AIR BAG ONE SARL

Patent Trials and Appeals Board

Oct 27, 2021

2021001335 (P.T.A.B. Oct. 27, 2021)

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.
14/976,146 12/21/2015 Jorge Ernesto Odon Q224175 8143
23373 7590 10/27/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
ALEMAN, SARAH WEBB
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/27/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE ERNESTO ODON

Appeal 2021-001335
Application 14/976,146
Technology Center 3700

Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
CARL M. DEFRANCO, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 2, 4–6, 8, and 10–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
The Specification
The Specification discloses “a device to extract elements contained in
a cavity,” and “is preferably used to assist at childbirth and/or to extract

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies “AIR BAG ONE SARL” as the real party in interest.
Appeal Br. 3. Appellant elsewhere identifies Becton Dickinson and
Company as a licensee. Id. at 33.
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elements seated in cavities of the human body, facilitating the task of
medical professionals.” Spec. 1.
The Claims
Claims 1, 2, 4–6, 8, and 10–19 are rejected. Final Act. 1. No other
claims are pending. Id.; see also Appeal Br. 39–46. Claims 1, 12, and 15
are independent. Appeal Br. 39–46. Claim 1 is illustrative and reproduced
below with emphasis added to the limitation dispositive in this Decision.
1. A device to extract elements contained in a cavity
comprising:
a film-type bag with a toroidal-shaped distal open end
forming a hollow space that is configured to at least partially
receive an element to be extracted from the cavity, and a
proximal end opposite to the distal open end, wherein:
said distal open end defines an outward fold which folds
back over the film-type bag to define a double wall tubular
structure with an inner wall terminating at a proximal end of the
inner wall opposite to the distal open end, and an outer wall
terminating at a proximal end of the outer wall opposite to the
distal open end, and at least one annular cavity between the inner
wall and the outer wall of the film-type bag,
said at least one annular cavity defining an annular fluid
chamber at the distal open end, a portion of the outer wall
pressing against an opposing portion of the inner wall to form a
sliding seal sufficient to allow inflation and formation of the
annular cavity between the inner wall and the outer wall at the
distal open end,
said inner wall being able to contact the element to be
extracted from the cavity when the fluid chamber is pressurized,
and
wherein the double wall tubular structure is configured
such that when the proximal end of the inner wall is pulled in a
longitudinal direction away from the outward fold, a longitudinal
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separation distance between the proximal end of the outer wall
and the proximal end of the inner wall changes, and
wherein a portion of the inner wall located after the fluid
chamber where the outer wall presses against the inner wall, and
in the longitudinal direction towards the proximal end of the
inner wall, is configured to slide against and relative to the outer
wall, such that an element to be extracted from the cavity that is
received in the distal open end is moved in the longitudinal
direction together with the proximal end of the inner wall.
Id. at 39–40 (emphasis added).
The Examiner’s Rejections
The following rejections are before us:
1. claims 1, 2, 4–6, 8, and 10–19, under 35 U.S.C. § 112(a), as
failing comply with the written description requirement (Final Act. 2);
2. claims 1, 2, 4–6, 8, and 10–19, under 35 U.S.C. § 112(b), as
indefinite (id. at 3);
3. claims 1, 2, 4–6, 8, 10, 12–15, 17 and 18, under 35 U.S.C.
§ 103(a), as unpatentable over Silverman2 and Dyck3 (id. at 4);
4. claim 11, under 35 U.S.C. § 103(a), as unpatentable over
Silverman, Dyck, and Forde4 (id. at 9); and
5. claim 16, under 35 U.S.C. § 103(a), as unpatentable over
Silverman, Dyck, and Segal5 (id. at 10).

