Ex Parte Richards

Patent Trials and Appeals Board

Mar 1, 2019

14762345 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/762,345 07/21/2015
135866 7590 03/01/2019
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Fredrick M Richards
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0119/0124 5626
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
03/01/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRICK M. RICHARDS 1
Appeal2018-005733
Application 14/762,345
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 16-22 and 24--30. Claims 1-15 and 23 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Smiths Medical International Limited ("Appellant") is the applicant as
provided under 3 7 C.F .R. § 1.46 and is identified as the real party in interest.
Appeal Brief 3 ("Appeal Br."), filed Feb. 12, 2018.
Appeal2018-005733
Application 14/7 62,345
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to medical infusion fluid heat
exchange apparatus and warming systems." Spec. 1, Figs. 1--4. Claims 16
and 28 are independent.
Claim 16 is illustrative of the claimed subject matter and recites:
16. Medical infusion fluid heat exchange apparatus for
warming medical infusion fluid, characterized in that the
apparatus includes an elongate heat pipe of the kind containing a
working fluid that operates using phase transition between a
vapour and a liquid, a heat source mounted in thermal contact at
one end of the heat pipe and an infusion fluid flow path extending
along and around the outside of the heat pipe in thermal contact
with the heat pipe, and that the heat source transfers heat to the
heat pipe and the heat pipe transfers heat to the fluid flowing
along the flow path.
THE REJECTIONS
I. Claims 16, 17, 22, and 24--30 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Martens (US 2008/0077087 Al, published Mar.
27, 2008), Gobin (US 2002/0151945 Al, published Oct. 17, 2002), and
McCormick (US 2012/0325826 Al, published Dec. 27, 2012).
II. Claims 18-21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Martens, Gobin, McCormick, and Mimitz (US
2009/0159248 Al, published June 25, 2009).
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Application 14/7 62,345
ANALYSIS
Rejection I- Obviousness over Martens, Gobin, and McCormick
Claims 16 and 25-30
Appellant does not offer arguments in favor of claims 25-30 separate
from those presented for independent claim 16. Appeal Br. 6-11. We select
claim 16 as the representative claim, and claims 25-30 stand or fall with
claim 16. 37 C.F.R. § 4I.37(c)(l)(iv). We address claims 17, 22, and 24
separately below.
For claim 16, the Examiner finds that Martens discloses
a medical infusion fluid heat exchange apparatus for warming
medical infusion fluid, characterized in that the apparatus
includes an elongate heat pipe (Fig. 6 member 46), a heat source
mounted in thermal contact at one end of the heat pipe (the heat
pipe is necessarily in thermal contact with its source of heat) and
an infusion fluid flow path extending along and around the
outside of the heat pipe in thermal contact with the heat pipe (Fig.
6 56a and 56b ), and that the heat source transfers heat to the heat
pipe and the heat pipe transfers heat to the fluid flowing along
the flow path ([0032]).
Non-Final Act. 2-3. 2 The Examiner acknowledges that "Martens does not
disclose [that] the heat pipe contains a working fluid as recited." Id. at 3.
The Examiner finds that Gobin discloses "a heat pipe used in a catheter
device which operates using a phase transition ([0056])" and that
McCormick discloses that "it is beneficial to use a heat pipe because the
additional thermal energy is available via fluid phase changes and can be
customized as desired." Id.; see also Ans. 33 (finding that "Gobin teaches
heat pipe 161 which uses a phase change ([0052])" and that "McCormick
2 Non-Final Office Action ("Non-Final Act."), dated Sept. 22, 2017.
3 Answer ("Ans."), dated Mar. 20, 2018.
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Application 14/7 62,345
specifically teaches heat pipes using phase change are beneficial for use as
they can be customized and provide a higher rate of thermal conductivity
([0043])"); Gobin Fig. 12. The Examiner concludes that it would have been
obvious to modify the medical infusion fluid heat exchange apparatus of
Martens "to use a heat p[i]pe with a phase change[] because Gobin [teaches]
such is beneficial for heating fluid in a medical device and McCormick
teaches heat pipe[ s] are a beneficial heat source because they provide
additional thermal energy and can be customized." Non-Final Act. 3. The
Examiner explains that
[ a ]s combined[,] the heat pipe [ of Gobin] would be placed
interior to member 46 ( where 48 is currently placed) [ of Martens]
and used to provide heat to substance 46 to warm the fluid in the
lumens. As such[,] member 18 of the heat source [ of Martens]
is at one end and further materials 46 are along and at one end of
the heat pipe. Heat is transferred between 18, 46, and the fluid.
