Michael Edward. Hogard et al.

Patent Trials and Appeals Board

Apr 1, 2020

15655728 - (D) (P.T.A.B. Apr. 1, 2020)

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.
15/655,728 07/20/2017 Michael Edward HOGARD 13351-706.305 6011
66854 7590 04/01/2020
SHAY GLENN LLP
2929 CAMPUS DRIVE
SUITE 225
SAN MATEO, CA 94403
EXAMINER
MCKENZIE, THOMAS B
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
04/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@shayglenn.com
shayglenn_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL EDWARD HOGARD, GOPI LINGAM, DEAN HU,
BALAJI M. MANIAM, JAMES RITSON, ANDY H. UCHIDA,
JOHN DAVID STIENMIER, and PAUL DAVID MCGREGOR

Appeal 2019–002770
Application 15/655,728
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and N. WHITNEY
WILSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Outset
Medical, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A method of priming a tubing set and a dialyzer of a
dialysis system, comprising the steps of:
connecting an arterial line of the tubing set to a venous line of
the tubing set;
operating a blood pump of the dialysis system to flow saline
from a saline source into the arterial line and into a blood-side
of the dialyzer and into a venous drip chamber;
operating the blood pump in a reverse mode to flow saline from
the venous drip chamber into the blood-side of the dialyzer in a
direction opposite to a direction of blood flow during dialysis
therapy; and
periodically actuating one or more valves of the dialysis system
with an electronic controller to open and close the tubing set to
create a pulsing effect that dislodges air bubbles from the
tubing set and dialyzer.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Weaver et al. US 2013/0018301 A1 Jan. 17, 2013
Peter, Jr. et al. US 5,702,606 Dec. 30, 1997
Kamen et al. US 2010/0192686 A1 Aug. 5, 2010
REJECTIONS
Claim 1, 2, and 4–13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Weaver in view of Peter.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Weaver in view of Peter and in further view of Kamen.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal (including the Examiner’s Answer, the
Appeal Brief, and the Reply Brief), we are persuaded that Appellant
identifies reversible error. Thus, we reverse the Examiner’s rejections and
add the following primarily for emphasis.
Claim interpretation is dispositive in this case. On the one hand,
Appellant submits that the step of “connecting an arterial line of the tubing
set to a venous line of the tubing set” is during priming of a tubing set and a
dialyzer of a dialysis system (Appeal Br. 2), involving the embodiment of
Figure 18 (Reply Br. 2).
On the other hand, the Examiner states that the term “connecting” in
claim 1 should not be interpreted to mean “connecting to form a continuous
loop”2 because the Specification provides no explicit indication that this
term should have this special meaning, and interpreting the word
“connecting” in this manner would improperly import a claim limitation
from the Specification. Ans. 12.
In reply, Appellant submits that the Examiner’s claim interpretation is
flawed. Appellant submits that “[t]he correct inquiry in giving a claim term

2 The continuous loop arrangement is shown in Appellant’s Figure 18.
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its broadest reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir
2017). “Construing individual words of a claim without considering the
context in which those words appear is simply not ‘reasonable.’”
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Reply
Br. 2.
Within this context, Appellant states that the first method step recited
by claim 1 is described in paragraphs 95 and 102 of Appellant’s
Specification. Reply Br. 2. Appellant explains that the embodiment of that
step is shown in Figure 18, which shows a union joint 256 connecting the
arterial line 230 of the tubing set to the venous line 232 of the tubing set
(continuous loop arrangement). Appellant argues that the Specification
distinguishes this type of connection of the arterial line 230 to venous line
232 during the priming sequence, from the connections of the arterial line
230 and venous line 232 to the patient during dialysis, as described in
paragraph 93 of the Specification. Id. We are persuaded by Appellant’s
argument in this regard. Hence, we also agree with Appellant’s claim
interpretation that the connecting step within the context of priming in the
manner disclosed in Appellant’s Specification is the embodiment of Figure
18. As such, the scope of claim 1 (as properly interpreted in this manner)
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defines over the applied art (as admitted by the Examiner as pointed out by
Appellant in footnote 1 on page 2 of the Reply Brief).
We, therefore, reverse Rejection 1. Because the Examiner does not
rely upon the additional reference applied in Rejection 2 to cure the stated
deficiencies of Weaver, we also reverse Rejection 2 for the same reasons.
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Reversed Affirmed
1, 2, and 4–
13
103 Weaver and Peter,
Jr.
1, 2, and 4–
13

3 103 Weaver, Peter, Jr.
and Kamen
3
Overall
Outcome
1–13
REVERSED