Ex Parte Morse

Board of Patent Appeals and Interferences

Jan 6, 2011

11202237 (B.P.A.I. Jan. 6, 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.
11/202,237 08/12/2005 Michael G. Morse MORS300 7332
23590 7590 01/07/2011
RICHARD L HUFF
19304 OLNEY MILL ROAD
OLNEY, MD 20832
EXAMINER
SMITH, NKEISHA
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
01/07/2011 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 MICHAEL G. MORSE
____________________

Appeal 2009-007650
Application 11/202,237
Technology Center 3600
____________________

Before JAMES T. MOORE, Acting Chief Administrative Patent Judge, and
SALLY G. LANE and MICHAEL P. TIERNEY, Administrative Patent
Judges.

MOORE, Acting Chief Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007650
Application 11/202,237

2
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
This appeal concerns a device for holding tubes and wires associated
with hospital beds. The object of the device is to prevent the tubes and wires
from becoming entangled and to prevent the tubes and wires from falling
and binding between the mattress and the bedrail, while keeping the tubes
and wires within easy reach of the patient and hospital staff.
Claims 1-5 stand rejected under 35 U.S.C. § 103 over Speaker (US
4,453,933, issued June 12, 1984) and Widerman (US 6,370,810 B1 issued
April 16, 2002).
Independent claim 1 is representative and reads as follows:
1. A device for holding tubes and wires associated with
hospital beds, said device comprising:
a body,
at least one hook for maintaining wires so that they will
not become entangled,
and one adjustable holder, the adjustable holder
comprising,
a base having a first arcuate section,
a second arcuate section,
and an upstanding section which is flexible and
contains a catch.

ISSUES
Whether the subject matter of claims 1-5, specifically the recited body
with combination of hooks for holding wires or tubes, with an adjustable
holder for securely holding wires or tubes, on a body which can be attached
Appeal 2009-007650
Application 11/202,237

3
to a hospital bedrail, would have been obvious to one of ordinary skill in the
art at the time the invention was made in view of Speaker and Widerman?

FINDINGS OF FACT
1. Speaker teaches a device comprising a strap 22, with a plurality of
upstanding posts 42 attached thereto for engaging and receiving a Y-
connector 44, and another set of upstanding posts 60 for receiving and
engaging a tube 30; the posts 60 having a first arcuate section (left
post) and a second arcuate section (right post). Col. 3, l. 58 – col. 4, l.
44; and col. 4, l. 66 – col. 5, l. 6. The reference does not teach an
adjustable holder with an upstanding section which is flexible and
contains a catch.
2. The Examiner found that Speaker’s set of posts 60 is the equivalent of
the hook in Appellant’s device and that Speaker’s other set of posts 42
is the equivalent of the adjustable holder. Ans. 3.
3. Speaker’s Fig. 3, reference numeral 20, illustrates the claimed “body”.
(Final Rejection at 3).
4. Widerman teaches an adjustable holder comprising a base 12 having a
first section 16, a second section 24, and a locking arm 20 which is
flexible and contains a locking edge 22. Col. 3, ll. 14-19 and ll. 26 –
40.
5. The Examiner concluded that “it would have been obvious to one of
ordinary skill in the art, at the time the invention was made, to
substitute the adjustable holder of Widerman for the holder of Speaker
to achieve the predictable result of providing an adjustable holder to
secure a tube or wire.” Ans. 4.
Appeal 2009-007650
Application 11/202,237

4
ANALYSIS
Claim 1
Appellant argues the Examiner has not demonstrated that the claimed
subject matter is obvious because the factors of Graham v. John Deere, Co.,
383 U.S. 1 (1966) have not been resolved.2 Br. 10-17. First, Appellant
contends that the Examiner inaccurately established the scope and content of
the prior art because the Examiner incorrectly identified the posts in the
Speaker reference as a “hook” and “adjustable holder” and failed to identify
a “body” in the Speaker reference. Id. at 10-11. Appellant’s argument is not
persuasive.
We find that the posts in Speaker and the claimed hooks are
essentially the same structure. The strap 22 serves the same function as the
body in Appellant’s device; it is a platform for the hooks and posts. One of
ordinary skill in the art at the time the invention was made would have been
aware that the strap may be attached to something, be it an arm or a bedrail.
The present argument (based on the differences in the names of the
structures) is in our view an exercise in semantics. A person of ordinary
skill in the art at the time of the invention would have understood the
structures of the two devices function in the same way. Therefore, the fact
that the Speaker reference uses different names for the corresponding
structures does not remove it from the scope of the prior art. As such, we
find that the Examiner correctly determined the scope and content of the
prior art.

