Ex parte MORSE

Board of Patent Appeals and Interferences

Mar 4, 1998

08368262 (B.P.A.I. Mar. 4, 1998)

Application for patent filed December 27, 1994.1
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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEFFREY W. MORSE
__________
Appeal No. 96-4107
Application No. 08/368,2621
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1 through 9, even after an amendment
was entered after the final rejection. These are all of the
claims of record in the application.
Appeal No. 96-4107
Application No. 08/368,262
2
The appellant's invention is directed to a connector for
use in wound and lavage irrigation. The subject matter before
us on appeal is illustrated by reference to claims 1 and 3,
which read as follows:
1. A connector for use in wound and lavage irrigation,
comprising a spiked end shaped to mate with a self-sealing
outlet for a compressible bag of sterile irrigation fluid and
a nozzle end having the size and shape of a syringe tip such
that it can friction fit inside a hub of an IV catheter.
3. A connector for use in wound and lavage irrigation,
comprising a spiked end shaped to mate with a self-sealing
outlet for a compressible bag of sterile irrigation fluid and
a nozzle end having the size and shape of a syringe tip such
that it can friction fit inside a hub of an IV catheter, the
nozzle end including a plurality of annular ridges for
securing a tube onto the nozzle end.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Thomas et al. (Thomas) 2,777,443 Jan. 15,
1957
Harrison 3,119,391 Jan. 28,
1964
Barrington 3,986,508 Oct. 19,
1976
Harvey et al. (Harvey) 4,816,221 Mar. 28,
1989
Appeal No. 96-4107
Application No. 08/368,262
3
Sozuki et al. (Sozuki) 5,273,523 Dec. 28,
1993
Plechinger et al. 5,318,518 Jun. 7,
1994
(Plechinger)
Adolf et al. (Adolf) 5,334,180 Aug. 2,
1994
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Harvey, Harrison or Adolf.
Claims 2 and 3 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Barrington or Thomas.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Harvey in view of Harrison.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Harvey in view of Harrison and Sozuki.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Harvey in view of Harrison and
Plechinger.
The rejections are explained in the Examiner's Answer.
Appeal No. 96-4107
Application No. 08/368,262
4
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
Before evaluating the patentability of the claims in view
of the prior art applied against them, it is necessary for us
to interpret some of the terminology utilized in the claims.
The first of these issues concerns the meaning to be
applied to the term “connector,” as used in the claims. The
appellant’s invention is directed to a “connector” for use in
irrigating a wound or in lavage irrigation. In use, the
connector is attached on the one hand to a bag of IV fluid and
on the other hand to either an IV catheter or a nasogastric
tube. In the paragraph bridging pages 8 and 9 of the
specification, the appellant explains his invention as
follows, with emphasis added:
Connector 10 includes a spiked end 12 shaped to fit
into and mate with the self-sealing outlet of a
conventional IV bag and a nozzle end 14 shaped the
same as a conventional IV syringe, so that a
conventional IV needle or IV catheter will friction
fit onto nozzle end 14 the same as on a IV syringe.
Nozzle end 14 also includes annular ridges 16 for
better securing of nasogastric tubing that might be
attached to nozzle 14.
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Application No. 08/368,262
5
Common to all of the claims is the requirement that the
connector have a spiked end to mate with the outlet of a
compressible bag of sterile solution and a nozzle end of such
size and shape as to friction fit inside the hub of an IV
catheter. It immediately strikes us that if “connector” is
given its broadest interpretation, that is, any device that
connects one object to another, all of the subject matter of
some of the claims, and significant portions of others, reads
on a conventional IV tubing set, which has on one end the
required spike and on the other end the required nozzle.
However, it is clear from the appellant’s disclosure that this
is not what is intended; the appellant actually intends that
“connector” have a much more limited scope, which does not
read on conventional IV tubing sets. This conclusion is
supported in the specification. Early on, appellant
acknowledges that conventional IV tubing sets and catheters
have been used with compressible bags of fluids to irrigate
wounds. He then explains that this arrangement suffered from
several disadvantages, including not allowing the user to
easily provide sufficient force to the stream of irrigation
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Application No. 08/368,262
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fluid issuing from the catheter to properly irrigate a wound,
owing to the resistance to flow caused by the length of the IV
tubing and the relative narrowness of its opening even when
the IV bag was squeezed, and requiring considerable equipment
(pages 3 and 4). Then comes the explanation of the invention,
which solves these problems by eliminating the IV tubing in
favor of a compact device of injection-molded plastic having a
length of only about 6.8 cm, which is very short when compared
to the conventional IV tubing.
For the above reasons, we shall interpret the term
“connector” in the appellant’s claims as being limited in
scope to a device of such short length as to permit fluid
flowing therethrough to be pressurized to a pressure
sufficient to adequately irrigate a wound, such as the 7-8
psig recited in the appellant’s specification (page 4). In
view of the nature of the prior art devices cited by the
examiner against the claims, it would appear that he also
interpreted “connector” in this limited fashion, although such
is not explicitly stated on the record.
The second matter here concerns the size and shape of the
nozzle of the connector. The specification states that the
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Application No. 08/368,262
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appellant’s invention is intended to be used with
“conventional” compressible IV bags and “conventional” IV
catheters (page 9, line 25 et seq.). See also page 1, line 20
et seq. and page 3, line 17 et seq.. This being the case, we
shall interpret the phrase “size and shape of a syringe tip
such that it can friction fit inside the hub of an IV
catheter” as relating to the conventional, or standard, IV
