Ex Parte LIM

Patent Trial and Appeal Board

Feb 24, 2017

13653565 (P.T.A.B. Feb. 24, 2017)

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.
13/653,565 10/17/2012 ALEX L. LIM 1156.067 6728
24955 7590
ROGITZ & ASSOCIATES
Jeanne Gahagan
750 B STREET
SUITE 3120
SAN DIEGO, CA 92101
EXAMINER
EKRAMI, YASAMIN
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
John@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX L. LIM
Appeal 2015-005645
Application 13/653,5651
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alex L. Lim (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s non-final decision rejecting claims 1—3, 6, and 7 under 35
U.S.C. § 102(b) as anticipated by Pompa (US 6,749,625 B2, iss. June 15,
2004).2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Zoll Circulation,
Incorporated. Appeal Br. 2 (filed March 2, 2015).
2 The Advisory Action, dated April 16, 2015, indicates that Appellant’s
amendment, filed March 2, 2015, has been entered, leaving only claims 1—3,
6, and 7 pending in the Application.
Appeal 2015-005645
Application 13/653,565
INVENTION
Appellant’s invention “relates generally to patient temperature control
systems.” Spec. 1. Claim 1, reproduced below, is independent and
representative of the claimed invention.
1. A catheter, comprising:
a proximal segment configured to receive and return
working fluid to a heat exchange system through supply and
return lumens, respectively; and
a distal segment communicating with the proximal
segment and configured to circulate working fluid therewith, the
distal segment defining a supply conduit and a return conduit
joining each other at distal junction, at least a first one of the
conduits configured for conveying all fluid flowing therethrough
along a non-round coiled path and a second one of the conduits
being straight, wherein the non-round path defines a triangle
when viewed in transverse.
Appeal Br. 5 (Claims App.) (emphasis added).
ANALYSIS
Appellant contends the Examiner’s finding that Figure 5 of Pompa
discloses a catheter with a conduit configured for conveying fluid along a
non-round coiled path, which “defines a triangle when viewed in
transverse,” as claim 1 requires, is in error. Appeal Br. 3^4. Figure 5 of
Pompa is reproduced below.
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Application 13/653,565
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Pompa describes Figure 5 as illustrating “a perspective view of a . . . heat
exchange element, showing serpentine links.” Pompa, 2:42-43. Pompa
further describes Figure 5 as showing “links of the heat exchange element 80
[that] are serpentine-shaped. Specifically, each link forms a gently curved
flowpath throughout the link . . . .” Id. at 4:66—5:1.
Pointing to Pompa’s Figure 5, the Examiner finds it “discloses loops
that are within the broadest reasonable interpretation of triangular shaped
(serpentine shaped Fig. 5).” Non-Final Act. 4.
It is the Examiner’s position that if the device of Pompa were to
be viewed in transverse, it would indicate that leg 92 extends
upwards towards apex 90 and leg 94 extends downwards from
apex 90; wherein, leg 94 is at a certain angle away from leg 92.
Further, extending from leg 94 is the horizontal side of the
triangle which completes the triangle and links the non-round
path to a subsequent triangle in order to form a portion of the
coiled path.
Ans. 3 (emphasis added). The Examiner finds Pompa’s description of the
links in Figure 5 as “serpentine” is indicative the links “wind around the
axial axis of the catheter thus creating a coiled configuration.” Id. (citing
www.dictionary.com). Finally, the Examiner summarizes “that based on the
three aforementioned segments of the non-round hollow loops in figure 5,
Pompa illustrates a series of triangles formed along the longitudinal axis of
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Appeal 2015-005645
Application 13/653,565
the device wherein the triangles are in the analogous helical or coiled
configuration as that of the Applicant’s configuration in figure 4.” Id.
We note the Examiner does not rely on any information expressly
disclosed in Pompa to support the finding that Pompa discloses a conduit
with a non-round path defining a triangle when viewed in transverse.
Instead, the Examiner relies on what Pompa purportedly “would indicate” “if
the device of Pompa were to be viewed in transverse.” Ans. 3 (emphasis
added). Although the Examiner may rely on what Pompa inherently
discloses, when a claim limitation is not expressly disclosed, the inherent
result must inevitably result from what Pompa does disclose rather than what
is possible or probable from that disclosure. See In re Montgomery, 677
F.3d 1375, 1379—80 (Fed. Cir. 2012). “The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental Can Co.
v. Monsanto Co., 948 F.2d 1264) (Fed. Cir. 1991)) (emphasis added).
A preponderance of the evidence in this case, however, does not
support the Examiner’s finding, without resorting to such probabilities or
possibilities, that the heat exchange element depicted in Pompa’s Figure 5
inevitably has a non-round path defining a triangle when viewed in
transverse. Fooking at a perspective view of the heat exchange element,
which Figure 5 depicts, the Examiner finds the transverse view “would”
show the element defines a triangle path, but the Examiner never explains
why the perspective view of the structure necessarily leads to that
conclusion. Why that structure would necessarily be the case, moreover, is
not readily apparent from our review of Figure 5. Furthermore, Pompa’s
characterization of the Figure 5 heat exchange element as “serpentine-
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Appeal 2015-005645
Application 13/653,565
shaped” and having “a gently curved flowpath throughout the link” is
indicative the element’s shape does not follow a non-round path defining a
triangle, but a rounded or curved path winding or turning one way and
another. See Serpentine Definition, Merriam-Webster.COM,
http://www.merriam-webster.com/dictionary/serpentine (last visited on Feb.
22,2017).
Although Pompa’s description does not foreclose a non-round path
defining a triangle when viewed in transverse, it does not support the
conclusion that the heat exchange element necessarily defines a triangle
shape from that view. It may or it may not have a triangle shape; the answer
to whether it does is merely conjecture, which cannot support a finding of
anticipation. Therefore, we do not sustain the Examiner’s rejection of claim
1 and, because claims 2, 3, 6, and 7 depend from claim 1, we also do not
sustain the Examiner’s rejection of those claims for the same reason.
DECISION
The Examiner’s rejection of claims 1—3, 6, and 7 is reversed.
REVERSED
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