Ex Parte Tiesma et al

Patent Trial and Appeal Board

Sep 18, 2012

11091107 (P.T.A.B. Sep. 18, 2012)

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.
11/091,107 03/28/2005 Scott R. Tiesma U510.107.101 3208
25281 7590 09/19/2012
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
PANI, JOHN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
09/19/2012 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 SCOTT R. TIESMA and DAVID A. MONTECALVO
__________

Appeal 2011-010999
Application 11/091,107
Technology Center 3700
__________

Before ERIC GRIMES, ERICA A. FRANKLIN, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a rectal
probe with a balloon-and-sleeve assembly. The Examiner has rejected the
claims as anticipated, obvious and indefinite. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

Appeal 2011-010999
Application 11/091,107

2
STATEMENT OF THE CASE
Claims 1-7, 9, 11-15, 17 and 18 are on appeal. Claims 1 and 11 are
representative and read as follows:
1. A temperature sensing probe assembly comprising:
a handle having a length, a width, a first end and a second end;
a temperature sensor strip carried by the handle and extending
from the first end of the handle, the temperature sensor strip
comprising a temperature sensor spaced from the first end, the
temperature sensor configured for connection to a thermometry
device;
a balloon-and-sleeve assembly comprising:
opposing first and second layers of a flexible polymeric
material configured to define a balloon and a sleeve that extends
longitudinally from the balloon, the balloon further comprising a
first interior space in communication with an interior space of the
sleeve, and a second interior space isolated from the first interior
space of the sleeve; and
an inflation tube having a first tube portion sealingly connected
within the second interior space of the balloon, the first tube portion
configured with an inflation port, the inflation tube further having a
second tube portion extending through the interior space of the sleeve
and being configured for connection to a fluid source; and
wherein the handle is reversibly positionable within the sleeve
portion and the temperature sensor strip is reversibly positionable
within the first interior space of the balloon portion.

11. A balloon-and-sleeve assembly for use with a temperature sensing
probe comprised of a handle and a temperature sensor strip extending
from one end of the handle, the balloon-and sleeve assembly
comprising:
opposing first and second polymeric layers configured to define
a balloon and a sleeve that extends longitudinally from the balloon
portion, the balloon comprising a first enclosed interior space and a
second enclosed interior space, the first interior space in
communication with an interior space of the sleeve and configured to
contain the temperature sensor strip when the handle is positioned in
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Application 11/091,107

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the interior space of the sleeve, the second interior space isolated from
the first interior space and the interior space of the sleeve; and
an inflation tube having a first tube portion sealingly connected
within the second interior space of the balloon, the first tube portion
configured with an inflation port, the inflation tube further having a
second tube portion extending through the interior space of the sleeve
and being configured for connection to a fluid source.

The claims stand rejected as follows:
I. Claims 11-14 were rejected under 35 U.S.C. 102 as being
anticipated by Del Gizzo et al., (US 3,162,190), issued Oct.
31,1962.
II. Claims 11-15, 17, and 18 were rejected under 35 U.S.C. 102
as being anticipated by Brennan (US 4,883,465), issued Nov.
28, 1989.
III. Claims 1, 2, 7 and 9 were rejected under 35 U.S.C. 103(a) as
being unpatentable over Kluge (US 4,054,057), issued Oct
18, 1977 in view of Del Gizzo.
IV. Claims 3 and 4 were rejected under 35 U.S.C. 103(a) as being
unpatentable over Kluge as applied to claim 1, and further in
view of Mozsary et al., (US 5,911,700), issued Jun. 15, 1999.
V. Claims 5 and 6 were rejected under 35 U.S.C. 103(a) as being
unpatentable over Kluge in view of the Del Gizzo and
Mozsary as applied to claim 4 above and further in view of
Pilling (US 3,496,391), issued Feb. 24, 1970.
VI. Claims 3-6 stand rejected under 35 U.S.C. § 112, first
paragraph.
Appeal 2011-010999
Application 11/091,107

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VII. Claims 3-6 stand rejected under 35 U.S.C. § 112, second
paragraph.

PROCEDURAL HISTORY
First, we note that the claims presented in the Claims Appendix of the
Appeal Brief filed on August 16, 2010 were presented by the Appellants in
an After-Final Amendment on August 13, 2010. As indicated in the
Advisory Action of November 1, 2010, these proposed amendments were
not entered. However, Appellants’ claim amendments of April 30, 2008
have been addressed and entered by the Examiner. See Final Rejection July
21, 2008. The claims on appeal therefore are as they were amended April
30, 2008. We have referenced these claims in forming this decision.
Second, we acknowledge the Examiner’s withdrawal of the rejection
of claims 11-14 under 35 U.S.C. 103(a) over Jaker et al. (US 2005/0177025)
in view of Crowley (US 6,096,065). (Ans. 25.)

