Ex Parte Rickerd et al

Board of Patent Appeals and Interferences

Jun 27, 2012

11029800 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLAUDE RICKERD, KIRK HONOUR, and DANIEL J. POTTER
__________

Appeal 2010-007223
Application 11/029,800
Technology Center 3700
___________

Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 43-45 and 49-53. The real party in interest is St. Jude Medical, Diag
Division, Inc. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Applied Prior Art
Lee U.S. 5,312,355 May 17, 1994
Kurth U.S. 6,966,896 Nov. 22, 2005
Littrell U.S. 5,041,095 Aug. 20, 1991
Guo U.S. 2002/0010425 A1 Jan. 24, 2002

App
App

§ 10

obvi

obvi

§103

assem
view
eal No. 20
lication 11
1. C
2(b) as ant
2. C
ous over L
3. C
ous over L
4. C
(a) as obv
The disc
bly.
Figure 2
of the val
Figur
10-007223
/029,800
laims 43 a
icipated by
laim 45 w
ee in view
laims 49-5
ee in view
laim 49, 52
ious over L
losed inve
of Appell
ve and is r
e 2 shows an e

The Rejec
nd 44 were
Lee.
as finally
of Kurth.
2 was fina
of Guo.
, and 53 w
ee in view
The
ntion is di
ants’ speci
eproduced
xploded view
2
tions on A
finally re
rejected un

lly rejecte
ere finall
of Littre
Invention
rected to a
fication sh
below.
of an embodim
ppeal
jected und
der 35 U.
d under 35
y rejected
ll.

splittable
ows an ex
ent of Appell
er 35 U.S
S.C. § 103
U.S.C. §
under 35 U
hemostasi
ploded iso

ants’ invention
.C.
(a) as
103(a) as
.S.C.
s valve
metric
.
App
App

wall
and m
valv
of A
below
wall
65. (
form
eal No. 20
lication 11
The valv
46, and a
aintains
In one em
e wall 46,
ppellants’
.
As show
in an asse
Spec. [001
ed by pres
10-007223
/029,800
e assembl
binder 10
the walls i
bodimen
defining a
specificati
Figure 3 s
n in Figur
mbled con
6]). The m
s-fitting th

y compris
which is ro
n the assem
t, the first
chamber w
on illustra
hows an embo
e 3, the fir
dition by a
echanica
e end face
3
es a first v
uted arou
bled cond
valve wall
ithin the
tes that em
diment of App
st valve w
mechanic
lly couple
s of the va
alve wall 4
nd an oute
ition. (Sp
45 is mat
valve. (Sp
bodiment
ellants’ inven
all is mate
ally coupl
d separatio
lve walls
5, a secon
r surface o
ec. [0004]
ed to the s
ec. [0004]
and is rep

tion.
d to the se
ed separat
n joint ma
45 and 46
d valve
f the wall
).
econd
). Figure 3
roduced
cond valve
ion joint
y be
. (Spec.
s

Appeal No. 2010-007223
Application 11/029,800

4

[0059]). The end faces may consist of a male structure on the first valve
wall and a female structure on the second valve wall for receiving the male
structure. (Spec. [0016]).
Appellants disclose four ways for splitting the valve assembly. In one
embodiment, the binder 10 is a thin layer of polymer shrink-wrapped about
the outer surface of the valve walls 45 and 46. The binder is adapted to fail
at a specific location. The split binder is then removed from the outer
surface of the valve walls 45 and 46, and the walls are disassembled from
each other. (Spec. [0011]).
In a second embodiment, the valve assembly includes flanges 50 and
51, which serve as a mechanism for splitting the valve by causing the binder
to tear or split. A user will force the flanges 50 and 51 apart to split the
binder 10. (Spec. [0060]).
In a third embodiment, the separation mechanism is a pull-tab
extending from the binder 10. (Spec. [0006]).
In a fourth embodiment, a user forces the flanges 50 and 51 oppositely
from each other in directions which are parallel to the separation joint 65.
(Spec. [0061]). That causes the valve walls to displace oppositely so that
their end faces slideably displace against each other in opposite directions.
The ridges of the male structure slides out of the grooves of the female
structure, allowing the valve walls to be separated. (Spec. [0061]).
Appellants’ claims on appeal are directed to the fourth embodiment.
Claim 43 is representative and reproduced below:
43. A splittable hemostasis valve comprising a first
valve wall mated together in an assembled condition with a
second valve wall via a mechanically coupled separation joint,
App
App

