Ex Parte Pelmulder et al

Patent Trial and Appeal Board

Mar 14, 2013

11634672 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN P. PELMULDER and CONRAD O. DIAZ
____________________

Appeal 2010-010425
Application 11/634,672
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON and
SCOTT A. DANIELS, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-6 and 8-13, which are all the claims remaining of
record, claim 7 having been cancelled. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The claims are directed to a pump. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A pump, comprising:
a compression surface;
a hollow compression tube secured to the
compression surface;
compression means for incrementally
compressing the compression tube against the
compression surface to create a moving occlusion
of the compression tube that uniformly pushes
fluid through the compression tube, wherein the
compression means has at least one rest position in
which the compression means is free of all contact
with the compression tube in a manner such that
the compression tube is free of any occlusions;
a pump housing that defines a cavity,
wherein the compression means is disposed in the
cavity; and
a cassette assembly removably disposed in
the cavity, wherein the cassette assembly includes
the compression surface and the hollow
compression tube;
wherein:
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a channel is formed in the
compression surface,
the hollow compression tube includes
a flange extending along a length thereof
that is engaged with the channel for securing
the compression tube to the compression
surface, and
the flange has a cylindrically shaped
cross-section and is integrally formed with
the compression tube.
REFERENCES
The Examiner relies upon the following prior art references:
Seyler
Muller
Edwards
Molimard
Barraclough
Iles
Williams
Nishioka
Ray
Sundén
Saito
US 2,693,766
US 3,565,554
US 3,606,596
US 3,724,974
US 3,930,761
US 4,178,138
US 4,936,760
US 6,203,295 B1
US 6,203,296 B1
US 6,494,693 B1
JP 11190280 A
Nov. 9, 1954
Feb. 23, 1971
Sept. 20, 1971
Apr. 3, 1973
Jan. 6, 1976
Dec. 11, 1979
Jun. 26, 1990
Mar. 20, 2001
Mar. 20, 2001
Dec. 17, 2002
Jul. 13, 1999
REJECTIONS
Appellants seek review of the following rejections:
Claims 1-3 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iles, Nishioka, and either Muller or Williams;
Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, and either Muller or Williams;
Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishioka and either Muller or Williams;
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Claims 6 and 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, Seyler, and either Muller or Williams;
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, Seyler, either Muller or Williams, Sundén, and
Molimard;
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, either Muller or Williams, Edwards, and
Barraclough;
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, either Muller or Williams, Seyler, Edwards,
and Barraclough.
ANALYSIS
Claims 1-3 and 9 rejected over Iles, Nishioka, and either Muller or Williams
The Examiner finds that Iles does not disclose the limitation of
independent claims 1 and 9 of the compression tube flange having a
cylindrically shaped cross section. Ans. 5. However, the Examiner
determines that Iles discloses a flange (in the form of dovetail-shaped rib 27)
that secures the compression tube to the compression surface and also notes
that Iles discloses that the rib can be formed with a different section reducing
to a neck adjacent the tube. Ans. 4-5 (citing Iles, col. 3, ll. 45-50). The
Examiner then finds that Muller and Williams both disclose compression
tubes having flanges with cylindrically shaped cross sections that reduce to a
neck adjacent the tube and concludes it would have been obvious to a person
having ordinary skill in the art to provide the flange of Iles with a
cylindrically shaped cross section as taught by Muller or Williams. Ans. 5-
6.
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Appellants first argue that Muller and Williams both show flanges
extending only partially along their respective compression tubes, with
neither reference “showing its flange extending along the length of the
compression tube.” App. Br. 15. This argument is not convincing. Claims
1 and 9 both recite the flange extending along “a length” of the compression
tube and do not require the flange to extend the entire length of the tube.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments
fail from the outset because . . . they are not based on limitations appearing
in the claims.”). Moreover, the flange of Iles is shown to extend the entire
length of its tube.
Appellants also argue that “there is no apparent teaching, suggestion
or motivation” to combine Muller and Williams with Iles. Id. This
argument is also unconvincing. The Supreme Court has rejected a rigid
requirement for an actual teaching, suggestion, or motivation to combine
references. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)
(“Helpful insights, however, need not become rigid and mandatory formulas;
and when it is so applied, the [teaching-suggestion-motivation] test is
incompatible with our precedents.”). Moreover, Appellants’ argument fails
to address the specific rationale provided by the Examiner, namely that
differently shaped reduced-neck sections will trap and hold the rib in place.
Ans. 5-6 (citing Iles, col. 3, ll. 45-50). In this instance, a person having
ordinary skill in the art would have recognized that the cylindrically shaped
flanges of Muller and Williams, with their reduced necks adjacent the tube,
would adequately secure the tube to the compression surface, contrary to
Appellants’ assertion on page 14 of the Appeal Brief. The proposed
