Ex parte MORSE

Board of Patent Appeals and Interferences

Jan 26, 1998

08368261 (B.P.A.I. Jan. 26, 1998)

Application for patent filed December 27, 1994.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEFFREY W. MORSE
__________
Appeal No. 97-1030
Application 08/368,2611
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner refusing
to allow claims 1 through 9 as amended after the final rejection.
These are all of the claims of record in the application.
The appellant's invention is directed to a cap, apparatus
and method for wound and lavage irrigation. The subject matter
Appeal No. 97-1030
Application 08/368,261
2
before us on appeal is illustrated by reference to claims 1, 4
and 7, which can be found in an appendix to the appellant’s
Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Schwartz 4,421,505 Dec. 20, 1983
Hyans 4,459,318 Jul. 10, 1984
Kensey et al. (Kensey) 5,380,275 Jan. 10, 1995
(filed Apr. 23, 1993)
THE REJECTIONS
Claims 1, 4 and 7 stand rejected under 35 U.S.C. § 102(e) as
being clearly anticipated by Kensey.
Claims 5 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kensey in view of Schwartz.
Claims 2, 3, 6 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kensey in view of Hyans.
The rejections are explained in the Examiner's Answer and
Paper No. 5.
The opposing viewpoints of the appellant are set forth in
the Brief.
Appeal No. 97-1030
Application 08/368,261
From the appellant’s specification (page 9) and the2
arguments in the Brief (page 6), we understand that there is a
conventional or “standard” IV catheter in the field, which has a
“luer” hub. We further note that “standard” appears as a
modifier for “IV catheter” in all of the claims except claim 1,
but we shall interpret claim 1 in the same fashion because it is
our belief that the appellant so intended. However, we suggest
that consideration be given to adding this term to claim 1, also.
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OPINION
The Rejection Under 35 U.S.C. § 102(e)
Independent claims 1, 4 and 7 stand rejected as being
anticipated by Kensey. It is axiomatic that anticipation is
established only when a single prior art reference discloses,
either expressly or under the principles of inherency, each and
every element of the claimed invention. See In re Paulsen, 30
F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990).
Kensey discloses a device for irrigating a body orifice. It
comprises a threaded cap having threads at one end for attachment
to a container and a nozzle at the other end which attaches to a
conduit (Figure 1). The appellant argues that the claim requires
that the nozzle have the size and shape of a syringe tip such
that it can friction fit inside the hub of a standard IV
catheter, and that such is not taught by Kensey. The examiner’s2
Appeal No. 97-1030
Application 08/368,261
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position is that this limitation “does not patentably distinguish
over the prior art of record” (Answer, page 3). We do not agree.
From our perspective, the size and shape requirement constitutes
a structural limitation of the claim which must be present in
order for a reference to be anticipatory. The size and shape of
the inlet to tube 78 cannot be determined from the Kensey
disclosure, much less that it corresponds to that of a “standard”
IV catheter hub.
Therefore, Kensey does not anticipate the subject matter of
claims 1, 4 and 7.
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). However, the mere fact that the prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so. See
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Claims 5 and 8 stand rejected as being obvious in view of
the teachings of Kensey and Schwartz. As we stated above, Kensey
fails to teach that the nozzle on the cap be of such size and
Appeal No. 97-1030
Application 08/368,261
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shape as to friction fit the inside of the hub of a standard IV
catheter. To the extent that the examiner’s comments are
intended to mean he considers that it would have been obvious to
modify Kensey so that the nozzle would meet this condition, we
fail to perceive any teaching, suggestion or incentive which
would have led one of ordinary skill in the art to do so.
Schwartz was cited for its teaching of “the attachment of a
tube/catheter to a fluid source for the purpose of irrigation”
(Paper No. 5, page 3). Be that as it may, Schwartz does not, in
our view, cure the deficiency present in Kensey, for it clearly
does not disclose a “standard” IV catheter, nor does it suggest
that such is usable with its irrigation apparatus. In fact, the
opposite is true, for the catheter disclosed in Schwartz is a
very specialized one.
The combined teachings of Kensey and Schwartz fail to
establish a prima facie case of obviousness with regard to the
subject matter of claims 5 and 8.
Claims 2, 3, 6 and 9 have been rejected on the basis of
Kensey in view of Hyans, the latter being cited for its
disclosure of a fill tube having a plurality of annular ridges
for enhancing the security of connecting it to a tube (Figure 4).
The claims in issue here contain the limitation regarding the fit
Appeal No. 97-1030
Application 08/368,261
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of the nozzle with the hub of a standard IV catheter, which we
have decided above is lacking in Kensey, and which we here state
is also lacking in the secondary reference. These claims also
require the presence of annular ridges on the nozzle, so that the
claimed nasogastric tube can be attached over the nozzle. While
Hyans discloses such ridges, the examiner has not articulated,
nor can we discern on our own, any reason why one of ordinary
skill in the art would have been motivated to add these ridges to
the Kensey device as an adjunct to the existing nozzle, that is,
add a second type of connection means.
For these two reasons, the references applied here fail to
establish a prima facie case of obviousness with regard to the
subject matter of claims 2, 3, 6 and 9.
SUMMARY
None of the rejections are sustained.
Appeal No. 97-1030
Application 08/368,261
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The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 97-1030
Application 08/368,261
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Fredric L. Sinder
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