Conner, James E. et al.

Patent Trials and Appeals Board

Oct 23, 2019

14780714 - (D) (P.T.A.B. Oct. 23, 2019)

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.
14/780,714 09/28/2015 James E. Conner 1102.0001-US 6662
65770 7590 10/23/2019
Thrive IP
Jeremy Stipkala
5401 NETHERBY LANE
SUITE 1201
NORTH CHARLESTON, SC 29420
EXAMINER
HARE, DAVID R
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
10/23/2019 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):
JEREMY.STIPKALA@Thrive-IP.COM
docket@thrive-ip.com
rebecca.seaman@thrive-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES E. CONNER, BARNEY C. WASSON JR.,
and ANDREW W. SHEALY
____________________

Appeal 2019-001810
Application 14/780,714
Technology Center 3600
____________________

Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–19.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Trans-Radial
Solutions LLC. Appeal Br. 3.
2 Claims 20–23 are withdrawn from consideration. Non-Final Act. 1.
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Application 14/780,714

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BACKGROUND
Appellant’s invention relates to left radial access, right room
operation, lower extremity peripheral platforms for use in left radial
peripheral interventions. Independent claims 1, 10, 14, and 18 are pending.
Claim 1, reproduced below, illustrates the claimed invention, with certain
limitations italicized:
1. A left radial access, right room operation peripheral
intervention system for use with an imaging system, the
peripheral intervention system comprising:
a left radial base being configured to stabilize a left arm
of a patient across a midsagittal plane of the patient during a
lower extremity peripheral intervention on a procedure table;
a right radial base disposed substantially parallel to an
operating surface of the procedure table, the right radial base
being transradiant and configured to position a right arm of the
patient in a direction away from the midsagittal plane during
the lower extremity peripheral intervention; and
a radiation reduction barrier disposed substantially
perpendicular to the right radial base and spaced apart from the
left radial base, the radiation reduction barrier having a
radiodense material disposed between the patient and an
attending staff member to reduce scatter radiation from the
patient in a direction of the staff member during a procedure.

REJECTIONS3
I. Claims 1, 2, 4, 5, 10–15, and 17–19 stand rejected under 35
U.S.C. § 103 as unpatentable over Goff (US 2011/0184278 A1, pub. July 28,
2011) and Rotert (US 2007/0011814 A1, pub. Jan. 18, 2007). Non-Final
Act. 3.

3 Appellant relies on the Declaration under 37 C.F.R. § 1.132 of Martin
Henson (“Henson Declaration”) in support of the arguments. Appeal Br. 42
(Evidence App’x.).
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II. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable
over Goff, Rotert, and Official Notice. Non-Final Act. 15.
III. Claims 6–9 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Goff, Rotert, and Morgan (US 6,481,888 B1, iss. Nov. 19,
2002). Non-Final Act. 15.

