Ex parte Utterberg

Board of Patent Appeals and Interferences

Apr 24, 2001

08850277 (B.P.A.I. Apr. 24, 2001)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID S. UTTERBERG
____________
Appeal No. 2000-1995
Application No. 08/850,277
____________
HEARD: April 11, 2001
____________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
David S. Utterberg appeals from the final rejection of
claims 1 through 8, 10 through 12 and 14 through 19, all of
the claims pending in the application.
THE INVENTION
The invention relates to a hemodialysis pump set having
branch line connectors designed to facilitate automated
Appeal No. 2000-1995
Application No. 08/850,277
The following terms in the appealed claims lack a proper1
antecedent basis and are deserving of correction: “said
connectors” (claims 2 through 4, 12 and 18), “said blood flow
conduit” (claims 3, 12 and 16); and “said longitudinally
connected branch lines” (claims 6 and 11).
2
packaging and subsequent set-up of the pump set, and to
eliminate kinking
of the branch lines during use. Representative claim 1 reads
as follows:1
1. A set for conveying blood between a patient and blood
treatment apparatus, which comprises:
blood flow tubing; a connector for connecting the tubing
with a patient’s vascular system; a connector for connecting
the tubing with the blood treatment apparatus; a portion of
said tubing comprising an enlarged-diameter, pump segment
tubing connected at each pump segment tubing end with a pump
tubing connector, each pump tubing connector also connecting
in substantially straight-line relation to another portion of
said blood flow tubing, at least one of said pump tubing
connectors also connecting to a branch line in longitudinal
relation to said other portion of the blood flow tubing
wherein said set may be easily assembled and packaged in an
automated manner.
THE EVIDENCE
The items relied on by the examiner as evidence of
obviousness are:
Reed et al. (Reed) 3,944,261 Mar. 16, 1976
Utterberg 5,061,365 Oct. 29,
1991
Appeal No. 2000-1995
Application No. 08/850,277
The examiner’s refusal to consider and respond to2
certain arguments advanced in the main brief because they
allegedly were being presented for the first time (see page 7
in the answer) has no basis in USPTO practice.
3
The item relied on by the appellant as evidence of non-
obviousness is:
The 37 CFR § 1.132 Declaration of David S. Utterberg filed
November 9, 1998 (Paper No. 8).
THE REJECTION
Claims 1 through 8, 10 through 12 and 14 through 19 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Utterberg in view of Reed.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 12 and 14) and to the examiner’s answer
(Paper No. 13) for the respective positions of the appellant
and the examiner with regard to the merits of this rejection.2
DISCUSSION
Utterberg, the examiner’s primary reference, discloses a
hemodialysis arterial blood flow set 10 comprising a connector
12 for connecting the set to a patient, tubing 16, a negative
Appeal No. 2000-1995
Application No. 08/850,277
The underlying specification (see, for example, pages 53
and 9) uses the terms “parallel” and “longitudinal”
interchangeably to describe the relation between the branch
lines and the associated blood flow tubing/conduits.
4
pressure pillow 24 having an angled branch port 30 for a
saline line 32, tubing 26, roller pump tubing 34, a connector
having an angled branch port for a heparin line 38, tubing 36
and a connector 14 for connecting the set to a dialyzer, these
components being arranged as shown in Figure 1.
It is not disputed that the Utterberg blood flow set
responds to all of the limitations in independent claims 1, 5,
10, 14, 18 and 19 except for those requiring at least one of
the pump tubing/segment connectors to connect to a branch line
in “longitudinal” (claims 1, 5, 14 and 18) or “substantially
parallel” (claims 10 and 19) relation to the associated
portion of the blood flow tubing/conduit. As indicated3
above, the corresponding relation in the Utterberg blood flow
set is angled (perpendicular as shown in the drawings).
Reed discloses a bifurcated tubing connector for an
extracorporeal blood handling system, such as a hemodialysis
system, wherein it is necessary to join two incoming blood
streams into a single outgoing stream. Reed teaches that
Appeal No. 2000-1995
Application No. 08/850,277
5
conventional “Y” and “T” connectors “pose serious problems
inherent in their design in that they tend to subject the
blood to hemolytic trauma. For example, blood hemolysis
results when blood and its components are exposed to excessive
turbulence, sharp corners and obstruction” (column 1, lines 19
through 24). To overcome these problems, Reed proposes a
bifurcated tubing connector 10 having three tubing couplings
16, 18 and 20 which are in parallel relation to one another
(see Figure 2).
In combining Utterberg and Reed to reject the appealed
claims, the examiner concludes that it would have obvious to
one of ordinary skill in the art “to provide the tubing set of
Utterberg with the bifurcated connector of Reed, in order to
reduce the hemolysis of blood” (answer, page 5).
The flaw in the examiner’s reasoning, however, is that
neither reference indicates that hemolysis occurs in blood
flow sets of the sort disclosed by Utterberg, let alone in the
particular area at issue where the saline and/or heparin
branch lines connect with the blood flow tubing/conduit.
Moreover, neither reference demonstrates any appreciation of
Appeal No. 2000-1995
Application No. 08/850,277
6
the particular problems posed by blood flow sets of the sort
disclosed by Utterberg or the advantageous solutions thereto
embodied by the claimed invention which are documented in the
appellant’s specification and in the Utterberg declaration.
In this light, we are satisfied that the evidence before us
does not justify the examiner’s conclusion that the
differences between the subject matter recited in independent
claims 1, 5, 10, 14, 18 and 19 and the prior art are such that
the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill
in the art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1, 5, 10, 14, 18 and 19, or of
dependent claims 2 through 4, 6 through 8, 11, 12 and 15
through 17, as being unpatentable over Utterberg in view of
Reed.
As a final matter, upon return of the application to the
technology center, the examiner may wish to consider whether
U.S. Patent No. 5,360,395 raises a double patenting issue with
respect to the claims in the instant application. According
Appeal No. 2000-1995
Application No. 08/850,277
7
to the record, the instant application is a continuation of
Application 08/312,301, filed September 26, 1994, now
abandoned, which was a continuation of Application 08/170,534,
filed December 20, 1993, now the U.S. patent in question. The
appellant submitted a terminal disclaimer in parent
Application 08/312,301 in an apparent attempt to obviate any
double patenting complication.
SUMMARY
The decision of the examiner to reject claims 1 through
8, 10 through 12 and 14 through 19 is reversed.
REVERSED
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2000-1995
Application No. 08/850,277
8
SEYFARTH SHAW
55 MONROE STREET
SUITE 4200
CHICAGO, ILLINOIS 60603
GJH
Appeal No. 2000-1995
Application No. 08/850,277
APJ McQUADE
APJ McCANDLISH
APJ COHEN
REVERSED
HEARD: 3 PERSON CONFERENCE
September 12, 2002