Ex Parte Khan

Board of Patent Appeals and Interferences

Aug 31, 2012

10604469 (B.P.A.I. Aug. 31, 2012)

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.
10/604,469 07/23/2003 Iftikhar Khan 1468
7590 08/31/2012
IFTIKHAR KHAN
UNIT C
747 W. WRIGHTWOOD AVE
CHICAGO, IL 60614
EXAMINER
STIGELL, THEODORE J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte IFTIKHAR KHAN
__________

Appeal 2011-009271
Application 10/604,469
Technology Center 3700
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERICA A.
FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
orotracheal suction system. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 10, 13, 14, 16-17 are on appeal. Independent claim 10 is
representative and reads as follows:
10. An orotracheal suction system for suctioning obstructive material
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from the oropharynx and trachea of a patient, the system comprising:
catheter having a distal end and a proximal end, a diameter of from about
0.5 Fr to about 15 Fr, and a length sufficient to engage the oropharynx and
distal bronchi of the patient at the catheter distal end; a seal at the
distal end of the catheter; an extension tubing operable for attachment to the
catheter proximal end and extending a distance away from the patient's head
and mouth; and a reservoir operable to connect to the extension tubing and
to collect the obstructive materials using a vacuum source; wherein the
reservoir comprises an entry compartment and a second compartment,
wherein the compartments are separated by a grid operable to prevent
obstruction of the vacuum by the obstructive material.

The Examiner rejected the claims as follows:
• claims 10, 13-14, and 16-17 under 35 U.S.C. § 103(a) as
unpatentable over Pell1 and Wood;2 and
• claims 10, 13-14, and 16-17 under 35 U.S.C. § 103(a) as
unpatentable over Joseph3 and Wood.

OBVIOUSNESS
I. The Rejection Over Pell and Wood
The Examiner’s position is that Pell disclosed a suction system that
could be used to suction obstructive material from the oropharynx and
trachea of a patient. (Ans. 4.) The Examiner found that Pell’s device is
capable of such use because the device is designed to provide suction and
the drawings suggest that the device can reach the trachea when inserted
through the mouth. (Id.) The Examiner also found that Pell disclosed that