A.

discl
every
(Fed
Exam
In re
447,

(Ans
shea
is rep
hem
eal No. 20
lication 11
wherein
by slidin
opposite
splittabl
The Ant
Anticipa
oses, eithe
element
. Cir. 1999
iner bear
King, 801
450 (CCP
The Exa
. 3). Lee’
th and the
roduced b
ostatic valv
Fig
10-007223
/029,800
the mecha
g the first
to each ot
e hemostas
icipation R
tion is esta
r expressl
of the claim
); In re Sp
s the burde
F.2d 132
A 1970).
miner foun
s invention
method fo
elow, whi
e and she
ure 4 illustrate

nically co
and secon
her and pa
is valve.
DIS
ejection o
blished on
y or under
ed inven
ada, 911 F
n of prese
4, 1327 (F
Here, that
d that ind
is directe
r using the
ch illustra
ath:
s an embodim
5
upled sepa
d valve wa
rallel to a
CUSSION
f Claims 4
ly when a
the princip
tion. In re
.2d 705, 7
nting a pri
ed. Cir. 19
burden ha
ependent c
d to a split
same. (Le
tes an exem
ent of Lee's he
ration join
lls in dire
longitudin

3 and 44 o
single pri
les of inh
Robertson
08 (Fed. C
ma facie c
86); In re
s not been
laim 43 is
table hem
e Abstrac
plary em
mostatic valve
t is separa
ctions that
al axis of
ver Lee
or art refe
erency, ea
, 169 F.3d
ir. 1990).
ase of ant
Wilder, 42
met.
anticipate
ostatic val
t 1). Figu
bodiment
and sheath.
ted
are
the
rence
ch and
743, 745
The
icipation.
9 F.2d
d by Lee.
ve and
re 4 of Lee
of Lee’s

Appeal No. 2010-007223
Application 11/029,800

6

As is shown in Figure 4, the valve body 14 has two valve body
portions 14a and 14b which are mated together by a mechanically coupled
separation joint. (Lee 5:1-5:5). The valve body 14 and sheath 12 are coupled
to each other. (Lee 7:33-7:35). In one embodiment, the valve 14 and the
sheath 12 are integrally formed. (Lee 3:28-3:30). In another embodiment,
the separation joint mating the body portions 14a and 14b consists of a
tongue and groove connection. (Lee 5:6-5:8). The tongue is tightly slip-fit
into the groove to form a sealed relationship between the two valve bodies
14a and 14b. (Lee 5:8-5:10). The body portions are separately provided to
form the hemostatic valve and are temporarily joined together to form a
complete body of the hemostatic valve. The body portions are pulled apart to
split the valve. (Lee 5:28-5:35).
The Examiner acknowledged that Lee does not expressly disclose the
limitation in claim 43 that “the mechanically coupled separation joint is
separated by sliding the first and second valve walls in directions that are
opposite to each other and parallel to a longitudinal axis of the splittable
hemostasis valve.” (Ans. 7:11-7:14). Nonetheless, the Examiner found that
the limitation is met by the disclosure of Lee (1) because the mechanically
coupled separation joint in Lee provides a structure that is “capable of”
being separated by sliding the first and second walls in opposite directions
and parallel to the longitudinal axis of the valve (Ans. 3:17-3:19) and (2)
because Lee does not contain a structure that “precludes” the operation of
sliding the first and second valve walls in directions opposite to each other
and parallel to a longitudinal axis of the valve to separate the mechanically
coupled separation joint. (Ans. 7:14-7:17).
Appeal No. 2010-007223
Application 11/029,800

