPEP §§ 1206 (I) and (II). Even according to Appellants’ own logic (Reply Br. 4), that the affidavit was submitted to respond to the Examiner’s position, one of the aforementioned times would have been much more appropriate than a time that which is specifically prohibited. See Id. Accordingly, we agree with the Examiner that the subject matter of claim 16 would have been obvious to one having ordinary skill in the art. Claims 17-27 are argued solely based upon dependency. App. Br. 13. This argument is therefore also unpersuasive. DECISION The Examiner’s rejection of claims 16-27 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2010-005308 Application 10/535,600 6 AFFIRMED mls