catheter utilized in the field, which has a hub of dimensions
known to one of ordinary skill in the art (the “luer” hub), of
the existence of which we take official notice. The examiner
did not so limit the meaning of this phraseology.
The Rejections Under 35 U.S.C. § 102(b)
We have evaluated these rejections on the basis that
anticipation is established only when a single prior art
reference discloses, either expressly or under principles of
inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-81, 31 USPQ2d 1671, 1675
(Fed. Cir. 1994).
Independent claim 1 stands rejected as being anticipated
by Harvey, Harrison, or Adolf. This claim requires a
Appeal No. 96-4107
Application No. 08/368,262
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“connector” having a spiked end shaped to mate with the outlet
of a compressible bag of sterile fluid and a nozzle end
“having the size and shape of a syringe tip such that it can
friction fit inside the hub of an IV catheter.” All three of
the applied references disclose a connector having a spiked
end that meets the requirements of the claim. However, none
explicitly teach that the other end of the connector is of
such size and shape as to friction fit inside the hub of a
conventional IV syringe. Nor, in our view, is there any
indication that such inherently would be the case. Harvey
merely describes the other end of the connector as fitting
into a conduit (column 3, lines 55 through 57). Harrison
describes it only as “a connecting section” (column 1, line
54). In the Adolph device, the connectors (unnumbered in
Figures 9 and 10) are not described.
The examiner admits that while none of the references
discloses specific size limitations, the limitations in
question merely concern the size of the invention, which does
not distinguish it from those of the applied prior art
(Answer, page 5). We do not agree. We view the size and
shape requirements recited in the claims to be structural
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Application No. 08/368,262
9
limitations which should be interpreted in the manner
explained immediately above, and which must be considered in
evaluating the patentability of the claims. See, e.g., In re
Venezia, 530 F.2d 956, 957, 189 USPQ 149, 151-152 (CCPA 1976).
It therefore is our conclusion that none of the three
references applied discloses structure which anticipates the
subject matter of claim 1, for none show or describe a
connector having a nozzle with the required size and shape.
This being the case, we will not sustain this rejection.
Claims 2 and 3 stand rejected as being unpatentable over
Barrington or Thomas. Claim 2 adds to claim 1 a plurality of
annular ridges on the nozzle end of the connector for securing
a tube thereon, and claim 3 is an independent claim which
requires that the nozzle end have both the friction fit
configuration and the ridges. Barrington discloses a
connector (14) which has a piercing spike (44) on one end. At
the other end is a nozzle with ridges so that it can be
attached to tubing. However, as was the case in the
references cited against claim 1, there is no disclosure or
teaching that the other end of the connector is of the size
Appeal No. 96-4107
Application No. 08/368,262
10
and shape of a syringe tip such that it can friction fit
inside the hub of an IV catheter, as is required in both of
these claims, nor does such appear to be inherent. The Thomas
reference suffers from the same shortcoming.
Therefore, neither reference anticipates these two claims
and this rejection is not sustained.
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, the mere fact that the prior
art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The initial burden
of establishing a basis for denying patentability to a claimed
invention rests with the examiner. See In re Piasecki, 745
F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
Independent claim 4 and dependent claim 5 have been
rejected as being unpatentable over Harvey in view of
Appeal No. 96-4107
Application No. 08/368,262
11
Harrison. Claim 4 is directed to an apparatus comprising a
compressible bag of fluid having a self-sealing outlet and a
connector having a spiked end for mating with the bag and a
nozzle end sized and shaped like a syringe tip such that it
can friction fit inside the hub of an IV catheter. Claim 5
adds an IV catheter attached to the nozzle end.
We have discussed both of these references above. As we
there stated, neither discloses a connector with a nozzle end
that meets the limitations of the claim. Nor, in our view,
would the teachings of the two references, considered
together, have provided suggestion to one of ordinary skill in
the art to so modify the Harvey connector. Such would appear
to reside only in the hindsight accorded one who first viewed
the appellant’s disclosure. This, of course, is an
impermissible basis for a rejection. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). The
rejection of claims 4 and 5 is not sustained.
Claims 6 and 9 stand rejected as being unpatentable over
Harvey and Harrison, taken further in view of Sozuki, cited
for its teaching of attaching a nasogastric tube to a
connector that also has another use. Both of these
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Application No. 08/368,262
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independent claims also require the particular nozzle end
configuration that has been discussed above, which includes
both the capability of friction fit to the inside of the hub
of an IV catheter and the annular ridges for receiving a
nasogastric tube. The teachings of Sozuki do not overcome the
deficiencies regarding the IV catheter attachment which we
have pointed out above with regard to Harvey and Harrison.
Nor, in our view, would Sozuki have suggested to one of
ordinary skill in the art that the nozzle end of the connector
be provided with the capability of attachment to either an IV
catheter or a nasogastric tube. The rejection therefore is
not sustained.
Finally, claims 7 and 8 are rejected as being
unpatentable over Harvey and Harrison, further in view of
Plechinger. While Plechinger teaches using a catheter for
irrigation, it is not a conventional IV catheter, but a
specialized two lumen device (column 3, lines 4 and 5). The
added reference does not cure the problems with the other two,
which have been discussed above. That being the case, this
rejection is not sustained.
Appeal No. 96-4107
Application No. 08/368,262
13
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 96-4107
Application No. 08/368,262
14
Fredric L. Sinder
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