Ex Parte Girard et al

Board of Patent Appeals and Interferences

Aug 30, 2010

10807590 (B.P.A.I. Aug. 30, 2010)

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.
10/807,590 03/24/2004 Mark Girard 706195-2001 3798
7590 08/30/2010
Bingham McCutchen LLP
2020 K Street, NW
Washington, DC 20006
EXAMINER
DESANTO, MATTHEW F
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
08/30/2010 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 MARK GIRARD, BENJAMIN BELL,
and TODD BEAUPRE
____________

Appeal 2009-009212
Application 10/807,590
Technology Center 3700
____________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009212
Application 10/807,590
2
STATEMENT OF THE CASE
Mark Girard et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-10, 13-16, and 18-28, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention is a port for subcutaneous implantation
comprising a housing with two wells, each in fluid communication with one
of two lumens of a substantially F-shaped flow element. Spec. 2, para.
[0004]. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A port for subcutaneous implantation, comprising:
a housing including first and second wells formed
therein; and
a substantially F-shaped flow element including first and
second lumens extending therethrough wherein, when in an
operative configuration the F-shaped flow element is coupled to
the housing with a proximal end of each of the lumens in fluid
communication with a respective one of the first and second
wells for receiving fluid therefrom, and wherein distal ends of
each of the lumens form outlets, each outlet being coupleable to
a lumen of a medical catheter, the F-shaped flow element
including first and second arms extending from a trunk with the
first lumen extending through the first arm to the trunk and the
second lumen extending through the second arm to the trunk,
the first and second lumens being separated from one another
within the trunk, the first arm including a first portion extending
from an intersection with the second arm substantially parallel
to the trunk and a second portion extending substantially
parallel to the second arm, wherein the first portion of the first
arm is separated from the housing by a gap.

Appeal 2009-009212
Application 10/807,590
3
THE REJECTIONS
Appellants seek review of the following decisions by the Examiner:
1. Rejection of claims 1-10, 13-16, and 18-28 under 35 U.S.C.
§ 103(a) as unpatentable over Cupp (US 4,892,518, issued January 9, 1990)
and Ensminger (US 5,542,923, issued August 6, 1996).
2. Rejection of claims 1-10, 13-16, and 18-28 under 35 U.S.C.
§ 103(a) as unpatentable over Ensminger.
ISSUES
The issues presented by this appeal are:
1. Would the substantially F-shaped flow element called for in claim
1 have been obvious to one having ordinary skill in the art in view of Cupp
and Ensminger?
2. Does Cupp disclose a partition as called for in claim 2?
3. Does Cupp disclose a first and second arm with a cross section as
called for in claim 8?
4. Has the Examiner presented a prima facie case of obviousness for
claims 3-7, 9, 10, 14-16, 18, 20, 21, and 23-28 under as being unpatentable
over Cupp and Ensminger?
5. Does Ensminger disclose “a first portion extending from an
intersection with the second arm substantially parallel to the trunk” as
recited in independent claims 1, 13, 19, and 22?

ANALYSIS
Claim Construction
Claim 1 is directed to a port for subcutaneous implantation comprising
a housing with two wells, each in fluid communication with one of the two
lumens of a substantially F-shaped flow element. Claim 1 further defines
Appeal 2009-009212
Application 10/807,590
4
the F-shaped flow element as including “first and second arms extending
from a trunk” with the first and second lumens extending through the first
and second arms, respectively, “the first and second lumens being separated
from one another within the trunk, the first arm including a first portion
extending from an intersection with the second arm substantially parallel to
the trunk and a second portion extending substantially parallel to the second
arm.”
Appellants’ Specification’s definition of the “substantial F-shape” of
the flow element does not require that the flow element precisely mimic the
letter F. Spec. 8, para. [0016]; figs. 2, 3. Rather, Appellant’s Specification
describes that “the F-shape of the flow element 102 refers more generally to
a configuration where 2 arms project from a common trunk substantially
parallel to one another at an angle (e.g., of between 15º to 75º) with respect
to the longitudinal axis of the trunk.” Id.
We construe “substantially parallel” in the context of Appellants’
claim and in light of the Specification, as largely, but not wholly, parallel.2
See York Prods, Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568,
1573 (Fed. Cir. 1996) (construing the term “substantially” as “largely but not
wholly that which is specified”).
In light of these findings, we interpret claim 1 to require that the flow
element generally resemble an F-shape by having have two arms projecting
from a common trunk so that: (1) the second portion of the first arm and the
second arm each extend from the longitudinal axis of the trunk at an angle;
(2) the first arm includes a first portion extending from the intersection with