I.
Issue
The Examiner has rejected claims 11-14 under 35 U.S.C. § 102(b) as
anticipated by Del Gizzo. Claim 11 is directed to a balloon-and-sleeve
assembly where the balloon comprises a first enclosed interior space and a
second enclosed interior space, the first interior space in communication
with an interior space of the sleeve and configured to contain the
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Application 11/091,107

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temperature sensor strip when the handle is positioned in the interior space
of the sleeve.
The Examiner finds that Del Gizzo discloses a device having a
balloon-and-sleeve assembly where the balloon has a “first interior space in
communication with an interior space of the sleeve.” In reaching this
conclusion, the Examiner interprets the breadth of the phrase interior space
of the sleeve to “include all of the space or volume located inside the exterior
boundary of [element 19 of Del Gizzo], as the claim does not require the
‘space’ [to] be hollow; the spaces are in communication at least in the sense
that they are connected to each other.” (Ans. 6).
Appellants contend that the claims do require the interior space of the
balloon and sleeve to be hollow “because the claim recites that the first
interior space is configured to contain the temperature sensor strip when the
handle is positioned in the interior space of the sleeve” and because the
balloon is inflatable with an inflation tube. (App. Br. 13-14; Reply Br. 15.)
The issue with respect to this rejection is: Whether Del Gizzo
discloses a balloon-and-sleeve assembly having a first enclosed interior
space and a second enclosed interior space, where the first interior space is
in communication with an interior space of the sleeve.
Findings of Fact
FF1. Figure 1 of Del Gizzo is reproduced below.
App
App

ll. 6,
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lication 11
Figure 1
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FF3. De
The i
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to be di
found n
open nec
an airtig
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airtight c
21.

(Del Giz

10999
/091,107
shows De
e instrume
on 19 form
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ation” and
ed of glas
the body p
l Gizzo fu
nstrument
ially trans
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stended re
ecessary f
k end 25
ht manner
rtion 19 a
hamber is
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l Gizzo’s
nt of Del
ed of mol
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a “substan
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ortion 19.
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further co
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g the hous
lative to
or particu
of the infla
as at 26
nd in surr
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2, ll. 44-55
6
diagnostic
Gizzo com
ded latex o
or the rec
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” (Del Giz
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etween the
.)
instrumen
prises a “
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lows:
extremely
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t (Del Giz
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and havin
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The
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s, an
sing

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Application 11/091,107

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FF4. The Examiner finds that the ordinary meaning of the term
“space” is “the portion or extent of this in a given instance; extent or room in
three dimensions”. (Ans. 19; citing Random House Dictionary.) The
Examiner thus finds the ordinary meaning of the term “space” to encompass
the interior volume of a solid.
FF5. The Examiner finds that “the specification does not give a
special definition to ‘space’…, nor does the claim itself use the term in a
manner that would exclude the Examiner's interpretation,” which does not
limit the meaning of the term to hollow or empty spaces. (See Ans. 19.)
FF6. The Examiner finds that the specification does not give a special
definition to the term “communication”. (Ans. 20.)
FF7. The Examiner finds that the ordinary meaning of the term
“communication” is “to be connected”. (Ans. 20; citing Random House
Dictionary.)
Principles of Law
Claim terms are not interpreted in a vacuum, devoid of the context of
the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“[p]roper claim construction … demands
interpretation of the entire claim in context, not a single element in
isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered.…”).
“[U]nless a prior art reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
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Application 11/091,107

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limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).

Analysis
Appellants argue that Del Gizzo fails to teach an instrument having a
“first interior space of the balloon in communication with an interior space
of the sleeve.” (Claim 11; Reply Br. 10.) Specifically, Appellants argue that
“the term ‘communication’ in claim 11, as would be understood by one
skilled in the art in view of Appellants’ specification and drawings, and
when considering the claim as a whole, (and before or instead of considering
dictionary definitions), refers to an interior space being open to another
interior space such that an object or fluid can pass from one interior space
into the other interior space, or vice versa.” (id; emphasis omitted.) The
Examiner contends that the claims do not exclude an embodiment where the
open interior space of a balloon is in physical contact with a sleeve having a
solid interior space. (FF5.)
We agree with Appellants. The evidence of record fails to support the
Examiner’s interpretation when the claim is read as a whole. First,
Appellants’ claim 11 recites that the first interior space is in communication
with an interior space of the sleeve and configured to contain the
temperature sensor strip when the handle is positioned in the interior space
of the sleeve. The Examiner fails to adequately rebut Appellants’ contention
that the interior space of the sleeve cannot both be a filled solid and be
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Application 11/091,107

