Ex Parte Osborne et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11055211 (B.P.A.I. Mar. 27, 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.
11/055,211 02/10/2005 Thomas A. Osborne 8627-439 9428
48003 7590 03/27/2012
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
03/27/2012 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 THOMAS A. OSBORNE and RAM H. PAUL
____________

Appeal 2009-010777
Application 11/055,211
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS and KEN B. BARRETT,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-010777
Application 11/055,211

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STATEMENT OF THE CASE
Thomas A. Osborne and Ram H. Paul (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3-5, 7-9
and 12-16. Claims 2, 6, 10 and 11 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention is directed to a medical instrument. Claim 1,
reproduced below, is illustrative:
1. A medical instrument through which a catheter
is received, the instrument comprising:

a housing member having a passage through which
the catheter including an outer profile is received;

a cap having a recess formed therein and in fluid
communication with the passage, the recess having
a height dimension through the center of the
recess; and

a valve body to be received in the recess and
mounted to the housing member in the passage, the
valve body having first and second faces and a
peripheral edge separating the faces, the valve
body further having a first slit formed on one of
the faces and a second slit formed on the other
face,

the valve body conforming to the outer profile of
the catheter when the catheter is disposed through
the first and second slits to maintain a fluid tight
seal between the valve body and the catheter,

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the valve body having a first dimension along a
first axis through the center of the valve body and
a second dimension along a second axis through
the center of the valve body, the second dimension
being less than the first dimension when the valve
body is uncompressed, the first dimension and the
second dimension defining a plane parallel to the
first and second faces, the first dimension being
generally non-parallel to both the first and second
slits, the first dimension being greater than the
height dimension, the valve body configured to be
compressed along the first axis when the valve
body is received by the recess, defining a closing
force on the slits during insertion or removal of a
catheter to prevent leakage.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 3-5, 7-9 and 12-16 under 35 U.S.C. § 112, first
paragraph, and failing to comply with the written description requirement;
(ii) claims 1, 4, 5, 7-9 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Matsumoto (US 4,610,665, issued Sep. 9, 1986) in view
of Dudar (US 5,100,394, issued Mar. 31, 1992), Picha (US 5,080,654, issued
Jan. 14, 1992), Muto (US 4,475,548, issued Oct. 9, 1984) and Spademan
(US 3,853,127, issued Dec. 10, 1974);
(iii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Matsumoto in view of Dudar, Picha, Muto, Spademan and Fischer (US
5,006,113, issued Apr. 9, 1991); and
(iv) claims 13-16 under 35 U.S.C. § 103(a) as being unpatentable over
Matsumoto in view of Dudar, Picha, Muto, Spademan and Tomisaka (US
5,540,661, issued Jul. 30, 1996).

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ISSUES
Has the Examiner established that Appellants’ Specification, drawings
and claims, as originally filed, fail to evidence to persons of ordinary skill in
the art that Appellants were in possession of the invention currently set forth
in claim 1 on appeal?
Has the Examiner established that it would have been obvious to
provide a medical instrument having a valve body dimensioned as set forth
in claim 1 and configured to be compressed along a first axis when the valve
body is received in a recess of a cap portion of the medical instrument, as
also set forth in claim 1?
Has the Examiner established that it would have been obvious to
provide the valve body with alternating generally outwardly and generally
inwardly extending regions as set forth in claim 4?
Has the Examiner established that it would have been obvious to
make the valve body of polyisoprene that has been halogenated by
chlorination, as set forth in claims 14 and 15?