2 This interpretation seems consistent with Appellants’ assertion that
“substantially parallel” means “not perfectly parallel.” App. Br. 6.
Appeal 2009-009212
Application 10/807,590
5
the second arm largely, but not wholly, parallel to the trunk, and (3) the
second portion of the first arm extends largely, but not wholly, parallel to the
second arm.

Rejection of claims 1-10, 13-16, and 18-28 under 35 U.S.C. § 103(a) as
unpatentable over Cupp and Ensminger
Claims 1, 13, 19, and 22
Appellants argue independent claims 1, 13, 19, and 22 as a group.
App. Br. 5-7; Reply Br. 2-4. We select claim 1 as the representative claim,
and claims 13, 19, and 21 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants assert two reasons why the proposed combination does not
disclose the substantially F-shaped flow element called for in claim 1. First,
Appellants contend that Cupp differs in that Cupp’s Y-connector 107 is
shaped like the letter Y, not like the letter F. App. Br. 5; Reply Br. 2-4.
An annotated version of Figure 7 of Cupp is reproduced below:

Appeal 2009-009212
Application 10/807,590
6
Cupp discloses a port assembly comprised of a port and a catheter
assembly. Cupp, col. 1, ll. 39-40. Figure 7 of Cupp depicts a fragmented
view in longitudinal section of the catheter assembly 15. Cupp, col. 2, ll. 60-
62; fig. 7 (Arrows and labels added to identify portions relating to the flow
element of claim 1). Cupp’s port 13 includes inlet septum 17 and outlet
septum 19. Cupp, col. 3, ll. 43-44; fig. 1. The catheter assembly 15 is
comprised of a long tubular member 101 and a short tubular member 103.
Cupp, col. 4, ll. 66-67; fig. 7.
With reference to Figure 7, Cupp uses the term “Y-connector 107” to
refer to a connector used to join long tubular member 101 and short tubular
member 103. Cupp, col. 4, ll. 66-67; col. 5, ll. 4-5; fig. 7. Correlating this
disclosure to Appellants’ claim language, Cupp is referring to the
intersection of the second arm (short tubular member 103) and the trunk (the
portion of long tubular member 101 at the Y-connector 107) as Y-shaped,
while the claim refers the shape of the entire flow element as F-shaped. The
analogous portion of Appellants’ device (the junction of the second arm 130
to the trunk 132) is also Y-shaped. Spec. 8, para. [0016]; fig. 3. As such,
the fact that Cupp describes its connector 107 between long tubular member
101 and short tubular member 103 as a “Y-connector” does not mean that
Cupp’s entire flow element cannot be F-shaped, as called for in claim 1.
Second, Appellants argue that the proposed combination does not
disclose the claimed substantially F-shaped flow element because the arms
of the proposed combination would not be substantially parallel. App. Br. 6.
As shown above in Figure 7, Cupp discloses that short tubular
member 103 extends from inlet septum 17 to join long tubular member 101
at Y-connector 107 at an acute angle with respect to the longitudinal axis of
Appeal 2009-009212
Application 10/807,590
7
long tubular member 101. Cupp, col. 4, ll. 66-67; col. 5, ll. 4-5, 18-20;
fig. 7. From the intersection with short tubular member 103, long tubular
member 101 continues past inlet septum 17 for a first portion, then turns at
an acute angle to its longitudinal axis for a second portion to enter outlet
septum 19. Cupp, figs 2, 7. Cupp depicts the second portion of the first arm
(the portion of long tubular member 101 entering outlet septum 19) and the
second arm (short tubular member 103), as each extending at an acute angle
from the longitudinal axis of the trunk (the portion of long tubular member
101 between Y-connector 107 to the end of the first portion where long
tubular member 101 turns to join outlet septum 19). Cupp, fig. 7.
Thus, Cupp discloses a second portion of the first arm (the portion of
long tubular member 101 entering outlet septum 19) that extends largely, but
not wholly parallel to the second arm (short tubular member 103), so that the
flow element as a whole substantially resembles the letter F as called for in
claim 1.
Even were we to conclude that Cupp’s second portion of the first arm
(the portion of long tubular member 101 entering outlet septum 19) is not
largely parallel to the second arm (short tubular member 103), this
difference between Cupp’s device and the claimed invention is not a
meaningful one for purposes of an obviousness determination. At best, the
only distinction between Cupp, as modified by Ensminger3, and Appellants’
claimed invention is a slight deviation in angle of the second portion of the
first arm from substantially parallel to the second arm.

