Ex Parte Al-Thallab

Patent Trial and Appeal Board

Feb 28, 2013

11370045 (P.T.A.B. Feb. 28, 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.
11/370,045 03/08/2006 Fatema S. Al-Thallab 3348/29 8595
22429 7590 02/28/2013
LOWE HAUPTMAN HAM & BERNER, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/28/2013 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 FATEMA S. AL-THALLAB
__________

Appeal 2011-006839
Application 11/370,045
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH,
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 nursing
device for feeding infants with a cleft lip or cleft palate. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Claims 1, 3, 5 and 10 are on appeal. Claim 1, the only independent
claim on appeal, is representative and reads as follows (emphasis added):
1. A nursing device for feeding infants with a cleft lip or
cleft palate, said device comprising:
an upper portion including a clear or transparent bottle
having an opening at an upper end thereof and a closed bottom
portion for containing a supply of liquid;
a nipple and means for maintaining said nipple in sealing
engagement with said opening in said bottle, and in which said
nipple includes a thin soft rubber shield constructed and
dimensioned to cover the defect of an infant’s mouth to thereby
prevent liquid leakage due to a cleft lip or cleft palate;
a submersible rotary pump disposed in said bottom
portion of said bottle and a tubular member passing through
said nipple from a forward opening in said nipple and
connected to said submersible rotary pump for delivering a pre-
selected volume of liquid from the bottle and through the nipple
for feeding a [sic] infant;
a lower portion of said device isolated from said fluid
containing closed bottom portion and including a housing, a
motor disposed within said housing and a magnetic coupling for
driving said pump in response to rotation of said motor;
a programmable timer for selecting an amount of liquid
to be delivered to an infant in a cycle and regulating the volume
of liquid pumped and the length of pauses between pumping for
each feeding cycle and in which said timer includes a visual
display to illustrate the relative volume of liquid pumped and
timed intervals in a feeding cycle in said lower portion of said
device;
a first knob for adjusting the volume of liquid pumped
and a second knob for adjusting the time for a pause and an
LED display for indicating the volume of liquid pumped and
length of a pause disposed in said lower portion of said device;
and
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a battery for powering said motor and means for
connecting said battery to a charger.

The claims stand rejected as follows:
I. Claims 1 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Goldie,1 Sklar,2 Epp,3 Turner,4 Ruth,5
Jackson,6 Clegg,7 and Hakky.8
II. Claims 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Goldie, Sklar, Epp, Turner, Ruth, Jackson,
Clegg, Hakky, and Guss.9
The same issue is dispositive for each of the rejections.
Issue
The Examiner finds that the device of the rejected claims differs from
Goldie’s device in that Goldie:
1) “does not specifically disclose [transparent] material for the bottle”
(Ans. 5);
2) “does not teach the nipple to include a rubber sealing means for
covering the roof of an infant’s mouth” (id.);

1 Goldie et al., US 2008/0039778 A1, published Feb.14. 2008.
2 Sklar, US 5,531,338, issued Jul. 2, 1996.
3 Epp, US 4,856,663, issued Aug. 15, 1989.
4 Turner et al., (U.S. 4,966,580), issued Oct. 30, 1990.
5 Ruth et al., US 2004/0188372 A1, published Sep. 30, 2004.
6 Jackson et al., US 4,884,013, issued Nov. 28, 1989.
7 Clegg et al., US 5,853,387, issued Dec. 29, 1998.
8 Hakky et al., US 6,023,639, issued Feb. 8, 2000.
9 Guss, US 4,994,076, issued Feb. 19, 1991.
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3) “does not teach a magnetic coupling for driving the pump or a
timer” (id.); and
4) “does not teach ... regulating the volume of liquid and length of
pauses between each feeding cycle” (id.); and
5) “does not specifically disclose that the battery is rechargeable”
((id.) at 7).
However, the Examiner finds that it would have been obvious to modify the
device of Goldie with the teachings of Sklar, Epp, Turner and Jackson
because:
1) Sklar teaches using a transparent bottle “allow the user to view the
liquid level inside the bottle” (id. at 5);
2) “Epp teaches infants with cleft lips/palates are unable to properly
suck from a normal nipple and using a nipple with a seal, which
can be used with convention[al] bottles, allows for infants to be
able to properly swallow and suck during feeding” (id.);
3) Turner discloses the successful use of a magnetic coupling to drive
a peristaltic pump (id. at 6);
4) Turner discloses “a programmable timer control to regulate the
length of pauses between feeding cycles and the volume of liquid
pumped” that “allow[s] the user proper time to swallow” (id.); and
5) Jackson discloses that the use of rechargeable batteries “is an art
recognized means for powering a device, specifically a pump used
for feeding, and further using a rechargeable battery increases the
portability of the device” (id. at 7).