ANALYSIS
Rejection I – Goff and Rotert
The Examiner finds that Goff discloses a radial radiation base and a
radiation reduction barrier perpendicular thereto, and considers that although
Goff shows these elements in use with a left arm, it would have been
obvious to reverse the in-use position of Goff’s base and barrier for
“procedures in either/both arms, since it has been held that a mere reversal
of the essential working parts of a device involves only routine skill in the
art.” Non-Final Act. 4 (citing In re Einstein, 46 F.2d 373 (CCPA 1931). The
Examiner relies on Rotert to disclose a left radial base, and considers that the
limitation “being configured to stabilize a left arm of a patient across a
midsagittal plane of the patient during a lower extremity peripheral
intervention on a procedure table” is an intended use limitation that “does
not differentiate the claimed apparatus from a prior art apparatus satisfying
the claimed structural limitations.” Id. at 5 (citing Ex parte Masham, 2
USPQ2d 1647 (BPAI 1987). In the Answer, the Examiner further contends
that the modified apparatus “would be capable of supporting a patient’s arm
in the intended (claimed) way.” Ans. 9. The Examiner concludes that it
would have been obvious to have modified Goff and “combined prior art
elements according to known methods to yield predictable results by
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including an additional left and/or right radial base (arm support board) on a
desired side the existing device of Goff for the predictable result of
supporting two arms.” Id. at 8–9.
Appellant argues, inter alia, that “the Examiner errs by dismissing,
misconstruing, or overlooking claim language and by not reasonably
considering all claim limitations of Claim 1.” Appeal Br. 18. Specifically,
Appellant contends that the Specification “makes clear that ‘configured to,’
as used in the pending patent application, requires that the claimed left radial
base is designed and constructed, indeed has the requisite structure, to
stabilize a left arm of a patient across a midsagittal plane of the patient
during a lower extremity peripheral intervention.” Reply Br. 6. Appellant
argues that the Examiner’s proposed combination does not possess the
structure required to “stabilize a left arm of a patient across a midsagittal
plane of the patient during a lower extremity peripheral intervention on the
procedure table,” and the Examiner erred in determining that the modified
apparatus “would be capable of supporting a patient’s arm in the intended
(claimed) way” (Ans. 9). Id.
Appellant has the better argument. Considering the Specification in
its entirety, we determine that the function of stabilizing a left arm of a
patient across a midsagittal plane of the patient during a lower extremity
peripheral intervention on a procedure table requires that the left radial base
has a particular structure.
A review of the Specification reveals, for example, that Appellant’s
“system 10 is structured in general for left radial access, right room
operation” (Spec. ¶ 27), and specifically that left radial base 18 is connected
to the main platform 14 so that “a first or interior face or side 54 of the fence
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18 [left radial base] positions a left arm of the patient 3 across a midsagittal
plane or center line 70 of the patient 3.” Spec. ¶ 28; Fig. 2. Connection of
left radial base 18 to main platform 14 may be through “one or more tabs or
inserts 58 for insertion through the holes 36 of the board 14 … to lock the
base 18 in place.” Id. ¶ 37. “Due to the pressure to be exerted by a patient’s
left arm against the base 18, a brace, block or step 64 may be included on
either or both sides 54, 56 to assist with stability.” Id. The Specification
also discloses that “an arm rest, cushion, pad or padded projection 60 is
provided which … ensures that the left arm, particularly the left wrist,
crosses the midsagittal plane 70 (see, e.g., patient 3 in FIGURE 2) and can
also provide padding for the comfort and protection of the arm of the
patient.” Id. Based on this disclosure, we agree with Appellant that a
broadest reasonable interpretation of the limitation “a left radial base being
configured to stabilize a left arm of a patient across a midsagittal plane of
the patient during a lower extremity peripheral intervention on a procedure
table,” consistent with the Specification requires that the left radial base
includes sufficient structure to position the patient’s left arm across a
midsagittal plane, and has sufficient structure to counteract the pressure
exerted by the arm against the base in order to keep the arm stable in that
position.
The Examiner finds that Rotert’s humerus support board 12 meets the
claimed left radial base. Non-Final Act. 4. Rotert discloses “humerus
support board 12 for horizontally and laterally positioning the humerus of a
patient on an upper surface 14 thereof.” Rotert ¶ 28; Fig. 5. Specifically,
Rotert’s humerus support board is a horizontal extension of the table. See
Rotert, Fig. 5. Although Rotert’s humerus support board 12 is disclosed to
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horizontally and laterally position a patient’s humerus (“the upper arm of the
patient [is] extended horizontally and laterally from the body of the patient”
Rotert ¶ 14), the Examiner does not explain how Rotert’s humerus support
board would be capable of supporting a patient’s arm across a midsagittal
plane of the patient. That is, the Examiner does not explain how Rotert’s
support board 12 is capable of positioning the patient’s left arm across a
midsagittal plane, and how Rotert’s support board 12 is capable of
counteracting the pressure exerted by the arm against the board to keep the
arm stable in the claimed position. In addition, such capability is not readily
apparent from Rotert’s disclosure.
For these reasons, we do not sustain the rejection of claim 1. Each of
independent claims 10, 14, and 18 also includes “a left radial base …
configured to stabilize a left arm of a patient across a midsagittal plane of
the patient.” We do not sustain the rejection of claims 10, 14, and 18, and
claims 2, 4, 5, 11–13, 15, 17, and 19, which depend from one of claims 1,
10, 14, and 18, for the same reasons.
Rejections II and III
Claims 3 and 6–9 depend directly or indirectly from claim 1, and
claim 16 depends directly from claim 14. The Examiner does not find or
conclude that Official Notice or Morgan cures the deficiency of Goff and
Rotert discussed above. We, therefore, do not sustain Rejections II and III
for the reasons set forth above.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 5, 10–15,
17–19
103 Goff, Rotert 1, 2, 4, 5, 10–
15, 17–19
3 103 Goff, Rotert, Official
Notice
3
6–9, 16 103 Goff, Rotert, Morgan 6–9, 16
Overall
Outcome
1–19

REVERSED