Ex Parte Randolph

Board of Patent Appeals and Interferences

Mar 23, 2012

10895592 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/895,592 07/21/2004 L. Tab Randolph VAC.556A.US 8261
60402 7590 03/23/2012
KINETIC CONCEPTS, INC.
c/o SNR DENTON US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
03/23/2012 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 L. TAB RANDOLPH
__________

Appeal 2010-010764
Application 10/895,592
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, 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
apparatus for the promotion of wound closure. The Patent Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2010-010764
Application 10/895,592

2
STATEMENT OF THE CASE
Claims 1, 3-5, 12-16, 21-27, and 29 are on appeal. Claims 1, 15, and
23 are representative and read as follows:
1. An apparatus for the promotion of wound closure, said apparatus
comprising:
a pad;
a source of pressurized fluid, said source including a pump supplying
the pressurized fluid;
a reservoir; and
a continuous fluid conduit having a first end in fluid communication
with said source, a venturi in fluid communication with said pad, and a
terminal end in fluid communication with said reservoir, the pressurized
fluid flowing through said fluid conduit from the first end to the terminal
end and through said venturi such that a flow stream at said venturi causes a
relative low pressure at said venturi.

15. The apparatus of claim 1, wherein the source of pressurized fluid
comprises a non-oil clean air delivery pump.

23. The apparatus as recited in claim 1, wherein the pressurized fluid is a
pressurized gas.

The Examiner rejected the claims as follows:
• claims 1, 3-5, 14, 16, 21, 22, 24, 25, and 29 under 35 U.S.C. §
103(a) as unpatentable over Marsoner1 and Fleischmann;2
• claims 12, 13, and 26 under 35 U.S.C. § 103(a) as unpatentable over
Marsoner, Fleischmann, and Lina;3 and

1 US Patent No. 5,193,545 issued to Hermann Marsoner et al., Mar. 16,
1993.
2 US Patent No. 6,398,767 B1 issued to Wilhelm Fleischmann et al., Jun. 4,
2002.
3 Patent Application Publication No. WO 96/05873 by Cesar Z. Lina et al.,
published Feb. 29, 1996.
Appeal 2010-010764
Application 10/895,592

3
• claims 15, 23, and 27 under 35 U.S.C. § 103(a) as unpatentable over
Marsoner, Fleischmann, and Rolf.4
OBVIOUSNESS
The Issue
The Examiner’s position is that Marsoner disclosed an apparatus
comprising a source of pressurized fluid including a pump supplying the
pressurized fluid, a reservoir, and a continuous fluid conduit having a first
end in fluid communication with said source. (Ans. 3.) The Examiner
found that “[w]ith broadest interpretation, each aperture[ ] 16 creates its own
venture [sic, venturi]; and a terminal end 8 or 6 in fluid communication with
said reservoir 5.” (Id.) Therefore, according to the Examiner, “the
pressurized fluid flowing through said fluid conduit 10 from the first end to
the terminal end and through said venturi such that a flow stream at said
venturi causes a relative low pressure at said venturi.” (Id.)
The Examiner found that the recitation “that a flow stream at said
venturi causes a relative low pressure at said venturi” only requires the
venturi to be capable of performing such a function. (Id.) The Examiner
also found that the Appellant’s Specification states that “the placement of
the tiny apertures 19 in the flow stream relative to the second, or drainage
end 22 of the tube 18 creates a venturi.” (Id.)(quoting Spec. [0014]).
Therefore, the Examiner found that the Specification explained that the
venturi is created by apertures. (Id.) According to the Examiner Marsoner
disclosed apertures 16 identical in structure to that described in Appellant’s
Specification and fully capable of producing the recited venturi effect. (Id.)

