Ex Parte Diemunsch

Board of Patent Appeals and Interferences

Jun 30, 2011

11038359 (B.P.A.I. Jun. 30, 2011)

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.
11/038,359 01/19/2005 Pierre Diemunsch 03685-P0010A 7542
24126 7590 07/01/2011
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
CAMPBELL, VICTORIA P
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
07/01/2011 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 PIERRE DIEMUNSCH
____________

Appeal 2009-010333
Application 11/038,359
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and KEN B.
BARRETT, Administrative Patent Judges.

Opinion for the Board filed by KERINS, Administrative Patent Judge.
Opinion Dissenting filed by STAICOVICI, Administrative Patent Judge.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pierre Diemunsch (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-3 and 5-12. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention is directed to an apparatus for conditioning an
insufflation gas. Independent claim 1 is reproduced below and is
illustrative:
1. An apparatus for conditioning an insufflation
gas comprising

a conditioning chamber having,

at least one first inlet for delivering a humidifying
liquid containing a medicament into said
conditioning chamber,

a second inlet for blowing an insufflation gas into
said humidifying liquid containing said
medicament contained in said conditioning
chamber,

an outlet for dispensing said insufflation gas
charged with said humidifying liquid containing
said medicament,

a blowing device for blowing said insufflating gas
through said chamber, and

wherein said conditioning chamber comprises
distributing elements for distributing said
medicament in said humidifying liquid.

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THE REJECTIONS
The Examiner has rejected claims 1-3 and 5-9, 11 and 12 under
35 U.S.C. § 103(a) as being unpatentable over Ott (US 6,068,609, issued
May 30, 2000) in view of Krum (US 6,244,219 B1, issued June 12, 2001).
The Examiner has also rejected claim 10 under 35 U.S.C. §103(a) as being
unpatentable over Ott and Krum, and further in view of Campbell (US
4,036,210, issued July 19, 1977).

ISSUE
Did the Examiner err in concluding that it would have been obvious,
in view of the teachings of Krum, to modify the apparatus of Ott to include
distributing elements for distributing medicament in a humidifying liquid
within the Ott conditioning chamber?

ANALYSIS
The Examiner concluded that it would have been obvious to modify
the Ott device for conditioning an insufflation gas to include distributing
elements in its conditioning chamber, in view of the teaching in Krum of
the desirability of providing a distributing element (pump 120, paddle-type
mixer 176) in a salt water mixing tank. (Ans. 6). The stated rationale for
making such a modification is that circulating the liquid within the chamber
provided in Ott would ensure maximum contact with the heating element of
Ott and would also maintain a homogenous mixture within the conditioning
chamber. (Id.).
We note initially that Appellant’s contentions to the effect that Ott
does not teach a blowing device for blowing an insufflating gas through a
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conditioning chamber are not persuasive of patentability. Appellant’s
arguments in this regard are, in large part, directed to features disclosed and
illustrated in Appellant’s Specification, but not required by the claims. (See,
e.g., Appeal Br. 4; Reply Br. 2-3). Claim 1 requires only that the recited
blowing device is provided “for blowing said insufflating gas through said
chamber”. The insufflating gas in Ott, which is stored under high pressure
in a compressed gas cylinder, is blown into and through the conditioning
chamber 120 under the control of insufflator 10, which includes a throttling
pressure regulator and flow controller. (Ott, Fig. 1; col. 1, ll. 26-33). This is
essentially what Appellant himself describes in noting that, “[t]he insufflator
can act as the blowing device providing the energy, i.e., the pressure, for
moving the insufflation gas through the apparatus of the invention.” (Spec.
4, para. [00015]).
Appellant further attacks the Examiner’s stated rationale for
modifying the Ott apparatus in view of the teachings of Krum. (Appeal Br.
8-9). Here, we find Appellant’s arguments persuasive.
The Examiner, as noted above, concluded that it would have been
obvious to include distributing elements, such as the recirculating pump or
paddle mixer of Krum, in the conditioning chamber in the Ott device, to
improve the heating of the humidifying liquid and to maintain a homogenous
mixture of liquid. (Ans. 6). The only system described with any significant
level of detail in Ott employs liquid absorbing and retaining layers to
distribute the humidifying liquid in the conditioning chamber, through which
the insufflating gas flows to pick up the humidifying liquid. Appellant
correctly notes that the humidifying liquid is essentially immobilized by the
layers such that a distributing element would not be effective in moving the
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liquid around to either enhance heating or promote homogenization of the
mixture. (Appeal Br. 8). This is further evidenced in that, in this
embodiment, the Ott apparatus is not even concerned with heating the
humidifying fluid, but rather the gas, as the gas passes through the chamber.
(See, Ott, col. 5, ll. 28-30, “heating element 134 heats the insufflation gas
supplied through the inlet”; and col. 7, ll. 25-27, “[t]his [dual coil]
arrangement allows for maximum contact of the gas flowing through the
chamber with a heating element”).
Ott, as recognized by Appellant, discloses in one brief, six-line
paragraph, that a chamber of liquid having semi-permeable membranes on
opposite ends, but without employing liquid-retaining layers, could be used
as the humidification source. (Ott, col. 5, ll. 14-19). Ott discloses, for this
embodiment, that a heating jacket could be placed around the chamber,
which would appear to negate any need for a fluid distributing element to
maintain even heating of the liquid.
Ott further, and contrary to the Examiner’s position1, does not discuss,
relative to either embodiment, any particular need to maintain a homogenous
mixture in the chamber. Instead, Ott espouses the use of a chamber that will
contain approximately 3 to 8, but possibly as much as 10, cubic centimeters
of liquid, in a housing having a typical length of 0.5 to 1.5 cm, and a
diameter of about 3.0 to 5.0 cm. (Ott, col. 6, ll. 42-43; col. 6, ll. 55-57). Ott
discusses recharging of the liquid given up to the insufflation gas by
periodically injecting a syringeful of liquid into the chamber. (Ott, col. 4, ll.