1 US Patent No. 4,850,348 issued to Donald M. Pell et al., Jul. 25, 1989.
2 Patent Application Publication No. GB 2220357 A by James Michael
Wood, published Oct. 1, 1990.
3 US Patent No. 5,819,723 issued to Jeffrey I. Joseph, Oct. 13, 1998.
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the system comprised a catheter, having a distal end and a proximal end,
with a length sufficient to engage the oropharynx and distal bronchi of the
patient at the catheter distal end. (Id.) Additionally, the Examiner found
that Pell disclosed a seal at the distal end of the catheter, and an extension
tubing operable for attachment to the catheter proximal end and extending a
distance away from the patient’s head and mouth. (Id.)
However, the Examiner found that Pell did not disclose the diameter
of the catheter being from about 0.5 Fr to about 25 Fr. (Id. at 5.) According
to the Examiner, the claimed invention recites a broad range of diameters
and that a change in size is well within the skill of the ordinary artisan. (Id.)
The Examiner found that the motivation for using the recited range is as
simple picking the proper size catheter for the age, size and/or condition of
the patient being treated. (Id.) The Examiner concluded that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to have modified the length of the extension tubing within the
recited range to place the vacuum source at an acceptable length from the
patient during the procedure. (Id.)
The Examiner also found that Pell did not disclose that its reservoir
comprised an entry compartment and a second compartment wherein the
compartments are separated by a grid operable to prevent obstruction of the
vacuum by the obstructive material. (Id.) However, the Examiner found
that Wood disclosed a suction catheter system that is designed to “remove
blood, irrigation liquid, tissue debris and the like” during a surgical
procedure. (Id. at 6.) The Examiner also found that Wood disclosed the
suction catheter being connected to a reservoir comprising an entry
compartment and a second compartment separated by a grid that is operable
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to prevent liquid or debris from entering the vacuum source. (Id.)
Additionally, the Examiner found that Wood disclosed a removable disc to
remove the suctioned material from the reservoir. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
Pell’s system to include the reservoir of Wood to provide a suction system
that would prevent the suctioned fluids and/or debris from the lung from
entering into the vacuum source and potentially interfering with suction
force. (Id.)
Appellant contends that Pell’s device “is a tube used for endotracheal
intubation for use with a ventilator and as a positioning device in the mouth”
that “has no function to suction the oropharynx or trachea” and “has no
design to capture debris into a receptacle.” (App. Br. 4.) According to
Appellant, “[s]omeone with ‘ordinary skill’ in the art cannot think of using
this device for any other purpose or they would have seriously less than even
ordinary skill, or better stated no skill or dangerous skill in the art.” (Id.)
Appellant further charges that the Examiner “has zero skill or knowledge in
the art and cannot possibly make determinations of what a person with
ordinary skill in the art would be able to fashion based on the devices of Pell
in view of Wood.” (Id. at 4-5.)
Further, Appellant asserts that Pell and Wood are “unrelated devices”
and that a skilled artisan would have “understood that you cannot take a
marginal wound-vacuum suction, which is what Wood’s device is, and
somehow conceive of [the claimed invention], with knowledge of Pell’s
device.” (Id. at 6.) According to Appellant, “[t]he uses, designs and
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limitations of Woods’ device are not for the oropharynx, supraglottic and
subglottic spaces or the tracheal or distal bronchial structures.” (Id.)
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. In particular,
we are not persuaded of nonobviousness by Appellant’s assertions that Pell
“has no function to suction the oropharynx or trachea.” (App. Br. 4.) As the
Examiner correctly found, Pell’s drawings show that the device can reach
the trachea when inserted through the mouth (see, e.g., Pell Fig. 1) and Pell
expressly disclosed that its device is adapted to be connected to a suction
device (Ans. 4)(citing Pell col. 3, l. 42, col. 5, ll. 30-34).
We are also not persuaded of nonobviousness by Appellant’s assertion
that Pell “has no design to capture debris into a receptacle,” (App. Br. 4) as
the Examiner relied on the combined prior art for teaching a reservoir
operable to connect to the extension tubing and to collect the obstructive
materials using a vacuum source. Specifically, as discussed, Pell disclosed
that its device was adapted to be connected to a suction device. Further, the
Examiner correctly found that Wood disclosed a suction catheter being
connected to a reservoir comprising an entry compartment and a second
compartment separated by a grid that is operable to prevent liquid or debris
from entering the vacuum source. The Examiner reasoned that a skilled
artisan would have found it obvious to combine the teachings of Pell and
Wood to provide a suction system that would prevent the suctioned fluids
and/or debris from the lung from entering into the vacuum source and
potentially interfering with suction force. (Ans. 6.) This reasoning is sound,
properly considers the ordinary skill in the art, and is supported by the
evidence. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The
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Examiner’s combination of Pell and Wood yields the claimed invention and
amounts to a combination of familiar elements according to known methods
that merely yields a predictable result. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
To the extent that Appellant asserts that Pell and Wood are
nonanalogous, we remain unpersuaded of nonobviousness. Appellant has
not established that a skilled artisan would not have had the skill to adapt
Wood’s suction system for use with Pell’s device by merely asserting that