modification of Iles is thus the simple substitution of one known mechanical
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element for another that produces predictable results. See KSR, 550 U.S. at
416 (“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result”). The
Examiner thus provides adequate reasoning based on rational underpinnings
to explain why one of ordinary skill would have been led to provide the
compression tube of Iles with a cylindrically shaped flange.
The Examiner further finds that Iles does not disclose the claimed
compression means or roller having a rest position in which the roller is not
in contact with the compression tube, but Nishioka discloses a pump having
a roller that is parked in a position not in contact with the tube when the
pump is not operating to prevent damage to the tube. Ans. 6. The Examiner
concludes it would have been obvious to a person having ordinary skill in
the art to modify Iles such that the rollers do not compress the tubes when
the pump is not operating as suggested by Nishioka. Id.
In response, Appellants argue that in all of the embodiments disclosed
by Iles at least one roller is always in contact with the tube and Iles
“fundamentally disclose[s] the importance of not providing a rest position
with the compression means free of all contact with the tube, to achieve the
stated goal of continuous flow.” App. Br. 13. Appellants also argue that
“Nishioka discloses a valve 110 that squeezes and closes off tube 103 when
roller 105 leaves the tube (see Figs. 10-12), and opens only after roller 105
engages the tube again (see col. 7, lines 53-62)” and Nishioka thus teaches
away from the concept of incrementally compressing the compression tube
in a manner such that the compression tube is free of any occlusions. App.
Br. 14. However, Nishioka merely expresses a preference for using the
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valve 110 and does not criticize, discredit, or discourage the use of pumps
without such a valve. As such, Nishioka does not teach away from the
proposed combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).”). Therefore, Appellants’ teaching away argument is not
persuasive.
In addition, we agree with the Examiner’s finding that the
embodiment shown in Figures 14-16 of Nishioka expressly does not require
the valve 110. Ans. 19 (citing Nishioka, col. 9, ll. 19-20). Specifically, this
embodiment of Nishioka includes a pair of rollers 205 supported on a rotor
plate 204 by levers 207 such that the rollers 205 move to an operation
position when the rotor plate 204 rotates in the direction of arrow A in
Figure 15 and to a rest or hold position when the rotor plate 204 rotates in
the direction of arrow B in Figure 16. Nishioka, col. 8, l. 64 to col. 9, l. 2.
The rollers 205 sequentially squeeze the tube when in the operation position
and release pressure on the tube when in the rest position, thereby avoiding
deterioration of the tube while the pump is stopped. Nishioka, col. 9, ll. 28-
34. As such, this embodiment of Nishioka discloses a pump in which the
rollers have a rest position where the compression tube is free from
occlusion from the rollers and any other structure.
Appellants argue that even for this embodiment, Nishioka stresses the
importance of constant contact and compression. Reply Br. 4. This is not
persuasive because the constant compression of Nishioka applies only
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during operation of the pump. As discussed supra, Nishioka teaches that the
rollers do not compress the tube while the pump is stopped. Appellants also
note that “it appears the Examiner did not rely on this portion of Nishioka
[i.e., the embodiment of Figs. 14-16] in the Final Rejection.” Id. However,
by failing to timely file a petition to the Director seeking review of the
Examiner’s failure to designate the rejection as a new ground of rejection,
Appellants have waived any arguments that the rejection must be designated
as a new ground. See Manual of Patent Examining Procedure (MPEP)
§ 1207.03 (IV) (8th ed., Rev. 9, Aug. 2012).
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection. We thus sustain the rejection of
independent claims 1 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Iles, Nishioka, and Muller or Williams. We also sustain the rejection of
claims 2 and 3, which depend from claim 1 and for which Appellants do not
advance separate argument.
Claims 1 and 9 rejected over Ray, Saito, and either Muller or Williams
The Examiner finds that Ray does not disclose a pump tube having a
cylindrically shaped flange that engages a channel for securing the tube in
place. Ans. 8. However, the Examiner finds that Muller and Williams both
disclose such a tube and concludes it would have been obvious to a person
having ordinary skill in the art to modify Ray by providing the tube with a
cylindrically shaped flange to be received in a channel as taught by Muller
or Williams for the purpose of holding the tube in place. Id.
Appellants argue against this modification on the basis that there is no
need to provide the pump of Ray with the flanges and grooves of Muller or
Williams to secure the tube because Ray already includes two rigid
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connectors 204 and 205 for securing the compression tube. App. Br. 16.
This contention is not persuasive. We agree with the Examiner that securing
the middle portion of Ray’s tube between the connectors 204 and 205 would
motivate one of ordinary skill in the art to utilize the flanges and grooves of
Muller or Williams. Ans. 23. In other words, Ray has a substantial length
of flexible tube 202 extending between the rigid connectors 204 and 205.
One of ordinary skill in the art would realize that flanges such as those