9
configured to house another element, such as a handle or sensor strip. (See
e.g., Reply Br. 15.)
Second, we do not agree with the Examiner’s rationale that the phrase
“first interior space of the balloon in communication with an interior space
of the sleeve” can be construed such that the two instances of the term
“interior space” are each given conflicting interpretations — the first
instance referring to the empty volume of a balloon and the second referring
to the filled volume of a solid. The broadest reasonable interpretation should
not be so broad that it conflicts with the meaning given to identical terms in
the prior art or specification. See In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999)(the broadest reasonable interpretation “should not be so broad
that it conflicts with the meaning given to identical terms in other patents
from analogous art.”).
Here, the Examiner’s interpretation of the term “space” to refer to
both the open interior of a balloon and the filled interior of a solid is not only
inconsistent, but conflicts with the normal usage of that term when read in
view of the Specification. Indeed, the Examiner fails to cite to an
embodiment disclosed in the Specification that is consistent with his
interpretation. Further, the Examiner fails to point to any prior art references
that use the term “space” in a way consistent with his interpretation. We
conclude that the Examiner’s interpretation is unreasonable, as the normal
use of “space” denotes an empty, open or hollow area, especially when read
in the context of a balloon. (Reply Br. 10.) Therefore, the Examiner's
reading of the claim is inconsistent with the normal usage of the term, and its
usage in the Specification, and therefore unreasonably broad.
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Application 11/091,107

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Having determined the scope of Appellants’ claims, we do not agree
with the Examiner’s findings that Del Gizzo describes an assembly having a
first interior space of the balloon and a first interior space of the sleeve such
that the first interior spaces of the balloon and sleeve are “in
communication” with each other under the broadest reasonable
interpretation of the claim language. We are thus constrained to find that
Del Gizzo fails to anticipate claim 11 under 35 U.S.C. § 102.

Conclusion of Law
Because Del Gizzo fails to teach all elements of the claim, we reverse
the rejection of claim 11 under 35 U.S.C. § 102 as anticipated by Del Gizzo.
As claims 12-14 are dependent on claim 11, and thus incorporate all of the
limitations of claim 11, we reverse the rejection as to those claims as well.

II.
Issue
The Examiner has rejected claims 11-15, 17 and 18 under 35 U.S.C. §
102(b) as being anticipated by Brennan. Again, claim 11 requires a first
interior space of the balloon to be in communication with an interior space
of the sleeve and configured to contain the temperature sensor strip when the
handle is positioned in the interior space of the sleeve.
In determining that Brennan anticipates claims 11-15, 17 and 18, the
Examiner relied upon the same unreasonably broad interpretation of the term
“space” at issue in the anticipation rejection over Del Gizzo, discussed
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Application 11/091,107

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above. Specifically, the Examiner found that Brennan met this limitation
because the interior space of Brennan’s balloon 18 is “in communication
with an interior space of the sleeve (volume within 24)” (Ans. 9), where
element 24 is solid. We are thus constrained to reverse the Examiner's
rejection of claims 11-15, 17 and 18.

III. – V.
The Examiner has rejected claim 1, and dependent claims 2-7 and 9
thereto, in obviousness rejections that rely on the combination of Kluge and
Del Gizzo. As with claim 11, claim 1 includes the feature of a balloon
comprising “a first interior space in communication with an interior space of
the sleeve.” For the reasons above, Del Gizzo fails to teach this limitation of
the claims, under the correct claim construction. Kluge, as applied by the
Examiner, does not cure this deficiency, and thus the Examiner's rejections
under 35 U.S.C. § 103(a) must also be reversed.

VI.
Claims 3-6 stand rejected under 35 U.S.C. § 112, first paragraph.
(Ans. 4-5.) Appellants present no arguments against the Examiner's
rejection. (App. Br. 7.) Accordingly, we summarily affirm this rejection.
VII.
Claims 3-6 stand rejected under 35 U.S.C. § 112, second paragraph.
(Ans. 5.) Appellants rely upon an amendment to overcome the rejection.
(App. Br. 10.) However, the Examiner indicates that the amendment has not
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Application 11/091,107

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been entered. (Ans. 2.) Therefore, since Appellants have not presented any
arguments to the rejection on the merits, and since Appellant’s amendment
has not been entered, the rejection is summarily affirmed.

SUMMARY
The rejections of claims 11-14 under 35 U.S.C. 102 over Del Gizzo is
reversed.
The rejections of claims 11-15, 17, and 18 under 35 U.S.C. 102 as
being anticipated by Brennan is reversed.
The rejections of claims 1, 2, 7 and 9 under 35 U.S.C. 103(a) as being
unpatentable over Kluge and Del Gizzo is reversed.
The rejections of claims 3 and 4 under 35 U.S.C. 103(a) as being
unpatentable over Kluge, Del Gizzo and Mozsary is reversed.
The rejections of claims 5 and 6 under 35 U.S.C. 103(a) as being
unpatentable over Kluge, Del Gizzo, Mozsary and Pilling is reversed.
The rejections of claims 3-6 under 35 U.S.C. § 112, first paragraph, is
affirmed.
The rejections of claims 3-6 under 35 U.S.C. § 112, second paragraph,
is affirmed.
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-IN-PART

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