Ex Parte 8261375 et al

Patent Trial and Appeal Board

Aug 1, 2016

95002390 (P.T.A.B. Aug. 1, 2016)

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.
95/002,390 09/15/2012 8261375 REAU-31028 9710
7590 08/01/2016
BRIAN K. REAUX
MANAGING MEMBER, REAUX MEDICAL INDUSTRIES, LLC
710 ROCK HILL DRIVE
RED OAK, TX 75154
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/01/2016 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
____________________

STRYKER CORPORATION
Requester, Respondent

v.

BRIAN K. REAUX
Patent Owner, Appellant
____________________

Appeal 2015-004774
Inter partes Reexamination Control 95/002,390
Patent US 8,261,375 B11
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

1 Patent US 8,261,375 B1 (hereinafter “the ’375 patent”) issued September
11, 2012 to Reaux.
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In the Request for Rehearing (hereinafter “Rehr’g Req.”), the Patent
Owner requests reconsideration under 37 C.F.R. § 41.79 of our Decision
mailed November 20, 2015 (hereinafter “Original Decision” or “Orig.
Dec.”) affirming Rejections 4 and 8 of claims 1–12. The Patent Owner
asserts that in the Original Decision, we misapprehended or overlooked
various issues, and requests modification of the Original Decision. The
Requester submits comments in opposition to the Request for Rehearing
under 37 C.F.R. § 41.79.
We grant the Request to the extent that we consider the Patent
Owner’s arguments infra, but DENY the request to modify our Original
Decision.
Preliminarily, we note for the benefit of the Patent Owner that 37
C.F.R. § 41.79 pertaining to Request for Rehearing recites:
(b)(1) The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting its decision.
Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
made pursuant to §41.77(b) are permitted.
(37 C.F.R. § 41.79(b)).

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In the Request for Rehearing, the Patent Owner seeks to:
enter[] into evidence a swear-behind affidavit, or reduction to
practice to prove that Appellant’s provisional application came
prior to Klotz’ filing date, and provides sufficient “support” to
one skilled in the art to understand the present method claims
when the device is disclosed therein and is presently under
prosecution as such. Appellant believes that there is good cause
of entering this affidavit in that the prior attorney of record
failed to provide such even when suggested by Examiner
Dawson and later removed himself.
(Rehr’g Req. 1; see also id. at 4).
However, the Patent Owner does not establish how this new evidence
is based on a recent decision of the Board or a Federal Court, or establish
why such evidence was not previously presented to the Patent Office for
consideration. While the Patent Owner faults its prior attorney, this is not a
basis recognized in the pertinent rule for entering new evidence that could
have been previously entered into evidence.
The Patent Owner also argues that, in affirming Rejections 4 and 8,
the Board misapprehended Vargas and Wilson because the devices disclosed
therein include structures into which fluids may be lodged and transferred so
as to make them non-sterile (Rehr’g Req. 1). However, the Patent Owner
fails to recognize that Vargas is relied upon for teaching the ordered process
of laminating the lens and lens protector together, and then cutting the
laminated layers to form the eye shield, the Original Decision noting the
teaching in Vargas that:
multilayered composite window may be manufactured “by any
of the methods generally known in the art to fabricate laminated
polymer film and the like. . . . The cutting of the preselected
pattern or shape of the temporary window can be after the
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lamination step, concurrent therewith or in part prior to
laminating, as again generally known in the art.”
(Orig. Dec. 5–6, quoting Vargas, col. 3, ll. 59–68; see also id. at 9 (quoting
the rejection applying disclosure of Vargas as well as the finding that the
claimed method is one of only a finite number)).
The Patent Owner also fails to recognize that Wilson is relied upon for
demonstrating that:
a person of ordinary skill in the art would consider both the
medical field (the field of [Klotz]) and the automotive
windshield field (the field of [Vargas]) when addressing the
issue of providing laminated, peel-away eye shields in the
medical environment.
(Orig. Dec. 6, quoting Request 134–135).
Thus, Vargas and Wilson were secondary references relied upon for
specific disclosure of manufacturing laminated lens and lens protector, and
the fact that a person of ordinary skill would consider laminates from not
only the medical environment, but also in the automotive windshield field.
Correspondingly, the Patent Owner’s arguments are misdirected.
The Patent Owner also asserts that the Board erred in claiming “that
the operating room (OR) is sterile and thus imply the eye shield must be
sterile,” that this “jump in logic” is based on hindsight, and demonstrates “a
lack of understanding of the present invention.” (Rehr’g Req. 2; see also id.
at 3 (arguing that the references do not point out any issues pertaining to
sterilization of the eye shield)). According to the Patent Owner, once the
surgical hood and its eye shield are hit by fluids, it is no longer sterile (id.).
Firstly, we note that even the Patent Owner’s hood would be no
longer sterile once hit by bodily fluids in the operating room. We
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understand the claimed invention to be directed toward a sterilized hood
suitable for use in an operating room, which allows enhanced visibility
through its eye shield by providing multiple peel-away layers, not a hood
that would remain sterile after it being hit by bodily fluids.
Secondly, as to the asserted error, the basis of the Original Decision is
our agreement with the Examiner that “any combination involving a surgical
hood assembly would be required to be sterile,” and that sterilization
techniques were admitted to be well-known in the Specification of the ‘375
patent (Orig. Dec. 11, quoting RAN 11–12). In this regard, we also agreed
with the Requester that:
[i]t was obvious and common sense that equipment used during
surgery would have to be sterilized in order to be suitable for
use in the operating room. (Ex. 14, Thomas Declaration, ¶¶ 33–
35.)
(Orig. Dec. 11, quoting Resp. Br. 14).
In other words, as to sterilization, the rejections are based on the
conclusion that it would have been obvious to sterilize the surgical hood
assembly resulting from the combination of the prior art proposed, so that it
can be used in an operating room (e.g., as suggested by Klotz, col. 1, ll. 12–
13) by subjecting it to sterilization techniques, which the Patent Owner
admitted were well-known.
The Patent Owner further requests that the Declaration of Mr. Gil be
considered and “given it’s [sic] full weight” because he was the
manufacturer of the commercialized product described in Klotz ’691 (Rehr’g
Req. 3). The Original Decision makes clear that the Declaration of Mr. Gil
was considered and explains the basis for giving it the weight that the Board
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did (Orig. Dec. 9–10). Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
2003) (“It is within the discretion of the trier of fact to give each item of
evidence such weight as it feels appropriate . . . In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within that discretion.”).
The Patent Owner also asserts that the issued ’375 patent enjoys a
presumption of validity, and in the present reexamination, there is no
substantial new question of patentability because almost every reference
cited by the Requester had been considered during the original prosecution
that resulted in the issuance of the ’375 patent (Rehr’g Req. 3; see also id. at
5).
In addition to the fact that these arguments were not presented in the
Appeal Brief, and thus, are improperly presented in the Request for
Rehearing, we also observe that in reexaminations, there is no presumption
of validity. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988).
Moreover, inter partes reexamination is “not precluded by the fact that a
patent or printed publication was previously cited by or to the Office or
considered by the Office,” and the Director’s determination whether a
reasonable likelihood that the requester would prevail2 is non-appealable. 35
U.S.C. § 312(a), (c).

