Ex Parte Roberts et al

Board of Patent Appeals and Interferences

Apr 24, 2012

11733964 (B.P.A.I. Apr. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH A. ROBERTS, JOHN HENRY BURBAN,
and DUANE E. LLOYD
____________

Appeal 2011-000605
Application 11/733,964
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-9 and 11.1 We
have jurisdiction under 35 U.S.C. § 6(b).

1 Pending claims 12-24 stand withdrawn from consideration (App. Br. 5).
Appeal 2011-000605
Application 11/733,964

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STATEMENT OF THE CASE
The claims are directed to a method to vent gas from a body cavity
during an endoscopic procedure. Claim 1 is representative and is
reproduced in the “Claims Appendix” of Appellants’ Brief (App. Br. 27).
Claims 2-9 and 11 depend directly from claim 1.
Claims 1-6, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Grane.2
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Grane and Watson.3
We reverse.
ISSUE
Does the preponderance of evidence on this record suggest a method
that utilizes a device that comprises a valve in association with an opening,
wherein the valve (1) deters gas inside a chamber from being exhausted to
the atmospheric air and (2) is operable to automatically (a) permit fluid
communication with atmospheric air when a suction source is operational or
(b) prevent gas flow through the opening when a suction source is not
operational?
FACTUAL FINDINGS (FF)
FF 1. Grane suggests a device that comprises an air relief hole, e.g., an
opening, is associated with a suction source (Ans. 4-5; Grane, col. 3, ll. 44-
46).

2 Grane et al., US 4,273,126, issued June 16, 1981.
3 Watson, JR., US 2006/0036221 A1, published February 16, 2006.
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Application 11/733,964

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FF 2. For clarity we reproduce Grane’s Fig. 2 below:

“FIG. 2 illustrates the way in which the attachment device is used in
practice when attached to the suction tube of a conventional suction pump
(not shown)” (Grane, col. 2, ll. 25-27).
FF 3. Grane suggests “[a]n air relief hole 17 extending from the top of
connecting unit 2 into communication with outlet duct 9 and outlet bore 8
enables the operator to remove and re-establish the vacuum in jar 1 and
subsequently in the secretion tube 6 by respectively opening and closing
hole 17 with a finger-tip in a way appearing from FIG. 2” (Grane, col. 3, ll.
44-50).
FF 4. Examiner relies on Watson to suggest “a desiccant filled chamber in
a fluid flow path of” a device used “for draining the chest cavity of a
patient” (Ans. 9).
ANALYSIS
According to Examiner, “based on the pneumonic-hydraulic structure
of . . . [Grane’s] apparatus . . . gas flow through the opening of the apparatus
of Grane is necessarily prevented when the suction source is not operational”
(Ans. 9). We are not persuaded.
Appellants’ claimed invention requires a valve in association with the
opening (e.g., Grane’s air relief hole) to “deter[ ] gas inside the chamber
Appeal 2011-000605
Application 11/733,964

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from being exhausted to the atmospheric air” and “prevent gas flow through
the opening when the suction source is not operational” (Claim 1). When
Grane’s suction source is operational the operator’s finger operates as a
valve to regulate air passing through the opening and thereby regulate the
vacuum in the jar 1 (FF 3). When Grane’s suction source is not operational
a vacuum cannot be created in Grane’s jar and the operator’s finger is no
longer required to regulate the device (see generally App. Br. 18). Thus,
when the suction source is off and the operator’s finger is no longer on
Grane’s air relief hole, gas inside Grane’s jar is free to exhaust through the
air relief hole into the atmospheric air (id.; see also Reply Br. 3 (Grane’s “air
relief hole 17 is merely a hole. Since it is a hole, any gas that enters the
apparatus of Grane will flow though the apparatus and then exit this hole”
when the suction source is not operational)). Examiner failed to identify an
evidentiary basis on this record to suggest otherwise.
Examiner’s reliance on Watson to suggest “a desiccant filled chamber
in a fluid flow path of” a device used “for draining the chest cavity of a
patient” fails to make up for the foregoing deficiency in Grane (see FF 4;
App. Br. 25).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to suggest a
method that utilizes a device that comprises a valve in association with an
opening, wherein the valve (1) deters gas inside a chamber from being
exhausted to the atmospheric air and (2) is operable to automatically (a)
permit fluid communication with atmospheric air when a suction source is
operational or (b) prevent gas flow through the opening when a suction
source is not operational.
Appeal 2011-000605
Application 11/733,964

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The rejection of claims 1-6, 9, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Grane is reversed.
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Grane and Watson is reversed.

REVERSED

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