Ex Parte Lindsay

Board of Patent Appeals and Interferences

May 12, 2011

11245752 (B.P.A.I. May. 12, 2011)

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.
11/245,752 10/07/2005 Erin Jessica Lindsay 0097Pb(17020) 5304
46909 7590 05/12/2011
TERUMO CARDIOVASCULAR SYSTEMS CORPORATION
ATTN: GAEL DIANE TISACK
6200 JACKSON ROAD
ANN ARBOR, MI 48103
EXAMINER
WIEST, PHILIP R
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/12/2011 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 ERIN JESSICA LINDSAY
____________________

Appeal 2009-012253
Application 11/245,752
Technology Center 3700
____________________

Before: STEVEN D.A. MCCARTHY, FRED A. SILVERBERG and
CHARLES N. GREENHUT Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012253
Application 11/245,752
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The claims are directed to a blood perfusion air removal device with
an arcuate manifold. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A device for separating a gas from a liquid comprising:
a chamber having a liquid flow region at a lower end
thereof and having a gas collection region at an upper end
thereof, a least a portion of said chamber being generally
cylindrical about a vertical axis;
an arcuate manifold providing an arcuate flow path
outside of said portion of said chamber having an upstream end
and a downstream end; and
a slit aperture between said arcuate manifold and said
portion of said chamber,
said slit aperture extending along at least a substantial
portion of said arcuate manifold;
whereby a mixture of said gas and liquid introduced into
said arcuate flow path at said upstream end flows through said
slit aperture to create a spiral flow within said chamber causing
said gas to move toward a central axis of said chamber and into
said gas collection region.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nuter
Wright
Weinstein
US 3,599,659
US 5,429,595
US 5,484,474
Aug. 17, 1971
Jul. 4, 1995
Jan. 16, 1996

Appeal 2009-012253
Application 11/245,752
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REJECTIONS
Claims 1-3, 5, 7-9, 12, 14, and 15 stand rejected under 35 U.S.C
§ 102(b) as being anticipated by Wright. Ans. 3.
Claims 4, 6, 7, 10, 11, 13 and 16 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Wright and Weinstein. Ans. 5.
Claims 17 and 18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Wright and Nuter. Ans. 6.
Claims 19 and 20 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Wright, Nuter and Weinstein. Ans. 7.

OPINION
he Examiner’s rejections of claims 1-16 are affirmed
The Examiner correctly found that Wright discloses each and every
element of, and therefore anticipates, claims 1-3, 5, 7-9, 12, 14, and 15. See
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987).
Regarding claim 1, Appellant contends that “Wright lacks a manifold
as recited in claim 1 because as recited it is a separate structure from the
cylindrical chamber.” App. Br. 6. However, regarding the relationship
between the manifold and chamber, claim 1 merely requires that the arcuate
manifold provide an arcuate flow path outside a “portion” of the chamber.
The area within Wright’s neck 20 is reasonably read as such a portion. See
Ans. 4.
Appellant additionally contends that claim 1 distinguishes over
Wright because the claimed device “introduces the gas/liquid mixture into
the arcuate path of the arcuate manifold and then through the slit aperture
into the chamber.” App. Br. 6. Wright discloses an inlet port 14 in chamber
Appeal 2009-012253
Application 11/245,752
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12 whereby perfusate may be introduced tangentially and exit through a
central opening 68 in the bottom of the chamber. Wright, col. 5, ll. 40-47.
The Examiner reasonably found that these structures would create a spiral
flow path and Appellant has not provided sufficient evidence or technical
reasoning to establish that this finding is incorrect. See, e.g., In re Swinehart,
439 F.2d 210, 213 (CCPA 1971) (“[W]here the Patent Office has reason to
believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”).
Appellant also contends that “[t]he area of Wright relied on by the
Examiner meets none of the limitations for the slit aperture. It does not
function to introduce liquid to the chamber, and it is not even between the
structures relied on for allegedly showing the arcuate manifold and
chamber.” App. Br. 7. The portions of Appellant’s argument relating to the
flow in Wright’s chamber directly above cap 62 are based upon an incorrect
interpretation of Wright. Contrary to Appellant’s assertion (App. Br. 7;
Reply Br. 2-3) fluid does flow through this region of Wright’s chamber.
Wright, col. 7, ll. 1-3; fig. 1. Again, claim 1 only requires this region to be
between a “portion” of the chamber and manifold. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability). Appellant’s argument concerning claims 5 and
12 (App. Br. 7-8) are unpersuasive for the same reasons.
Regarding independent claim 14 and dependent claims 2, 3, 7-9 and
15, Appellant relies on the arguments presented regarding claim 1. For the
reasons discussed with respect to claim 1, these arguments are unpersuasive.
Appeal 2009-012253
Application 11/245,752
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Regarding the rejection of claims 4, 6, 7, 10, 11, 13, and 16, Appellant
contends that Weinstein does not cure the alleged deficiencies of Wright
argued regarding claim 1. App. Br. 9. Since Appellant has not established
such deficiencies exist, this argument is unpersuasive. It is also noted that
merely pointing out what a claim recites will not be treated as a separate
argument for patentability because it does not address the Examiner’s
position. See 37 C.F.R. § 41.37(c)(1)(vii).

The Examiner’s rejections of claims 17-20 are reversed
Appellant contends the Examiner’s rejection of claim 17 should be
reversed for the same reasons argued with respect to claim 1. App. Br. 9.
This argument is persuasive. Claim 17 differs from claim 1 in that the
arcuate manifold must provide a fluid flow path outside of the chamber, not
“surrounding a portion of the chamber” or “around the outside of the device”
as suggested by the Examiner. See Ans. 6, 10. Claim 17 also requires the slit
aperture to be between the chamber and the manifold. The area above
Wright’s cap 62, read by the Examiner as the claimed “slit aperture,” may be
between the area within neck 20, read by the Examiner as an “upper portion
of [the] chamber,” and the in region between chamber 12 and filter 60, read
by the Examiner as the claimed “manifold” but, it is not between the
structure read by the Examiner as the chamber itself which includes the area
within filter 60 and the region between chamber 12 and filter 60. See Ans. 6.
Even if the claim were read as not requiring placement of the slit aperture
between the arcuate manifold and the entire chamber, in order to meet this
limitation two disjointed enclosures in Wright, the regions within the neck
20 and filter 60, would need to be read as the claimed “chamber.” This
would be unreasonable because one of ordinary skill in the art would not
Appeal 2009-012253
Application 11/245,752
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recognize these two distinct regions as a single “chamber.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of
the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art”). Neither Nuter nor Weinstein, as applied by the Examiner cures this
deficiency. Accordingly, the rejection of independent claim 17, along with
the rejections of dependent claims 18-20, cannot be sustained.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-16 are
affirmed and the Examiner’s rejections of claims 17-20 are reversed.

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).

AFFIRMED-IN-PART

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