Ans. 3; see also Martens, Fig. 1.
Appellant contends that "the warming rod 46 of Martens is not a heat
pipe." Appeal Br. 8; see also Reply Br. 1-2. 4
As an initial matter, we note the Specification discloses that "[t]he
term 'heat pipe' is intended to include any heat transfer device that operates
using phase transition between a vapour and a liquid." Spec. 5. Further,
claim 16 recites "an elongate heat pipe of the kind containing a working
fluid that operates using phase transition between a vapour and a liquid."
Appeal Br. 17, Claims App. As the Specification already provides a
definition for "heat pipe" as "any heat transfer device that operates using
phase transition between a vapour and a liquid" and claim 16 recites that the
4 Reply Brief ("Reply Br."), filed May 15, 2018.
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Application 14/7 62,345
"heat pipe" "contain[ s] a working fluid that operates using phase transition
between a vapour and a liquid," the term "heat pipe" in claim 16 appears to
be intended as any structure that comprises a pipe that transfers heat "to the
[infusion] fluid flowing along the [infusion fluid] flow path." However,
even if Martens fails to disclose a "heat pipe," as alleged by Appellant, the
Examiner also finds that Gobin discloses "a heat pipe used in a catheter
device which operates using a phase transition ([0056])." Non-Final Act. 3.
Appellant does not apprise us of error in this finding.
Appellant also argues that "there is no heat source mounted in thermal
contact at one end of the warming rod 46." Appeal Br. 8.
In the Answer, the Examiner explains,
Martens does disclose that controller 18 (Fig. 1) provides
electrical current to provide warming ([0025]) and that the
current is supplied to the electrical bus members 48 and 40 which
warms member 46 which warms the fluid in passageways 56a
and 56b ([0032]) and that the material which is warmed (i.e. 46)
is made of a positive temperature coefficient material ([0009],
[0027], [0028]). As described above[,] at least portions 18, 48,
40, and 46 provide a source of heat and are in thermal contact
with the fluid.
Ans. 2. We note that claim 16 does not recite how the "end" of the heat pipe
is determined, how the heat source is mounted to an end of the heat pipe, or
define "thermal contact." See Appeal Br. 17, Claims App. Indeed, the term
"thermal contact" does not even appear to be mentioned in the Specification.
Bus bar 40 is mounted at an end of a warming device as shown in Figure 5
of Martens. In Figure 6, Martens also shows bus 48 at an end of warming
rod 46.
Even if Martens does not disclose mounting a heat source at an end of
warming rod 46, as noted above, Gobin discloses a heat pipe 161, which the
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Examiner proposes to substitute for the bus bar 48 of Martens, such that
Gobin's heat source 167 is mounted at one end of heat pipe 161 (Gobin Figs.
11, 12). See Final Act. 2-3. Accordingly, the Examiner's findings are
reasonable and are supported by a preponderance of the evidence. Appellant
does not provide persuasive evidence or argument apprising us of error on
this point.
Appellant next argues that "the two passageways 5 6a and 5 6b for the
Martens device do not extend around the outside of the heat pipe." Appeal
Br. 8; see also Reply Br. 3.
To the extent Appellant is arguing that the two passageways 56a and
56b for the Martens device do not extend completely around the outside of
the heat pipe, we note that claim 16 does not recite "completely around" but
rather, broadly recites "around" which encompasses "partially around." See
Appeal Br. 17, Claims App.; In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability).
Appellant contends that "given that warming rod 46 is inside the inner
conduit 54, the two fluid paths through passageways 56a and 56b are not 'an
infusion fluid flow path' and do not extend around the outside of the heat
pipe in thermal contact with the heat pipe, as required in the claims."
Appeal Br. 8; see also id. at 10; Reply Br. 2-3.
The limitation concerning an infusion fluid flow path extending
"around the outside of the heat pipe" is discussed above. As to the limitation
of an infusion fluid flow path being "in thermal contact with the heat pipe,"
Martens discloses this limitation by disclosing "[a] principle advantage of
this arrangement is that the heat generated by the warming rod 46 will
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Application 14/7 62,345
generally radiate outward into the fluid passageways 56a and 56b" and
"[t]hus, the wanning rod 46 is substantially surrounded by the fluid
passageways 56a and 56b, and the heat lost to the environment is
minimized." Martens ,r 32; see also Non-Final Act. 2-3; Ans. 2. We also
note that "direct thermal contact" is not recited in claim 16 and, clearly,
warming rod 46 of Martens provides heat transfer to the fluid in
passageways 56a and 56b. Appeal Br. 17, Claims App.; In re Self, 671 F.2d
at 1348.