2 US 3,168,092, issued Feb. 2, 1965 (“Silverman”).
3 US 3,982,544, issued Sept. 28, 1976 (“Dyck”).
4 US 7,658,747, issued Feb. 9, 2010 (“Forde”).
5 US 5,527,282, issued June 18, 1996 (“Segal”).
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DISCUSSION
Rejection 1 (Written Description)6
The Examiner rejected all pending claims U.S.C. § 112(a) for lack of
adequate written description. Final Act. 2–3. Section 112(a) states the
following:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention[.]
35 U.S.C. § 112(a). “In order to satisfy the written description requirement,
the disclosure as originally filed does not have to provide in haec verba
support for the claimed subject matter at issue.” Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the
disclosure must convey with reasonable clarity to those skilled in the art that
the inventor was in possession of the invention. See id. Whether it does is a
question of fact. Id. at 1329.
The Examiner found that the Specification does not convey that
Applicant was in possession of “a sliding seal sufficient to allow inflation,”

6 When presented with both §112(a) and §112(b) rejections, it is often
prudent to start with the §112(b) rejection. See Ex parte Moore, 439 F.2d
1232, 1235 (CCPA 1971) (“For the sake of completeness we will treat the
claims on appeal as if they were rejected under both the first and second
paragraphs of § 112. Any analysis in this regard should begin with the
determination of whether the claims satisfy the requirements of the second
paragraph.”). However, as discussed herein, the lack of a written description
contributes to the claims being indefinite. Hence, we start with the written
descriptions rejection.
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which is recited in each of independent claims 1, 12, and 15. Final Act. 3–4;
see Appeal Br. 39 (claim 1 reciting “a sliding seal sufficient to allow
inflation and formation of the annular cavity”), 42 (claim 12 reciting “a
sliding seal sufficient to allow inflation and formation of the at least one
fluid chamber”), 43 (claim 15 reciting “a sliding seal sufficient to allow
inflation and formation of the annular fluid chamber”). In particular, the
Examiner found that that the Specification as filed (1) “does not describe a
‘sliding seal’ or any ‘seal’ for that matter”; and (2) the relied-upon
embodiment (i.e., that of Figures 3 and 4) “does not have a means for
inflating.” Final Act. 3–4. Thus, according to the Examiner, the
Specification as filed lacks written description support for “a sliding seal,”
let alone one “sufficient to allow inflation,” as recited in the independent
claims. Id. at 4.
Appellant argues that the Specification provides sufficient written
description support via the following portion of Specification:
In the second preferred embodiment of the device, as
shown in Figures 3 and 4, the round air chamber of the first
embodiment is no longer incorporated. Said air chamber shall be
formed in the round inner cavity “d” of fold 3 of bag 1, at the
time the outer surface of the bag’s end makes contact with the
outer surface of the same bag 1. This nearness of surfaces shall
be forced when passing through the uterus cervix and by the
inner walls of the vagina. The air accumulated in said round
cavity “d” shall act as part of a clamp that moves in all directions
(a 360° revolving clamp).
Figure 4 shows the “conveyor belt” phenomen[on].
Bag 1, in any of the preferred embodiments of this
invention, has, at the area where it will contact “e” the cavity
walls (or vagina walls in case of childbirth), a sufficient and
necessary rugosity so as to provide a fixed fastening surface. The
inner face of bag 1 is designed without rugosity: it is smooth and
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treated with liquid or [g]el to support the slipping function of the
virtual “conveyor belt”.
Spec. 10–11; see Appeal Br. 17–18 (citing Spec. 10–11).
We do not find Appellant’s reliance on this disclosure persuasive.
Although the first paragraph discloses that an air chamber is formed “at the
time the outer surface of the bag’s end makes contact with the outer surface
of the same bag 1,” it does not describe that “contact” as forming a seal (e.g.,
a contact that is both enduring and fluid-tight). And, in the very next
sentence, the “contact” is referred to as a “nearness of surfaces,” which is
hardly a description of a seal. Nor do we find the second and third
paragraphs’ description of a “‘conveyor belt’ phenomen[on]” and an inner
surface that “is smooth and treated with liquid or [g]el to support the
