Ex Parte Smith

Patent Trials and Appeals Board

Feb 27, 2013

10879776 - (D) (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/879,776 06/29/2004 Alan Smith 610P015 9106
42754 7590 02/27/2013
Nields, Lemack & Frame, LLC
176 E. Main Street
Suite #5
Westborough, MA 01581
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/27/2013 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 ALAN SMITH
____________

Appeal 2010-006619
Application 10/879,776
Technology Center 3700
____________

Before STEVEN D. A. McCARTHY, ANNETTE R. REIMERS, and CARL
M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006619
Application 10/879,776
2
STATEMENT OF THE CASE
Alan Smith (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-12 and 15-28. Claims 13-14 are cancelled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED INVENTION
The claimed subject matter relates to “a device for rectal lavage, and to a
method for using such a device, particularly for patients undergoing bowel
surgery.” Spec. 1, ll. 4-6; fig. 1.
Independent claim 1 is illustrative of the subject matter on appeal, and
recites:
1. A device for rectal lavage, comprising:
a rigid tubular body (10);
a nozzle (12) for insertion into the anus (50) of a patient, the
nozzle (12) being constituted by a tapered front end portion of
the tubular body (10) that is more flexible than said rigid
tubular body, and having a broadest region (15);
a port (14) for the insertion of an irrigation hose (16) into the
device;
an opening (18) in said nozzle (12) for the passage of the
irrigation hose (16) there-through;
at least one drain hole (20) positioned in said nozzle (12),
forward of said broadest region (15) thereof and spaced from
said opening (18), for the passage of irrigated fecal matter from
the rectum (52) into the hollow interior (24) of said tubular
body (10); and
a discharge outlet (22) from the hollow interior (24) of said
tubular body (10) for the discharge of irrigated fecal matter
from the device, the internal cross-sectional area of the
discharge outlet being greater than the internal cross-sectional
area of the largest of the drain hole(s).

Appeal 2010-006619
Application 10/879,776
3

THE REJECTIONS
The Examiner rejected claims 1-12 and 15-28 under 35 U.S.C. § 103(a) as
being unpatentable over Smith (EP 1 262 205 A2, pub. Dec. 4, 2002) in view of
Fisher (GB 110,818, pub. Nov. 8, 1917). 1 Ans. 3.

ANALYSIS
Appellant emphasizes four limitations in independent claim 1 that
purportedly distinguish the claimed device over the prior art, including: (1) the
intended use of the device “for insertion into the anus”; (2) the nozzle having a
“tapered front end portion” and a “broadest region”; (3) the nozzle being “more
flexible” than the “rigid tubular body”; and (4) the “drain hole positioned in said
nozzle, forward of said broadest region thereof and spaced from said opening” in
the nozzle. App. Br. at 5-15. The Examiner found that Smith discloses a rectal
lavage device that meets essentially all the claim limitations except for the claimed
“tapered front” for the nozzle and the claimed “at least one drain hole forward of
the broadest region” of the nozzle. Ans. 4. For those two limitations, the
Examiner relied on GB ‘818 which, like Smith, relates to “colon irrigators.” Id.;
see also GB ‘818, p. 1. In relying on GB ‘818, the Examiner found that it “teaches
a tapered front (page 2, paragraph 1 and Figure 2) and drain holes 14 (Figure 2).”
Id. The Examiner concluded that, based on the teachings of GB ‘818, a skilled
artisan would have been motivated to modify the nozzle of Smith with a tapered
front to “provide a device that is more comfortable to insert” into the rectum of the

1 Both the Examiner and Appellant use the nomenclature “GB ‘818” when
referring to the Fisher reference. For consistency, we will adopt the parties’
nomenclature for Fisher rather than refer to it by name.
Appeal 2010-006619
Application 10/879,776
4
patient, and further, would have been motivated to modify Smith’s nozzle with
drain holes “to provide clear drain passage for the return flow of waste material.”
Id.
We agree with the Examiner that:
Smith discloses a device for colonic lavage comprising a
generally rigid tubular body 10 having a front end nozzle
portion 12 for insertion into the anus of a patient; a port
24 for the insertion of an irrigation hose 26 into the
device; an opening 16 in the nozzle 12 for the passage of
the irrigation hose there through, and a discharge outlet
20 from the hollow interior of the tubular body 10.