Regarding the limitation "an infusion heat fluid pipe," we note that
claim 16 recites "the apparatus includes ... " rather than "the apparatus
consists of," and thus, the Examiner is correct in responding that "the claim
language does not limit the flow path to be only one single continuous path."
See Ans. 2-3; see also Appeal Br. 17, Claims App. We further note that the
articles "a" and "an" mean "one or more," absent clear evidence to the
contrary. See KCJ Corp. v. Kinetic Concepts, 223 F.3d 1351, 1356 (Fed.
Cir. 2000) ("Unless the claim is specific as to the number of elements, the
article 'a' receives a singular interpretation only in rare circumstances when
the patentee evinces a clear intent to so limit the article"). Here, Appellant
has not shown a clear intent to limit "an infusion fluid flow path" to only one
infusion fluid flow path.
Appellant additionally contends that: ( 1) McCormick discloses that
"[h ]eat pipes are able to transfer thermal energy from one end to the other
end at a rate higher than the thermal conductivity of the heat pipe material
would normally allow due to their ability to carry and transfer this additional
thermal energy via fluid phase changes" (quoting McCormick ,r 43) while
there is a "uniform heating of the fluid along the length of [Martens']
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Application 14/7 62,345
conduit"; (2) Appellant "fails to see how the alleged higher rate of heat
transfer that a heat pipe has would provide the nexus for a person skilled in
the art to substitute the heat pipe of Gobin for the wanning rod of Martens";
and, (3) "[t]here is [] unevenly distributed heating at best were the warming
rod in the Martens device replaced by the heat pipe of Gobin." Appeal Br.
9--1 O; see also id. at 11; Reply Br. 3--4.
These arguments are unpersuasive. First, McCormick discloses that
"heat pipes are thermally conductive components that include an internal
fluid, the fluid being selected such that its liquid-vapor phase change
temperature" and "[h ]eat pipes can additionally be customized to have a
particular effective thermal conductivity or thermal energy flow rate by
customizing the type of internal fluid or mixture of fluids and/or by varying
the internal pressure of the heat pipe," thereby providing a benefit to
combine its teaching and that of Gobin with that of Martens. McCormick
,r 43; see also Ans. 3. Thus, McCormick teaches that the thermal energy
flow can be controlled to have the desired rate. Second, to the extent
Appellant is contending that Martins "teaches away," Martens does not
discredit, criticize, or disparage the employment of the liquid-vapor phase
change heat pipes of Gobin or McCormick. As instructed by our appellate
reviewing court, "[ w ]e will not read into a reference a teaching away from a
process where no such language exists." DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006);
see also Ans. 3. Third, we note that "obviousness must be determined in
light of all the facts, and there is no rule that a single reference that teaches
away will mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages, and this
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Application 14/7 62,345
does not necessarily obviate motivation to combine." See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). A combination of
references may be obvious even if the combination eliminates a benefit of
one of the references. See In re Urbanski, 809 F.3d 1237, 1242 (Fed. Cir.
2016). We also note that claim 16 does not require a uniform heating along
the length of the infusion flow path nor does claim 16 preclude uneven
distributed heating. Appeal Br. 17, Claims App.; In re Self, 671 F.2d at
1348.
We therefore agree with the Examiner that it would have been
obvious to substitute the known equivalent of the heating element, inner bus
bar 48 of Martens, with the heat pipe 161 of Gobin. Such a combination is
merely a "predictable use of prior art elements according to their established
functions." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
"[W]hen 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." Id. at
416, citing United States v. Adams, 383 U.S. 39, 50-51 (1966); see also In
re Fout, 675 F.2d 297,301 (CCPA 1982). See Ans. 3. Appellant does not
provide persuasive evidence or argument to the contrary.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 16 as unpatentable over
Martens, Gobin, and McCormick. Accordingly, we sustain the Examiner's
rejection of claim 16. We further sustain the rejection of claims 25-30,
which fall with claim 16.
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Claim 17
Claim 1 7 recites that "the fluid flow path along the heat pipe has a
length exceeding the length of the heat pipe." Appeal Br. 17, Claims App.
