Ex parte LUTHER

Board of Patent Appeals and Interferences

Jun 29, 1998

08101391 (B.P.A.I. Jun. 29, 1998)

Application for patent filed August 2, 1993. According1
to appellant, this application is a continuation of Application
07/856,754, filed March 24, 1992; which is a division of
Application 07/669,679, filed March 14, 1991, now U.S. Patent
5,112,312.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RONALD B. LUTHER
__________
Appeal No. 97-0773
Application 08/101,3911
__________
ON BRIEF
__________
Before COHEN, ABRAMS, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-0773
Application No. 08/101,391
2
This is an appeal from the decision of the examiner finally
rejecting claims 23-28, which constitute all of the claims
remaining of record in the application.
The appellant's invention is directed to a vascular access
system. The subject matter before us on appeal is illustrated by
reference to claim 23, which reads as follows:
23. A vascular/venous access system comprising:
(a) a flexible catheter having a distal end, a proximal
end, and an axial bore extending therethrough, said catheter
being configured for use in central applications; and
(b) a needle cannula disposed within the bore adjacent
the distal end of the catheter with the sharp end of the
needle cannula extending outwardly beyond the distal end of
the catheter and the opposite end of the needle cannula
extending through the wall of the catheter between the
distal end and proximal end of the catheter.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Guttman 3,225,762 Dec. 28, 1965
Monestere, Jr. et al. 3,915,168 Oct. 28, 1975
(Monestere)
Vaillancourt 4,205,675 Jun. 3, 1980
Vaillancourt 4,863,431 Sep. 5, 1989
Appeal No. 97-0773
Application No. 08/101,391
An obviousness-type double patenting rejection was overcome2
by the filing of a terminal disclaimer (Paper No. 12).
3
THE REJECTIONS
Claims 23-28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Guttman in view of Monestere, Vaillancourt ‘675
and Vaillancourt ‘168.2
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Briefs. As a result of our review, we have determined that the
rejection should be sustained. Our reasoning in support of this
conclusion follows.
In the case of a Section 103 rejection, the examiner bears
the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
Appeal No. 97-0773
Application No. 08/101,391
4
teachings of the prior art itself would appear to have suggested
the claimed subject matter to one of ordinary skill in the art
(see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993))). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the
references, rather, the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art (see Cable Electric Products, Inc. v.
Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed.
Cir. 1985)), considering that a conclusion of obviousness may be
made from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion
in a particular reference (see In re Bozek, 416 F.2d 1385, 1390,
163 USPQ 545, 549 (CCPA 1969)), with skill being presumed on the
part of the artisan, rather than the lack thereof (see In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985)).
Insofar as the references themselves are concerned, we are bound
to consider the disclosure of each for what it fairly teaches one
of ordinary skill in the art, including not only the specific
teachings, but also the inferences which one of ordinary skill in
the art would reasonably have been expected to draw therefrom
Appeal No. 97-0773
Application No. 08/101,391
5
(see In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)
and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968)).
Claim 1 is directed to “[a] vascular/venous access system”
comprising a flexible catheter having an axial bore therethrough
and “configured for use in central applications,” and a needle
cannula disposed within the bore adjacent to the distal end of
the catheter with a sharp end extending beyond the distal end of
the catheter and the opposite end extending through the wall of
the catheter between the distal and the proximal ends. It is the
examiner’s position that Guttman discloses all of the structure
recited in claim 1, except for the hollow needle, a feature which
would have been obvious to add in view of the teachings of
Monestere. Insofar as claim 1 is concerned, the thrust of the
appellant’s arguments is that the Guttman catheter is not
“configured for use in central applications,” which require a
much greater length than catheters not intended for such use, and
that Guttman has a hub, which limits its length so that it can be
used only in peripheral applications.
Guttman certainly discloses a “vascular/venous access
system.” In the embodiment shown in Figure 5, this system
comprises a flexible catheter 31 having a distal end and a
Appeal No. 97-0773
Application No. 08/101,391
6
proximal end, and an axial bore extending therethrough, as
required by claim 1. A needle 10 is disposed within the bore of
the catheter adjacent the distal end with its sharp end 11
extending outwardly beyond the distal end and its opposite end
extending through a slit 33 in the wall of the catheter between
the distal end and the proximal end. As is the case in the
appellant’s invention, intravenous access is gained by means of
the sharp end of the needle, which is then withdrawn so that the
catheter can be advanced.
We agree with the examiner that claim 23 does not
distinguish over Guttman insofar as the “central applications”
limitation is concerned. An object of the Guttman invention is
to provide an intravenous catheter “which may be of any desired
length” (column 1, lines 39-41), and with regard to the
embodiment of Figure 5 the patentee states in column 2, lines 62-
65 that
[t]his embodiment of this invention allows the
insertion of a catheter of any length desired. The
length of the catheter is no longer limited by the
stylet 10 or other device used to insert it.