2 The fourth Graham factor is not addressed because Appellant did not
provide evidence of secondary considerations.
Appeal 2009-007650
Application 11/202,237

5
Appellant further argues that differences between the prior art and the
claimed invention are too great to support a finding of obviousness. Br. 11-
12. First, Appellant insists that the Speaker reference would allow tubes or
wires to become entangled and thus frustrate the purpose of the claimed
invention. Id. at 11. Second, Appellant states that the Speaker reference
prevents tubes and wires from moving longitudinally. Br. 11-12.
Appellant’s first contention, that Speaker would allow wires to tangle,
is without an evidentiary basis. Br. 11. As the Examiner noted, the
drawings in Speaker clearly demonstrate that the tubes or wires associated
with the device are positioned so they will not become entangled. Ans. 6;
see also Speaker, Figs. 1-3. Additionally, this argument is Appellant’s first
mention of the need for longitudinal movement; Appellant has not included
this limitation in the claims or the specification. See Ans. 7. Moreover, as
the Examiner states, this issue is easily resolved by altering the size of either
the hooks or the tubes and wires. Id.
Appellant also argues that the Examiner erred by failing to establish
the level of skill in the art. Br. 12. Appellant’s argument is not persuasive –
the references indicate the level of ordinary skill in the. See Ex parte Jud, 85
U.S.P.Q.2d 1280, 1282-83 (BPAI 2007).
Appellant also argues that the claimed subject matter cannot be a
substitution of known elements yielding predictable results. Br. 13.
Appellant further argues that there is no motivation to combine the
references because the Widerman reference prevents longitudinal movement
of what it holds; therefore, substituting it into the Speaker reference would
potentially increase the chances of patient injury and frustrate the purpose of
the Speaker device. Br. 13-14. We disagree.
Appeal 2009-007650
Application 11/202,237

6
The Supreme Court stated in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007) that the teaching, suggestion, motivation test is flexible and
warned against overemphasizing published articles and prior art patents in
this analysis. Following that precedent, the Federal Circuit noted that, when
conducting an obviousness analysis, in addition to prior art evidence, it is
proper to consider the logic and common sense of a person of ordinary skill
in the art. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328
(Fed. Cir. 2009).
The Examiner made two findings supporting the combination of the
Speaker and Widerman references. First, the Examiner noted that the ability
of wires or tubes to move longitudinally in the posts or hooks described in
the Speaker reference depends on the size of the tubes or wires. Ans. 9. The
Examiner additionally noted that Widerman’s teachings only prevent
longitudinal movement because of the cushion 30. Ans. 9, see also
Widerman, Figs. 3-5.
A person of ordinary skill in the art who wished to preserve
longitudinal movement in such a structure would understand the need to
provide ample room so that the wires or tubes can move freely, whether by
varying the size of the wires or tubes, varying the distance between the
posts, or removing extra structures that would prevent the wires or tubes
from moving.
Therefore, Appellant’s arguments do not convince us that the
Examiner erred in rejecting claim 1 as obvious over Speaker and Widerman.
Claims 2-4
Appellant argues dependent claims 2-4 on the same basis as
independent claim 1. As Appellant’s arguments are not persuasive with
Appeal 2009-007650
Application 11/202,237

7
respect to claim 1, they are also not persuasive with respect to claims 2-4.
See 37 C.F.R. § 41.37(c)(1)(vii).
The sole specific argument regarding these dependent claims is
directed to claim 2, which pertains to the device of claim 1 coupled with a
means to attach the device to a bedrail. Appellant argues that Speaker’s
bedrail strap 108 is not part of the invention and insists that Speaker’s strap
22 is intended only for securement around a patient’s limb. Br. 14.
We find Appellant’s limited interpretation incorrect and agree with
the Examiner. The Examiner relies on Speaker only to teach a means for
attaching. Speaker teaches an attachment means, namely the strap 22, which
allows for the device to be attached either to a limb or a bedrail. The
Appellant has provided no persuasive evidence otherwise.
Claim 5
Finally, Appellant argues that the Examiner erred in concluding that
claim 5 would have been obvious because: 1) the combination of Speaker
and Widerman do not teach the device of claim 1 and 2) Speaker does not
teach the device in combination with a hospital bed bedrail. Br. 15. We are
also unpersuaded by these arguments.
As described above, the combination of Speaker and Widerman
teaches the claimed device. Appellant presents the same arguments with
respect to claim 5, again stressing that there is no motivation to combine
because the combination of references would prevent longitudinal
movement and frustrate the purpose of the design. Br. 16-17. These
arguments are again unpersuasive for the reasons noted above, i.e. including
that a person of ordinary skill in the art would understand how to alter the
Appeal 2009-007650
Application 11/202,237

8
structure to allow for any needed longitudinal movement and longitudinal
movement is not a claim limitation.
Furthermore, Speaker specifically discloses an embodiment wherein
part of the device is attached to a hospital bedrail. See Speaker, col. 9, ll. 1-
15, and Fig. 4. Speaker describes that the bedrail strap 108 can be attached
to bedrail 110 by any means, including the buckle 26, which is the attaching
means for the strap 22. Therefore, Speaker teaches the use of the device in
conjunction with a bedrail. Accordingly, the Examiner did not err in
rejecting claim 5 under 35 U.S.C. § 103(a).
CONCLUSION
The rejection of claims 1-5 under 35 U.S.C. § 103(a) as obvious over
the Speaker and Widerman is AFFIRMED.
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

nlk

RICHARD L HUFF
19304 OLNEY MILL ROAD
OLNEY MD 20832