Appeal No. 1998-2521
Application No. 08/184,212
holder accommodates all sizes of endotracheal and pediatric tubes (see column 1, lines
23-24 and lines 44-45).
Based on the foregoing findings and the findings made by the examiner on pages
4-5 of the supplemental answer, we agree with the examiner that the only difference
between the subject matter of appealed claim 1 and Crosbie’s teachings is that Crosbie
lacks an express disclosure of inserting the medical tube into a patient’s nasal passage.
However, the recitation in claim 1 that the medical tubes are for “oral and nasal insertion”
is merely a statement of intended use of the tube and thus is not germane to the
patentability of the holder per se. See Loctite Corp. v. Ultraseal Ltd. 781 F.2d 861, 868,
228 USPQ 90, 94 (Fed. Cir. 1985), In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238
(CCPA 1967) and In re Lemin, 326 F.2d 437, 440, 140 USPQ 273, 276 (CCPA 1964).
In any case, as noted by the examiner, Crosbie does disclose medical tube sizes (e.g.,
2.5mm in line 50 of column 2) that are small enough to be capable of nasal insertion. In
this regard, the Ohio Chemical catalog is cited as evidence that tubes having small
diameters, such as 2.5mm, are used for nasal insertion. As the very least, therefore,
Crosbie discloses that his holder will hold a tube of a size that is inherently capable of
nasal insertion. Furthermore, we agree with the examiner that Austin suggests the
concept of nasal intubation as an alternate to insertion via the mouth. Since the
advantages of both types of intubation are known in the prior art, the selection of one or
the other would have been obvious. See In re Heinrich, 268 F.2d 753, 756, 122 USPQ
388, 390 (CCPA 1959).
With regard to appellant’s arguments in the paragraph bridging pages 21 and 22
of the main brief, it is clear that, in the use of Crosbie’s holder, not all tube sizes will be
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