7

The first finding of the Examiner is not supported by the record, and
the second finding of the Examiner is misplaced. Neither is persuasive.
The valve 14 is coupled or connected to sheath 12. (Lee 6:30-6:33).
It is evident from Lee’s Figure 4 that sheath 12 is disposed in a position such
that it obstructs sliding movement of the valve halves in the longitudinal
direction opposite each other and prevents the splitting of the valve halves.
That fact is not addressed by the Examiner.
More importantly, the Examiner has cited to nothing specific to
support the determination that Lee’s valve is capable of the sliding action
which results in splitting the valve, as required by Appellants’ claims. The
determination is based on mere speculation. Even if the sheath does not
prevent the valve halves from engaging in the sliding action required by the
claims, the Examiner pointed to nothing indicating that the valve halves are
in fact coupled to each other in a way that enables or otherwise permits the
sliding motion and separation of the valve halves claimed by Appellants.
To the extent that the Examiner’s position is based on inherency of
disclosure, it is also not supported by the record. To establish inherent
disclosure, the evidence must show that a feature is necessarily described in
the reference, and that it would be so recognized by persons of ordinary
skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
Cir. 1993). Inherency may not be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner
has not pointed to any disclosure in Lee or provided any rational reasoning
which supports the notion that Lee necessarily describes that the two valve
Appeal No. 2010-007223
Application 11/029,800

8

halves engage in longitudinal sliding action in opposite directions, enough to
require a contrary showing by the Appellant. See In re Swinehart, 439 F.2d
210, 213 (CCPA 1971)(“where the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.”) .
Finally, the Examiner’s stated reasoning that Lee does not preclude
the sliding action required by Appellants’ claims is simply misplaced. That
Lee does not describe that sliding action of the valve halves in a longitudinal
direction opposite from each other is precluded is clearly not equivalent to a
teaching that such sliding action indeed occurs in the apparatus to separate
the valve halves.
Claim 44 depends from claim 43. For the foregoing reasons, the
rejection of claims 43 and 44 as anticipated by Lee cannot be sustained.

B. The Obviousness Rejection of Claim 45 over Lee and Kurth

Claim 45 depends on claim 44 which depends on claim 43. As relied
on by the Examiner, Kurth does not make up for the deficiency of Lee as
discussed above in the context of independent claim 43.
Accordingly, the rejection of claim 45 as obvious over Lee and Kurth
also cannot be sustained.

Appeal No. 2010-007223
Application 11/029,800

9

C. The Obviousness Rejection of Claim 49-52 over Lee and Guo

Claims 49-52 all depend indirectly on claim 43. As relied on by the
Examiner, Guo does not make up for the deficiency of Lee as discussed
above in the context of independent claim 43.
Accordingly, the rejection of claims 49-52 as obvious over Lee and
Guo also cannot be sustained.

D. The Obviousness Rejection of Claims
49, 52, and 53 over Lee and Littrell

Claims 49, 52, and 53 all depend indirectly on claim 43. As relied on
by the Examiner, Littrell does not make up for the deficiency of Lee as
discussed above in the context of independent claim 43.
Accordingly, the rejection of claims 49, 52, and 53 as obvious over
Lee and Littrell also cannot be sustained.
CONCLUSION
The rejection of claims 43 and 44 under 35 U.S.C. § 102 as being
anticipated by Lee is reversed.
The rejection of claim 45 under 35 U.S.C. § 103 for obviousness over
Lee and Kurth is reversed.
The rejection of claims 49-52 under 35 U.S.C. § 103 for obviousness
over Lee and Guo is reversed.
The rejection of claims 49, 52, and 53 under 35 U.S.C. § 103 for
obviousness over Lee and Littrell is reversed.
REVERSED