Ex Parte Ossanna

Board of Patent Appeals and Interferences

Jun 27, 2008

10250134 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte LINO A. OSSANNA 8
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Appeal 2008-1019 11
Application 10/250,134 12
Technology Center 3700 13
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Decided: June 27, 2008 16
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
JENNIFER D. BAHR, Administrative Patent Judges. 20
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CRAWFORD, Administrative Patent Judge.22
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DECISION ON APPEAL 26
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STATEMENT OF CASE 28
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 29
of claims 1, 3 to 7 and 9 to 20. We have jurisdiction under 35 U.S.C. § 6(b). 30
Appellant invented an apparatus for warming medical instruments 31
(Specification 1). 32
Appeal 2008-1019
Application 10/250,134

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Claim 1 under appeal reads as follows: 1
1. An apparatus for warming a medical instrument 2
comprising: 3
at least one sleeve insert for releasably securing said 4
medical instrument therein, said sleeve insert complementarily 5
shaped to correspond to the shape of said medical instrument 6
and accept said medical instrument therein such that said 7
medical instrument maintains contact with said sleeve insert; 8
a heating element operatively arranged to heat said sleeve 9
insert; 10
a thermostat operatively arranged to control and maintain 11
the temperature of said heating element and said medical 12
instrument at a constant approximate body temperature; and, 13
a housing for securing said sleeve insert, said housing 14
with a surface having at least one opening arranged to receive 15
said at least one sleeve insert, said surface angled with respect 16
to a base for said housing. 17
The Examiner rejected claims 1, 3 to 6, 9 to 10, 12 to 15 and 17 to 20 18
under 35 U.S.C. § 113(a) as being unpatentable over Sorensen in view of 19
Rohr. 20
The Examiner rejected claim 7 as being unpatentable over Sorensen in 21
view of Rohr and Braxter. 22
The Examiner rejected claims 11 and 16 under 35 U.S.C. § 103(a) as 23
being unpatentable over Sorensen in view of Rohr and Herzon. 24
The prior art relied upon by the Examiner in rejecting the claims on 25
appeal is: 26
Appeal 2008-1019
Application 10/250,134