3 The Examiner relied on Ensminger to show a first arm separated from the
housing by a gap. Ans. 3-4. Appellants do not contest this finding as to the
scope and content of Ensminger, or the Examiner’s stated reason for
combining Cupp and Ensminger. See App. Br. 5-7.
Appeal 2009-009212
Application 10/807,590
8
Putting this minor distinction in context, nothing in Appellants’
Specification describes that the substantially parallel relationship between
the arms produces unexpected results, or is critical to operation of the
device. Spec., passim. Appellants do not point to, nor do we see, an
alteration in function of the flow element that would be caused if the relative
position of the second portion of the first arm to the second arm deviates
slightly from substantially parallel. App. Br. passim; Reply Br. passim.
Such a small gap between the claimed invention and the prior art cannot be
basis for a determination of nonobviousness over the prior art.
Rather, the minor distinction between the prior art and the claimed
device appears to be an obvious variation of the prior art. See KSR at 417
(2007) (citing to Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (absent
unexpected results, when a patent “simply arranges old elements with each
performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement, the combination is
obvious.)).
Further, this case is analogous to the facts of In re Dailey, 357 F.2d
669, 672-73 (CCPA 1966). In Dailey, Appellant claimed a disposable
nursing container for infants shaped as “a portion of a sphere less than a
hemisphere.” Id. at 670. The court held that Appellants had failed to
establish the significance of the configuration of the container, so that the
claimed shape was merely one of numerous shapes a person of ordinary skill
in the art would find obvious. Id. at 672-673. Here, Appellants likewise
have failed to establish the significance of the shape of the substantially
F-shaped flow element, which appears to be but one of numerous shapes a
person of ordinary skill in the art would find obvious.
Appeal 2009-009212
Application 10/807,590
9
As such, we will sustain the Examiner’s rejection of independent
claim 1 as being unpatentable over Cupp and Ensminger. Claims 13, 19,
and 22 fall with claim 1.
Claims 2-10, 14-16, 18, 20, 21, and 23-28
In the office action that is the subject of this appeal, this rejection
contains no findings related to dependent claims 2-10, 14-16, 18, 20, 21, and
23-28. Office Action dated November 1, 2007, pp. 2-4. Appellants note the
lack of such findings. App. Br. 7. In response, the Examiner finds the
partition of claim 2, and the cross section of the first and second arms of
claim 8 are disclosed in Cupp’s Figures 1 and 2. Ans. 8-9.4 Appellants do
not contest either finding in the Reply Brief.
We agree with the Examiner that Cupp discloses the partition
(partition 105) of claim 2 and the semi-circular cross section of the first and
second arms of claim 8. Cupp, col. 5, ll. 7-11; figs. 1, 2, 7, and 9. As such,
we sustain the rejection of claims 2 and 8. Ex Parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (citing to Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) for the proposition that the Board may treat
arguments appellant failed to make as waived).
Regarding the remaining claims, the absence of adequate findings
corresponding to each claim fails to put Appellants on notice of the reasons
for the rejection. The Examiner has not made a prima facie case regarding
claims 3-7, 9, 10, 14-16, 18, 20, 21, and 23-28. Ex Parte Frye, 94 USPQ2d
at 1075 (“The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the