4 US Patent No. 5,804,213 issued to David Rolf, Sep. 8, 1998.

Appeal 2010-010764
Application 10/895,592

4
However, the Examiner found that Marsoner did not disclose a pad, or that
the venturi is in fluid communication with such pad. (Id. at 4.)
The Examiner found that Fleischmann disclosed an apparatus
comprising: a pad; a source of pressurized fluid; a reservoir; a fluid conduit
having a first end in fluid communication with the source and a terminal end
in fluid communication with the reservoir; and a venturi/aperture in fluid
communication with the pad. (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 modify Marsoner’s apparatus to include a pad, as
taught by Fleischmann, to cover the wound surface and enhance the wound
healing process. (Id.)
Regarding claims 15 and 23, the Examiner found that the combination
of Marsoner and Fleischmann disclosed the claimed invention except for
disclosing that the source of pressurized fluid comprises a non-oil clean air.
(Id. at 5.) However, the Examiner found that Rolf disclosed preparing a
wound dressing with ozone, i.e., a non-oil clean air, as an oxygen base and a
disinfectant for treating pathogenic wounds. (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 provide non-oil clean air, such as the
ozone taught by Rolf, in the combination for treating pathogenic wounds.
(Id.)
Appellant contends that “Marsoner does not disclose or teach a
venturi.” (App. Br. 6.) Appellant asserts that “[d]rawing on the Bernoulli
theorem, the term ‘venturi’ as used in the application encompasses a flow
stream going by the apertures to create a relative lower pressure.” (Id. at
7)(citing Spec. [0014], [0006]). According to Appellant, “the ‘venturi’
Appeal 2010-010764
Application 10/895,592

5
limitation itself calls for apertures on the conduit and for the apparatus to be
adapted to produce a fluid flow past the apertures at a rate sufficient to cause
a relative low pressure.” (Id.) Appellant asserts that Marsoner’s
“perforations and small piston chamber (reservoir 3 and pressure element
11) would not create a flow that would create a relatively low pressure area
through Bernoulli’s effect and do not amount to a venturi.” (Id. at 8.)
Further, Appellant asserts that the Examiner’s combination of
Marsoner and Fleischmann failed “to address the level of skill in the art” and
“to describe the combination of references so as to arrive at the claimed
invention.” (Id. at 9.) According to Appellant, “if a pad were added to
Marsoner, one would simply arrive at an apparatus for puncturing a patient
and sampling a body tissue using a conduit having perforations and a pad
that is internal to the patient.” (Id. at 9-10.) Appellant asserts that this
combination would not provide “venturi or components capable of using a
positive pressure to produce a relative low pressure.” (Id. at 10.)
Additionally, Appellant asserts that “Rolf is directed to a ‘biologically
active aqueous gel wound dressing,’ and has no apparent direct or indirect
relationship with a non-oil pump,” as recited in claim 15. (Id. at 10.)
The issue is whether the preponderance of the evidence supports the
Examiner’s conclusion that the cited references would have made the
claimed apparatus obvious.
Appeal 2010-010764
Application 10/895,592

6
Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-5.)
2. The Specification states,
[T]he placement of the tiny apertures 19 in the flow stream
relative to the second, or drainage, end 22 of the tube 18 creates
a venturi. As is generally known in the relevant arts, a venturi
operates through the Bernoulli effect to create a relative low
pressure in areas of increased fluid flow in a closed or semi-
closed system.

(Spec. [0014].)

3. The Specification states,
The foam pad, pump and collection canister are in fluid
communication with one another through a single hospital
grade hose having a plurality of tiny apertures in the portion
that is central to the foam pad. These apertures are adapted to
allow fluids from the wound cavity to be drawn into the flow
from the pump to the canister according to Bernoulli's theorem,
which states generally that the work done on a fluid is equal to
the change in kinetic energy of the fluid.

(Spec. [0006].)

Principles of Law
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Appeal 2010-010764
Application 10/895,592

7
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellant’s assertion that Marsoner did not
disclose venturi, as recited in the claimed invention and described by the
Specification. Both the Examiner and Appellant refer to Specification
paragraph [0014] which describes a venturi being created by the placement
of tiny apertures in the flow stream relative to a second or drainage end of a
tube. (Ans. 3, App. Br. 7, FF-2.)
According to the Examiner, Marsoner’s apertures 16 create venturi as
they are structurally identical to this Specification description and therefore
capable of functioning as recited in the claim, e.g., such that a flow stream at
said venturi causes a relative low pressure at said venturi. (Ans. 3.)
However, Appellant’s position is that Marsoner does not teach a venturi
because its “perforations [16] and small piston chamber (reservoir 3 and
pressure element 11) would not create a flow that would create a relatively
low pressure area through Bernoulli’s effect and do not amount to a venturi.”
(App. Br. 8.) Appellant refers to Specification paragraph [0006] in support
of the assertion that “the term ‘venturi’ as used in the application
encompasses a flow stream going by the apertures to create a relative lower
pressure.” (Id. at 7; see also FF-3.)
We find that the Examiner has the better position. The Specification
states that “[t]he placement of the tiny apertures 19 in the flow stream
Appeal 2010-010764
Application 10/895,592

