14047828 - (D) (P.T.A.B. Jan. 3, 2020)

Benjaminv.Booher

Patent Trials and Appeals BoardJan 3, 2020

14047828 - (D) (P.T.A.B. Jan. 3, 2020)

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. 14/047,828 10/07/2013 Benjamin V. Booher Sr. 1366.027 1009 54434 7590 01/03/2020 BOOTH UDALL FULLER, PLC 1255 W. Rio Salado Pkwy. Suite 215 Tempe, AZ 85281 EXAMINER NGUYEN, CAMTU TRAN ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): PATENT@BOOTHUDALL.COM aho@boothudall.com reception@boothudall.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BENJAMIN V. BOOHER ____________________ Appeal 2018-003312 Application 14/047,828 Technology Center 3700 ____________________ Before BENJAMIN D. M. WOOD, GEORGE R. HOSKINS, and PAUL J. KORNICZKY, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 11–30. Claims 1–10 have been canceled. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ViaTechMD, LLC. Appeal Br. 2. Appeal 2018-003312 Application 14/047,828 2 THE INVENTION The claims are directed to a cervical stabilization device and methods for its use. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A method of stabilizing a cervix during pregnancy, the method comprising: at least partially surrounding a cervix of a uterus carrying a fetus with a cervical cup lip of a cervical cup of a cervical stabilization device without engaging an outer surface of the cervix between an entry of the cervix into a vagina and an opening of the cervical canal; permitting the cervix to drain fluid from the cervical cup through a core portion of the cervical stabilization device that passes at least partially through the vagina and is in fluid communication with the cervical cup; and at least partially inflating at least one bladder portion of the cervical stabilization device that is coupled to the core portion of the cervical stabilization device and is located at a position such that the at least one bladder portion does not contact the cervical cup when the at least one bladder portion is at least partially inflated. REFERENCES Kulick Bonnar Walker Goepp Hofmeister Jerath Snyder US 2,638,093 US 3,646,929 US 3,734,100 US 4,322,463 US 4,757,823 US 5,222,485 US 6,592,560 B2 May 12, 1953 Mar. 7, 1972 May 22, 1973 Mar. 30, 1982 July 19, 1988 June 29, 1993 July 15, 2003 Kotoske Ziv Lafontaine Ziarno US 2007/0067041 A1 US 2007/0203429 A1 US 2008/0171974 A1 US 2011/0190579 A1 Mar. 22, 2007 Aug. 30, 2007 July 17, 2008 Aug. 4, 2011 Appeal 2018-003312 Application 14/047,828 3 REJECTIONS Claims 26 and 27 are rejected under 35 U.S.C. § 112(b) as indefinite. Claims 21 and 24 are rejected under 35 U.S.C. § 102(a)(l) as anticipated by Kulick. Claims 11 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister and Kulick. Claims 12 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, and Snyder. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, and Bonnar. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, and Kotoske. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, and Walker. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, Bonnar, and Lafontaine. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, Bonnar, Lafontaine, and Ziv. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Hofmeister, Kulick, and Goepp. Claims 22 and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Kulick and Ziarno. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick and Bonnar. Claim 26 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick, Bonnar, and Lafontaine. Appeal 2018-003312 Application 14/047,828 4 Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick, Bonnar, Lafontaine, and Ziv. Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick and Kotoske. Claim 29 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick and Walker. Claim 30 is rejected under 35 U.S.C. § 103 as unpatentable over Kulick and Goepp. ANALYSIS Claims 26 and 27—Rejected as Indefinite The Examiner rejects claims 26 and 27 under 35 U.S.C. § 112(b) as indefinite, because “[t]here is insufficient antecedent basis for [the limitation ‘the inner balloon’] in the[se] claim[s].” Final Act. 3. Appellant has not responded to this rejection. Consequently, Appellant has waived any argument of error, and we summarily sustain the rejection of claims 26 and 27 under 35 U.S.C. § 112(b). See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or , more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection”) and Manual of Patent Examining Procedure § 1205.02 (9th ed., Rev. 7, Nov. 2015) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived Appeal 2018-003312 Application 14/047,828 5 any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Claims 21 and 24—Rejected as Anticipated by Kulick The Examiner finds that Kulick discloses all of the limitations of claim 21, including a cervical cup comprising a cervical cup lip surrounding a void that is sized to be larger than an outer dimension of the cervix so that when the cervical cup is placed around the cervix of the uterus carrying the fetus, the cervical cup surrounds but does not engage the outer surface of the cervix between an entry of the cervix into the vagina and the opening of the cervical canal. Final Act. 4 (citing Kulick, 3:10–15, Fig. 1). Appellant disputes this finding. According to Appellant, Figure 1 of Kulick “clearly shows the only part of the uterus that is touched by the cup is the cervix,” and Kulick discloses that “the cup bears against the uterus (necessarily the cervix since