Ex Parte Sage

Patent Trial and Appeal Board

Feb 11, 2013

11799165 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/799,165 05/01/2007 Shahn S. Sage 134.02840101 7529
26813 7590 02/11/2013
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/11/2013 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 SHAHN S. SAGE
__________

Appeal 2011-001146
Application 11/799,165
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a catheter
connection system. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-001146
Application 11/799,165

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Statement of the Case
Background
“The present invention provides catheter connectors, connections
systems, and methods in which a catheter is attached to a threaded connector
that is inserted into the lumen of the catheter” (Spec. 2 ¶ 06).
The Claims
Claims 1-28 are on appeal. Claim 1 is representative and reads as
follows:
1. A catheter connection system comprising:
a connector body that comprises an intermediate
section defining a stop surface and a first connector
extending from the intermediate section, wherein a bore
extends through the first connector and the intermediate
section, and wherein the first connector comprises a
threaded outer surface; and
a catheter comprising an end portion attached to
the first connector, wherein the end portion comprises a
lumen that extends through the end portion towards a
distal end of the catheter, wherein the lumen is located
within an elastically compressible inner body that is
surrounded by a reinforcing braid located around an outer
surface of the inner body;
wherein, when the first connector is located within
the lumen in the end portion of the catheter, the
elastically compressible inner body is compressed by and
conforms to the shape of the threaded outer surface of the
first connector to make a fluid-tight seal between the bore
in the connector body and the lumen of the catheter and
the end portion of the catheter abuts the stop surface of
the intermediate section of the connector body.

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Application 11/799,165

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The issues

A. The Examiner rejected claims 1-4, 6, 7, 10-17, and 20-25 under 35
U.S.C. § 103(a) as obvious over Mitsui1 and Davis2 (Ans. 4-14).
B. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as obvious
over Mitsui, Davis, and Pacella3 (Ans. 14-15).
C. The Examiner rejected claims 8, 9, 18, and 19 under 35 U.S.C.
§ 103(a) as obvious over Mitsui, Davis, and Ebling4 (Ans. 15-16).
D. The Examiner rejected claims 26-28 under 35 U.S.C. § 103(a) as
obvious over Mitsui, Davis, and Burbank5 (Ans. 17-20).
A. U.S.C. § 103(a) over Mitsui and Davis
The Examiner finds that Mitsui teaches
when the first connector [13] is located within the lumen in
the end portion of the catheter [30], the elastically
compressible inner body [31a] is compressed by and
conforms to the shape of the outer surface of the first
connector to make a fluid-tight seal between the bore in the
connector body [10] and the lumen of the catheter

(Ans. 4). The Examiner finds that Mitsui “does not teach that the first
connector [13] comprises a threaded outer surface, since Mitsui et al teaches
that the first connector comprises ring-shaped projections” (Ans. 5). The
Examiner finds that Davis teaches “a catheter connection system . . . wherein
a first connector . . . comprises a threaded outer surface” (Ans. 5).

1 Mitsui et al., US 6,308,992 B1, issued Oct. 30, 2001.
2 Davis et al., US 6,868,773 B2, issued Mar. 22, 2005.
3 Pacella, S., US 4,192,532, issued Mar. 11, 1980.
4 Ebling et al, US 4,592,749, issued Jun. 3, 1986.
5 Burbank et al., US 5,931,829, issued Aug. 3, 1999.
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Application 11/799,165

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The Examiner finds it obvious to
substitute the ring-shaped projections, of the first connector
of the system of Mitsui et al, with the external threads, as
taught by Davis et al, as an obvious preferential design
choice to the user, as either the projections or the threads
will function to securely and sealingly engage the catheter
with the first connector. Davis et al states that the external
threads on the first connector aid in firmly connecting the
first connector with the catheter

(Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Mitsui and Davis render claim 1
obvious?
Findings of Fact
1. Mitsui teaches “a hose connecting assembly that enables easy
connection with a hose and ensures a tight seal even at a place exposed to
vibrations” (Mitsui, col. 1, ll. 60-63).
2. Figure 2 of Mitsui is reproduced below:

“FIG. 2 is a cross sectional view illustrating the vicinity of a hose connecting
tube and a hose” (Mitsui, col. 5, ll. 35-36).
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Application 11/799,165

