Ex Parte Taljaard

Patent Trial and Appeal Board

Oct 29, 2014

10520231 (P.T.A.B. Oct. 29, 2014)

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.
10/520,231 01/04/2005 Andre Johan Taljaard 930092-2008 5104
7590 10/30/2014
Ronald R Santuccit
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
10/30/2014 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 ANDRE JOHAN TALJAARD
__________

Appeal 2012-004681
Application 10/520,231
Technology Center 3700
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
medical tube retaining device. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Statement of the Case
Background
The Specification teaches that an endotracheal tube “is adapted to be
inserted through the oral cavity of a patient and into the trachea to provide

1 Appellant identifies the Real Party in Interest as Jirehsa Medical
(Proprietary) Limited (see App. Br. 2).
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for the supply of fluids or gasses to the body, for the monitoring of internal
conditions in the body and to provide for removal of secretions from within
the body” (Spec. 1: 11–14). The Specification teaches that it “is desirable to
secure the endotracheal tube in place within the patient to prevent it from
being inadvertently advanced into the left or right tracheal bifurcation or
retracted from the trachea after it has been properly positioned” (Spec. 1:
16–18).
The Claims
Claims 1, 2, 5–7, 11–14, 18, 22, and 23 are on appeal. Claim 1 is
representative and reads as follows:
1. A medical tube retaining device, said device
including:
a first patient engaging portion configured to engage a
zone of an upper jaw of a patient, the first patient engaging
portion being shaped in a form of a dental arch and having
tooth engaging portions;
a second patient engaging portion configured to
engage a zone of a lower jaw of the patient, the second
patient engaging portion being shaped in a form of a dental
arch and having tooth engaging portions, the first and
second patient engaging portions being biased apart to
provide a working gap between; and
a medical tube guide means for holding a medical
tube located in an airway of the patient, the medical tube
guide means being supportable on one or both of the patient
engaging portions and located relative to the patient
engaging portions such that in use the medical tube guide
means is operatively positioned at the mouth of a patient in
order to hold the medical tube as it exits the airway of the
patient;
wherein the medical tube guide means includes
securing means operable between a securing and a releasing
position, said securing means being configured to secure the
medical tube against longitudinal displacement unless the
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securing means is in the releasing position in which case the
medical tube is longitudinally displaceable into and out of
the mouth of the patient.

The issue
The Examiner rejected claims 1, 2, 5–7, 11–14, 18, 22, and 23 under
35 U.S.C. § 103(a) as obvious over Karasic,2 Bergersen,3 and Bertoch4 (Ans.
4–13).
The Examiner finds that Karasic “discloses a device capable of
retaining a medical tube, the device including . . . a medical tube guide
means, e.g. the tongue retractor holder 62 or throat opener channel/holder
42, either of which is capable of holding a medical tube and is located in an
airway of the patient” (Ans. 4). The Examiner relies upon Bergersen to
disclose pivotably displaceable patient engagement portions (see Ans. 4).
The Examiner finds that Karasic does not teach “the securing means
operable between a securing and a releasing position as claimed. Bertoch et
al. disclose a clamp 20 operable between a securing and a releasing position,
capable of frictionally secure an endotrac[h]eal tube 40 against longitudinal
movement” (Ans. 5).
The Examiner finds it obvious “to modify Karasic by including a
clamp such as that of Bertoch et al. in order to secure the medical tube
against longitudinal displacement as explicitly taught by Bertoch” (Ans. 5).

2 Karasic, B.L., US 6,805,127 B1, issued Oct. 19, 2004.
3 Bergersen, E.O., US 4,898,535, issued Feb. 6, 1990.
4 Bertoch et al., US 6,755,191 B2, issued June 29, 2004.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Karasic,
Bergersen, and Bertoch render the claims obvious?
Findings of Fact
1. Figure 4 of the Specification is reproduced below:

“Figure 4 is an isometric view of the medical retaining device” (Spec. 7, l.
21).
2. The Specification teaches that the “medical tube guide means
10 includes securing means . . . . The securing means is in the form of a
clamp 14” (Spec. 15, ll. 11–16).
3. The Specification taches that the “medical tube guide means 10
may include an eye 19 through which the medical tube 12 to be guided
passes” (Spec. 15, ll. 26–27).
4. The Specification teaches that the “medical tube guide means
14 is supported by the patient engaging portions 112 and 114 and is
locatable relative to the patient engaging portions to guide the medical tube
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12 through the working gap into a mouth of the patient” (Spec. 14, ll. 16–
18).
5. Figure 1 of Karasic is reproduced below:

“FIG. 1 shows the frontal view of the invention as a multipurpose intra-oral
device (10) for use in the patient’s mouth having a first mouthguard (14) and
a second mouthguard (24)” (Karasic, col. 2, ll. 52–55).
6. Bertoch teaches that “when the clamp 20 is closed, the clamp
20 engages the endotracheal tube 40 sufficiently tight to resist movement of
the endotracheal tube 40 in its longitudinal direction with respect to the
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shield 10 without occluding the endotracheal tube 40” (Bertoch, col. 4, ll. 3–
7).
7. Bertoch teaches that it “is desirable to secure the endotracheal
tube in place within the patient to prevent it from being inadvertently
mainstem intubated (advanced into the patient) or extubated (retracted (or
removed) from the patient’s mouth) after it has been properly positioned”
(Bertoch, col. 1, ll. 23–27).
8. Bergersen teaches that an orthodontic positioning appliance
where a “connecting hinge portion 34 is formed at a posterior end 36 of the
appliance since the slit extends only partially through the appliance thus
leaving an anterior end 38 of the upper part 26 and an anterior end 40 of the
lower part 30 separate from each other” (Bergersen, col 2, ll. 57–61).
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “‘[R]ejections 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.’” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
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Analysis
We recognize that Karasic and Bergersen teach patient engaging
portions as required by claim 1 (FF 5, 8) and Bertoch teaches the use of a
clamp as a securing means (FF 6) and provides reasons for using a clamp
(FF 7).
The Examiner finds that Karasic’s elements 42 and 62 are “capable of
holding a medical tube” (Ans. 4). However, because Karasic fails to teach
using either of these elements as a tube guide means, we conclude that the
Examiner has not adequately explained why the person of ordinary skill
would have included the clamp of Bertoch as part of Karasic’s elements 42
and 62, since there is no tube to clamp in these elements of Karasic.
Therefore, this situation differs from Keller, because the Examiner has
not provided sufficient evidence that the combined teachings of Karasic,
Bertoch, and Bergerson would have suggested a “medical tube guide means”
that is “supportable on one or both of the patient engaging portions” and that
includes a “securing means” as required by claim 1.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combination of Karasic, Bergersen, and Bertoch render the claims
obvious.
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SUMMARY
In summary, we reverse the rejection of claims 1, 2, 5–7, 11–14, 18,
22 and 23 under 35 U.S.C. § 103(a) as obvious over Karasic, Bergersen, and
Bertoch.

REVERSED

cdc