Ex Parte Tak et al

Board of Patent Appeals and Interferences

Oct 19, 2011

10837390 (B.P.A.I. Oct. 19, 2011)

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.
10/837,390 04/30/2004 Maurice Petrus Wilhelmus Tak 30394-1123 9278
5179 7590 10/19/2011
PEACOCK MYERS, P.C.
201 THIRD STREET, N.W.
SUITE 1340
ALBUQUERQUE, NM 87102
EXAMINER
WIEST, PHILIP R
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
10/19/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAURICE PETRUS WILHELMUS TAK and
JEROEN GERBERT HASPERHOVEN
____________

Appeal 2009-014460
Application 10/837,390
Technology Center 3700
____________

Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
JAMES P. CALVE, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014460
Application 10/837,390

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STATEMENT OF THE CASE
Maurice Petrus Wilhelmus Tak and Jeroen Gerbert Hasperhoven
(Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 3, 4, 7-15, and 17-20 under 35 U.S.C. § 103(a)
as being unpatentable over Augustine (US 2001/0009610 A1; published
July 26, 2001) and Bellhouse (US 5,254,259; issued October 19, 1993).1
Claims 2, 5, 6, and 16 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claimed invention “relates to a disposable that is suitable
for application in a device for heating a physiological fluid.” Spec. 1, ll. 1-3.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A disposable that is suitable for application in a device
for heating a physiological fluid, the disposable comprising:
a conduit for conducting fluid, which conduit comprises
conduit sections that are arranged next to each other and bends
that connect the conduit sections,
wherein the conduit sections are wide and shallow,
wherein the bends’ width is substantially the same as the
bends’ height,
wherein in at least one of the bends is a first turbulence-
inducing obstruction comprising a first baffle having a height of
at least approximately 20% of the height of the conduit at the
position of the first baffle,

1 An oral hearing was held on September 22, 2011.
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wherein the first baffle is placed in at least one bend near
the connection with the conduit portion and in its extended
direction, preceding this bend, and
wherein a second baffle is provided in at least one bend.
Independent claim 12 is directed to an apparatus for heating a
physiological fluid comprising, inter alia, a conduit having bends that
connect conduit sections, wherein at least one turbulence-inducing
obstruction is disposed within at least one of the bends, wherein the conduit
sections comprise a width greater than a depth thereof, and wherein the
bends’ width is substantially the same as the bends’ height.
ISSUE
Appellants argue that “[t]here is nothing to suggest that one skilled in
the art would modify Augustine to have the Applicant’s claimed width and
height of the bends” and the Examiner fails to provide an adequate reason to
modify the device of Augustine to have dimension of the bends being
different from the dimensions in the straight conduit portions. Reply Br. 4.
The Examiner explained:
Regarding Augustine’s lack of bends having generally
square cross sections, it is the examiner’s opinion that [it would
have been obvious to] one of ordinary skill in the art at the time
of invention to optimize the dimensions of a known heat
exchanger in order to maximize the turbulence through the
bends. Because blood is unlikely to stagnate in the straight
conduit sections, it is desirable that the conduits be wide and
shallow, thereby exposing blood to a maximum amount of
surface area and maximizing the heat transfer rate. However,
blood is more likely to stagnate in the bends than in the straight
conduit sections. Therefore, one of ordinary skill in the art at
the time of invention would have been motivated to change the
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Application 10/837,390

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dimensions of the bends in order to maximize turbulence,
thereby improving the heat transfer rate of the system and
preventing blood from stagnating in the bends.
Ans. 5, 7.
The issue presented by this appeal is whether the Examiner provided
an adequate articulation of a reason based on rational underpinnings that
would have prompted one of ordinary skill in the art to modify the bends of
Augustine’s device to make the dimensions different from the straight
conduit portions so that the bends’ width is substantially the same as the
bends’ height, as called for in claims 1 and 12.
ANALYSIS
Taking as true the Examiner’s finding that “blood is more likely to
stagnate in the bends than in the straight conduit sections,”2 the Examiner’s
reasoning nonetheless lacks an adequate explanation of why one of ordinary
skill in the art would have been led to the particular bends dimensioned as in
the claims. In particular, the Examiner states that one of ordinary skill in the
art would have been motivated to change the dimensions of the bends to
maximize turbulence. Ans. 5, 7. The Examiner makes no finding based on
the evidence of record that the aspect ratio of the conduit is a result-effective
variable such that one of ordinary skill would have been motivated to
optimize these dimensions of the bends to achieve increased turbulence. See
In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (finding an exception to the
rule of In re Aller, 220 F.2d 454 (CCPA 1955) that the discovery of an

2 Appellants do not appear to contest this finding. See Oral Hearing
Transcript 4.
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optimum value of a variable in a known process is normally obvious, in the
case where a parameter optimized was not recognized to be a result-effective
variable). Further, even if such motivation were found, the Examiner failed
to explain why such a motivation would have led one of ordinary skill to
bends having heights equal to their widths, or even that bends so
dimensioned would achieve the result sought by one of ordinary skill of
increased turbulence.
As such, we cannot sustain the Examiner’s rejection of claims 1 and
12, or their dependent claims 3, 4, 7-11, 13-15, and 17-20 under 35 U.S.C.
§ 103(a) as unpatentable over Augustine and Bellhouse.
CONCLUSION
The Examiner failed to provide an adequate articulation of a reason
based on rational underpinnings that would have prompted one of ordinary
skill in the art to modify the bends of Augustine’s device to make the
dimensions different from the straight conduit portions so that the bends’
width is substantially the same as the bends’ height, as called for in claims 1
and 12.
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 7-15, and 17-20
is REVERSED.

REVERSED

nlk