Wood’s device was “not for the oropharynx, supraglottic and subglottic
spaces or the tracheal or distal bronchial structures.” (App. Br. 6.) Wood
broadly disclosed that its invention was “concerned with containers for
collecting liquid and other debris removed from a surgical site by suction in
a suction system.” (Wood 1.) As the Examiner explained, Wood did not
limit its usefulness to wound suction for wounds comprising “fine vascular
and neural structures that are fractions of a millimeter in diameter,” as
suggested by Appellant. (App. Br. 6.) Thus, Wood is analogous to Pell, in
that Wood provided a suction system and Pell suggested combining its
device with a suction system. See In re Clay, 966 F.2d 656, 658-659 (Fed.
Cir. 1992)(“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.”).
Accordingly, we affirm the obviousness rejection of independent
claim 10 over Pell and Wood. Claims 13-14 and 16-17 have not been
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argued separately and therefore fall with claim 10. 37 C.F.R.
§ 41.37(c)(1)(vii).
II. The Rejection over Joseph and Wood
The Examiner’s position is that Joseph disclosed a system that could
be used to suction obstructive material from the oropharynx and trachea of a
patient. (Ans. 6.) The Examiner found that Joseph is capable of such use
because the device has a suction lumen to suction fluids and the drawings
show that the device is long enough to reach the oropharynx and trachea.
(Id. at 6-7.) Additionally, the Examiner found that Joseph disclosed that the
system comprised a catheter having distal and proximal ends, a length
sufficient to engage the oropharynx and distal bronchi of the patient at the
catheter distal end. (Id. at 7.) Further, the Examiner found that Joseph
disclosed a seal at the distal end of the catheter, extension tubing, and a
reservoir operable to connect the extension tubing and to collect the
obstructive materials using a vacuum source. (Id.)
However, the Examiner found that Joseph did not disclose the
diameter of the catheter being from about 0.5 Fr to about 25 Fr. (Id. at 8.)
According to the Examiner, the claimed invention recites a broad
range of diameters and that a change in size is well within the skill of the
ordinary artisan. (Id.) The Examiner found that the motivation for using the
recited range is as simple picking the proper size catheter for the age, size
and/or condition of the patient being treated. (Id.) The Examiner concluded
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to have modified the length of the extension
tubing with the recited range to place the vacuum source at an acceptable
length from the patient during the procedure. (Id.)
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The Examiner also found that Joseph did not disclose or suggest that
its reservoir comprised an entry compartment and a second compartment
wherein the compartments are separated by a grid operable to prevent
obstruction of the vacuum by the obstructive material. (Id.) However, the
Examiner found that Wood disclosed a suction catheter system that is
designed to “remove blood, irrigation liquid, tissue debris and the like”
during a surgical procedure. (Id. at 8.) The Examiner also found that Wood
disclosed a suction catheter connected to a reservoir comprising an entry
compartment and a second compartment separated by a grid that is operable
to prevent liquid or debris from entering the vacuum source. (Id. at 8-9.)
Additionally, Wood further disclosed a removable disc to remove the
suctioned material from the reservoir. (Id. at 9.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
Joseph’s system to include the reservoir of Wood to provide a suction
system that would prevent the suctioned fluids and/or debris from the lung
from entering into the vacuum source and potentially interfering with
suction force. (Id.)
Appellant contends that Joseph is designed to irrigate the area of the
proximal trachea only to remove excessive accumulation of fluid in the
proximal trachea only. (App. Br. 9.) According to Appellant, Joseph is not
designed “to allow for suctioning…[or] removal of debris from the proximal
trachea, distal trachea, glottis or oropharynx.” (Id.) Appellant asserts that a
skilled artisan “cannot in any conceivable way look at Joseph’s device, with
knowledge of Wood’s device and in any reasonable way develop a
functional device to clear the oropharynx, proximal trachea, distal trachea,
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proximal bronchi and distal bronchi.” (Id.) Further, Appellant asserts that
the basis for the rejection is “invalid” because the Examiner “cannot
conjecture about what ordinary skill in this art is, and what a person of
ordinary skill in the art might be able to develop or not, when he himself has
zero skill, knowledge or actual training in this art.” (Id. at 11.)
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. As the
Examiner explained (Ans. 6-9, 12) Joseph explicitly contemplated coupling
its device with a suction device (see, e.g., Joseph col. 5, ll. 6-10). The
Examiner correctly found that Wood disclosed a suction catheter connected
to a reservoir comprising an entry compartment and a second compartment
separated by a grid that is operable to prevent liquid or debris from entering
the vacuum source. (Ans. 8-9.) The Examiner reasoned that a skilled
artisan would have found it obvious to combine these teachings of Joseph
and Wood to provide a suction system that would prevent the suctioned
fluids and/or debris from the lung from entering into the vacuum source and
potentially interfering with suction force. (Ans. 9.) This reasoning is sound,
properly considers the ordinary skill in the art, and is supported by the
evidence.
Accordingly, we affirm the obviousness rejection of independent
claim 10 over Joseph and Wood. Claims 13-14 and 16-17 have not been
argued separately and therefore fall with claim 10. 37 C.F.R.
§ 41.37(c)(1)(vii).

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SUMMARY
We affirm each of the Examiner’s rejections of claims 10, 13-14, and
16-17.

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

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