Ex Parte Noda et al

Board of Patent Appeals and Interferences

Jun 6, 2012

11765536 (B.P.A.I. Jun. 6, 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.
11/765,536 06/20/2007 Wayne Noda 1156-15C.DV1 7670
24955 7590 06/06/2012
ROGITZ & ASSOCIATES
750 B STREET
SUITE 3120
SAN DIEGO, CA 92101
EXAMINER
CHANDER, DIVA KAKAR
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/06/2012 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 WAYNE NODA and
STELICA STELEA
__________

Appeal 2011-002507
Application 11/765,536
Technology Center 3700
__________

Before ERIC GRIMES, STEPHEN WALSH, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a heat
exchange system for an indwelling heat exchange catheter. The Examiner
has rejected the claims as anticipated and obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “a heat exchange system for an indwelling
heat exchange catheter [which] includes a heat exchange bath that is
Appeal 2011-002507
Application 11/765,536

2
configured to receive a conduit that carries working fluid to and from the
catheter.…. A pump communicates with the conduit and pumps the working
fluid to and from the catheter.” (Spec. 3.)
Claims 1-7 are on appeal. Claim 1, the only independent claim, reads
as follows:
1. A heat exchange system for an indwelling heat exchange catheter,
comprising:
a heat exchange bath configured to receive a conduit carrying working
fluid to and from the catheter, the working fluid being at a temperature
below normal human body temperature to cool a human patient in whom the
catheter is disposed; and
a gear pump in communication with the conduit for pumping the
working fluid to and from the catheter.

The Examiner has rejected claims 1-5 and 7 under 35 U.S.C. § 102(b)
as anticipated by Cartledge1 and claim 6 under 35 U.S.C. § 103(a) as being
obvious in view of Cartledge.2 Since the same issue is dispositive for both
of these rejections, we will consider them together.
The Examiner finds that Cartledge discloses “a heat exchange system
for an indwelling catheter, comprising: a heat exchange bath … configured
to receive a conduit carrying working fluid to and from the catheter; and a
gear pump (300) in communication with the conduit … [for] pumping the
working fluid to and from the catheter ” (Answer 3).

1 Cartledge et al., US 6,554,791 B1, Apr. 29, 2003
2 Although the Answer rejects claims 1-6 as anticipated by Cartledge and
claims 6 and 7 as obvious in view of Cartledge, these statements appear to
be typographical errors since the text of the anticipation rejection addresses
claims 1-5 and 7, but not claim 6, and the text of obviousness rejection
addresses claim 6, but not claim 7 (Answer 3-4).
Appeal 2011-002507
Application 11/765,536

3
Appellants argue that “the rejection fails to identify where the applied
reference teaches each and every element of Claim 1” (Appeal Br. 4).
We agree with Appellants that the Examiner has not adequately
shown that Cartledge anticipates claim 1. Claim 1 is directed to a “heat
exchange system for an indwelling heat exchange catheter.” While this
language appears in the preamble of the claim, we conclude that it acts as a
necessary component of the claimed invention because it provides the
antecedent basis for “the catheter” that is recited in the body of the claim.
See Eaton Corp. v. Rockwell Int’l Corp., 323F.3d 1332, 1339 (Fed. Cir.
2003) (“When limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention.”). Thus, in the claimed
system, the gear pump is in communication with a conduit for pumping
working fluid to and from “an indwelling heat exchange catheter,” rather
than some other kind of catheter.
Cartledge discloses “a rapid infusion system … [that] is an adjustable
mechanical pumping system for the intravenous delivery of fluids such as …
blood, blood products, physiologic fluids, and medications” (Cartledge,
col. 3, ll. 2-5). Cartledge discloses that when “large volumes of fluid are to
be infused into a patient, it is advantageous to heat the fluid to body
temperatures before infusion to minimize any thermal insult during infusion”
(id. at col. 15, ll. 35-38). Cartledge discloses that, in one embodiment, the
system includes heater module such as a heated bath (id. at col. 15, l. 64 to
col. 16, l. 2).
Appeal 2011-002507
Application 11/765,536

4
Thus, Cartledge discloses an infusion system for delivering fluids to
patient via a catheter, which can include a heat exchange bath for heating the
fluid before it is delivered. However, claim 1 is directed to a heat exchange
system for a heat exchange catheter that comprises a conduit carrying
working fluid to and from the catheter and a heat exchange bath configured
to receive the conduit. Since the conduit of Cartledge only carries fluid to
the catheter, not to and from the catheter, the Examiner has not adequately
explained how Cartledge discloses a conduit carrying working fluid to and
from a catheter, in such a way that the system functions as a heat exchange
system – i.e., a system in which heated fluid from the patient comes in
contact with cooled fluid from another source so that heat is transferred
between them – for an indwelling heat exchange catheter.
Thus, we reverse the anticipation rejection of independent claim 1 and
dependent claims 2-5 and 7. We also reverse the rejection of claim 6 under
35 U.S.C. § 103(a) since the Examiner relies on the findings with respect to
Cartledge as discussed above.
SUMMARY
We reverse the rejection of claims 1-5 and 7 under 35 U.S.C. § 102(b)
and the rejection of claim 6 under 35 U.S.C. § 103(a).

REVERSED

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