2 The Patent Owner mistakenly directs its arguments to existence of “a
substantial new question of patentability,” but the applicable standard for
evaluating requests for inter partes reexaminations filed on or after
September 16, 2011, but before September 16, 2012, is whether the request
shows a reasonable likelihood that the requester would prevail with respect
to at least one claim challenged. 35 U.S.C. § 312(a). The Request for Inter
Partes Reexamination in the present appeal was filed September 15, 2015.
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The Patent Owner sets forth additional arguments based on the
Requester’s sterilization method, patenting of a similar invention, and
alleged commercial implementation thereof (Rehr’g Req. 3–4). However, in
addition to having generally addressed this line of argument (Orig. Dec. 13–
14), these arguments do not impact the appealed rejections of the claims,
which are based on the prior art of record.
The Patent Owner also argues that the commercial implementation of
Diaz sews the shield to the shroud/hood, and such sewing destroys the sterile
barrier because “the sewing needle holes provide openings through which
bacteria may pass.” (Rehr’g Req. 5, referring to the Oral Hearing).
However, this argument is new and was not timely presented in the Patent
Owner’s brief. 37 C.F.R. § 41.79. Moreover, the pertinence of this line of
argument is unclear considering that the claimed invention does not recite
the manner in which the eye shield must be secured to the surgical hood.
The Patent Owner further asserts that the Board overlooked the fact
that claim 11 of a “parent patent is still valid and is narrower than the claim
1 of the PO ‘375” patent (Rehr’g Req. 5, emphasis added), but
notwithstanding the fact that this argument is also new, this fact is irrelevant
to the present appeal which involves a different patent, and, according to the
Patent Owner, claim 11 of the parent patent is narrower in scope.
Finally, the Patent Owner again asserts copying by Racing Optics
(Rehr’g Req. 5). This argument has already been addressed and found
unpersuasive (Orig. Dec. 13.). Although not entirely clear, to any extent that
the Request for Rehearing relies on new evidence and/or new arguments, we
again note that new arguments and new evidence are not permitted unless an
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exception as provided in 37 C.F.R. § 41.79(b) is applicable, which is not the
case here.

DECISION
While we have considered the Original Decision in light of the
Request for Rehearing, and have elaborated on certain aspects of it, we
decline to modify the Original Decision in any respect.

DENIED

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

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Third Party Requester:

ROBERT A. SURRETTE
MCANDREWS, HELD & MALLOY, LTD.
500 W. MADISON STREET, 34TH FLOOR
CHICAGO, IL 60661

Patent Owner:

BRIAN K. REAUX
MANAGING MEMBER
REAUX MEDICAL INDUSTRIES, LLC
710 ROCK HILL DRIVE
RED OAK, TX 75154