Ex Parte Kazala et al

Patent Trial and Appeal Board

Jan 12, 2018

13653997 (P.T.A.B. Jan. 12, 2018)

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.
13/653,997 10/17/2012 Richard Marvin Kazala JR. VAC.1016US 8712
60402 7590 01/17/2018
KINETIC CONCEPTS, INC.
c/o Harness Dickey & Pierce
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
ZIMBOUSKI, ARIANA
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01/17/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dgodzisz @ hdp. com
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD MARVIN KAZALA, JR.,
JUSTIN ALEXANDER LONG, and
KENNETH MITCHEL KNOWLES1
Appeal 2016-007401
Application 13/653,997
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Marvin Kazala, Jr. et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1, 3—9, 11—14, 16—18, and 47. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to the Appellants, the real party in interest is KCI Licensing,
Inc. See Appeal Br. 2.
Appeal 2016-007401
Application 13/653,997
CLAIMED SUBJECT MATTER
The claims are directed to a system and apparatus for treating a tissue
site having an in-line canister. Spec. 1. Claims 1 and 47 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A canister for use in administering reduced pressure to a
tissue site, the canister comprising:
a center body comprising a first end, a second end, a first
body conduit, and a second body conduit fluidly separated from
the first body conduit, the first body conduit and second body
conduit extending from the first end to the second end;
a first end cap connected to the first end of the center body,
the first end cap comprising return conduits configured to fluidly
connect one of the body conduits with another of the body
conduits, the first end cap having a port for receiving a first
conduit in fluid communication with the tissue site; and
a second end cap connected to the second end of the center
body, the second end comprising return conduits configured to
fluidly connect one of the body conduits with another of the body
conduits, the second end cap having a port for receiving a second
conduit in fluid communication with a reduced pressure source;
wherein the fluid connection of the body conduits to the
return conduits of the first and second end caps creates a
continuous, tortuous flow path.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sun
Fink
Solomon
Coulthard
US 2004/0064112 A1
US 2008/0082059 A1
US 2009/0234266 A1
US 2010/0125258 A1
Apr. 1, 2004
Apr. 3, 2008
Sept. 17, 2009
May 20, 2010
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Appeal 2016-007401
Application 13/653,997
REJECTIONS
I. Claims 1, 3—9, 11, 13, 16—18, and 47 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Fink and Solomon.
II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Fink, Solomon, and Sun.
III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Fink, Solomon, and Coulthard.
DISCUSSION
Rejection I
The Examiner finds that Fink discloses “a canister for use in
administering reduced pressure to a tissue site (see Abstract, Figs. 5A-5C
and 6[)], the canister comprising: a center body 210 comprising a first end, a
second end, a first body conduit, and a second body conduit fluidly
separated from the first body conduit.” Final Act. 4. The Examiner further
finds that Fink’s “first body conduit and second body conduit extend[] from
the first end to the second end” and that both ends have “a number of return
conduit portions configured to fluidly connect one of the body conduits with
another of the body conduits, wherein the fluid connection of the body
conduits to the return creates a continuous, tortuous flow path (see Fig. 6).”
Id. The Examiner determines that “Fink does not disclose a first end cap
connected to the first end of the center body . . . and a second end cap
connected to the second end of the center body.” Id.
The Examiner further finds that “Solomon discloses a medical device
canister 112 with fluid flow going throughout conduits of the container
wherein end caps 110, 114 attached to a center body 142.” Id. Based on the
findings in Fink and Soloman, the Examiner reasons that it would have been
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Appeal 2016-007401
Application 13/653,997
obvious “to separate the ends of Fink from the center of Fink, since it has
been held that constructing a formerly integral structure in various elements
involves only routine skill in the art.” Id. at 4—5 (citing Nerwin v.
Erlichman, 168 USPQ 177, 179 (BPAI 1069)). The Examiner further posits
that separate ends “allow for easier cleaning of the canister” and reasons that
it would have been obvious “to have each of the ports be on opposite ends of
the canister, as disclosed by Solomon and by Fink in a different embodiment
of the canister (see Fink, Fig. 8) in order to not clog up one side of the
canister with the ports and conduits.” Id. at 5.
Noting that a “claim can be proved obvious by identifying ‘a known
problem for which there was an obvious solution’ encompassed by the
claim,” Appellants contend that “[t]he Examiner identifies no need or
problem that was known in the art. Thus, there is no apparent reason for a
person having ordinary skill in the art to modify Fink as the Examiner
suggests.” Appeal Br. 9 (citation omitted). In support of this contention,
Appellants note that the Examiner “provides no evidence that the Fink
container was intended to be cleaned, much less evidence of any known
problem cleaning the Fink canister.” Id. In other words, Appellants contend
that the reasons for the proposed combination lack rational underpinning.
As discussed supra, the rejection identifies Fink’s channels 210 as
corresponding to the claimed center body. Final Act. 4. Fink describes
channels 210 as part of container 202 for collecting exudates from a wound
and to prevent such exudates from reaching the pump. See Fink | 51. Fink
further states that “[i]n the embodiment of FIG. 5 A, container 202, wound
dressing 206 and tubing 222 are intended to be replaced after a
predetermined period of time which extends between about one to about
seven days, more about three days.” Id. at | 54. As the purpose of Fink’s
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Appeal 2016-007401
Application 13/653,997
channels 210 are to collect exudates from a wound and these channels, as
part of container 202, are designed to be disposed of within a short period of
time, there does not appear to be any reason to modify Fink’s container 202
or Fink’s container’s channels 210 to allow for cleaning. Accordingly, the
Examiner’s reasoning lacks rationale underpinning.
As noted supra, the rejection also relies upon case law in support of
the conclusion of obviousness. Final Act. 5. However, in the Answer the
Examiner concedes that “Nerwin does not actually establish support for
separating parts of a device.” Ans. 4. Thus, Nerwin does not cure the
deficiencies in the reasoning set forth by the Examiner.
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 1 and 47, and claims 3—9, 11, 13, and 16—18, which depend from
claim 1, as unpatentable over Fink and Soloman.
Rejections II and III
Rejections II and III rely upon the same flawed reasoning as Rejection
I. Accordingly, we do not sustain the Examiner decision rejecting claim 12
as unpatentable over Fink, Soloman, and Sun. Likewise we do not sustain
the Examiner’s decision rejecting claim 14 as unpatentable over Fink,
Soloman, and Coulthard.
DECISION
The Examiner’s rejections of claims 1, 3—9, 11—14, 16—18, and 47 are
REVERSED.
REVERSED
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