Ex Parte O et al

Board of Patent Appeals and Interferences

Oct 31, 2007

10230659 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
DEREK P. O’HARA, BRENDAN J. DUGGAN,
GAIL M. COMER, DONALD J. GOLDHARDT,
and LILIANA M. SANMIGUEL
__________

Appeal 2007-1996
Application 10/230,659
Technology Center 3700
__________

DECIDED: October 31, 2007
__________

Before TONI R. SCHEINER, LORA M. GREEN, and NANCY J. LINCK,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-3 and 5-9.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Claim 4 was canceled by the amendment filed March 23, 2005, under the
provisions of 37 C.F.R. § 1.116 (Answer 2).
Appeal 2007-1996
Application 10/230,659

DISCUSSION
“[T]he present invention is directed to a feeding tube assembly
including . . . a feeding tube adaptor having an inlet conduit and an outlet
conduit . . . wherein the outlet conduit has an outlet end to be inserted into a
lumen at the [ ] end portion of [a] feeding tube for fluid communication
therebetween” (Spec. 9: 25 to 10: 3). The exterior surface of the outlet
conduit “define[s] a retention member [ ] thereon which prevents [the]
feeding tube [ ] from slipping off of [the] exterior surface [ ] during use”
(Spec. 22: 6-8). An adaptor with a retention member is illustrated in Figure
5 of the present Specification. Figure 5 is reproduced below:

Figure 5 depicts a feeding tube adaptor wherein “retention member 58
includes a first section 60 on exterior surface 54. First section 60 has an
increasing circumferential dimension viewed from outlet conduit 52 to inlet
conduits 56 . . . [r]etention member 58 further includes a second section 62.
Second section 62 has a decreasing circumferential dimension viewed from
outlet conduit 52 to inlet conduits 56” (Spec. 22: 9-15).
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Appeal 2007-1996
Application 10/230,659

Claims 1 and 5 are representative of the claimed subject matter:
1. A feeding tube adaptor comprising:
a first inlet conduit; and
an outlet conduit in fluid communication with the first inlet
conduit, the outlet conduit constructed for fluid connection to a first
end portion of a feeding tube, the outlet conduit having an exterior
surface and an outlet end;
the exterior surface of the outlet conduit defining a retention
member, the retention member including a first section having an
exterior peripheral dimension increasing with increasing distance
from the outlet end of the outlet conduit, the retention member further
including a second section having an exterior peripheral dimension
decreasing with increasing distance from the outlet end of the outlet
conduit.

5. A feeding tube assembly comprising:
a feeding tube made of polyurethane, the feeding tube having a
first end portion, a second end portion opposite the first end portion,
and at least one lumen defined therein extending between the first end
portion and the second end portion; and
a feeding tube adaptor including a first inlet conduit and an
outlet conduit in fluid communication with the first inlet conduit, the
outlet conduit having an outlet end to be inserted into the at least one
lumen at the first end portion of the feeding tube for fluid
communication therebetween, the outlet conduit further having an
exterior surface defining a retention member to engage an interior
surface at the first end portion of the feeding tube when the outlet end
of the outlet conduit is inserted within the at least one lumen of the
feeding tube, wherein the retention member defined by the exterior
surface of the outlet conduit includes a first section having an exterior
peripheral dimension increasing with increasing distance from the
outlet end of the outlet conduit, the retention member further
including a second section spaced further from the outlet end than the
first section and having an exterior peripheral dimension decreasing
with increasing distance from the outlet end of the outlet conduit.

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Appeal 2007-1996
Application 10/230,659

The rejections to be reviewed on appeal are as follows:
• The rejection of claims 1-3 under 35 U.S.C. § 102(b) as
anticipated by Bommarito2 or Russo.3

• The rejection of claims 5-9 under 35 U.S.C. § 103(a) as
unpatentable over Bommarito or Russo.

