Ex Parte Ross et al

Patent Trial and Appeal Board

Apr 25, 2017

12379756 (P.T.A.B. Apr. 25, 2017)

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.
12/379,756 02/27/2009 Francis L. Ross III 0107/0058 2802
135866 7590 04/26/2017
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
LEE, WENG WAH
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
04/26/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS L. ROSS, III and GARY SEARLE1
Appeal 2014-004987
Application 12/379,756
Technology Center 3700
Before GEORGE R. HOSKINS, FREDERICK C. LANEY, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL2
1 This Decision includes citations to the following documents: Specification
filed Feb. 27, 2009 (“Spec.”); Non-Final Office Action mailed July 10, 2013
(“Act.”); Appeal Brief filed Oct. 9, 2013 (“App. Br.”); Examiner’s Answer
mailed Jan. 1, 2014 (“Ans.”); and Reply Brief filed Mar. 20, 2014 (“Reply
Br.”).
2 Appellants provide that the real party in interest is Smiths Medical ASD,
Inc. (App. Br. 3.)
Appeal 2014-004987
Application 12/379,756
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 8, and 16.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to “a flat flexible heat pipe that is conformal
to the human body.” (Spec. 17.) Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A device placeable in contact with a patient for
therapeutically cooling the patient, comprising:
a structure substantially conformable to the shape of at
least one part of the body of the patient, said structure being
hermetically sealed and having at least one heat transfer portion
in contact with the patient, at least one heat dissipation portion,
and a fluidized medium changeable between a liquid state and a
gaseous state provided in said structure for moving the heat
transferred from the patient to said heat transfer portion to said
heat dissipation portion for removal;
an active heat transfer layer working cooperatively with
at least one portion of the heat dissipation portion to enhance
removal of heat from the structure; and
an adhesive layer provided on the patient contact surface
of said structure to ensure that said structure is in contiguous
contact with the patient.
(Claims Appendix, App. Br. 19 (emphases added).)
3 Appellants appeal from a rejection of claims 1—25. (App. Br. 5.) The
Examiner indicates that claims 21—25 have been allowed and that claims 3—
7, 9-15, and 17—20 are allowable if rewritten in independent form. (Ans. 3.)
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Application 12/379,756
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Faghri US 5,269,369 Dec. 14, 1993
Carson US 6,197,045 Mar. 6, 2001
Rosenfeld US 6,446,706 Sept. 10, 2002
REJECTIONS
Claims 1,2, 8, and 16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Rosenfeld. (Act. 3.)4
Claims 1, 8, and 16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Carson. (Act. 4; see Ans. 3 (noting allowed and allowable
claims).)
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Carson and Faghri. (Act. 6; see Ans. 3 (noting allowed and allowable
claims).)
OPINION
Anticipation of Claim l5 (Rosenfeld)
Rosenfeld discloses a “heat pipe” which “can be adhered to [an]
integrated circuit and to a remote heat sink, and the heat from the integrated
circuit will be efficiently transferred to the heat sink even if the heat sink is
on a panel which is moveable relative to the integrated circuit.” (Rosenfeld
4 The record before us shows that the Examiner has previously issued a
Non-Final Action on Feb. 28, 2012 and a Final Action on Oct. 15, 2012.
5 Claims 2, 8 and 16 stand or fall with claim 1 with respect to the
anticipation rejection based on Rosenfeld. (App. Br. 12.)
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Application 12/379,756
1:56—65.) Included in the heat pipe is a separator which “provide[s]
interconnected spaces” “to function as the vapor space within which vapor
evaporated at a heat input point can migrate to cooler parts of [the] heat pipe
. . . to be condensed.” {Id. at 3:5—9.) The separator separates two wick
layers that are said to “reduce[] the likelihood of vacuum leaks” which
purports “to improve the reliability and life expectancy of the heat pipe.”
{Id. at 2:25—31.) The heat pipe “is covered with adhesive” so that the heat
pipe can “be used as tape or a stick-on heat transfer surface which conforms
to a body being cooled.” {Id. Abstract.)
Appellants argue that Rosenfeld does not disclose that its device is
used for a patient which includes “an adhesive layer provided on the patient
contact surface of said structure to ensure that said structure is in contiguous
contact with the patient” as recited in claim 1. (App. Br. 11.)
The Examiner, on the other hand, finds that Rosenfeld’s heat pipe is
capable of being used “in contact with a patient for therapeutically cooling
the patient” as recited in the preamble of claim 1. (Act. 3.)6 The Examiner
finds that Rosenfeld’s adhesive layer allows the heat pipe to “conform[] to a
body being cooled” (Rosenfeld Abstract) and is capable of being used — as
part of the heat pipe — “to ensure that said structure is in contiguous contact
with the patient” as recited in claim 1. (Ans. 4.)
“A patent applicant is free to recite features of an apparatus either
structurally or functionally.” In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“There is nothing intrinsically wrong with [defining something by
6 Appellants do not argue that the preamble of claim 1 constitutes a claim
limitation. {See, e.g., App. Br. 11—15.) We decline to construe the preamble
as a claim limitation.
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Appeal 2014-004987
Application 12/379,756
what it does rather than what it is] in drafting patent claims.”). Yet choosing
to define an element functionally, i.e., by what it does, carries with it a risk.
