Ex Parte Glenn

Board of Patent Appeals and Interferences

Feb 25, 2008

10382771 (B.P.A.I. Feb. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSHUA P. GLENN
____________

Appeal 2008-0215
Application 10/382,771
Technology Center 3700
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Decided: 25 February 2008
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Before JAMESON LEE, MURRIEL E. CRAWFORD, and RICHARD
TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL 1
A. Statement of Case 2
This is a decision on appeal by an Applicant under 35 U.S.C. § 134(a) 3
from a final rejection of claims 1-11. We have jurisdiction under 35 U.S.C. 4
§ 6(b). 5
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Application 10/382,771

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References Relied on by the Examiner 1
Arndt US 6,086,529 Jul. 11, 2000 2
Kee US 5,628,306 May 13, 1997 3
4
The Rejection on Appeal 5
The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as 6
unpatentable over Arndt and Kee. 7
8
B. Issues 9
Has the Applicant shown error in the rejection of claims 1-11 over 10
Arndt and Kee? 11
12
C. Summary of the Decision 13
The Applicant has not shown error in the rejection of claims 1-8 over 14
Arndt and Kee. 15
The Applicant has shown error in the rejection of claims 9-11 over 16
Arndt and Kee. 17
18
D. Findings of Fact (Referenced as FF. ¶ No.) 19
1. The disclosed invention relates to a bronchoscope manifold 20
with a one-way valve that is inserted between a bronchoscopic manifold port 21
and a sealing cap and which functions to protect a surgeon from 22
contamination by a patient's bodily fluids during removal of a flexible fiber 23
optic bronchoscope. (Spec. 6-7). 24
25
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2. Independent claims 1, 5, and 9 are reproduced below:1 1
1. In a bronchoscopic manifold having: a tubular passage 2
opening to a hollow body of said manifold consisting of a tubular 3
conduit open to said manifold and exterior to said manifold; a 4
mechanical ventilation port open to said manifold interior for 5
connection to an otherwise conventional mechanical ventilator; and an 6
endotracheal tube connection port open to said manifold interior for 7
use as a patient connection, wherein the improvement comprises: 8
9
a bronchoscopic manifold port formed opposite and in line 10
along a central axis to said patient connection port and open to the 11
interior of said manifold; 12
13
an end cap for covering the external opening of the 14
bronchoscopic manifold port, wherein said end cap forms a sealing lid 15
which may be opened and closed to allow the introduction and 16
removal of a fiberoptic bronchoscope and form a gas tight seal when 17
closed; and 18
19
a unidirectional flow control valve between said bronchoscopic 20
manifold port and said end cap. 21
22
wherein when a fiberoptic bronchoscope is insertable through said 23
flow control valve and into the bronchoscopic manifold port. 24
25
5. A flexible fiber optic bronchoscope one-way valve 26
comprising: 27
28
a bronchoscopic manifold having a tubular passage opening to a 29
hollow body of said manifold comprising of a tubular conduit open to 30
said manifold and exterior to said manifold; 31
32

1 Claim 1 includes an extraneous “.” following the term “cap” in the body of the claim. Both the Examiner
and Applicant appear to have treated this period as nonexistent. So do we. Claims 1, 5, and 9 include an
extraneous “when” in the final wherein clause. Both the Examiner and the Applicant appear to have treated
the term “when” as nonexistent. So do we.

