Ex Parte French et al

Patent Trial and Appeal Board

Oct 22, 2012

11501238 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte C. KENNETH FRENCH, GARRETT BARKER,
and WYATT EARP
____________________

Appeal 2010-009498
Application 11/501,238
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, JAMES P. CALVE, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-009498
Application 11/501,238
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from rejections of claims 1-
7, 10-21, and 24-30. App. Br. 1.1 Claims 8, 9, 22, and 23 have been
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a warming unit for a patient infusion
medium. Claim 1, reproduced below, is illustrative of the claimed subject
matter on appeal:
1. A warming unit for warming a patient
infusion medium comprising:
an inlet tube;
an outlet tube;
a fluid conduit disposed between and in
communication with the inlet tube and the outlet
tube;
a heating element disposed proximate to the
fluid conduit for warming the patient infusion
medium, wherein a portion of the fluid conduit is
defined by the heating element; and
an outer casing sealably enclosing the fluid
conduit and housing the heating member, wherein

1 Claim 31 is pending and rejected. Appellants do not appeal the
rejection of claim 31 (App. Br. 1) despite the rejection being ripe for appeal
(see 35 U.S.C. § 134(a) (stating “An applicant for a patent, any of whose
claims has been twice rejected, may appeal from the decision of the primary
examiner . . . .”). Upon return of jurisdiction of this application to the
Examiner, the Examiner should consider canceling claim 31. See Ex parte
Ghuman, 88 USPQ2d 1478 (BPAI 2008) (per curiam). This citation to the
Appeal Brief refers to the Appellants Response to Notice of Non-Compliant
Appeal Brief, dated November 21, 2008. In all other instances, “App. Br.”
refers to the Appellants’ original Brief on Appeal filed November 4, 2008.
Appeal 2010-009498
Application 11/501,238
3
a portion of the fluid conduit is defined by an inner
surface of the outer casing;
a connector that connects the warming unit
to a separate controller that is located externally to
the outer casing of the warming unit.

App. Br., Claims Appx. 21.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ogawa US 4,680,445 Jul. 14, 1987
REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 10 and 24 stand rejected under 35 U.S.C § 112, second
paragraph, as being indefinite. Ans. 3.
2. Claims 1-6, 10-20, and 24-31 stand rejected under 35 U.S.C § 102(b)
as being anticipated by Ogawa. Ans. 3-4.
3. Claims 1-7, 10-21, and 24-31 stand rejected under 35 U.S.C § 103(a)
as being obvious over Ogawa. Ans. 4-5.
OPINION
Claims 10 and 24 as being indefinite
The Examiner rejected claims 10 and 242 as indefinite under 35

2 Appellants refer to claims 10 and 14 (rather than claims 10 and 24)
as being rejected under 35 U.S.C. § 112, second paragraph. App. Br. 6;
Reply Br. 5. Claim 14 does not include the “anatomical shape” language
upon which the Examiner based the rejection, but claim 24 does. App. Br.,
Claim Appx. 23 and 25. We treat Appellants’ reference to claim 14 as a
Appeal 2010-009498
Application 11/501,238
4
U.S.C. § 112, second paragraph, based on his finding that “anatomical shape
of a patient” is an undefined relative term. Ans. 3. The Examiner found that
patients may have “many different anatomical shapes that differ vastly from
each other,” which results in “anatomical shape” not delimiting the scope of
the claimed invention with any distinction. Ans. 6. The Examiner rejected
the Appellants’ argument that their Figure 1 illustrates an embodiment of the
claims because “it is unclear if this depicted shape is the sole shape that falls
within the Appellant’s ‘anatomical shape’ limitation.” Ans. 6-7.
Appellants argue that a skilled artisan would understand what is
claimed because (1) the term “anatomical shape” is well known and
understood in the art and (2) the specification illustrates the claimed feature
and discloses that “the outer casing is contoured to conform to an anatomical
shape of a patient.” Reply Br. 5. The Appellants identify their own Figure 1
as illustrating the “anatomical shape” limitation with reference to a patient
and Figure 7 as illustrating the claimed shape without reference to a patient.
Id. Appellants further argue that “[t]he claims need not claim every possible
variation in anatomical shape, nor every possible anatomical shape variation
between patients in order to be definite.” Reply Br. 6. We agree.
The validity of a claim under 35 U.S.C. § 112, second paragraph, is
determined based on whether a skilled artisan would understand what is
claimed when reading the claim in light of the specification. Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Merely that a claim is broad does not mean that it is indefinite. See In re
Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977).

