Ex parte Retallick

Board of Patent Appeals and Interferences

Jul 16, 1999

08556099 (B.P.A.I. Jul. 16, 1999)

Application for patent filed November 9, 1995. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD L. RETALLICK III
____________
Appeal No. 98-3360
Application No. 08/556,0991
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-3360 Page 2
Application No. 08/556,099
Entry of an amendment after the final rejection was2
permitted upon the filing of a notice of appeal.
This is an appeal from the decision of the examiner
finally rejecting claims 1-3, which constitute all of the2
claims of record in the application.
The appellant's invention is directed to an apparatus and
method for treating the lungs. The claims on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Watson et al. (Watson) 4,446,864 May 8,
1984
PCT Application WO 93/00952 Jan. 21,
1993
(Mangum)
THE REJECTION
Claims 1-3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mangum in view of Watson.
The rejection is explained in Paper No. 5.
Appeal No. 98-3360 Page 3
Application No. 08/556,099
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
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). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been led
to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this
end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the
art and not from the appellant's disclosure. See Uniroyal
,Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Appeal No. 98-3360 Page 4
Application No. 08/556,099
As stated in the opening paragraphs of the specification,
the appellant’s invention permits the simultaneous
administration of oxygen, a nebulized bronchodilator, and an
additional medicant to a patient with low or no respiratory
function who is intubated with an endotracheal tube and whose
breathing is being assisted by a manually operated
resuscitator. The invention is manifested in claim 1 by the
recitation of a number of components that are connected
together in a particular fashion. Included among these is a T-
shaped tube having a bottom opening connected to a nebulizer
and side openings connected to a resuscitator on the one hand
and to one branch of a Y-shaped tube on the other hand. The
base opening of the Y-shaped tube is connected to the
endotracheal tube that is in the patient’s trachea. Installed
in the other branch opening in the Y-shaped tube is a self-
sealing plug through which liquid medication can be injected.
The result of this arrangement is that the nebulizer can add
nebulized medication into the stream of gas supplied to the
endotracheal tube by the resuscitator, and liquid medication
can subsequently be injected into the stream that has issued
from the nebulizer.
Appeal No. 98-3360 Page 5
Application No. 08/556,099
The primary reference applied by the examiner is Mangum,
which also is directed to an apparatus for treating the lungs.
Mangum discloses a device in which a powered resuscitator
delivers a breathing mixture to the inlet of a T-shaped tube
whose bottom opening is exposed to a nebulizer reservoir and
whose outlet is connected to an endotracheal tube. Mangum also
teaches introducing a liquid medication into the system.
However, Mangum does so through an injection port in the wall
of the reservoir of the nebulizer (pages 4 and 1; Figure 11).
There is no element like or comparable to the Y-shaped tube
recited in the appellant’s claim 1 that is connected to the
system downstream of the outlet of the nebulizer, and which
provides the means for injecting a liquid medication at that
point. This deficiency is not cured by considering the
teachings of Watson, which was added for its showing of a
manual resuscitator.
Claim 3 recites the method of the invention. It requires
feeding a nebulized mist of bronchodilator into a stream of
oxygen, and injecting from the needle of a pre-filled syringe a
medicant in liquid form directly into the stream of oxygen and
nebulized mist of bronchodilator. Since Mangum teaches adding
Appeal No. 98-3360 Page 6
Application No. 08/556,099
the liquid to the reservoir of the nebulizer, where such a
stream does not exist, the requirements of claim 3 are not met.
As was the case above, the defect is not cured by the secondary
reference.
It therefore is our conclusion that the combined teachings
of the two applied references fail to establish a prima facie
case of obviousness with regard to the subject matter recited
in any of the claims, and the rejection cannot be sustained.
Appeal No. 98-3360 Page 7
Application No. 08/556,099
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
NEA/jlb
Appeal No. 98-3360 Page 8
Application No. 08/556,099
MERRILL N. JOHNSON
800 HARBOUR DRIVE
NAPLES FL 33940