4 The Examiner makes other general comments, but these comments do
make adequate findings with respect to specific claims to address where the
remaining claim limitations can be found in the references. Id.
Appeal 2009-009212
Application 10/807,590
10
applicant is not entitled to a patent on the claim scope that he seeks – the so-
called ‘prima facie case.’” (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). As such, we will sustain the Examiner’s rejection of dependent
claims 2 and 8, but are constrained to reverse the rejection of dependent
claims 3-7, 9, 10, 14-16, 18, 20, 21, and 23-28.

Rejection of claims 1-10, 13-16, and 18-28 under 35 U.S.C. § 103(a) as
unpatentable over Ensminger
Independent claims 1, 13, 19, and 22 each call for “a first portion [of a
first arm] extending from an intersection with the second arm substantially
parallel to the trunk.”
Ensminger discloses an implantable infusion port that includes a pair
of lumens 100 and 100’ connected to outlet nipples 92 and 92’ that converge
to form multi-lumen catheter 90. Ensminger, col. 3, ll. 9-10; col. 9, ll. 58-
65; fig. 4. Ensminger’s first arm (lumen 100) joins the second arm (lumen
100’) at the trunk (multi-lumen catheter 90), and does not include a first
portion extending from the intersection with the second arm (lumen 100’)
substantially parallel to the trunk (multi-lumen catheter 90). Id. Because
Ensminger does not disclose “a first portion extending from an intersection
with the second arm substantially parallel to the trunk,” we agree with
Appellants (App. Br. 8; Reply Br. 4) that Ensminger does not disclose the
substantially F-shaped flow element called for in independent claims 1, 13,
19, and 22. The rejection of claims 2-10, 14-16, 18, 20, 21, and 23-28 is
also in error by virtue of their dependence from independent claims 1, 13,
19, and 22.

Appeal 2009-009212
Application 10/807,590
11
CONCLUSIONS
The substantially F-shaped flow element called for in claim 1 would
have been obvious in view of Cupp and Ensminger.
Cupp discloses a partition as called for in claim 2.
Cupp discloses a first and second arm with a cross section as called
for in claim 8.
The Examiner failed to make a prima facie case with regard to claims
3-7, 9, 10, 14-16, 18, 20, 21, and 23-28 under 35 U.S.C. § 103(a) as
unpatentable over Cupp and Ensminger.
Ensminger does not disclose “a first portion extending from an
intersection with the second arm substantially parallel to the trunk” as
recited in independent claims 1, 13, 19, and 22.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 2, 8, 13, 19,
and 22 under 35 U.S.C. § 103(a) as unpatentable over Cupp and Ensminger.
We REVERSE the Examiner’s decision to reject claims 3-7, 9, 10, 14-
16, 18, 20, 21, and 23-28 under 35 U.S.C. § 103(a) as unpatentable over
Cupp and Ensminger.
We REVERSE the Examiner’s decision to reject claims 1-10, 13-16,
and 18-28 under 35 U.S.C. § 103(a) as unpatentable over Ensminger.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART
Appeal 2009-009212
Application 10/807,590
12

nlk

BINGHAM McCUTCHEN, LLP
2020 K STREET NW
WASHINGTON DC 20006