only the cervix is touched) and is used to position the uterus (the cup would necessarily engage the cervix to position the uterus).” Appeal Br. 11. The Examiner responds that Kulick describes its device as “arranged to receive or bear against a uterus” rather than the cervix, and “[t]he uterus is different from the cervix.” Ans. 20. Kulick describes a vaginal insert for controlling urinary incontinence. Kulick, 1:3–7. The device comprises a shank, the upper extremity of which is provided with a cup-shaped depression or pocket “arranged to receive or bear against a uterus.” Id. at 2:20–21, 3:9–15. The cervix is part of the uterus. See Webster’s New World Medical Dictionary (3rd ed. 2008) (defining “cervix” as “[t]he low, narrow part of the uterus, which forms a canal that opens from the uterus into the vagina”). Kulick refers to “an Appeal 2018-003312 Application 14/047,828 6 external orifice 33 of the uterus” (Kulick, 5:31–37) which aligns with this definition of cervix. Further, Figure 1 of Kulick appears to depict the upper extremity of its device surrounding the low, narrow part of the uterus that extends into the vagina; i.e., the cervix. Thus, one may reasonably infer that Kulick’s references to “uterus” are, in fact, references to the cervix. Accordingly, we understand Kulick to be teaching that the device is “arranged to receive or bear against” a cervix (Kulick, 3:14–15), and may be “urged against” the cervix (id. at 3:21). Although neither Appellant nor the Examiner has offered an explanation for what it means to “engage” or “not engage” a cervix, it is safe to say that “bear[ing] against” a cervix is antithetical to not engaging it. Thus, we are not persuaded that a device that “receives or bears against,” or is “urged against” a cervix can be said to “surround” but “not engage” the cervix, as claim 21 requires. In the Answer the Examiner argues that “Kulick’s cup-shaped depression is fully capable of NOT engaging the cervix between the entry of the cervix into the vagina and the opening of the cervical canal, depending on the anatomy of the woman’s cervix.” Ans. 20. Appellant responds that it is not relevant whether Kulick’s device is capable of not engaging the cervix, because Kulick teaches that its device does, in fact, engage the cervix. Reply Br. 2 (citing In re Gianelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014)). We agree with Appellant. In Gianelli, our reviewing court held that the physical capability of a prior art chest press machine to perform a pulling, rowing motion was insufficient to render obvious a claimed rowing machine. Id. at 1380. In doing so the court held that “[p]hysical capability alone does not render obvious that which is contraindicated.” Id. The court Appeal 2018-003312 Application 14/047,828 7 further stated that, presumably for the same reason, “it is hard to see” how the rowing-machine claims “could have been anticipated” by the prior art pressing machine. Id. at 1381. Here, Kulick teaches a device that engages a cervix. Thus, not engaging the cervix is “contraindicated” by Kulick. Thus, the theoretical capability of Kulick’s device not to engage a cervix is insufficient to disclose not engaging the cervix. Because we are not persuaded that Kulick discloses all of the limitations of claim 26, as well as its dependent claim 27, we do not sustain the Examiner’s rejection of claims 26 and 27 as anticipated by Kulick. Claims 11 and 13—Rejected as Unpatentable over Hofmeister and Kulick The Examiner’s rejection of independent claim 11 and its dependent claim 13 as unpatentable over Hofmeister and Kulick relies on the erroneous finding that Kulick discloses a cervical cup that is sized to surround but not engage a cervix. Final Act. 6. Hofmeister is not relied on to cure this deficiency. Accordingly, we do not sustain the rejection of claims 11 and 13 as unpatentable over Hofmeister and Kulick. Remaining Rejections The remaining rejections of dependent claims 12, 14–20, 22, 23, and 25–30 are based on the Examiner’s erroneous determination that Kulick discloses a cervical cup that is sized to surround but not engage a cervix. Final Act. 7–20. None of the additional references cited in these rejections cures this deficiency. See generally Id. Therefore, we do not sustain these rejections. Appeal 2018-003312 Application 14/047,828 8 DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26, 27 112(b) Indefiniteness 26, 27 21, 24 102(a)(1) Kulick 21, 24 11, 13 103 Hofmeister, Kulick 11, 13 12, 20 103 Hofmeister, Kulick, Snyder 12, 20 14 103 Hofmeister, Kulick, Bonnar 14 15 103 Hofmeister, Kulick, Kotoske 15 16 103 Hofmeister, Kulick, Walker 16 17 103 Hofmeister, Kulick, Bonnar, Lafontaine 17 18 103 Hofmeister, Kulick, Bonnar, Lafontaine, Ziv 18 19 103 Hofmeister, Kulick, Goepp 19 22, 23 103 Kulick, Ziarno 22, 23 25 103 Kulick, Bonnar 25 26 103 Kulick, Bonnar, Lafontaine 26 27 103 Kulick, Bonnar, Lafontaine, Ziv 27 28 103 Kulick, Kotoske 28 29 103 Kulick, Walker 29 30 103 Kulick, Goepp 30 Overall Outcome 26, 27 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). AFFIRMED-IN-PART Notice of References Cited Application/Control No. 14/047,828 Applicant(s)/Patent Under Reexamination Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification 1 A US- 1 1 B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U Webster’s New World Medical Dictionary (3rd ed. 2008) V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. Delete Last PageAdd A Page