1 The Examiner maintains that Ott is in the “field of endeavor/problem
solving area of homogenizing mixtures in liquid tanks”, and that “both [Ott
and Krum] are related to liquid-filled tanks with homogenization devices”.
(Ans. 6, 9).
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48-51). Given the small scale of the conditioning chamber of Ott, and the
lack of any disclosure in Ott that homogenization of the liquid once placed
in the chamber would be necessary or desirable, persons of ordinary skill in
the art would not likely contemplate that the apparatus would benefit from
the inclusion of a distributing element of the types disclosed in Krum.
Accordingly, we find that the rationale advanced by the Examiner in
reaching the conclusion that it would have been obvious to modify the Ott
apparatus to include a distributing element as disclosed in Krum is lacking in
rational underpinnings. The rejection of claims 1-3, 5-9, 11 and 12 as being
unpatentable over Ott and Krum will not be sustained.
Notwithstanding that Appellant did not present any arguments
specifically directed to the rejection of claim 10 over Ott, Krum and
Campbell, the Examiner has not relied on Campbell in any manner that
overcomes the deficiencies in attempting to combine the teachings of Ott
and Krum. Accordingly, the rejection of claim 10, which depends from
claims 1 and 9, as being unpatentable, will also not be sustained.

CONCLUSION
The Examiner erred in concluding that it would have been obvious, in
view of the teachings of Krum, to modify the apparatus of Ott to include
distributing elements for distributing medicament in a humidifying liquid
within the Ott conditioning chamber.

DECISION
The decision of the Examiner to reject claims 1-3 and 5-12 is
reversed.
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REVERSED

STAICOVICI, Administrative Patent Judge, DISSENTING:
I cannot join in the majority’s opinion. I do not share the view of my
colleagues that given “the lack of any disclosure in Ott that homogenization
of the liquid once placed in the chamber would be necessary or desirable” a
person of ordinary skill in the art “would not likely contemplate that the
apparatus [of Ott] would benefit from the inclusion of a distributing element
of the types disclosed in Krum.”
The majority appears to require the Examiner to point to a specific
teaching in the applied references that would have provided one of ordinary
skill in the art to make the proposed modification. However, the Supreme
Court has stated that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness. KSR v. Teleflex,
550 U.S. 398, 419 (2007). Rejection on obvious grounds must be supported
by “some articulated reasoning with some rational underpinning” to combine
the known elements in the manner required in the claim at issue. Id. at 418.
However, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
The majority states that the Examiner’s reasoning “to modify the Ott
apparatus to include a distributing element as disclosed in Krum is lacking in
rational underpinning.” I do not agree. Both Appellant and the majority
acknowledge that Ott discloses a humidification means including a chamber
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of liquid (and other substances, i.e., a medicament) without liquid retaining
layers having semi-permeable membranes on opposite sides to allow a gas to
pass therethrough and a heating jacket placed around the chamber to heat
and humidify the gas. Reply Br. 3. See also, Ott, col. 3, ll. 11-13 and 5, ll.
14-19. Krum discloses a stirrer 176 for mixing a water and salt composition.
Krum, col. 8, ll. 1-4 and fig. 2. The Examiner articulates a reason for the
modification of the device of Ott with the distributing element (stirrer) of
Krum supported by some rational underpinning, namely, “to ensure
maximum contact with the heating element of Ott etal and also maintain a
homogeneous mixture within the conditioning chamber.” See Ans. 6. A
person of ordinary skill in the art would have readily appreciated that
providing a mixing element, such as Krum’s stirrer, to the liquid chamber of
Ott, would both homogenize the liquid mixture and maintain the liquid
mixture at a uniform temperature, resulting in a gas having more uniform
temperature and humidification profiles. “A person of ordinary skill is also
a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Appellant’s claimed device is nothing more than Ott’s device having a stirrer
as taught by the Krum. Modifying the device of Ott to include a stirrer as
taught by Krum would not have been uniquely challenging to a person of
ordinary skill in the art, because it is no more than “the mere application of a
known technique to a piece of prior art ready for the improvement.” KSR,
550 U.S. at 417. An improvement that is nothing more than the predictable
use of prior elements according to their established functions is likely to be
obvious. Id. The majority has not convinced me that the modification of
Ott proposed by the Examiner is anything more than that. Inasmuch as the
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majority’s analysis has not persuaded me that the rejections should be
reversed, I respectfully dissent.

JRG