8
relative to the second, or drainage, end 22 of the tube 18 creates a venturi.”
(FF-2.) We agree with the Examiner that Marsoner’s disclosure of apertures
16 structurally meets this claim limitation. Paragraph [0006] of the
Specification does not further define the term “venturi” as Appellant
contends, but rather describes its function. Indeed, the Specification states,
“[t]hese apertures are adapted to allow fluids from the wound cavity to be
drawn into the flow from the pump to the canister according to Bernoulli's
theorem, which states generally that the work done on a fluid is equal to the
change in kinetic energy of the fluid.” (FF-3)(emphasis added). The
Examiner provided a sound basis for finding that Marsoner’s apertures 16
are capable of functioning as recited in the claims and described in the
Specification. (See Ans. 3, 6.) Appellant has not established otherwise by
simply asserting that the apertures/perforations (16) would not so function.
(See App. Br. 8.) In other words, Appellant has not identified any structural
difference between the prior art and the claimed invention that would render
the prior art incapable of meeting the functional limitation of the recited
venturi.
Appellant also asserts that the Examiner’s combination of Marsoner
and Fleischmann failed “to address the level of skill in the art” and “to
describe the combination of references so as to arrive at the claimed
invention.” (App. Br. 9.) According to Appellant, the Examiner’s
combination would instead yield “an apparatus for puncturing a patient and
sampling a body tissue using a conduit having perforations and a pad that is
internal to the patient.” (Id. at 9-10.) We are not persuaded by this
argument. The Examiner found that Marsoner did not disclose a pad or that
its venturi was in fluid communication with the pad. (Ans. 4.) The
Appeal 2010-010764
Application 10/895,592

9
Examiner relied on Fleischmann for its teaching an apparatus for the
promotion of wound closure that comprises a pad and venturi/apertures in
fluid communication with the pad. (Id.) The Examiner reasoned that a
skilled artisan would have found it obvious and within the skill in the art to
modify Marsoner to include a pad such that Marsoner’s venturi were in fluid
communication with the pad. (Id. at 4, 7.) In view of the teachings of
Marsoner and Fleischmann, we find that the Examiner’s proposed
modification amounted to no more than the combination of familiar
elements according to known methods that could be implemented by a
person of ordinary skill in the art. See KSR Int’l Co., 550 U.S. at 416-417.
Appellant has not raised additional arguments for the rejections of
claims 12, 13, and 26 over Marsoner, Fleischmann and Lina. Therefore, we
remain unpersuaded of nonobviousness for the reasons discussed supra. See
37 C.F.R. § 41.37(c)(1)(vii).
Regarding the rejection of claims 15, 23 and 27 over Marsoner,
Fleischmann and Rolf, Appellant additionally argues that “Rolf is directed to
a ‘biologically active aqueous gel wound dressing,’ and has no apparent
direct or indirect relationship with a non-oil pump,” as recited in claim 15.
(App. Br. 10.) We agree. The Examiner found that Marsoner and
Fleischmann disclosed a pump for supplying fluids or agents (see Ans. 3-5
and 7) and relied on Rolf for its suggestion to use ozone, i.e., a “non-oil
clean air,” in the pump to treat pathogenic wounds (id. at 5, 8). A “non-oil
clean air delivery pump,” as recited in claim 15, however, is not a pump for
delivering a non-oil clean air, but a non-oil pump for delivering clean air.
(See Spec. [0013] (“a non-oil type clean air delivery pump 20 meeting
applicable hospital standards such as UL-544”)). The Examiner’s
Appeal 2010-010764
Application 10/895,592

10
conclusion that the cited references would have made it obvious to deliver
ozone, as a disinfectant, provides a reasonable basis for concluding that
claim 23 would have been obvious, but the Examiner has not pointed to a
non-oil pump in the cited prior art.
Accordingly, we affirm this rejection with respect to claim 23 but
reverse it with respect to claim 15. Claim 27 falls with claim 23 because it
was not argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
With the exception of claim 15, the preponderance of the evidence
supports the Examiner’s conclusion that the cited references would have
made the claimed apparatus obvious.

SUMMARY
We affirm the rejection of claims 1, 3-5, 14, 16, 21, 22, 24, 25, and 29
under 35 U.S.C. § 103(a) as unpatentable over Marsoner and Fleischmann;
we affirm the rejection of claims 12, 13, and 26 under 35 U.S.C. §
103(a) as unpatentable over Marsoner, Fleischmann, and Lina;
we reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Marsoner, Fleischmann, and Rolf;
we affirm the rejection of claims 23 and 27 under 35 U.S.C. § 103(a)
as unpatentable over Marsoner, Fleischmann, and Rolf.

Appeal 2010-010764
Application 10/895,592

11
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-IN-PART

dm