The Federal Circuit held:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In reSchreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
In this case, Appellants do not dispute the Examiner’s finding that the
prior art device has the structure and components capable of performing the
functions recited in claim 1. (Compare App. Br. 11 with Act. 3; Compare
Reply Br. 1—2 with Ans. 4.) Because Appellants do not dispute that the prior
art adhesive layer is capable of performing the relevant functions recited in
claim 1, no reversible error has been identified with this aspect of the
obviousness analysis.
Appellants next argue that the wick layer of Rosenfeld’s heat pipe is
not an “active heat transfer layer working cooperatively with at least one
portion of the heat dissipation portion to enhance removal of heat from the
structure” as recited in claim 1. (App. Br. 11.) Appellants reason that
whereas the wick layer is included in the heat pipe of Rosenfeld, “the
claimed active heat transfer layer is clearly not a part of the structure.” (Id.)
Appellants also argue that the prior art wick layer does not “remove any heat
from the structure.” (Id. at 12.) According to Appellants, instead of
“facilitat[ing] the removal of heat,” “the only thing” that the wick layer of
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Appeal 2014-004987
Application 12/379,756
Rosenfeld does “is to pass the heat” from one wall of the heat pipe to
another wall. (Id.; Reply Br. 2.)
Claim 1 recites a device “comprising ... an active heat transfer layer”
and does not recite such a layer is “not part of’ the conformable structure of
the device, as argued by Appellants. Furthermore, claim 5 which depends
from claim 1 additionally recites a “cooling means” that “work[s]
cooperatively with the active heat transfer layer to remove the heat from said
heat dissipation portion . . . .” Appellants’ Specification provides that the
“cooling means” may be “a chiller, or a refrigerant cooling mechanism”
which may be located away from the patient and the conformable structure
recited in claim 1. (Spec. 138; Fig. 4.) Thus, Appellants’ Specification
recognizes that the heat transfer layer 20 may be one component of the
conformable structure, which is then connected to other components that are
external to the conformable structure. The plain language of the claim and
Appellants’ Specification, therefore, do not support Appellants’ argument
with respect to “an active heat transfer layer.” Claim 1 likewise does not
require the active heat transfer layer to remove heat independently of other
components of the recited device as argued by Appellants. No reversible
error has therefore been identified here. See In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (unclaimed features cannot impart patentability
to claims).
As to the recited function of the active heat transfer layer, the
Examiner finds that because the “heat pipe as a whole is capable of
transferring and dissipating heat,” “the wick layer” which is located within
the heat pipe, “plays a part in heat transfer and heat dissipation.” (Ans. 4.)
Appellants do not argue that the wick layer is structurally distinguishable
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Application 12/379,756
from the recited active heat transfer layer. (App. Br. 11—12; Reply Br. 1—2.)
Appellants’ argument that the wick layer merely “pass[es] heat” from one
part of Rosenfeld’s heat pipe to another appears to be based on the flawed
premise that the wick layer must remove heat independently of other
components. (App. Br. 12.) All that claim 1 pertinently requires, however,
is that the active heat transfer layer “work[s] cooperatively with at least one
portion of the heat dissipation portion to enhance removal of heat from the
structure,” which the Examiner has shown to be performed by Rosenfeld’s
wick layer, and Appellants have not identified to be reversible error.
Anticipation of Claims 1, 8, and 16 (Carson)
Carson discloses “a medical pad and related system for cooling and/or
heating a patient via contact thermal exchange.” (Carson 1:5—6.) Appellants
argue that Carson does not disclose a “hermetically sealed” structure
because the device in Carson has an inlet and an outlet for water circulation.
(App. Br. 13 (citing Carson, Fig. 1).) The Examiner disagrees, on the basis
that “allowing air to escape from pad would reduce the effectiveness of
thermal exchange.” (Act. 4.) The Examiner, however, does not respond to
Appellants’ arguments about the circulation of water through the pad
making the pad non-hermetically sealed, either in the Non-Final Action
mailed July 10, 2013 or the Examiner’s Answer. (Act. 4—8; Ans. 2—5.) On
this basis, we reverse the anticipation rejection of claim 1, and of claims 8
and 16 depending therefrom, based on Carson.7
7 We find it unnecessary to reach additional arguments raised by Appellants
with respect to the anticipation rejection based on Carson. (See App. Br.
13-14.)
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Application 12/379,756
Obviousness of Claim 2
Claim 2 depends from claim 1 and additionally recites “wherein said
structure comprises a substantially flat flexible heat pipe having a dimension
adapted to cover at least one part of the body of the patient.” The Examiner
relies on Carson as disclosing the subject matter of the parent claim 1.
Act. 6. Because we reverse the anticipation rejection of claim 1 based on
Carson, we reverse the obviousness rejection of claim 2 on the same basis.
DECISION
The Examiner’s rejection of claims 1,2, 8, and 16 under 35 U.S.C.
§ 102(b) as being anticipated by Rosenfeld is affirmed.
The Examiner’s rejection of claims 1, 8, and 16 under 35 U.S.C. §
102(b) as being anticipated by Carson is reversed.
The Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over Carson and Faghri is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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