Ex Parte Michaels

Patent Trial and Appeal Board

Feb 28, 2017

13217032 (P.T.A.B. Feb. 28, 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.
13/217,032 08/24/2011 Thomas L. Michaels 6285-US-DIVl 5253
79439 7590
Cardinal Health, Inc.
1500 Waukegan Road
West Building
Waukegan, IL 60085
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
Kim.Luna@cardinalhealth.com
Marlene. Poulos @ cardinalhealth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS L. MICHAELS
Appeal 2014-002120
Application 13/217,032
Technology Center 3700
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—12 and 14—20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A medical fluid collection system comprising:
a canister defining an open end; and
a liner assembly including:
a lid removably attachable to the open end of the canister,
the lid including a vacuum port and a collection port; and
Appeal 2014-002120
Application 13/217,032
a collapsible liner dimensioned for placement within the
canister and biased to a vertically collapsed position during
operation, the liner including:
a flexible film bag extending longitudinally
between a top portion coupled to the lid and a closed bottom
portion and defining an interior, and
at least one support element apart from the lid and
disposed generally laterally relative to the flexible bag direction
of extension, a height of the support element being less than its
thickness;
wherein the vacuum port and the collection port are in
direct fluid communication with the interior of the bag, and
wherein when the interior of the bag is subjected to a
vacuum pressure by way of the vacuum port, the at least one
support element constrains a lateral collapse of the bag.
Appellant appeals the following rejections:
1. Claims 1—7, 12, 14, and 16—20 under 35 U.S.C. § 103(a) as unpatentable
over Deaton ’738 (US 3,780,738, iss. Dec. 25, 1973) and Robbins (US
4,979,628, iss. Dec. 25, 1990).
2. Claims 8—11 under 35 U.S.C. § 103(a) as unpatentable over Deaton ’738,
Robbins, and Goetz (US 3,035,623, iss. May 22, 1962).
3. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Deaton ’738,
Robbins, and Deaton ’093 (US 4,419,093, iss. Dec. 6, 1983).
ISSUE
Did the Examiner err in finding that it would have been an obvious
design choice to modify the teachings of the prior art so that the height of the
support element is less than the thickness of the support element?
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Appeal 2014-002120
Application 13/217,032
ANALYSIS
Appellant argues that the height/thickness relationship of the support
element recited in the claims is not an obvious matter of design choice.
The Examiner, recognizing that the prior art does not disclose a
support element having a height that is less than the thickness of the support
element, argues that it would have been an obvious matter of design choice
to have modified the height and thickness of the support element and that
such modification would be a mere change in size, which is generally
recognized as being within the level of ordinary skill in the art (Ans. 9). In
support of this argument, the Examiner cites In re Rose, 220 F.2d 459
(CCPA 1955).
The Examiner's reliance on In re Rose is misplaced. In the present
case, the Examiner proposes to change the relationship of the height of the
support element to the thickness of the support element. In Rose, the
appellant argued that the claimed “lumber package” was large and required a
lift truck for handling, whereas the prior art packages (a package of
relatively small pieces of lumber and a package of window screen frames)
could be lifted by hand. Rose, 220 F.2d at 463. The court held that “this
limitation [(i.e., size and weight of the package)] is [not] patentably
significant since it at most relates to the size of the article under
consideration which is not ordinarily a matter of invention.” Id. (citation
omitted). The court in Rose did not address a modification in which the size
of one dimension of a particular component is modified with respect to the
size of another dimension of that component. The Examiner's proposed
modification in the present appeal is more than simply a change in size of
the article under consideration.
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Appeal 2014-002120
Application 13/217,032
We agree with Appellant that the modification of the prior art is not a
mere matter of design choice. With regard to this rationale of the Examiner,
the predecessor of our reviewing court has indicated that design choice is
inapplicable in a rejection where the use of the claimed feature solves a
stated problem. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)(use of
claimed feature solves no stated problem and presents no unexpected result
and “would be an obvious matter of design choice within the skill of the
art”); In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)(fmding of obvious
design choice precluded when claimed structure and the function it performs
are different from the prior art). Appellant’s Specification makes clear on
pages 13—14 that the relatively thinner height dimension allows for compact
collapse of the liner 28 and the generally thicker thickness provides lateral
stiffness and a resistance to lateral collapse of the support element 60. Since
this feature of Appellant’s independent claims solves the stated problem that
Appellant raises in the Specification, it is inappropriate for the Examiner to
dismiss this portion of the claim as a simple matter of design choice.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and claims 2—12 and 14—20 dependent therefrom.
DECISION
The decision of the Examiner is reversed.
REVERSED
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