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a mechanical ventilation port open to said manifold interior for 1
connection to an otherwise conventional mechanical ventilator; 2
3
an endotracheal tube connection port open to said manifold 4
interior for use as a patient connection; 5
6
a bronchoscopic manifold port formed opposite and in line 7
along a central axis to said patient connection port and open to the 8
interior of said manifold; 9
10
an end cap for covering the external opening of the 11
bronchoscopic manifold port, wherein said end cap forms a sealing lid 12
which may be opened and closed to allow the introduction and 13
removal of a fiberoptic bronchoscope and form a gas tight seal when 14
closed; and 15
16
a unidirectional flow control valve between said bronchoscopic 17
manifold port and said end cap; 18
19
a circumscribing housing formed around and encompassing 20
said unidirectional flow control valve; 21
22
wherein when a fiberoptic bronchoscope is insertable through said 23
flow control valve and into the bronchoscopic manifold port. 24
25
9. A flexible fiber optic bronchoscope one-way valve for 26
use with an otherwise conventional bronchoscopic manifold having a 27
bronchoscopic manifold port covered by a sealing cap, wherein said 28
cap may be opened and closed to allow the introduction and removal 29
of the fiberoptic bronchoscope, said one-way valve comprising: 30
31
a circumscribing housing for connection to said manifold port 32
in place of said sealing cap along a lower receiving ring; 33
34
an upwardly extending, annular attachment protuberance 35
formed opposite said receiving ring for providing an attachment 36
structure for the sealing cap; 37
38
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a unidirectional flow control valve supported within said 1
circumscribing housing; 2
3
wherein when a fiberoptic bronchoscope is insertable through said 4
flow control valve and into the bronchoscopic manifold port. 5
6
3. The Examiner found that Arndt discloses all the limitations of 7
Applicant's claims but “is silent with respect to a unidirectional flow control 8
valve being placed between the bronchoscopic manifold port and the end cap 9
(see Fig. 1)” (Ans. 4:10-12). 10
4. The Examiner turned to Kee to supply the missing element, 11
finding that (Ans. 4:14-22): 12
Kee teaches of an analogous ventilator manifold having an access 13
port 15 including a normally closed valve 16 formed therein which 14
maintains the interior of the manifold 10 isolated from the atmosphere 15
at all times. The valve is made of a resilient material which can be 16
forced open by an adapter 11 and will return to a closed and airtight 17
position open removal of the adapter so as to provide for a respiratory 18
support system which allows attachment and detachment of accessory 19
devices without interruption of continuous patent [sic] respiratory 20
support (see Col. 5, Lines 43-67 and Fig. 3). Kee teaches the adapter 21
may be formed as a part of a bronchoscope (see Col. 3, Lines 5-57). 22
23
5. The Examiner reasoned (Ans. 4:22 to 5:3): 24
It would have been obvious to one skilled in the art at the time the 25
invention was made to place a unidirectional valve between the 26
bronchoscopic manifold port and end seal in the apparatus of Arndt in 27
order to ensure complete and airtight closure of the valve after 28
removal of the bronchoscope, as taught by Kee. 29
30
E. Principles of Law 31
Obviousness is a legal determination made on the basis of underlying 32
factual inquiries including (1) the scope and content of the prior art; (2) the 33
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differences between the claimed invention and the prior art; (3) the level of 1
ordinary skill in the art; and (4) any objective evidence of unobviousness, 2
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). One with ordinary skill 3
in the art is presumed to have skills apart from what the prior art references 4
explicitly say. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). A 5
person of ordinary skill in the art is also a person of ordinary creativity, not 6
an automaton. KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 7
(2007). 8
One cannot show non-obviousness by attacking references 9
individually where the rejections are based on combinations of references. 10
In re Keller, 642 F.2d 413, 426 (CCPA 1981). 11
In an obviousness analysis, it is not necessary to find precise teachings 12
in the prior art directed to the specific subject matter claimed because 13
inferences and creative steps that a person of ordinary skill in the art would 14
employ can be taken into account. See KSR International Co. v. Teleflex 15
Inc., 127 S.Ct. 1727, 1741 (2007). A basis to combine teachings need not be 16
expressly stated in any prior art reference. In re Kahn, 441 F.3d 977, 989 17
(Fed. Cir. 2006). There need only be an articulated reasoning with rational 18
underpinnings to support a motivation to combine teachings. In re Kahn, 19
441 F.3d at 988. 20
21
F. Analysis 22
The Applicant must show error in the decision of the Examiner finally 23
rejecting all of applicant’s claims 1-11. 24
For independent claims 1, 5, and 9, the Applicant argues that the flow 25
valve as recited in the claims is not disclosed, taught, or suggested by Arndt 26
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(Br. 4:12-16). The argument is misplaced because the rejection is based on 1
the combined teachings of Arndt and Kee. The Examiner specifically stated 2
that Arndt is “silent with respect to a unidirectional flow control valve being 3
placed between the bronchoscopic manifold port and the end cap (see 4
Fig. 1).” One cannot show non-obviousness by attacking references 5
individually when the rejections are based on a combination of references. 6
In re Keller, 642 F.2d 413, 426 (CCPA 1981). 7
Claim 2 depends on claim 1, and claim 6 depends on claim 5. Each of 8
claims 2 and 6 specifies that the unidirectional flow control valve as 9
“resiliently returning to cover the bronchoscope manifold port upon removal 10
of a bronchoscope in a manner to eliminate discharge of fluid or secretions 11
that may be forced outward as a result of any suction or mechanical agitation 12
caused by the removal of the bronchoscope.” The Applicant argues (Br. 5:5-13
6) that Arndt fails to teach or suggest an apparatus having that feature and 14
therefore claims 2 and 6 are also patentably distinct from Arndt. However, 15
the Examiner determined that the flow valve of Kee is inherently capable of 16
eliminating discharge of fluid and secretions (Ans. 5:11-16). The Applicant 17
failed to explain why the inherency finding is incorrect. 18
For claims 1, 5, 9, and 2 and 6, the Applicant further argues that the 19
prior art references fail to cite every element of the claimed invention (Br. 20
6:6-7). The argument is misplaced because the rejections are based on 21
obviousness under 35 U.S.C. § 103. For an obviousness determination, 22
there is no requirement that each element claimed must be expressly recited 23
in some reference. In an obviousness analysis, it is not necessary to find 24
precise teachings in the prior art directed to the specific subject matter 25
claimed because inferences and creative steps that a person of ordinary skill 26
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in the art would employ can be taken into account. See KSR International 1
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). The Applicant also does 2
not state which claim element is not recited in any reference. The Appeal 3
Brief is also silent as to what is or is not disclosed by Kee. 4
The Applicant also argues that there is no suggestion as to the 5
desirability of any modification of the references to describe the present 6
invention (Br. 6:5-6). Specifically, the Applicant states (Br. 6:11-16): 7
There is nothing in the prior art or the Examiners arguments 8
that would suggest the desirability or obviousness of making a 9
unidirectional flow control valve for use in the bronchoscopic 10
port of a bronchoscopic manifold, wherein the valve supports 11
the broncoscope during use, and is resiliently returned to cover 12
the opening of the broncoscopic port when the bronchoscope is 13
removed, thereby shielding the health care worker from 14
expression or expulsion of bodily fluid during extraction of the 15
bronchoscope. 16
17
The argument is not persuasive because the Applicant does not 18
specifically address the rationale put forth by the Examiner for 19
combining the teachings of Arndt and Kee.2 Motivation to combine 20
teachings need not be expressly stated in any prior art reference. In re 21
Kahn, 441 F.3d 977, 989. (Fed. Cir. 2006). There need only be an 22
articulated reasoning with rational underpinnings to support a 23
motivation to combine teachings. In re Kahn, 441 F.3d at 988. 24
The Examiner has set forth a reasoned and sensible rationale for 25
combining the teachings of Arndt and Kee. That rationale has been 26
ignored by the Applicant. As is explained by the Examiner (Ans. 4:22 27
to 5:3): 28

