Ex Parte Bateman

Patent Trial and Appeal Board

Dec 11, 2013

11886587 (P.T.A.B. Dec. 11, 2013)

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.
11/886,587 09/18/2007 Timothy Bateman 0119/0070 8170
21395 7590 12/11/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/11/2013 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 TIMOTHY BATEMAN
____________

Appeal 2012-002172
Application 11/886,587
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 2, and 4-8 (App.
Br. 5). Examiner entered rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claims are directed to tracheostomy tube. Claim 1 is
representative and is reproduced in the Claims Appendix of Appellant’s
Brief.

1 The Real Party in Interest is Smiths Group PLC (App. Br. 3).
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2
Claims 1 and 4-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Crandall.2
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Crandall and Toye.3
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Crandall and Weinstein.4
Claims 1, 2, 4, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Weinstein and Crandall.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Weinstein, Crandall, and Theis.5

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Crandall teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Crandall teaches “[a] tracheostomy tube” that “includes an outer
cannula and a removable, disposable inner cannula” (Crandall, Abstract; see
generally Ans. 4-5).

2 Crandall et al., US 4,315,505, issued February 16, 1982.
3 Toye, US 6,382,209 B1, issued May 7, 2002.
4 Weinstein, US 5,217,005, issued June 8, 1993.
5 Theis et al., US 5,443,064, issued August 22, 1995.
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FF 2. Crandall’s Figures 1 and 3 are reproduced below:

“FIG. 1 is a perspective view of the tracheostomy tube of … [Crandall’s]
invention shown completely assembled” (id. at col. 3, ll. 29-30). “FIG. 3 is
a partial sectional view taken through the distal end of the inner and outer
cannulae” (id. at ll. 33-34).
FF 3. Crandall’s “tracheostomy tube assembly (10) includ[es] an outer,
tubular shaft (12) having a bore (26) extending along it and an introducer
(inner cannula 14 . . . ) inserted within the shaft (12)” (Ans. 4-5; see
Crandall, col. 3, ll. 40-65).
FF 4. Crandall’s tracheostomy tube assembly has “a passage (37)
extending along its length characterized in that the shaft and introducer are
both flexible . . . such that the assembly is adapted to bend along the
trachea” (id. at 5).
FF 5. Crandall’s outer tubular shaft 12 “includes a collar (50) projecting
inwardly on the shaft and . . . the introducer [14] includes a shoulder (46)
projecting outwardly on the introducer . . . [such] that the collar and shoulder
have cooperating surface formations . . . to prevent rearward displacement of
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the” shaft 12 along the introducer 14 when the device is inserted into the
trachea (id.; see Crandall, col. 4, ll. 46-50 (“the engagement between the
inner cannula 14 and the outer cannula 12 . . . serves as a stop device to
prevent the tip 38 of the inner cannula 14 from extending substantially
beyond the very end 54 of the outer cannula 12”)).
FF 6. Crandall’s introducer 14 is capable of being “removed rearward from
the shaft [12] when the patient end of the shaft [12] is located in the trachea”
(Ans. 5; see Crandall, col. 5, ll. 15-18 (“the rear tapered surface 48 of the
raised portion 42 facilitates removal of the inner cannula 14 from the
opening 52 in the outer cannula 12”)).
ANALYSIS
The tracheostomy tube of Appellant’s claim 1 includes, inter alia, (1)
an outer, tubular shaft having a bore and a collar projecting inwardly of the
shaft and (2) an introducer that has a shoulder projecting outwardly of the
introducer, wherein the introducer is inserted within the shaft such that the
collar and shoulder have cooperating surfaces that abut and locate with one
another to prevent rearward displacement of the shaft along the introducer,
and enable the introducer to be removed rearwardly from the shaft when the
patient end of the shaft is located in the trachea (see Appellant’s Claim 1).
Appellant contends that “Crandall does not disclose an introducer”
(App. Br. 116). We are not persuaded (FF 2-3; Ans. 10).

