Ex parte Rose et al.

Board of Patent Appeals and Interferences

Aug 18, 1998

08009381 (B.P.A.I. Aug. 18, 1998)

Application for patent filed January 27, 1993. 1
According to appellants, the application is a continuation of
Application 07/730,586, filed July 15, 1991, now abandoned,
which is a continuation of Application 07/348,280, filed May
5, 1989, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SAM ROSE and GLENN C. BUCHANAN
________________
Appeal No. 95-2960
Application 08/009,3811
________________
ON BRIEF
________________
Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
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Application 08/009,381
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claims 8-16, which are all of the claims remaining in the
application.
THE INVENTION
Appellants claim a method for forming a sterile
connection between two separated compressible rubber tubing
segments to permit sterile flow between them, by joining the
ends of the rubber tubing segments with a hollow conductive
metal tube and sterilizing the conductive metal tube and the
ends of the rubber tubing segments using heat produced by an
induction coil. Claim 8 is illustrative and is appended to
this decision.
THE REFERENCES
Tenczar 4,030,494 Jun. 21, 1977
Smith 4,443,215 Apr. 17, 1984
Popovich et al. (Popovich) 4,475,900 Oct. 9, 1984
Isono 4,668,217 May 26, 1987

THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 15 and 16 over Smith and Isono; claims 8-10
and 12-14 over Smith, Isono and Popovich; claim 11 over Smith,
Isono, Popovich and Tenczar.
OPINION
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Application 08/009,381
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We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with the
examiner that
the invention recited in appellants’ claims 8-11, 15 and 16
would have been obvious to one of ordinary skill in the art at
the time of appellants’ invention over the applied references.
Accordingly, the aforementioned rejections of these claims
will be affirmed. However, we will not sustain the rejection
of claims 12-14.
At the outset, we note that appellants state that claims
15 and 16 stand or fall with claims 8-11 and that claims 12-14
stand or fall separately (brief, page 4). We therefore limit
our discussion to one claim in each of these groups, namely,
claims 8 and 12. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37
USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(5)(1993).
Isono discloses a method for forming a sterile connection
between two disassociated compressible rubber fluid conduit
Appeal No. 95-2960
Application 08/009,381
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tubing segments used in dialysis or transfusion, to permit
sterile fluid flow between them (col. 3, lines 15-20; col. 6,
lines 23-24). The rubber tubing segments are connected by a
conductive metal tube which has male and female portions (col.
5, line 40 - col. 6, line 10). When a dialysis bag is
replaced, the male and female portions of the conductive metal
tube are
sterilized with an alcohol lamp (col. 12, line 34 - col. 13,
line 24). Isono’s method differs from that recited in
appellants’ claim 8 in that the rubber tubing segments are not
compressed to isolate free ends thereof, the heating is not
produced by induction, and there is no teaching that the ends
of the rubber tubing segments are sterilized by the heating.
However, Popovich discloses that using clamps to isolate
a portion of the connection tubing between a patient and a
dialysis bag permits a potential contamination zone to be
formed (col. 4, lines 53-59), and that heating the portion
between the clamps using ultraviolet radiation permits all of
the tubing and tubing connector in the potential contamination
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Application 08/009,381
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zone to be sterilized, thereby reducing the risk of infection
(col. 4, line 60 - col. 5, line 4). Popovich does not teach
that the heating is provided by an induction coil. However,
although Smith is directed toward heating a needle used to
connect thermoplastic tubing in a dialysis device, the
reference indicates that radiation and induction are
alternative methods for heating a portion of the connection
device between a dialysis bag and a patient (col. 4, lines 38-
47; col. 5, lines 42-49). In view of these teachings by
Popovich and Smith, one of ordinary skill in the art would
have been motivated to isolate a portion of Isono’s tubing and
connecting device between the dialysis bag and patient using
clamps and to sterilize the entire portion between the clamps
by a heating method such as induction to reduce the risk of
infection, and would have had a reasonable expectation of
success in doing so. Thus, such a method for isolating using
clamps and sterilizing would have been prima facie obvious to
one of ordinary skill in the art. See In re Vaeck, 947 F.2d
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Application 08/009,381
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488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re
O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir.
1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648
(Fed. Cir. 1985).
Appellants argue that Isono does not use a single,
unitary hollow conductive metal tube but, instead, uses a
tubular member having elements which connect to each other
(brief, page 6). Appellants’ claim 8 does not require use of
a one piece tube. Although Isono’s tube has mating members,
an end of each member is connected to a rubber tube segment,
which is all that appellants’ claim 8 requires.
Appellants argue that Isono does not disclose heating
connected tubing using induction (brief, page 6). Motivation
to do so would have been provided to one of ordinary skill in
the art by Popovich and Smith as discussed above.
For the above reasons, the evidence and argument of
record, on balance, leads us to conclude that the invention
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recited in appellants’ claim 8 would have been obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103.
Appellants’ claim 12 requires that a sterile compressible
rubber tubing segment be invaded by cutting it prior to using
a hollow conductive metal tube to join end segments formed by
the cutting. The examiner argues that Popovich teaches
connection of two tube segments which have been closed off
(answer, page 5). We do not find in Popovich, however, or in
any of the other references relied upon by the examiner, a
teaching or suggestion to invade a sterile tube by cutting it.
Accordingly, we do not sustain the rejection of claims 12-14.
DECISION
The rejections under 35 U.S.C. § 103 of claims 15 and 16
over Smith and Isono, claims 8-10 over Smith, Isono and
Popovich,
and claim 11 over Smith, Isono, Popovich and Tenczar, are
affirmed. The rejection of claims 12-14 over Smith, Isono and
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Application 08/009,381
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Popovich is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2960
Application 08/009,381
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William J. Speranza
St. Onge Steward Johnston & Reens
986 Bedford Street
Stamford, CT 06905
Appeal No. 95-2960
Application 08/009,381
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APPENDIX
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Application 08/009,381
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