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Braxter 2,724,765 November 22, 1955 1
Rohr 3,300,055 January 24, 1967 2
Herzon 6,235,027 May 22, 2001 3
Sorensen WO 93/07825 April 29, 1993 4
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Appellant contends that there is no motivation to combine the 6
teachings of Sorensen and Rohr and that Rohr is non-analogous art. 7
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ISSUES 9
The first issue is whether the Appellant has shown that the Examiner 10
erred in rejecting the claims because there is not motivation to combine the 11
teachings of Sorensen in view of Rohr. 12
The second issue is whether the Appellant has shown that the 13
Examiner erred in rejecting the claims because Rohr is non-analogous art. 14
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FINDINGS OF FACT 16
Appellant discloses an apparatus for warming medical instruments 17
that includes a housing with an angled surface having a least one opening 18
arranged to receive a sleeve for releasably securing the medical instrument 19
[0018]. Specifically the Appellant’s specification states at paragraph 0018: 20
… it should be readily appreciated by those having ordinary 21
skill in the art that the housing of the present invention is not 22
limited to a rectangular box-shape; indeed, other aesthetically 23
appealing or practical housing shapes and configurations are 24
contemplated and are intended to be encompassed by the 25
present disclosure. (Emphasis added.) 26
27
Sorensen discloses an apparatus for warming medical instruments 28
including a housing 2 for releasably securing a sleeve insert 6 (page 5, ll. 22 29
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to 28). The Sorensen housing 2 does not include an angled surface (Figure 1
1). 2
Rohr discloses a housing for releasably securing a sleeve insert 2. 3
The housing includes an angled surface 21 having at least one opening 4
arranged to receive at least one sleeve insert 2 (col. 2, ll. 21 to 27; Figure 1). 5
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ANALYSIS 7
We are not persuaded of error by the Examiner by Appellant’s 8
argument that there is no motivation to combine. We first point out that 9
while the requirement of demonstrating a teaching, suggestion, or motivation 10
(the TSM test established by the Court of Customs and Patent Appeals) to 11
combine known elements in order to show that the combination is obvious 12
may be “a helpful insight,” it cannot be used as a rigid and mandatory 13
formula. KSR Int'l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). While 14
there must be some articulated reasoning with some rational underpinning to 15
support the legal conclusion of obviousness, “the analysis need not seek out 16
precise teachings directed to the specific subject matter of the challenged 17
claim, for a court can take account of the inferences and creative steps that a 18
person of ordinary skill in the art would employ.” Id. In determining whether 19
the subject matter of a claim is obvious, “neither the particular motivation 20
nor the avowed purpose of the [applicant] controls. What matters is the 21
objective reach of the claim.” Id. at 1741-42. If the claim extends to what is 22
obvious, it is unpatentable under § 103. When a claim recites a structure 23
already known in the prior art that is altered by the mere substitution of one 24
element for another known in the field, the combination must do more than 25
yield a predictable result. KSR at 1739. 26
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In the instant case, the use of a housing for a sleeve with an angled 1
surface was known as evidenced by Rohr and in our view the use of an 2
angled surface on the Sorensen device is no more than the use of a known 3
element with a predictable result. 4
In addition, the Appellant’s specification does not disclose that the use 5
of an angled surface in the housing solves any particular problem. In fact, 6
the Appellant’s specification states that any aesthetically pleasing or 7
practical housing shape and configuration are contemplated. Therefore, the 8
use of an angled surface for the surface is no more that an obvious design 9
choice well within the skill of the art. In re Kuhle, 526 F.2d 553, 555 10
(CCPA 1975). 11
We are likewise not convinced of error on the part of the Examiner by 12
Appellant’s argument that Rohr is non-analogous art. A reference can be 13
shown to be analogous art by showing that the reference is either in the field 14
of the applicant's endeavor or is reasonably pertinent to the problem with 15
which the inventor was concerned in order to rely on that reference as a 16
basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). 17
References are selected as being reasonably pertinent to the problem based 18
on the judgment of a person having ordinary skill in the art. Id. (“[I]t is 19
necessary to consider ‘the reality of the circumstances,’-in other words, 20
common sense-in deciding in which fields a person of ordinary skill would 21
reasonably be expected to look for a solution to the problem facing the 22
inventor” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979))). 23
Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). See also In re Clay, 966 F.2d 24
656, 659 (Fed. Cir. 1992) (“[a] reference is reasonably pertinent if, even 25
though it may be in a different field from that of the inventor's endeavor, it is 26
Appeal 2008-1019
Application 10/250,134

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one which, because of the matter with which it deals, logically would have 1
commended itself to an inventor's attention in considering his problem.”). 2
The Supreme Court has held that “ any need or problem known in the 3
field of endeavor at the time of invention and addressed by the patent can 4
provide a reason for combining the elements in the manner claimed,” KSR 5
Int'l. Co. v. Teleflex Inc., 127 S.Ct. at 1742 (2007 (emphasis added), thereby 6
expanding the second part of the analogous-art test as stated in Clay, supra, 7
to include a determination of whether the reference, even though it may be 8
in a different field from that of the inventor's endeavor, is one which, 9
because of the matter with which it deals, logically would have commended 10
itself to an artisan's (not necessarily the inventor's) attention in considering 11
any need or problem known in the field of endeavor. 12
In the instant case, as Rohr relates to a housing for sleeve inserts, 13
Rohr is within the field of the Appellant’s endeavor. In addition, as Rohr 14
relates to the problem of storing sleeve inserts in a housing it also relates to 15
the problem faced by the Appellant. Therefore, Rohr is analogous art. 16
In view of the foregoing, we will sustain the Examiner’s rejection of 17
claim 1 under 35 U.S.C. § 103 as being unpatentable over Sorensen in view 18
of Rohr. We will also sustain the rejection as it is directed to claims 3 to 6, 9 19
to 10, 12 to 15 and 17 to 20 because the Appellant has not argued the 20
separate patentability of these claims. 21
We will also sustain the Examiner’s rejection of claim 7 as being 22
unpatentable over Sorensen in view of Rohr and Braxter and of claims 11 23
and 16 under 35 U.S.C. § 103 as being unpatentable over Sorensen in view 24
of Rohr and Herzon because the Appellant does not address the disclosures 25
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of Braxter and Herzon specifically but rather argues that the teachings of 1
these references do cure the deficiencies of the Sorensen/Rohr combination. 2
The decision of the Examiner is affirmed. 3
No time period for taking any subsequent action in connection 4
with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a)(1)(iv) (2007). 6
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AFFIRMED 8
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