6 We recognize that Examiner did not consider or enter Appellant’s Reply
Brief into the record (see November 3, 2011 “Office communication”).
Therefore, we did not include Appellant’s September 9, 2011 Reply Brief in
our deliberations.
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Appellant contends that “Crandall fails to disclose the ‘collar’ and
‘shoulder’ elements recited in claim 1” or “the cooperating surfaces of those
elements” (App. Br. 11). We are not persuaded (FF 2, 5, and 6; Ans. 10).
While Appellant recognizes that Crandall’s inner cannula (i.e.
introducer) can be removed from Crandall’s outer cannula, Appellant
contends that Crandall’s “inner cannula is a part of the tracheostomy tube,
and therefore remains with the outer cannula in the patient” (App. Br. 11).
We are not persuaded. Crandall’s device enables the introducer to be
removed rearwardly from the shaft when the patient end of the shaft is
located in the trachea (FF 2, 5, and 6). Therefore, Crandall’s device meets
the requirement in claim one which requires the device “to enable the
introducer to be removed rearwardly from the shaft when the patient end of
the shaft is located in the trachea” (Appellant’s Claim 1; see Ans. 11 (“the
surface formations of Crandall meet the functional language recitation of
preventing rearward displacement of the shaft along the introducer and
enabling the introducer to be removed rearward on the shaft while the shaft
remains in place in the trachea”)).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Crandall’s cooperating surface formations serve a different
purpose than those of Appellant’s claimed device (App. Br. 12).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Crandall teaches Appellant’s claimed invention. The rejection
of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Crandall is
affirmed. Claims 4-6 fall with claim 1.

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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 7. Examiner relies on Crandall as discussed above (FF 1-6).
FF 8. Examiner finds that Crandall fails to “specifically disclose that the
flexibility of the shaft is such that it cannot support its own weight when
supported at one end” and relies on Toye to make up for this deficiency in
Crandall (Ans. 6).
FF 9. Appellant discloses that
The flexibility of the shaft [of Appellant’s device] . . . is such
that it cannot support its own weight when supported at one end
so that, for example, its patient end … bends down under its
own weight when the shaft is held at the machine end . . . .
The shaft . . . could be reinforced against radial forces by a
helical wire or other reinforcement element within the wall of
the shaft.
(Spec. 2-3.)
FF 10. Toye suggests “a wire reinforced, extremely flexible, ultra thin,
generally cylindrical and hollow breathing or trachea tube” (Toye, col. 4, ll.
60-62).
FF 11. Examiner finds that Crandall fails to suggest “a guide member
extending along the assembly” and relies on Weinstein to make up for this
deficiency in Crandall (Ans. 6-7).
FF 12. Examiner finds that Weinstein suggests
[A] tracheostomy tube assembly (10) [that] includ[es] an outer,
tubular shaft (20) having a bore extending along it for passage
of gas . . . and an introducer (15) inserted within the shaft; the
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assembly having a passage . . . extending along its length for
receiving an elongate guide member (11, 29) characterized in
that the shaft and introducer are both flexible
(Id.; see Weinstein, Abstract).
FF 13. Weinstein’s Figures 2 and 5 are reproduced below:

“FIG. 2 is a sectional elevation of the dilator and needle of . . . [Weinstein’s]
invention” (Weinstein, col. 2, ll. 67-68). FIG. 5 illustrates a “sectional
elevation[] showing insertion of . . . [Weinstein’s] apparatus . . . into a
trachea lumen” (id. at col. 3, ll. 1-3).
FF 14. Weinstein discloses that
After positioning conical portion 16 in [the] lumen . . . . The
annular groove 17 assists in preventing the distal end of dilator
15 from being prematurely or accidentally removed from the
trachea. Upon withdrawal of needle 11, dilator 15 is inserted
further into the lumen so that conical portion 16 bends and rests
against the trachea wall 26 as shown in FIG. 5.
(id. at col. 3, l. 62 – col. 4, l. 5.)
FF 15. Examiner finds that the combination of Weinstein and Crandall fails
to suggest a “neck plate [that] is movable along the shaft” and relies on
Theis’ suggestion of “a neck plate . . . that is movable along the shaft” to
make up for the foregoing deficiency in the combination of Weinstein and
Crandall (Ans. 9).
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ANALYSIS
The rejection over the combination of Crandall and Toye:
Appellant’s claim 2 depends from and further limits the tracheostomy
tube of claim 1 to require that the flexibility of the shaft is such that it cannot
support its own weight when supported at one end (see Appellant’s Claim
2). Based on the combination of Crandall and Toye, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious “to modify the shaft of Crandall with the ultra flexible shaft of
Toye to provide additional comfort to a user” (Ans. 6).
Appellant contends that Toye’s “tube 30 is ‘wire reinforced’” and
therefore, “cannot support its own weight when supported at one end” (App.
Br. 12). We are not persuaded. Appellant failed to establish an evidentiary
basis on this record to support a conclusion that a person of ordinary skill in
this art would not have expected Toye’s ultra flexible breathing tube to bend
down under its own weight when the shaft is held at the machine end (i.e. to
not support its own weight when supported at one end) as does the shaft of
Appellant’s wire reinforced tube (see FF 9-10).