taught by Muller or Williams might better secure this portion of tube 202.
We accordingly agree with the Examiner’s conclusion that it would have
been obvious to provide the tube of Ray with a cylindrically shaped flange.
The Examiner further finds that Ray does not disclose the claimed
compression means or roller having a rest position in which the roller is not
in contact with the compression tube, but Saito discloses that the rollers can
be evacuated to an area where the tube is not compressed by the rollers.
Ans. 8. The Examiner concludes it would have been obvious to a person
having ordinary skill in the art to modify Ray so that the rollers can be
evacuated to an area where they do not compress the tube as taught by Saito
for the purpose of preventing distortion of the tube when the pump is not
being operated. Ans. 8-9.
Appellants argue that “there is no apparent modality how the two
roller Saito pump could be implemented in the three roller Ray device.”
App. Br. 16. This argument is not persuasive because, as noted by the
Examiner, Figures 11 and 12 of Saito depict a three-roller embodiment.
Ans. 23. We also disagree with Appellants’ argument that one skilled in the
art would not be motivated to implement Saito, which is used for non-critical
ink flow, in the Ray device used to administer critical amounts of medicine.
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App. Br. 16-17. This argument is not persuasive because, as noted by the
Examiner, using a non-occluded tube in the Ray device would not be
problematic (with respect to administering unmeasured amounts of
medicine) because the non-occluded state would only occur when the device
is inactive. Ans. 23-24.
Appellants’ arguments thus do not apprise us of error in the
Examiner’s rejection of claims 1 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Ray, Saito, and Muller and Williams, and we sustain the
rejection.
Claims 1 and 9 rejected over Nishioka and either Muller or Williams
The Examiner finds that Nishioka discloses a pump that includes a
compression tube 103 and a roller or compression means 105 for
compressing the tube. Ans. 9. Regarding the claimed cassette assembly, the
Examiner finds that
the pump housing (ink jet housing) of Nishioka
encloses a cavity which includes the assembly (15) with
guide member (106) which reads on the cassette since the
guide member (106) has a compression surface (106A)
that conforms to the tube (103); the pump housing (ink
jet housing) would then also include the compression
means in the cavity.
Ans. 10. The Examiner also states that the flange like attachment shown in
Figure 2 of Nishioka can be used to removably mount the assembly 15 to the
“housing,” which is identified as the “ink jet recording device depicted in
Figure 1.” Ans. 19. From this, the Examiner determines that “[t]he housing
and its interior (cavity) reads on ‘housing that defines a cavity’” and
“[a]ssembly (15) therefore reads on the removable cassette because the
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flange like attachment makes it possible to disassemble, and the cassette is
inside the cavity of the housing.” Id.
We agree with Appellants that Nishioka fails to disclose a cassette
assembly that is removably disposed in the cavity of a pump housing. App.
Br 18; Reply Br. 5. The Examiner’s position that Nishioka’s ink jet
recording device meets the claimed pump housing is misguided because the
claims require that the pump housing be an element of the pump.1 In
Nishioka, the “assembly” 15 referred to by the Examiner is in fact the pump.
See Nishioka, Abstr.; col. 4, ll. 46-47; Figure 2. The pump 15 is mounted to
the frame of the ink jet recording device, as depicted in Figure 1 of
Nishioka. The ink jet recording device thus cannot be considered to be a
component of the pump 15. Furthermore, because the “assembly” 15 is
actually the pump, and not a component of the pump, it cannot be the
claimed cassette assembly.
For the above reasons, the Examiner’s combination of references does
not teach or suggest all of the limitations of claims 1 and 9. As such, we do
not sustain the rejection of claims 1 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Nishioka and Muller and Williams.
Rejections of claims 4-6, 8 and 10-13
Each one of claims 4-6, 8 and 10-13, which depend from claim 1 or
claim 9, is rejected as being obvious over the combination of Ray, Saito, and
Muller and Williams in further combination with one or more of a plurality
of additional references (i.e., Seyler, Sundén, Molimard, Edwards and
Barraclough). Appellants advance no separate arguments in connection with

1 Claims 1 and 9 both recite a pump that comprises a pump housing defining
a cavity and a cassette assembly removably disposed in the cavity.
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claims 4-6, 8 and 10-13 but instead rely on their dependency from claim 1 or
claim 9 for patentability. App. Br. 20-21. As we find no deficiency in the
Examiner’s rejection of claims 1 and 9 as being obvious over the
combination of Ray, Saito, and Muller and Williams for the reasons
discussed supra, we also sustain the rejection of claims 4-6, 8 and 10-13 for
the same reasons.
DECISION
We affirm the decision of the Examiner rejecting claims 1-3 and 9
under 35 U.S.C. § 103(a) as being unpatentable over Iles, Nishioka, and
Muller or Williams.
We affirm the decision of the Examiner rejecting claims 1 and 9 under
35 U.S.C. § 103(a) as being unpatentable over Ray, Saito, and Muller and
Williams.
We reverse the decision of the Examiner rejecting claims 1 and 9
under 35 U.S.C. § 103(a) as being unpatentable over Nishioka and Muller
and Williams.
We affirm the decision of the Examiner rejecting claims 4-6, 8 and
10-13.
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

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