slipping function of the virtual ‘conveyor belt’” persuasive in disclosing a
seal. The cited disclosure is not enough to demonstrate possession of the
recited limitation. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc) (“[A] description that merely renders
the invention obvious does not satisfy the requirement.”).
Additionally, and as relevant to the “sufficient to allow inflation”
aspect, Appellant concedes that Figures 3 and 4 do not disclose an inflation
mechanism. Appeal Br. 18. Appellant then conflates the “first
embodiment” of Figures 1 and 2 with the “second embodiment” of Figures 3
and 4 (Spec. 6), arguing: “It is clear from the disclosure and the similarity in
Figs. 1–4 that Figs. 3 and 4 eliminate the inflation mechanism for simplicity
and clarity, as the focus of that embodiment is not on the inflation
mechanism, but the structure of the tubular sheet.” Appeal Br. 18. This
argument can be interpreted in one of two ways, neither of which is
persuasive of Examiner error. Either Appellant is arguing that an inflation
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mechanism is a component of the embodiment of Figures 3 and 4 despite not
being shown in those drawings, or Appellant is conceding that the
embodiment of Figures 3 and 4 lacks an inflation mechanism. Under either
interpretation, the fact remains that the Specification does not disclose how
the allegedly disclosed “sliding seal” plays any role, let a sufficient one, in
allowing inflation.
For the foregoing reasons, we affirm the rejection of all pending
claims under 35 U.S.C. § 112(a) for lack of written description.
Rejection 2 (Indefiniteness)
A claim is indefinite if, after applying the broadest reasonable
interpretation in light of the specification, the metes and bounds of a claim
are not clear because the claim contains words or phrases whose meaning is
unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam);
see also Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
As discussed above, each of the three independent claims recites “a
sliding seal sufficient to allow inflation.” The Examiner determined that,
“[d]ue to the lack of support in the originally filed specification[,] . . . [i]t is
unclear what structures are encompassed by the terms ‘sliding seal’ and
‘sufficient to allow inflation . . .’.” Final Act. 3–4.
Appellant argues “there is no ambiguity as to the structure for the
sliding seal, which includes the inner and outer wall slidingly engaging one
another to maintain and seal the air chamber while allowing the conveyor
phenomenon.” Appeal Br. 20. Although lacking in written descriptive
support as discussed above, we agree with Appellant that the limitation “a
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sliding seal” is itself sufficiently clear. However, Appellant does not
persuade us of error in the Examiner’s rejection as it relates to the seal being
“sufficient to allow inflation.” Appellant argues that terms of degree (e.g.,
“sufficient”) are not inherently indefinite. Id. But that misses the mark. It
is entirely unclear how a seal allows for inflation at all, let alone whatever
“sufficiently” means in this context. We understand, as Appellant argues,
that a “seal must trap the air.” Id. But we do not understand from
Appellant’s claim, read in light of the inadequate description of the
Specification, what it means for that same seal to be “sufficient to allow
inflation” in the first instance.
We have considered Appellant’s arguments but they do not persuade
us that the Examiner erred in determining that “a sliding seal sufficient to
allow inflation” is indefinite. Accordingly, we affirm the rejection of all
pending claims under 35 U.S.C. § 112(b) for failure to particularly point out
and distinctly claim the subject matter regarded as the invention.
Rejections 3–5 (Obviousness)
The Examiner rejected claims 1, 2, 4–6, 8, 10, 12–15, 17 and 18 as
unpatentable over Silverman and Dyck, claim 11 as unpatentable over
Silverman, Dyck, and Forde, and claim 16 as unpatentable over Silverman,
Dyck, and Segal. The indefinite scope of the claims, however, precludes
any meaningful review of the prior art rejections. Consequently, we reverse
these rejections. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6,
8, 10–19
112(a) Written description 1, 2, 4–6, 8,
10–19

1, 2, 4–6,
8, 10–19
112(b) Indefiniteness 1, 2, 4–6, 8,
10–19

1, 2, 4–6,
8, 10, 12–
15, 17, 18
103 Silverman, Dyck 1, 2, 4–6, 8,
10, 12–15,
17, 18
11 103 Silverman, Dyck,
Forde
11
16 103 Silverman, Dyck,
Segal
16
Overall
Outcome
1, 2, 4–6, 8,
10–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).
AFFIRMED