The rejection over the combination of Crandall and Weinstein:
Appellant’s claim 7 depends from and further limits the tracheostomy
tube of claim 1 to include a guide member extending along the assembly
(see Appellant’s Claim 7). Based on the combination of Crandall and
Weinstein, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious “to provide the tracheal
assembly of Crandall with a guide wire as taught by Weinstein to assist in
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guiding the tracheal tube shaft into the trachea as disclosed in . . . Weinstein”
(Ans. 7; FF 11).
Appellant contends that “Crandall cannot be combined with Weinstein
as alleged by the [E]xaminer” because
(1) Crandall discloses a special tracheostomy tube that has inner
and outer cannulas, and (2) even if the dilator 15 of Weinstein
were to be inserted into the outer cannula of Crandall device,
there would not be any formation at the inner circumferential
surface of the outer cannula of Crandall that would interact with
the notch . . . of [Weinstein’s] . . . dilator
(App. Br. 14). Simply stated, Appellant contends that the combination of
Crandall and Weinstein fails to suggest cooperating surfaces as required by
Appellant’s claim 1 from which claim 7 depends (App. Br. 14). We are not
persuaded for the reasons set forth above.
Appellant fails to explain why a person of ordinary skill in this art
would not have found it prima facie obvious to use a guide member as
suggested by Weinstein in Crandall’s device to “guide the tracheal tube shaft
into the trachea” (Ans. 7; see id. at 13 (“No arguments have been presented
for claims 7 and 8”); see also App. Br. 15 (“claims . . . 7-8 each depend
either directly or indirectly from claim 1, [A]ppellant submits that the
patentability of those claims stand or fall with claim 1”)).

The rejection over the combination of Weinstein and Crandall:
For the reasons set forth above, Crandall anticipates the subject matter
of Appellant’s claim 1. This rejection, however, differs from the rejection
set forth above in that Examiner finds that it would have been prima facie
obvious to modify Weinstein’s device to include Crandall’s shoulder and
collar features (see Ans. 8 (“It would have been obvious to . . . provide the
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shaft and introducer of Weinstein with cooperating surface formations as
taught by Crandall to provide a sealing surface to provide a stop against
excessive displacement of the introducer past the shaft which would cause
tracheal trauma”); see also id. at 13-14). We are not persuaded.
Weinstein discloses that once the assembly is inserted into the trachea,
the introducer 15 is “inserted further into the lumen so that conical portion
16 bends and rests against the trachea wall 26” (FF 14). Examiner failed to
explain how Weinstein’s device, modified to include Crandall’s collar and
shoulder features, would be capable of being further inserted into the
trachea. (see generally App. Br. 13-14; Cf. Ans. 8 (“It would have been
obvious to . . . provide the shaft and introducer of Weinstein with
cooperating surface formations as taught by Crandall to provide a . . . stop
against excessive displacement of the introducer past the shaft which would
cause tracheal trauma”); FF 13 Fig. 5).

The rejection over the combination of Weinstein, Crandall, and Theis:
Claim 6 depends from and further limits the tracheostomy tube of
claim 1 to include a neck flange mounted on and movable along the shaft
(Appellant’s Claim 6). Based on the combination of Weinstein, Crandall,
and Theis, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious “to modify the neck plate of
Weinstein with the axially moveable neck plate as taught by Theis to
provide adjustments to adapt to the thickness of the neck of the patient as
taught by Theis” (Ans. 9; FF 15).
Examiner failed to establish that Theis makes up for the deficiency in
the combination of Weinstein and Crandall discussed above.
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Crandall and Toye is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Crandall and Weinstein is affirmed. Claim 8 falls
with claim 7.
The rejection of claims 1, 2, 4, 5, 7, and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Weinstein and Crandall is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Weinstein, Crandall, and Theis is reversed.

TIME PERIOD FOR RESPONSE
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

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