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3. Mitsui teaches that “connection tube 10 includes a tubular main
body 11, hose connecting tubes 13 and 14 integrally formed with the tubular
main body 11 at its respective ends, and a branch tube 15 projected from a
middle portion of the tubular main body 11” (Mitsui, col. 6, ll. 51-55).
4. Mitsui teaches that a “main flow path 16 connecting with the
hoses 30 and 31 is formed inside the tubular main body 11 and the hose
connecting tubes 13 and 14” (Mitsui, col. 6, ll. 55-57).
5. Mitsui teaches “the hose 30 includes an inner layer 31a made of
an EPDM rubber, a thread-reinforced layer 31b made of reinforcing threads
that are spirally networked, and an outer layer 31c made of an EPDM
rubber” (Mitsui, col. 7, ll. 53-57).
6. Mitsui teaches that as “long as the following conditions are
fulfilled, the hose 30 including the spirally networked reinforcing threads
may be replaced with a hose 30B including braided reinforcing threads”
(Mitsui, col. 7, ll. 57-60).
7. Mitsui teaches that “when the hose connecting tube 13 of the
connection tube 10 is pressed into the hose 30 in such a manner that the hose
30 climbs over the ring-shaped projections 21, 22, and 23, the ring-shaped
projections 21, 22, and 23 . . . partly expand the inner wall of the hose 30”
(Mitsui, col. 8, ll. 27-33).
8. Mitsui teaches that
when the ring-shaped projections 21, 22, and 23 expand the
diameter of the hose, a large clamping force is generated as
the reaction force against the hose connecting tube 13. The
hose 30 having such a large clamping force does not readily
come off the hose connecting tube 13 and ensures a
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Application 11/799,165

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sufficiently large sealing property. Namely the hose 30 is
securely joined with the hose connecting tube 13 without
any specific clamping mechanism, such as clips.

(Mitsui, col. 8, ll. 38-46).
9. Davis teaches that the “tubular section 39 may have external
threads 41 which aid in firmly connecting the tubular section 39 to the tube
11 and which engage with the hardened adhesive 37 to provide a
strengthened mechanical connection between the adhesive 37 and the fluid
coupling 20” (Davis, col. 4, ll. 25-29).
10. Figure 3 of Davis is reproduced below:

“FIG. 3 is a cross-sectional view of the end fitting with fluid coupling of the
actuator” (Davis, col. 3, ll. 3-4).
11. Davis teaches that “fitting 18 at the first end 15 includes a fluid
coupling 20 by which a fluid supply line, e.g., a line supplying air under
pressure, can be connected to supply fluid under pressure to the interior bore
21 of the tube 11” (Davis, col. 3, ll. 25-30).

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Application 11/799,165

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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.
Analysis
Claim 1
Mitsui teaches “a hose connecting assembly that enables easy
connection with a hose and ensures a tight seal even at a place exposed to
vibrations” (Mitsui, col. 1, ll. 60-63; FF 1).
Mitsui teaches a connector body where “connection tube 10 includes a
tubular main body 11, hose connecting tubes 13 and 14 integrally formed
with the tubular main body 11 at its respective ends, and a branch tube 15
projected from a middle portion of the tubular main body 11” (Mitsui, col. 6,
ll. 51-55; FF 3). Mitsui teaches a lumen with an elastically compressible
inner body reinforced by a braid on the outer surface (FF 5). Mitsui teaches
that when the first connector “tube 13 of the connection tube 10 is pressed
into the hose 30 in such a manner that the hose 30 climbs over the ring-
shaped projections 21, 22, and 23, the ring-shaped projections 21, 22, and 23
. . . partly expand the inner wall of the hose 30” (Mitsui, col. 8, ll. 27-33;
FF 7).
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The Examiner finds that Mitsui “does not teach that the first connector
[13] comprises a threaded outer surface” (Ans. 5).
Davis teaches that the “tubular section 39 may have external threads
41 which aid in firmly connecting the tubular section 39 to the tube 11 and
which engage with the hardened adhesive 37 to provide a strengthened
mechanical connection between the adhesive 37 and the fluid coupling 20”
(Davis, col. 4, ll. 25-29; FF 9).
Appellant “submits that the asserted motivation for making the
proposed modification is not sufficient to establish a prima facie case of
obviousness” (App. Br. 15).
We are not persuaded. Applying the KSR standard of obviousness to
the findings of fact, we conclude that the person of ordinary creativity would
have reasonably substituted the threaded connector of Davis for the ring
shaped projection connection tube of Mitsui. We agree with the Examiner
that this substitution is a “design choice to the user, as either the projections
or the threads will function to securely and sealingly engage the catheter
with the first connector” (Ans. 5). Such a combination is merely a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Appellant contends that “the Examiner has not established that the
proposed combination would form an adequate seal in the absence of the
series of circumferential exterior surfaces that are described in Mitsui et al.
as providing the required seal” (App. Br. 14). Appellants contend that “the
Examiner has failed to establish that substituting the threads of Davis et al.
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for the . . . ring-shaped projections of Mitsui et al. would ‘yield predictable
results’ to one of ordinary skill in the art” (App. Br. 14).
We are not persuaded. Davis teaches that the external threads “aid in
firmly connecting the tubular section 39 to the tube 11” (Davis, col. 4, ll. 26-
27; FF 9). Davis also teaches that the tubing is under liquid pressure (FF
11), which demonstrates that the threads would be predictably expected to
form a strong, fluid tight seal.
Appellant contends that “[i]f it is the unstated assertion of the
Examiner that the threaded connector of Davis et al. alone inherently forms a
sealed connection, then Appellant submits that the standards for a rejection
based on inherency have not been met” (App. Br. 15).
We are not persuaded. We note that Appellant’s claims are in the
open “comprising” format, so that the claimed connection system does not
exclude the use of the adhesive taught by Davis. However, even if the
adhesive were not used, the intent of Davis is a connector which permits
passage of fluid under pressure (FF 9, 11). This is sufficient for the
Examiner to reasonably infer that the connection method of Davis inherently
forms a sealed connection. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”)