ANALYSIS
Claims 1, 3-5, 7-9 and 12-16--§ 112, first paragraph, written description
The test for sufficiency of written descriptive support of a claimed
invention is whether the disclosure of the application reasonably conveys to
the artisan that the inventor had possession, at the time the application was
filed, of the later claimed subject matter. Ralston Purina Co. v. Far-Mar-
Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991).
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The Examiner, in making this rejection, maintains that the subject
matter of current claim 1 is both narrower in some respects and broader in
some respects than “the invention as originally described and claimed”; that
the subject matter of claim 1 is not presented in the Specification as a single
embodiment; and that “it is unclear whether the housing member as claimed
is the housing or housing member as described”. Ans. 8-9, 20.
While it is possible that the scope of current claim 1 is narrower and
broader in certain respects than was claim 1 as originally presented, the
Examiner’s reasoning fails to establish that the application as a whole,
including the Specification and drawings, as originally filed, fails to provide
written descriptive support for claim 1 as now presented. Appellants further
point out where, in the Specification and drawings as originally filed, the
current claim limitations find written descriptive support. Appeal Br. 2-3
and 5-6.
That an application may not describe the subject matter of a claim as a
single embodiment is not determinative of the issue as to whether the claim
lacks written descriptive support. Such an observation must be accompanied
by rational reasoning as to why the lack of a description of claimed subject
matter as a single embodiment fails to evidence that the inventors were not
in possession of that claimed subject matter. In any event, Appellants have
demonstrated that the Specification makes clear that the valve body set forth
in Figures 21A and 21 B, which appear to most closely resemble the claimed
valve body, may be employed with the components (housing member, cap)
illustrated in Figures 1-4. Appeal Br. 5. As such, persons of ordinary skill
in the art would recognize that Appellants were in possession of the
invention as now set forth in claim 1.
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The Examiner’s third contention above seems to be less an issue
regarding written descriptive support for the claim, and more akin to an issue
related to potential indefiniteness. The issue comes down to the recitation in
claim 1 that the “valve body [is to be] mounted to the housing member in the
passage.” Appellants observe that “the examiner may be interpreting claim
1 incorrectly, to include the valve body being located in the housing
member,” stating that “[t]his view would assume the passage only extended
to the edge of the housing member.” Reply Br. 6. Appellants point to
paragraph [0006] of the Specification in support of the proposition that the
passage extends beyond the end face of the housing member, through the
cap recess, to an opening in the cap. Id. That paragraph in the Specification
does support the proposition that a passage is provided in a housing, and that
the valve body is mounted in the passage. The problem is that claim 1 does
not call for a housing that is inclusive of the recited housing member, and
the only “passage” recited in the claim is a “passage through” the “housing
member”. Thus, a valve body “mounted in” the only “passage” recited in
the claim would, at first blush, seemingly be positioned in the housing
member.
Notwithstanding, and despite the somewhat awkward wording in
claim 1 relative to the passage and housing member, we believe that persons
of ordinary skill in the art would understand, from Appellants’ disclosure in
paragraph [0006] of the Specification, as well as the recitation in the claim
that the cap is to be in fluid communication with the claimed passage, that
the passage effectively also extends from the end face of the housing
member though the cap recess. As a result, the Examiner has not adequately
shown that claim 1 lacks written descriptive support on this basis.
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The rejection of claims 1, 3-5, 7-9 and 12-16 under 35 U.S.C. § 112,
first paragraph, is not sustained.
Claims 1, 4, 5, 7-9 and 12--Obviousness
Appellants present arguments with respect to claim 1, and, separately,
with respect to claims 4 and 5. Claims 7-9 and 12 are thus grouped with,
and stand or fall with, representative claim 1.
The Examiner found that Matsumoto discloses a medical instrument
comprising a housing member 11 having a passage 14 therethrough and a
cap 12 having a recess, as claimed. Ans. 11. The Examiner also found that
Matsumoto discloses a valve body 130, but that Matsumoto:
does not clearly and explicitly describe the valve
body 130 having a dimension, e.g. the diagonal
dimension, i.e. the first dimension or dimension
along the first axis, being greater than the “height”
dimension of the [cap] recess, . . . , and such
configured valve body being compressed along
such first axis, i.e. dimension, when the valve body
is received by the recess defining a closing force
on the slits during insertion and removal of the
catheter to prevent leakage.
Ans. 12-13.
The Examiner notes, however, that Matsumoto expresses a desire to
have the valve body maintain a liquid-tight seal around a rod-like member
inserted therethrough and maintain a liquid-tight seal when the rod-like
member is absent. Ans. 13; Matsumoto, col. 2, ll. 31-46. Further, the
Examiner maintains that it is well known in the medical art, as evidenced by
any of Dudar, Picha, Muto and Spademan, to make the dimensions of a
valve body received in a tubular/circular recess unequal to the recess
dimensions, specifically to make the valve dimensions larger than the
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corresponding dimensions of the recess, in order to maintain a liquid-tight
seal upon insertion and removal of a rod-like member. Id. The Examiner
thus concludes that it would have been obvious (if not inherent) to make the
valve body 130 of Matsumoto of greater dimensions, including a greater
diagonal dimension, than the corresponding dimensions of the recess which
receives the valve body, in order to promote liquid tightness while receiving
a rod-like member and also after withdrawal of the rod-like member. Id.
The Examiner maintains further that doing so, the resulting structure would
necessarily and inevitably compress the valve body along the first axis when
the valve body is received by the recess, defining a closing force on the slits
during insertion and removal of the catheter to prevent leakage. Ans. 14.
Appellants argue that the Examiner has improperly presumed, in
reliance on the drawings in Matsumoto, that the diagonal dimension of valve
body 130 in Figure 24A of Matsumoto is greater than the diameter of the cap
3 illustrated in Figure 2. Appeal Br. 7.1 To the extent that the Examiner has
taken the position that Matsumoto inherently discloses this feature2, we
agree with Appellants that there is no reliable indicator in Matsumoto that
the drawings therein are to scale, and it would thus be improper to rely on

