Ex Parte Kim

Patent Trial and Appeal Board

Feb 25, 2013

11950187 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAE-HWANG KIM
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Appeal 2011-006578
Application 11/950,187
Technology Center 3700
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Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for diverting feces. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Application 11/950,187

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STATEMENT OF THE CASE
Claims 1-4 and 7-9 are on appeal. Claim 1, the only independent
claim on appeal, is representative and reads as follows (emphasis added):
1. An apparatus for diverting feces, comprising:
a tubular body part;
an internal balloon formed at the inside of the tubular
body part;
at least one external balloon formed at the outside of the
tubular body part;
an enema liquid injection hole formed through a forefront
of the tubular body part, so as to allow an enema liquid to be
injected into an intestinal tract of a patient through a control
tube;
a device controller connected to the control tube
controlling the injection of the enema liquid, supplied from an
enema liquid supplying unit, into the intestinal tract through the
control tube, the device controller having a memory;
an internal balloon filling unit causing a filler to fill the
internal balloon or to be discharged from the internal balloon;
an external balloon filling unit causing the filler to fill the
at least one external balloon or to be discharged from the at
least one external balloon;
a fecal diverting program in the memory of the device
controller for controlling the internal balloon filling unit and the
external balloon filling unit; and
an intestinal pressure sensing unit connected to the
device controller, the device controller contracting the internal
balloon when the intestinal pressure sensing unit senses a
pressure greater than a critical pressure to relieve the intestinal
pressure without deflating the at least one external balloon.

The claims stand rejected as follows:
Appeal 2011-006578
Application 11/950,187

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I. Claims 1-3 and 7-9 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Kim,
1
Griffiths,
2
and Corday.
3

II. Claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Kim,
Griffiths, Corday, Xu
4
and Pham.
5

The same issue is dispositive for each of the rejections.
Issue
The Examiner finds that the combination of Kim and Griffiths does
not ―teach that the [balloon-filling] action is controlled by an intestinal
pressure sensing unit cooperating with the device controller‖ (Ans. 6).
However, the Examiner finds that it ―would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify Kim to
include a controlling unit and pressure sensing unit, as taught by Corday et
al., for the purpose of providing safe conditions so that no damage occurs
internally‖ (id. at 7, citing Corday at col 7, ll. 57-62).
Appellant contends that ―the Examiner fails to explain how the
program in the memory of Griffiths et al.’s pump controller 30, inflating and
deflating a balloon to treat an occlusion, qualifies as the claimed fecal
diverting program‖ (App. Br. 4). Appellant contends that ―[t]here is no
explanation of how the pressure sensors of Corday et al. would be integrated
with the controller of Griffiths et al. [s]ince the controller of Griffiths et al.
does not use pressure measurements as a factor in taking control action‖

1
Kim, US 2005/0033226 A1, published Feb. 10, 2005.
2
Griffiths et al., US 2007/0197963 A1, published Aug. 23, 2007.
3
Corday et al., US 4,689,041, issued Aug. 25, 1987.
4
Xu et al., US 2003/0195481 A1, published Oct. 16, 2003.
5
Pham et al., US 2003/0208156 A1, published Nov. 6, 2003.
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(id.). Thus, the ―prior art, taken alone or in combination, does not disclose
... an intestinal pressure sensing unit connected to the device controller‖ (id.
at 5).
The issue presented is:
Does the evidence of record support the Examiner’s findings that the
cited prior art renders claim 1 obvious?
Findings of Fact
The following findings of fact (―FF‖) are supported by a
preponderance of the evidence of record.
FF1. Griffiths discloses a medical injection and inflation system
which ―generally comprises a fluid delivery system comprising at least one
pressurizing device, a fluid path adapted to connect the at least one
pressurizing device to a patient via a catheter comprising a balloon and
inserted in the patient, and a control unit‖ (Griffiths 2, ¶ [0019]).
FF2. Griffiths discloses that the control unit may be programmed to
set a limit on the inflation rate or pressure increase in the balloon or other
components in the fluid path in order to prevent damage to the blood vessel
(see, e.g., id. at ¶¶ [0056], [0062], and [0072]).
FF3. Corday discloses ―a method and system for the controlled
directional venous retroinfusion of a variety of fluids, pharmacologic agents
or diagnostic contrast solutions, either alone or in association with arterial
blood‖ (Corday col. 2, ll. 25-29).
FF4. ―The balloon is then deflated after a particular treatment period,
or else retroinfusion is reduced or terminated whenever the fluid pressure in
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the regional vein exceeds a predetermined maximal pressure which could
lead to tissue damage‖ (id. at Abstract).
FF5. The Corday system includes a pressure sensing device, where
The pressure sensing device 30 is in operative communication
with a control means 36 which is activated by pressure signals
indicating excessive pressures in the coronary sinus 25 and
which triggers a reduction or termination of the operation of
pump 32 to thereby regulate the delivery of retroinfusate to and
pressure within the coronary sinus 25

(id. at col. 6, ll. 34-41).

Principles of Law
―[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.‖ In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
When determining whether a claim is obvious, an examiner must
make ―a searching comparison of the claimed invention — including all its
limitations — with the teachings of the prior art.‖ In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), ―a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.‖ Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
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does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.
Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of ―whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue‖) (emphasis
added). Similarly, as our reviewing court has stated, ―obviousness requires a
suggestion of all limitations in a claim.‖ CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Analysis
We agree with Appellant that the cited references do not support a
prima facie case of obviousness. Like Appellant, we are unable to find
where in the cited references an intestinal pressure sensing unit is taught.
We further agree that the Examiner has not adequately explained how
references related to vascular pressure or vascular damage (see, e.g., FF1 –
FF5) would have suggested using an intestinal pressure sensing unit for
diverting feces in a device such as that taught by Kim (see App. Br. 4).
Since all claim limitations are not taught or suggested by the applied
prior art, the Examiner has failed to establish a prima facie case for the
obviousness of claim 1.
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Kim,
Griffiths, and Corday discloses an apparatus having all limitations of
independent claim 1 and dependent claims thereto (claims 2-9). We thus
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reverse the rejections under 35 U.S.C. § 103(a) that rely on the teachings of
Kim, Griffiths, and Corday.

SUMMARY
We reverse all rejections on appeal.

REVERSED

cdc