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Appellants contend that “there is a major difference between
Applicant’s device which deals with children having a cleft lip or cleft pallet
and with premature infants” (App. Br. 7) and that “[t]his difference is
significant and the reason why it is not obvious to combine the references in
the manner suggested by the Examiner as precluding patent coverage to
Applicant” (id. at 8). First, “Goldie mentions that in his device, the fluid
will not be delivered to the baby except when the infant’s intraoral sucking
pressure and amplitude both simultaneously satisfy the respective threshold
values” (id.). “By contrast in Applicant’s device the mother only adjusts the
desired volume to be given in a measured time so it is much more simple to
give the baby the food then calculating the inspired breath or intraoral
pressure or to measure the breath to breath amplitude” (id. at 8-9).
Appellants further contend that “if you take Goldie’s device as
incorporated in a transparent bottle it will not be the same as Applicant’s
device because Goldie is dealing with a different group of babies where they
have different requirements and this is well know[n] in pediatric or neonatal
practices” (id. at 9).
Appellants further contend that “a sealed nipple will complicate the
issue with a preterm baby that has [poor] sucking and, with some of them,
the sucking reflex is not even established (preterm babies delivered before
32 weeks of gestation), so the sealed nipple will not work, but will
complicate the sucking process which is already very poor or even not
developed. By contrast in Applicant's device it is added to help, but is not
the complete solution for the cleft pallet babies” (id. at 10).
The issue presented is:
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Does the evidence of record support the Examiner’s findings that cited
prior art renders the nursing device of claim 1 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Goldie discloses a computer controlled bottle device having an
opening at an upper end of the bottle and a closed bottom portion for
containing a supply of liquid (see e.g., Goldie 3, ¶¶ [0023] and [0025] and
Figures 2 and 4).
FF2. The bottle of Goldie is fitted with a nipple (id.).
FF3. Sklar discloses a bottle “formed of a material that is either
transparent or translucent so that the level of liquid contained therein is
easily viewed from outside the container, such as glass, polyethylene or
polypropylene” (Sklar col. 3, ll. 6-8).
FF4. Epp discloses a device to allow an infant with cleft palate
and/or cleft lip to effectively suck by mouth, typically comprising a solid
duckbill shaped shield, that “acts to seal the cleft palate while keeping the
nipple from collapsing into the cleft palate and cleft lip to allow the infant to
suck liquids from a bottle” (Epp, Abstract).
FF5. Epp discloses that the nipple and shield may be formed of latex
rubber (id. at col. 4, ll. 55-60.)
FF6. Turner “teaches an oral feeding device which uses a motor and
a peristaltic pumping system which incorporates a solenoid to drive the
pump” (App. Br. 10; see also, Turner col. 4, ll. 36-40).
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FF7. Turner discloses that “[i]t is desirable that there be a minimum
delay between the termination of delivery of one bolus and the
commencement of delivery of the next bolus” (Turner col. 5, ll. 14-16).
FF8. Jackson discloses the use of rechargeable batteries in a device
using pumps to deliver medical fluids (see e.g., Jackson, col. 3, ll. 50-55).
Principles of Law
“A patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, a
prima facie conclusion of obviousness may be supported by a showing that a
combination of familiar elements according to known methods yields no
more than predictable results. Id. at 401; citing United States v. Adams, 383
U.S. 39, 40 (1966). Furthermore, the Supreme Court has emphasized that
“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
An attorney argument is not evidence unless it is an admission,
because “[a]n assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (citations omitted). See also, In re Pearson, 494 F.2d 1399,
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1405 (CCPA 1974) (“Attorney argument in a brief cannot take the place of
evidence.”)
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Analysis
We find that the Examiner has set forth a prima facie case of
obviousness that has not been adequately rebutted by Appellant. The
Examiner has provided a rational basis for combining the cited references,
where the proposed modifications address each disputed element of claim 1
(Ans. 5-7) and are supported by the findings of fact (FF1-FF5). The fact that
Goldie discloses a nursing device suitable for pre-term babies does not
persuade us that the device could not be adapted for use with a child having
a cleft lip such as, for example, with reliance on the disclosure of Epp and
Turner (see e.g., Ans. 9; FF4). Appellants have not presented any evidence
to establish that the references are incapable of being combined as set forth
by the Examiner. See e.g., Pearson at 1405. We thus find that the Examiner
has expressed a proper reason for the combination of the cited references,
namely, the combination of familiar elements in a manner that yields no
more than predictable results (see, Ans. 4-8). KSR at 401.
Appellants additional arguments address the cited reference
individually, not the combined teachings of the references, and thus fail to
persuade us that the subject matter of claim 1 in non-obvious. See e.g.,
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Merck at 1097. For example, Appellants contend that “[t]he Turner device
needs the hospital setting, while Applicant’s device is for a caregiver and
mother and to be used at home” (id. at 11). Furthermore, “[i]n the Turner
device, the baby needs to suck to operate the system. It will not work until
the patient sucks and then upon sucking the system will open the valve.”
(Id.) However, the Examiner has found that the device of Goldie is suitable
for use with infants having a cleft lip or cleft palate when combined with the
Epp device, where the Epp device would allow such infants to effectively
suck by mouth (Ans. 5; FF4). We find no language in claim 1 limiting the
use of the device to a hospital setting and find no evidence of record
supporting the notion that the device suggested by the combination of
references is incapable of operating in the manner set forth by the Examiner.
We therefore affirm the Examiner’s conclusion of obviousness.
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner’s findings that the combination of references renders claim 1
obvious. Claim 10 fails with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
As to the remaining obviousness rejections, whether Goldie, Sklar,
Epp, Turner and Jackson are properly combined by the Examiner in order to
establish a prima facie case of obviousness is the issue in each of the
rejections on appeal. We therefore also affirm the remaining obviousness
rejection for the reasons given above.

SUMMARY
We affirm all rejections on appeal.
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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

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