2 A feature argued by the Applicant, that the flow valve supports the bronchoscope during use, is not
present in any claim on appeal.
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It would have been obvious to one skilled in the art at the time 1
the invention was made to place a unidirectional valve between 2
the bronchoscopic manifold port and end seal in the apparatus 3
of Arndt in order to ensure complete and airtight closure of the 4
valve after removal of the bronchoscope, as taught by Kee. 5
6
The rationale is sensible and logical. The Applicant has not 7
explained why the reasoning should be regarded as wrong or 8
otherwise inadequate for combining the teachings of Arndt and Kee as 9
is proposed by the Examiner. 10
The housing feature of independent claim 9, however, has not 11
been addressed by the Examiner and is contested by the Applicant 12
(Br. 4:13-14). According to claim 9, the elements associated with the 13
housing are: 14
a circumscribing housing for connection to said manifold port 15
in place of said sealing cap along a lower receiving ring; 16
17
an upwardly extending, annular attachment protuberance 18
formed opposite said receiving ring for providing an attachment 19
structure for the sealing cap; 20
21
a unidirectional flow control valve supported within said 22
circumscribing housing. 23
24
Kee does not disclose the specific structures noted above. It is not 25
apparent to us, and the Examiner has not articulated why, the claimed 26
invention including these specific elements associated with the 27
housing would have been obvious to one with ordinary skill in the art. 28
Accordingly, the rejection of claims 9-11 cannot be sustained.3 29

3 Claim 10 depends from claim 9, and claim 11 depends from claim 10. The dependent claims include
all the limitations of the independent claim.
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We note that claim 5 also recites a circumscribing housing but 1
does not include many of the other specific features recited in claim 9 2
in connection with the housing. Claim 5 simply calls for: 3
a circumscribing housing formed around and encompassing 4
said unidirectional flow control valve. 5
6
The Applicant has not argued that the above quoted feature is not 7
present in Kee’s valve. Kee does disclose that when its valve 16 is 8
incorporated in a manifold, the manifold itself forms a circumscribing 9
housing that encompasses the valve (see Kee, Fig. 2). Therefore, the 10
limitation is met by Kee and no error has been shown in the rejection 11
of claim 5. 12
13
G. Conclusion 14
The rejection of claims 1-8 under 35 U.S.C. § 103 as unpatentable 15
over Arndt and Kee is affirmed. 16
The rejection of claims 9-11 under 35 U.S.C. § 103 as unpatentable 17
over Arndt and Kee is reversed. 18
19
20
21
AFFIRMED-IN-PART 22
23
24
25
26
27
28
29
30
31
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John D. Gugliotta, P.E., Esq. 1
PATENT, COPYRIGHT & TRADEMARK LAW GROUP 2
PO BOX 506 3
RICHFIELD, OH 44286 4