Ans. 3-4. We further agree with the Examiner’s finding that Smith’s “nozzle 12 is
constituted by a flexible (paragraph 0012) material” and that “[t]he nozzle has a
broadest region at the tip or ‘hill’ of the corrugations and is tapered at the bottom
or ‘valley’ of the corrugation as broadly as claimed.” See Ans. 4. We also agree
with the Examiner’s finding that GB ‘818 “teaches a tapered front (page 2,
paragraph 1 and Figure 2)” and that “[o]ne having ordinary skill in the art would
have been motivated to modify Smith with a tapered front.” See id. We have
considered the Appellant’s arguments with respect to these particular findings but
find them to be without merit.
That said, we now address the “drain hole” limitations of claim 1. We note
that independent claim 28 recites the same “drain hole” limitations. App. Br.,
Claims Appendix. As required by independent claims 1 and 28, the “drain hole”
has two express limits as to its location on the nozzle, namely, it is positioned
forward of the broadest region of the nozzle and spaced from the opening in the
nozzle. App. Br., Claims Appendix (emphasis added); see also Figs. 1 and 3. In
other words, as explained by Appellant, the claimed “drain hole” is “formed in the
tapered front end [of the nozzle] between the nozzle opening 18 and the widest part
Appeal 2010-006619
Application 10/879,776
5
of the nozzle.” App. Br. 11 (emphasis in original). The Examiner recognized that
Smith lacks a drain hole within the claimed limits. Ans. 4. While Smith does
disclose an “opening 16” that permits the drainage of waste material (as indicated
by arrows B), it is neither “forward of said broadest region” of the nozzle nor
“spaced from said opening” in the nozzle, as required by claims 1 and 28. See
Smith, paras. [0021], [0024], [0025] and fig. 2 . Knowing this, the Examiner
turned to GB ‘818 for its purported disclosure of “drain holes 14 (Figure 2).” Ans.
4.
In analyzing GB ‘818, the Examiner continually points to “drain holes 14”
as providing the key to modify Smith, finding that they “are capable of receiving
waste fluid.” Ans. 4 and 7. Based on that finding, the Examiner surmised that a
skilled artisan would have been motivated to modify Smith with “drain holes as
taught in GB 110818” because doing so would “provide clear drain passage for the
return flow of waste material.” Id. at 4.
Appellant raises two substantive errors with the Examiner’s analysis of GB
‘818. First, Appellant asserts that “although the openings 14 of GB '818 are
holes,” they are “not drain holes” and they are “not located in the nozzle at all,” let
alone “between the nozzle opening 18 and the widest part of the nozzle.” App. Br.
10, 11 and 13 (emphasis in original). Rather, according to Appellant, the “drain
holes 14” of GB ‘818 are located in the irrigation hose (i.e., applicator tube 7) of
the GB ‘818 device, and as such, they are “for the administration into the colon of
anesthetic.” Id. at 11 (emphasis in original). Hence, Appellant argues that the
Examiner’s modification of Smith to include the “holes 14,” as taught by GB ‘818,
would result in something different than what the claims require, namely, “such a
modification would require that such holes be provided in the hose 26 of Smith,
not in the nozzle of Smith, and such holes, like in GB ‘818, would not ‘drain’ but
Appeal 2010-006619
Application 10/879,776
6
rather would ‘administer’ whatever is being administered through that hose 26”.
App. Br. 11-12.
Our reading of GB ‘818 coincides with the Appellant’s view. Claims 1 and
28 recite that the “drain hole” is positioned in the nozzle for the passage of waste
material “from the rectum.” App. Br., Claims Appendix; see also App. Br. 10-11.
GB ‘818, on the other hand, expressly discloses that the holes (i.e., openings 14),
on which the Examiner relied, are located in the irrigation hose (i.e., applicator
tube 7) that delivers anesthetic into the rectum. Specifically, GB ‘818 provides:
1) “The particular object of this invention being to provide an instrument
for the administration of anaesthetics by the rectum of the colon,” [p.
1, ll. 3-5];

2) “In the performance of the anaesthesia, the anesthetic is made to flow
through the flexible applicator tube 7,” [p. 2, ll. 25-26]; and

3) “The flexible applicator tube 7, is provided with an opening 13, at the
extreme end thereof, and other openings 14 are provided in the side
wall of said tube 7. The said tube 7, may be of any suitable length and
is in practice connected with a vessel which contains the anesthetic, as
ether, or any other medical solution that may be desired for the
administration.” [p. 2, ll. 16-20].

Thus, contrary to the Examiner’s finding, GB ‘818 discloses that the express
purpose of the openings or holes 14 is to administer or supply fluid; they do not
drain fluid. In other words, the holes 14 of GB ‘818 do the opposite of what
claims 1 and 28 require. As such, the holes 14 of GB ‘818 cannot reasonably be
considered to constitute drain holes, and the Examiner’s reliance on them for the
teaching to modify Smith is erroneous.
As for the second error in the Examiner’s analysis of GB ‘818, Appellant
contends that Smith cannot be modified as the Examiner proposes because
“[p]lacing apertures in the nozzle 12 of Smith would be completely redundant;
Appeal 2010-006619
Application 10/879,776
7
draining is already accomplished without such apertures.” App. Br. 15; see also id.
at 12-13. Appellant further explains that drainage “is already taken care of by the
very large opening 16” in the Smith nozzle, thus, no purpose “could possibly be
served by modifying the Smith device to include ‘drain’ holes.” Id. at 12, 15
(emphasis in original).
While we recognize that Smith’s drain hole is integral with the nozzle 12,
whereas GB ‘818’s drain holes are separated from the tapered nozzle 1,
nonetheless, both Smith and GB ‘818 provide a hole for draining waste material
from the colon. Similar to Smith’s device which includes “opening 16” where
waste material “returns to the tubular body 10 to be discharged through the outlet
20,” GB ‘818’s device includes “apertures 8” for the “return flow of wasted
anesthetic . . . into the discharge duct 10.” Smith [0010] and [0025] and Fig. 2; see
also GB ‘818, p. 1, ll. 6-10, p. 2, ll. 21-25, and Fig. 2. Thus, the reason proffered
by the Examiner for modifying Smith to include a drain hole, i.e., “to provide clear
drain passage for the return flow of waste material” (Ans. 4), appears to already be
performed by the opening 16 in Smith’s device. As such, the Examiner has not
provided any findings that Smith recognized a problem with the drain hole.
Without a persuasive articulated reason based on some rational underpinning
for modifying the reference as proposed, the Examiner’s rejection appears to be the
result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))
(“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). Therefore, absent
hindsight, we fail to see why one of ordinary skill in the art would have been led to
replace the integrated drain opening in Smith’s nozzle with the separated (and,
arguably, less than ideal) drain holes of GB ‘818, as the Examiner proposes.
Appeal 2010-006619
Application 10/879,776
8
For the foregoing reasons, the rejection of independent claim 1, and its
respective dependent claims 2-12 and 15-27, and independent claim 28, as
unpatentable over Smith and GB ‘818 cannot be sustained.
DECISION
The Examiner’s decision is reversed as to claims 1-12 and 15-28.

REVERSED

tj