typographical error, and we consider Appellants’ argument to be directed to
claims 10 and 24.
Appeal 2010-009498
Application 11/501,238
5
The claim limitation in Orthokinetics that was found to pass muster
under the requirements for distinctly claiming inventions under 35 U.S.C.
§ 112, second paragraph was:
wherein said front leg portion is so dimensioned as to be
insertable through the space between the doorframe of an
automobile and one of the seats thereof.
Orthokinetics, 806 F.2d 1565, 1575 (emphasis in original). The Federal
Circuit explained its rationale for reversing the lower court’s finding that the
claim was invalid for indefiniteness under 35 U.S.C. § 112, second
paragraph as follows:
The claims were intended to cover the use of the invention with
various types of automobiles. That a particular chair on which
the claims read may fit within some automobiles and not others
is of no moment. The phrase ‘so dimensioned’ is as accurate as
the subject matter permits, automobiles being of various sizes.
As long as those of ordinary skill in the art realized that the
dimensions could be easily obtained, § 112, 2d ¶ requires
nothing more.
Id. at 1576 (internal citations omitted).
Here, a skilled artisan may discern the scope of “contoured to conform
to an anatomical shape of a patient” by reference to a person to whom the
claimed device is to be fitted. The variation in car door openings that was
present in Orthokinetics did not render the “so dimensioned” limitation on
the claimed chair fatally indefinite. We similarly conclude that the
references to “a patient” in claims 10 and 24 sufficiently delineate the scope
of “contoured to conform to an anatomical shape of a patient” to satisfy the
definiteness requirements of § 112, second paragraph. We therefore reverse
the Examiner’s rejection of claims 10 and 24 for indefiniteness.
Appeal 2010-009498
Application 11/501,238
6
Claims 1-7, 10-21, and 24-30 as
anticipated and/or rendered obvious by Ogawa
The Examiner rejected claims 1-6, 10-20, and 24-31 as being
anticipated by Ogawa. Ans. 3-4. The Examiner also rejected claims 1-7,
10-21, and 24-31 as obvious over Ogawa. Id. at 4-5. Therefore, claims 1-7,
10-21, and 24-31 stand rejected in light of Ogawa.3 The Examiner found:
Ogawa discloses the claimed invention including, inter
alia, a warming unit having an inlet tube, an outlet tube, a
serpentine fluid conduit, a laminated heating element proximate
the fluid conduit and having generally the same shape, an outer
casing, and a controller. The heating element is disposed on a
substrate and is formed in sinuous shape generally aligned with
the fluid conduit. The outer casing may also comprise a first
and second portion permanently attached to one another in a
sealed arrangement.
Id. at 3-4. The Examiner also found that Ogawa discloses that “the heating
plates and the inner side of the casing serve to ‘define’ the serpentine flow
passage.” Id. at 4.
Appellants argue that Ogawa fails to disclose or suggest the warming
unit for infusion media of claim 1 having “an outer casing sealably enclosing
the fluid conduit and the heating member, wherein a portion of the fluid
conduit is defined by an inner surface of the outer casing.” App. Br. 7.
Appellants also argue that Ogawa fails to disclose or suggest the warming
unit of claim 15 in which: (1) “a portion of the fluid conduit is defined by an

3 Regarding claims 7 and 21, the Examiner asserts that locating a
temperature sensor within the fluid conduit, while not disclosed by Ogawa,
is “common in the art of fluid heating and … an obvious design choice.”
Ans. 5. This finding does not cure the deficiencies of Ogawa as to
independent claims 1, 15, and 29.
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Appeal 2010-009498
Application 11/501,238
8
We therefore conclude that the Examiner erred in finding that Ogawa
teaches or suggests a fluid conduit that is defined in part by portions of:
(1) the inner surface of the casing and (2) the heating element as called for in
independent claims 1, 15, and 29. The Examiner’s finding that it would
have been obvious to provide a controller external to the outer casing as
called for in these claims (see Ans. 4-5, 6) does not remedy this deficiency.
Claims 1-7, 10-21, and 24-30 recite such a fluid conduit. Therefore, we
conclude that Ogawa neither anticipates nor renders obvious claims 1-7, 10-
21, and 24-30, and we reverse the Examiner’s rejections of these claims.
DECISION
For the reasons expressed above, the Examiner’s rejections of claims
1-7, 10-21, and 24-30 are reversed.
REVERSED

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