The Examiner finds that "as there are two lumens [in the medical
infusion fluid heat exchange apparatus of Martens,] the total length of the
fluid flow path is greater than the length of the heat pipe." Non-Final Act. 3;
see also Ans. 3.
Appellant contends that the Examiner "is wrong insofar as the
passageways 56a and 56b are each adapted to have the fluid pass
therethrough" because "at the respective distal ends of the passageways 56a
and 56b, the fluid traversing along those passageways is infused into the
patient." Appeal Br. 11.
In this case, the Examiner does not provide evidentiary support to
establish that Martens discloses passageways 56a and 56b are interconnected
to form a fluid flow path.
Accordingly, we do not sustain the Examiner's rejection of claim 17
as unpatentable over Martens, Gobin, and McCormick.
Claim 22
Claim 22 recites that "the fluid flow path is separable from the heat
pipe so that it can be removed and replaced for use on different patients."
Appeal Br. 17, Claims App.
The Examiner finds that "the heat pipe [ of Martens' device] is
inserted through the center of the infusion conduit and would [thus] be
separable." Non-Final Act. 3; see also Ans. 3.
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Application 14/7 62,345
Appellant contends that "there is no disclosure in Martens that the
wanning rod 46 is removable from conduit [54]." Appeal Br. 12.
Here, the Examiner does not provide evidentiary support to establish
that the warming rod 46 is separable from the conduit 54 without destroying
the medical infusion fluid heat exchange apparatus of Martens. We note that
Appellant's Figure 3 shows a heat exchanger 10 having an outer sleeve 26,
an inner sleeve 21, and a heat pipe 12 in which the "[ t ]he fluid flow path is
preferably separable from the heat pipe so that it can be removed and
replaced for use on different patients." See Spec. 2, Fig. 3. Appellant's
disclosed separation of the components does not utilize any "destructive
method," as this would destroy the heat exchanger. Construing the phrase
"separable from the heat pipe" to encompass separation that would result in
destroying the claimed heat exchange apparatus would be unreasonable, as it
would be inconsistent with the disclosure and not give appropriate weight to
the term "separable." See, e.g., Stumbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render
claim language superfluous).
For these reasons, we do not sustain the Examiner's rejection of claim
22 as unpatentable over Martens, Gobin, and McCormick.
Claim 24
Claim 24 recites that "the heat source includes a positive temperature
coefficient heater." Appeal Br. 18, Claims App. ( emphasis added).
The Examiner finds that Martens discloses this limitation at paragraph
9. See Non-Final Act. 3.
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Application 14/7 62,345
Martens discloses "a conduit for transferring a medical fluid, wherein
the conduit includes at least one portion configured to heat the medical fluid
to approximately body temperature via a positive temperature coefficient
material." Martens ,r 9. We agree with Appellant that paragraph 9 of
Martens merely "describes that a conduit is provided for transferring a
medical fluid," that Martens' conduit is not a "heater," and that "the heating
of the fluid by ... a conduit is not the same as a positive temperature
coefficient heater," as claimed. See Appeal Br. 12. In other words, the
Examiner's interpretation that Martens' conduit constitutes the claimed
heater is unreasonably broad. See Ans. 4.
For these reasons, we do not sustain the Examiner's rejection of claim
24 as unpatentable over Martens, Gobin, and McCormick.
Rejection II - Obviousness over Martens, Gobin, McCormick, and Mimitz
Claims 18-21 depend either directly or indirectly from claim 1 7.
Appeal Br. 17, Claims App. The Examiner's rejection of these claims relies
on the same unsupported findings discussed above for claim 17. Non-Final
Act. 4--5. The Examiner relies on Mimitz for disclosing a helical flow path
and, thus, does not rely on Mimitz to cure the deficiencies of Martens,
Gobin, and McCormick for claim 17. Id. Accordingly, for similar reasons
as discussed above, we do not sustain the Examiner's rejection of claims 18-
21 as unpatentable over Martens, Gobin, McCormick, and Mimitz.
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DECISION
We AFFIRM the decision of the Examiner to reject claims 16 and 25-
30 as being unpatentable over Martens, Gobin, and McCormick.
We REVERSE the decision of the Examiner to reject claims 17, 22,
and 24 as being unpatentable over Martens, Gobin, and McCormick.
We REVERSE the decision of the Examiner to reject claims 18-21 as
being unpatentable over Martens, Gobin, McCormick, and Mimitz.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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