1 Prior to making this argument, Appellants affirmatively state that “valve
body (130) does not have a diagonal dimension (or ‘first dimension’)
‘greater than the height dimension’ of the recess, as recited in amended
claim 1.” Appeal Br. 7. We find no support in Matsumoto for this position,
and thus regard the averment as instead an argument that Matsumoto does
not expressly disclose that valve body 130 has a diagonal dimension greater
than the height dimension of the recess.
2 The Examiner possibly is attempting to imply that this is may be an
inherent feature, in stating that, to make the valve body of Matsumoto of
greater dimensions than the recess “if not already”, then it would have been
obvious to do so. Ans. 13.
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the sizes of the cap (Fig. 2) and valve body (Fig. 24A) as illustrated in
support of such a finding. The argument, however, fails to address the
Examiner’s conclusion of obviousness based on Matsumoto and the
additional references.
Appellants, in the same vein, contend that Matsumoto does not
disclose that the valve body is “configured to be compressed along the first
axis when the valve body is received by the recess”. Appeal Br. 7. This
again fails to take into account the Examiner’s reliance on the secondary
references in concluding, as noted above, that it would have been obvious to
size the Matsumoto valve body such that it would be compressed along the
first axis when the valve body is received by the recess.
Appellants maintain that “one advantage in the claimed invention over
the prior art is that the shape of the valve body fits within a recess of a
corresponding shape with different dimensions to produce a compression
force along an appropriate dimension to close the opening in the valve
body.” Appeal Br. 8; Reply Br. 7. Appellants further maintain that
“Matsumoto makes no reference to the rectangular valve body (130) fitting
within a corresponding cooperating shape to produce a closing force on the
opening in the valve body.” Id. Appellants’ arguments are not
commensurate with the scope of claim 1, which has no limitation directed to
the valve body and recess having corresponding shapes. The arguments are
thus not persuasive.
Related to this argument is the contention that the Examiner
improperly combined or substituted an alternative embodiment, i.e., the
rectangular valve body 130 in Figure 24A, for the circular valve body 16
which cooperates with the circular cap 12 illustrated in Figure 4. The
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alleged impropriety is that “Matsumoto fails to teach that rectangular valve
body (130) fits within the circular recess of Figures 2 and 4 and that the
dimensions of the recess are such that the rectangular valve body (130),
when mounted in the recess, is compressed along the radial axis to close the
opening in the valve body.” Appeal Br. 8-9; see also Reply Br. 7.
Matsumoto describes the rectangular valve body 130 illustrated in
Figure 24A as a “second modification of the valve body according to the
present invention.” Matsumoto, col. 18, ll. 26-28. Matsumoto makes no
reference to employing this valve body with a housing and cap other than
those illustrated in Figures 1-4, therefore it was not error on the Examiner’s
part to consider that valve body 130 would be employed with the device
illustrated in those drawing figures. With respect to the alleged lack of
disclosure in Matsumoto of compression of the valve body along a radial
axis, the claims are not limited to a “radial” axis, and the Examiner’s
findings and conclusion as to the obviousness of the claimed invention,
discussed supra, address the compression of valve body 130 along a first
axis when mounted in the recess.
Appellants, in addressing the Examiner’s combination of the
teachings of Matsumoto with the secondary references, argue that
the Examiner does not speak to the claimed
structure, specifically the combination of a cap
with a recess having a height less than the
dimension of the valve body where the dimension
of the valve body is greater along a first axis that is
non-parallel with the slits, than the second axis.
Appeal Br. 9.
Similarly, Appellants maintain that “[n]one of the references suggest
the desirability of providing a combination that would produce a greater
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compression force along a radial axis that is non-parallel with the slits than
another radial axis.” Id.; Reply Br. 8.
These arguments are not persuasive. As pointed out by the Examiner,
claim 1 is devoid of any limitation directed to compression forces, let alone
greater compressive forces, along one or more radial axes. Ans. 22. Rather,
claim 1 is concerned with a dimension along a first axis through the center
of the valve body that is greater than a height dimension of a cap recess, to
bring about the result that the valve body will be compressed along the first
axis when the valve body is received by the recess. The Examiner has
identified the diagonal of the rectangular valve body 130 of Matsumoto as
the first axis having a first dimension greater than a second dimension along
a second axis (either a transverse or longitudinal axis) through the center of
the valve body, and, in combination with the secondary references,
concluded that it would have been obvious to make the first dimension
greater than the height dimension of the cap recess. Ans. 12-13. As can be
seen in Figure 24A, a diagonal first axis is not parallel with the slits.
Matsumoto, Fig. 24A.
Appellants have thus not persuaded us of error in the Examiner’s
conclusion that claim 1 would have been obvious over the cited references.
Claims 7-9 and 12 fall with claim 1.
Appellants separately argue claims 4 and 5. Appeal Br. 10; Reply Br.
9. Appellants contend that the Examiner’s position that the shape of the
valve body set forth in claim 4 (periphery having alternating outwardly and
inwardly extending regions) is but one of numerous shapes that could be
used, and is therefore obvious, fails to take into account the advantages of
such a configuration, as set forth in paragraph [0078] of the Specification.
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Id. Specifically, Appellants maintain that this claimed peripheral shape
provides a compressing force in specific directions, as shown by arrows 316
in Figure 21A, that are non-parallel to either of the slits. Id. The cited
paragraph in the Specification does not evidence that the claimed peripheral
shape in particular produces such a result, rather it is the fact that outwardly
protruding sections define a first dimension that is to be larger than the
height dimension of the cap recess, in much the same manner as the corners
at the ends of the diagonal across the Matsumoto rectangular valve body
define a similar first dimension. In other words, it is the provision of a
dimension that is to be larger than the height dimension of a cap recess,
rather than the scalloped appearance of the periphery of the valve body, that
gives rise to the ability to provide a compressing force along that dimension
or direction. We are thus not persuaded that the Examiner erred in
concluding that claims 4 and 5 fail to define patentable subject matter.
Claims 3 and 13--Obviousness
Claims 3 and 13 each stand rejected over the same references applied
in rejecting claim 1, with the Fischer reference further being cited against
claim 3, and the Tomisaka reference further being cited against claim 13. In
each case, however, Appellants rely solely on their dependence from claim 1
as imparting patentability to the claims. Appeal Br. 10-11. Thus, for the
reasons set forth above in our analysis of the rejection of claim 1, the
rejections of claims 3 and 13 are sustained.
Claims 14-16--Obviousness
Appellants argue that the Examiner does not address the limitations
set forth in claims 14 and 15, namely that the valve body is made of a
polyisoprene material that is halogenated (claim 14), and is halogenated
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through chlorination (claim 15). Appeal Br. 11. The Examiner, however,
does point out that Matsumoto discloses making the valve body from a
fluororubber. Ans. 16; Matsumoto, col. 5, ll. 15-18. The Examiner further
cites to the Tomisaka patent, concluding that it would have been obvious to
employ a valve body having a composition as taught by Tomisaka in the
Matsumoto device, in order to increase the useful life of the valve. Ans. 16.
Tomisaka discloses a valve body that may be made of polyisoprene, and
further teaches that the valve may be treated with chlorine, or chlorinated.
Tomisaka, col. 2, ll. 9-12; col. 2, ll. 47-48; Table 2 (examples of chlorinated
valves).
As such, the Examiner’s position and conclusion as to the obviousness
of claims 14-16 are supported by rational underpinnings. The rejection of
these claims as being unpatentable over the cited references is sustained.