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Claims 2, 13, and 23
Appellant contends that:
nothing has been identified within the disclosures of Mitsui
et al. and Davis et al. (taken alone or together) as teaching or
suggesting that, when a connector is located within the
lumen in an end portion of a catheter, the outer dimensions
of the catheter within the end portion occupied by the
connector remain substantially unchanged as compared to
the outer dimensions of the catheter when the connector is
not located within the lumen

(App. Br. 18).
We are not persuaded. This argument fails to incorporate the
threading of Davis in place of the connectors of Mitsui. While the tube in
Mitsui may slightly change in size when occupied by the connector, the
threaded connection in Davis would not reasonably be expected to change in
size. It is the threading connection of Davis that is a functional connection
to the tube now required by this obviousness rejection, not the connection of
Mitsui. Appellant has identified no evidence to suggest that the outer
“sheath 12 formed of braided fibers 13” (Davis, col. 3, ll. 15-16; FF10) of
Davis would change in size once the threaded connector is engaged in the
end of the tube 11, and Davis teaches that the “tubular section 39 may have
external threads 41 which aid in firmly connecting the tubular section 39 to
the tube 11” (Davis, col. 4, ll. 25-27; FF 9). These threads would not firmly
connect if the tube portion changed in size, either being unable to fit into a
smaller tube or being unable to engage in a larger tube.

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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Mitsui and Davis render claim 1 obvious.
B. U.S.C. § 103(a) over Mitsui, Davis, and Pacella
The Examiner finds it obvious to “modify the connector body, of the
modified system of Mitsui et al and Davis et al, with wrench flats, as taught
by Pacella, as an obvious structural design choice to the user, for a means to
turn or rotate the connector body with respect to the catheter via a wrench so
that the connector body and the catheter will engage together” (Ans. 15).
The Examiner provides sound fact-based reasoning for combining
Pacella with Mitsui and Davis. We adopt the fact finding and analysis of the
Examiner as our own. Appellant’s arguments are directed at elements taught
by Mitsui and Davis as discussed in the primary rejection, but not at the
combination with Pacella. Therefore, consistent with the rejection which we
affirmed above, we affirm this rejection for the reasons stated by the
Examiner.
C. U.S.C. § 103(a) over Mitsui, Davis, and Ebling
Appellant contends that “Ebling et al., however, expressly teaches
away from the use of silicone tubing in connection with ‘barbs,’ e.g.,
cylindrically-shaped outward projecting ribs, on connectors because the
‘barbs,’ and/or sutures used in conjunction with the ‘barbs,’ may cut into
silicone tubing after or during being secured on a connector” (App. Br. 21).
We are not persuaded. This argument fails to incorporate the
teachings of Davis for a threaded connection. In a threaded connection, as in
Davis, it is not only the tube being inserted which has external threads, but
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Application 11/799,165

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the inner tube into which the tube is being inserted is also threaded with
threads which match the external threads, “so that a connector can be
threaded onto it” (Davis, col. 3, ll. 54-55).
A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”). Appellant incorrectly focuses on Mitsui’s
connection, when the rejection relies upon the connection of Davis. While
Ebling might reasonably be taken as criticizing the solution of Mitsui for
connection, it is not Mitsui’s connection upon which the rejection relies, but
rather the connectors of Davis. Appellant does not identify, and we do not
find, any criticism of threaded connectors of Davis in Ebling.
D. U.S.C. § 103(a) over Mitsui, Davis, and Burbank
The Examiner finds it obvious to “modify the first connector and the
delivery catheter, of the system of Burbank et al, with a threaded outer
surface and a reinforcing braid, respectively, as taught by Davis et al, as the
threaded outer surface will aid in firmly connecting the first connector to the
catheter” (Ans. 18).
The Examiner provides sound fact-based reasoning for combining
Burbank with Mitsui and Davis. We adopt the fact finding and analysis of
the Examiner as our own. Appellant’s arguments are directed at elements
taught by Mitsui and Davis as discussed in the primary rejection, but not at
the combination with Burbank. Therefore, consistent with the rejection
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which we affirmed above, we affirm this rejection for the reasons stated by
the Examiner.
SUMMARY
In summary, we affirm the rejection of claims 1, 2, 13, and 23 under
35 U.S.C. § 103(a) as obvious over Mitsui and Davis. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 3, 4, 6, 7, 10-12, 14-17,
20-22, 24, and 25 as these claims were not argued separately.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Mitsui, Davis, and Pacella.
We affirm the rejection of claims 8, 9, 18, and 19 under 35 U.S.C.
§ 103(a) as obvious over Mitsui, Davis, and Ebling.
We affirm the rejection of claims 26-28 under 35 U.S.C. § 103(a) as
obvious over Mitsui, Davis, and Burbank.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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