Appellants do not present separate arguments for any particular claim
with respect to either rejection, therefore, the claims subject to each rejection
will stand or fall together. We select claims 1 and 5 as representative of the
subject matter on appeal. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
Anticipation of Claims 1-3 by Bommarito
Bommarito describes “an adaptor for enteral feeding tubes, said
adaptor having an input end and a discharge end, said discharge end being
constructed to securely and releasably engage a feeding tube . . . and
provide[ ] a secure [ ] connection to prevent leaks and unintended removal”
(Bommarito, col. 2, ll. 11- 27). Figure 1 of Bommarito is reproduced below:

2 U.S. Patent 5,290,250 to Bommarito, issued March 1, 1994.
3 U.S. Patent 4,668,225 to Russo et al., issued May 26, 1987.
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Appeal 2007-1996
Application 10/230,659

Figure 1 of Bommarito depicts an “adaptor (12) [ ] shown in partially
sectioned view . . . is seen to have a tapered discharge end (16), a tubular
portion (22) connecting said discharge end (16) to an input end (30)” and to
“feed port (34)” (Bommarito, col. 3, ll. 21-28). Bommarito teaches that
“[t]he surface of discharge end (16) may be roughened or corrugated to
provide improved adhesion to a feeding tube” (id. at col. 3, ll. 34-36).
The Examiner contends that Bommarito’s feeding tube adaptor
anticipates the claimed adaptor. In particular, the Examiner contends that
“Bommarito disclose[s] a feeding tube adaptor having first and second inlets
and an outlet conduit where the outlet conduit has a retention member [16]
. . . with sections that increase and then decrease with increasing distance
from the outlet end” (Final Rejection4 2).
Appellants argue that “[t]he discharge end 16 of the adaptor 12 shown
in Bommarito has the shape of a truncated cone . . . [which] does have a first
section having an exterior peripheral dimension that increases with
increasing distance from the outlet end (exit port 34) of the outlet conduit
(discharge end 16) . . . [but] does not have a second section having an
exterior peripheral dimension that decreases with increasing distance from
the outlet end” (Appeal Br. 7).
During examination, claims are to be given their broadest reasonable
interpretation. In re American Academy of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004). “An essential purpose of patent examination is
to fashion claims that are precise, clear, correct, and unambiguous. Only in

4 Final Rejection Mailed October 20, 2004.
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Appeal 2007-1996
Application 10/230,659

this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989).
The issue raised by this appeal, then, is whether the claimed invention
is distinguishable over Bommarito. Appellants’ arguments do not persuade
us that it is.
According to Appellants, “[t]he wording for the features of claim 1
results in a retention member having the shape of a sphere” (Appeal Br. 6),
as shown in Figure 5 of the present Specification (id.), but “the same
wording can result in the retention member having the shape of an ellipsoid,
a diamond (i.e., <>), or other shapes” (id.). We agree with Appellants that
the wording of claim 1 can result in a retention member with the shape of a
sphere, ellipsoid, or diamond, but we disagree with Appellants’ implication
that the retention member must increase and decrease symmetrically to meet
the limitations of claim 1. We find no such requirement in claim 1.
We find that the tapered discharge end (16) of Bommarito’s feeding
tube adaptor is a retention member, because it is “constructed to securely
and releasably engage a feeding tube . . . and provides a secure [ ]
connection to prevent leaks and unintended removal” (Bommarito, col. 2, ll.
11- 27). We further find that Bommarito’s tapered discharge end (16) has a
first section, i.e., a first surface, wherein the external peripheral diameter
increases with increasing distance from the outlet end (i.e., exit port (34)),
and a second section, i.e., a second surface, wherein the external peripheral
diameter decreases to match the diameter of tubular portion (22) with
increasing distance from exit port (34). Appellants have not identified any
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Appeal 2007-1996
Application 10/230,659