CONCLUSIONS
The Examiner has not established that Appellants’ Specification,
drawings and claims, as originally filed, fail to evidence to persons of
ordinary skill in the art that Appellants were in possession of the invention
currently set forth in claim 1 on appeal.
The Examiner has established that it would have been obvious to
provide a medical instrument having a valve body dimensioned as set forth
in claim 1 and configured to be compressed along a first axis when the valve
body is received in a recess of a cap portion of the medical instrument, as
also set forth in claim 1.
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The Examiner has established that it would have been obvious to
provide the valve body with alternating generally outwardly and generally
inwardly extending regions as set forth in claim 4.
The Examiner has established that it would have been obvious to
make the valve body of polyisoprene that has been halogenated by
chlorination, as set forth in claims 14 and 15.

DECISION
The decision of the Examiner to reject claims 1, 3-5, 7-9 and 12-16
under 35 U.S.C. § 112, first paragraph, is REVERSED.
The decision of the Examiner to reject claim 1, 4, 5, 7-9 and 12 under
35 U.S.C. § 103(a) is AFFIRMED.
The decision of the Examiner to reject claim 3 under 35 U.S.C.
§ 103(a) is AFFIRMED.
The decision of the Examiner to reject claims 13-16 under 35 U.S.C.
§ 103(a) 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)(1)(iv).

AFFIRMED

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