From our perspective, this would have indicated to one of
ordinary skill in the art that the Guttman catheter is not
limited to peripheral applications, as argued by the appellant,
but also is capable of being used in applications wherein a
Appeal No. 97-0773
Application No. 08/101,391
7
longer length of catheter is required, which would be the case in
central applications. In this regard, we find no recitation in
the Guttman patent which would suggest to the artisan that its
use is restricted to peripheral applications, nor has the
appellant provided evidence which would support such a position.
The fact that Guttman discloses a hub on the proximal end of
the catheter does not negate the above conclusion. It is our
opinion that one of ordinary skill in the art, having been taught
by Guttman that the catheter can be of “any length desired,”
would have understood that the hub must be located a sufficient
distance from the distal end of the catheter as not to foreclose
inserting the “length desired” into the vascular system. Thus,
the mere fact that the Guttman catheter is equipped with a hub
does not mean that it is limited to peripheral applications.
Guttman discloses a boreless needle 11 installed in the
distal end of the catheter, whereas claim 1 requires that the
needle be a cannula. However, at the time of the appellant’s
invention it also was known to utilize cannulae for this purpose,
as evidenced by Monestere and Vaillancourt ‘675. It is our view
that one of ordinary skill in the art would have found it obvious
to replace the boreless needle of Guttman with a cannula, for the
well-known advantage of allowing flashback to a flash chamber as
Appeal No. 97-0773
Application No. 08/101,391
8
an indication that access has been achieved, which would have
been known to the artisan (see, for example, Monestere, column 2,
line 56 et seq.).
For the reasons expressed above, it is our opinion that the
teachings of the applied references establish a prima facie case
of obviousness with regard to the subject matter of independent
claim 23.
The appellant has taken the position that the subject matter
of dependent claims 24 and 26-28 is patentable over the prior art
relied upon “based upon the length of the catheter being
sufficient to facilitate use in central applications” (Brief,
page 5). As explained above, it is our opinion that this
requirement does not patentably distinguish over Guttman. This
being the case, we also will sustain the rejection of claims 24
and 26-28.
Claim 25 was separately argued. It requires that the length
of the catheter inserted into a patient “is not limited by a hub
so as to facilitate use in central applications.” The
appellant’s position is that this claim is not rendered obvious
by the applied prior art “based upon the omission of a hub”
(Brief, page 4). However, the language recited in the claim does
not omit a hub from the catheter, but requires that the catheter
Appeal No. 97-0773
Application No. 08/101,391
9
not be “limited” by a hub. As we explained above, we believe one
of ordinary skill in the art would have recognized that a hub on
the catheter must not be placed so close to the distal end as to
inhibit the catheter from being inserted to the length desired.
Therefore, this requirement of claim 25 would have been prima
facie obvious, and the rejection of this claim is sustained.
The decision of the examiner is affirmed.
AFFIRMED
Irwin Charles Cohen )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lawrence J. Staab )
Administrative Patent Judge )
Appeal No. 97-0773
Application No. 08/101,391
10
Stetina and Brunda
24221 Calle De La Louisa, Ste. 401
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