element of Claim 1 which distinguishes the retention element of the claimed
feeding tube adaptor from Bommarito’s element (16).
We find that Bommarito describes a feeding tube adaptor meeting all
of the limitations of claim 1. As discussed above, claims 2 and 3 stand or
fall with claim 1. Accordingly, the rejection of claims 1-3 under 35 U.S.C.
§ 102(b) is affirmed.
Obviousness of claims 5-9 over Bommarito
The Examiner cites Bommarito for the same teachings discussed
above, and acknowledges that the reference does not “disclose the feeding
tube as polyurethane or CARBOTHANE” (Final Rejection 2-3). The
Examiner contends that “[i]t would have been obvious to one of ordinary
skill in the art . . . to use polyurethane or CARBOTHANE for the tube of . . .
Bommarito in order to obtain the particular . . . well known properties that
are suited for medical applications” (id. at 3).
Appellants again contend that “discharge end 16 of [Bommarito’s]
truncated cone does not have a second section having an exterior peripheral
dimension that decreases with increasing distance from the outlet end (exit
port 34) of the outlet conduit” (Appeal Br. 8). Appellants also argue that
Bommarito does not “disclose[ ] or suggest[ ] a retention member that would
prevent a feeding tube from slipping off of the outlet conduit during use.”
(Id.)
We have already considered Appellants’ argument that Bommarito
does not describe a retention member with a second section that has an
exterior peripheral dimension that decreases with decreasing distance from
the outlet end, and are not persuaded for the reasons discussed above. In
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Application 10/230,659

addition, we note that “[t]he surface of [Bommarito’s] discharge end (16)
may be roughened or corrugated to provide improved adhesion to a feeding
tube” (Bommarito, col. 3, ll. 22-23 and 35-36), “said discharge end being
constructed to securely and releasably engage a feeding tube . . . and
provide[ ] a secure [ ] connection to prevent leaks and unintended removal”
(id. at col. 2, ll. 11- 27).
We find no error in the Examiner’s conclusion that the invention of
claim 5 would have been obvious over Bommarito. As indicated above,
remaining claims 6-9 stand or fall with claim 5. Accordingly, the rejection
of claims 5-9 under 35 U.S.C. § 103(a) as unpatentable over Bommarito is
affirmed.
Anticipation of Claims 1-3 by Russo
Russo describes a Y-shaped feeding tube connector 16. “The stem of
the ‘Y’ piece 42 has a plurality of annular rings 50 formed on the exterior
thereof” (Russo, col. 5, ll. 65-67), as shown in Figure 1, reproduced below:

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Appeal 2007-1996
Application 10/230,659

Figure 1 depicts “a perspective view of the . . . feeding tube” (Russo, col. 4,
ll. 29-30). According to the Examiner, Russo’s annular rings 50, “[b]eing
formed on the exterior, . . . must exhibit a peripheral dimension greater than
the stem periphery and therefore meet[ ] the claim limitation of having
sections with an increasing peripheral dimension and a decreasing peripheral
dimension with increasing distance from the outlet end” (Answer 4).
Nevertheless, Russo does not explicitly indicate whether the lines
representing annular rings 50 are inscribed on the stem of the Y-shaped
connector, or whether they project from it, and we find no basis in Russo’s
figures for the Examiner’s assertion. Figure 2 of Russo is reproduced below:

Figure 2 depicts “a sectional view taken along line 2 – 2 in FIG. 1” (Russo,
col. 4, ll. 31-32). The outlet end of stem of ‘Y’ piece 42 is shown connected
to gastronomy tube 12. We find nothing in either Russo’s Figure 1 or Figure
2 to indicate that the annular rings 50 have a greater peripheral dimension
than the outlet end of the Y-shaped connector at any point.
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Appeal 2007-1996
Application 10/230,659

We find that Russo does not describe a feeding tube adaptor with a
retention member that meets the limitations of the claims. Accordingly, the
rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by Russo is
reversed.
Obviousness of claims 5-9 over Russo
Claims 5-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Russo. We will reverse this rejection as it suffers from the same
deficiency discussed above.
SUMMARY
The Examiner’s rejections of claims 1-3 as anticipated by Bommarito,
and claims 5-9 as unpatentable over Bommarito are affirmed.
The Examiner’s rejections of claims 1-3 as anticipated by Russo, and
claims 5-9 as unpatentable over Russo 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)(1)(iv) (2006).

AFFIRMED

Ssc

ROBERT DEBERARDINE
ABBOTT LABORATORIES
100 ABBOTT PARK ROAD
DEPT. 377/AP6A
ABBOTT PARK IL 60064-6008
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