Ex Parte Ross et al

Patent Trial and Appeal Board

Apr 13, 2018

13613937 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/613,937 09/13/2012
135866 7590 04/13/2018
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Francis L. Ross III
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0107/0075 5136
EXAMINER
LEE, WENG WAH
ART UNIT PAPER NUMBER
3763
MAILDATE DELIVERY MODE
04/13/2018 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 SEARLE 1
Appeal2016-008561
Application 13/613,937
Technology Center 3700
Before GEORGE R. HOSKINS, FREDERICK C. LANEY, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL 2
1 This Decision includes citations to the following documents: Specification
filed September 13, 2012 ("Spec."); Final Office Action mailed August 21,
2015 ("Final Act."); Appeal Brief filed January 14, 2016 ("App. Br.");
Examiner's Answer mailed July 27, 2016 ("Ans."); and Reply Brief filed
September 15, 2016 ("Reply Br.").
2 Appellants provide that the real party in interest is Smiths Medical ASD,
Inc. (App. Br. 3.)
Appeal2016-008561
Application 13/613,937
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
26-29 and 33--41. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a patient heat transfer device that is "a self
contained external temperature regulating device." Spec. i-f 5. Claim 26,
reproduced below, is illustrative of the claimed subject matter:
26. A jacket conformable to the shape of at least the torso of a
patient for regulating the body temperature of the patient,
compnsmg:
a rib shaped hermetically sealed structure having a first
thermal energy transfer portion in contact with the patient, a
second thermal energy transfer portion, and a fluidized medium
within said structure changeable between a liquid state and a
gaseous state for carrying heat absorbed from one of the thermal
energy transfer portions to the other of the thermal energy
transfer portions; and
secure means to secure said jacket to the patient such that
contiguous contact is effected between substantially all ribs of
said structure and the body of the patient.
Claims Appendix, App. Br. 13 (emphasis added).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Clifton
Carson
us 6, 113,626
us 6,197,045
2
Sep. 5,2000
Mar. 6, 2001
Appeal2016-008561
Application 13/613,937
REJECTIONS
Claims 26, 28, 29, 33, and 35--40 are rejected under pre-AIA 35
U.S.C. 102(b) as being anticipated by Clifton. Final Act. 2.
Claims 26-29 and 33--41 are rejected under pre-AIA 35 U.S.C. 103(a)
as being unpatentable over Carson and Clifton. Final Act. 5.
OPINION
Clifton discloses a "heating and cooling blanket" with "fluid
communication zones" that "can be provided with independent fluid
circulation and independently heated and/ or cooled as desired." 8: 18-19,
28-34. Figures in Clifton illustrate that the "heat transfer fluid enters
through tubing 211 circulates through body chest panels 111 and abdomen
panels 131 and returns through tubing 212." 9:16-18. Clifton further
discloses:
Generally, the transfer medium inlet and the heat transfer
medium outlet comprise a screw fit, snap fit or other type of
friction fit mechanism for engagement with tubing, piping,
hosing or other type of conduit which will provide a heat
transfer medium to the heat transfer zone and carry such heat
transfer medium away from the heat transfer zone.
8:62---67.
In finding claim 26 anticipated, the Examiner cites figure 2 of Clifton
as disclosing a "hermetically sealed structure" as recited in claim 26. Final
Act. 3. Without specifying the particular component of the blanket which
meets the "hermetically sealed structure" limitation, the Examiner reasons
that "[t]he blanket of Clifton would not be able to effectively conduct heat
transfer if it were not hermetically sealed because the escape of any air or
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Application 13/613,937
gas from the blanket would reduce the efficiency of the blanket such that it
would destroy the heart of the invention .... " Ans. 2.
"[T]o hold that a prior art reference anticipates a claim, the Board
must expressly find that every limitation in the claim was identically shown
in the single reference." Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed.
Cir. 1997). Here, the record before us does not sufficiently identify a
"hermetically sealed structure" as being disclosed in Clifton, and we cannot
sustain the anticipation rejection.
To the extent that the Examiner finds that a "hermetically sealed
structure" is necessarily present or inherent in Clifton for efficiency reasons
(the record does not contain a citation to Clifton for any such efficiency
discussion), the finding is not supported by an explanation that the prior art
structure must inevitably result in none other than a "hermetically sealed
structure." "Inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient to establish inherency." Scaltech Inc. v.
Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999) (citations omitted).
We further note that the specification of the application at issue provides that
"there [are] no moving parts to wear out" in the jacket recited in claim 2 6
because "a heat pipe is a passive heat transfer system, in that ... the
structure illustrated in Fig. 4 is hermetically sealed[.]" Spec. i-f 34. The
record before us does not contain evidence showing that a structure having
such a hermetic seal is the natural or necessary result flowing from an
unspecified efficiency aspiration for the Clifton structure.
The Examiner additionally finds that the specification of the
application at issue includes "a connector 35 that acts as an interface to
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Appeal2016-008561
Application 13/613,937
connect the jacket to a temperature regulating system" (Spec. i-f 45) which
performs "the similar function of temperature regulation" as "the inlet and
outlet of Clifton" by circulating water in and out of the temperature
regulation system. Ans. 3. That is, the specification describes "a
temperature regulating system" (Spec. i-f 45) which may be connected to a
heat transfer device jacket via connector 35 and the Examiner finds that such
"a temperature regulating system" is disclosed in Clifton. Appellants argue
that such a temperature regulating system "is not part of the hermetically
sealed structure" and should not be "equate[d] with the non-hermetically
sealed water circulating heating blanket of Clifton." Reply Br. 5.
The fact that the Examiner finds a common feature between an
embodiment and the prior art device does not necessarily render claim 26
anticipated by the prior art. The Examiner does not explain why the recited
"hermetically sealed structure" broadly and reasonably encompasses
connector 3 5 or the temperature regulating system which Appellants assert
are distinct components separate from the hermetically sealed structure -
although some or all of the components may be included in the recited jacket
in some of the embodiments. We therefore cannot sustain the anticipation
rejection. 3
The Examiner's reasoning with regard to the "hermetically sealed
structure" aspect of the obviousness rejection based on Carson and Clifton is
identical to that of the anticipation rejection. See Ans. 5, 6 (finding that "the
medical pad of Carson would not be able to effective conduct thermal
exchange if it were not hermetically sealed because the escape of any air or
3 We find it unnecessary to reach additional arguments raised by Appellants
with respect to the anticipation rejection based on Clifton. See App. Br. 7-8.
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Appeal2016-008561
Application 13/613,937
gas would reduce the efficiency of the medical pad" and that "the connector
of the invention of the Appellant's instant application and the inlet and outlet
of Carson are used to perform the similar function of temperature
regulation"); see also Final Act. 5---6. 4 For the reasons provided above, we
cannot sustain the obviousness rejection. 5
DECISION
The Examiner's rejections are reversed.
REVERSED
4 The Examiner analyzes the obviousness rejection of claims 26, 27, 33, and
34 collectively but does not specifically address certain claim limitations.
Final Act. 5---6. For example, "a central longitudinal portion ... "recited in
claim 27 is not analyzed in the Final Rejection. See id.
5 We find it unnecessary to reach additional arguments raised by Appellants
with respect to the obviousness rejection based on Carson and Clifton. See
App. Br. 9--12.
6