Ex Parte Bonadio et al

Patent Trial and Appeal Board

Jun 14, 2013

10600812 (P.T.A.B. Jun. 14, 2013)

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.
10/600,812 06/20/2003 Frank Bonadio 08203-0030.01000 7588
108449 7590 06/14/2013
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW
Suite 450
Washington, DC 20037
EXAMINER
BIANCO, PATRICIA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
06/14/2013 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
__________

Ex parte FRANK BONADIO and ALAN REID
__________

Appeal 2010-011789
Application 10/600,812
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge BONILLA.

Opinion Concurring filed by Administrative Patent Judge ADAMS.

BONILLA, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants
1
have requested rehearing of the decision entered March
22, 2013 (“Decision”), affirming the rejection of claims 73-85, 87-100, 106,
and 107 as anticipated under 35 U.S.C. § 102(e) by Leahy et al. (U.S. Patent

1
According to Appellants, the real party in interest is Atropos Limited
(App. Br. 1).
Appeal 2010-011789
Application 10/600,812

2
No. 5,640,977, issued Jun. 24, 1997), and under 35 U.S.C. § 102(g) over the
lost count of Patent Interference No. 104,195.
2
We grant the request for
rehearing to address points discussed below.
Regarding the rejection of claims 73-85, 87-100, 106, and 107 as
anticipated under 35 U.S.C. § 102(e) by Leahy, Appellants assert that the
Board has improperly relied on inherency to affirm the Examiner‟s rejection
and that such reliance is a new ground of rejection. To begin, we disagree
with Appellants‟ assertion that “the Board did not present evidence or
reasoning tending to show[] inherency.” (See Req. Reh‟g 9.) As discussed
in our previous Decision with respect to the written description rejection, we
find that the Specification does not, as originally filed, expressly disclose the
“such that” element of either claim 106 or 107 (Decision 7). While
Appellants refer to Figure 9, and a discussion in the Specification regarding
“a controlled pressurised environment in the sleeve 2” (App. Br. 12-16),
such disclosures do not expressly describe, for example, that an
“engagement of the incision engaging portion of the diaphragm … increases
with an increase in pressure within the controlled pressurized environment”
(claim 106) or that “incision engaging portion of the tubular diaphragm is
not subject to the controlled pressurized environment” (claim 107).
Appellants argued that written description support inherently exists
for the “such that” elements recited in claims 106 and 107 via Figure 9 in the
Specification and Specification teachings regarding a “sealing diaphragm”

2
The Decision reversed a rejection for lack of written description because
the Examiner failed to address the issue of inherent disclosure, i.e., failed to
present a prima facie case (Decision, p. 7). Appellants do not request
rehearing regarding this portion of the Decision.
Appeal 2010-011789
Application 10/600,812

3
sealing an exit of the sleeve “to create a controlled pressurised environment
in the sleeve” (see, e.g., Spec. 10; App. Br. 11-16).
3
Under this reasoning,
Leahy likewise teaches these same elements.
Specifically, Leahy discloses, at least inherently, if not expressly, the
same thing that the Specification teaches, i.e., relevant devices (such as the
one disclosed in Figure 19 of Leahy) that include seals (e.g., “first sealing
mean” or “inside sealing ring” in Leahy claims) that create a controlled
pressurized environment inside the surgical device, such as inside the sleeve.
For examples of relevant disclosures in Leahy, see col. 6, ll. 33-41 (stating
that “flange 111 [in Fig. 14] is disposed coaxially relative thereto in sealing
engagement with sleeve 102” and that a “suitable pressure-sensitive
adhesive material on the exposed face of flange 111 is protected by a peel-
to-remove cover 112”), id. at ll. 59-66 (stating that “insufflating gas in the
abdominal cavity will inflate sleeve 102 like a balloon, preventing gas from
escaping,” so that “the abdominal cavity remains in an insufflated condition
while appropriate surgery or investigative procedures are carried out”);
Leahy claim 28 (reciting, inter alia, an “inside sealing ring” that is “adapted
to self-seal gastightly around the inside of the wound,” where “the wound is
protected by the protective sleeve while insufflation gas is contained within
the elongate sleeve”)).

3
To the extent Appellants relied on amendments to the Specification (App.
Br. 13) put forth in an “Amendment After Final” dated August 21, 2009,
which adds “arrows” to in Figure 9 and a brief discussion of those arrows in
the Specification, such amendments constitute new matter and do not
provide evidence of written description support as original filed in 2003
beyond that showing a “controlled pressurised environment in the sleeve 2,”
as originally disclosed in the Specification (see, e.g., Spec. 10, as originally
filed (emphasis added)).
Appeal 2010-011789
Application 10/600,812

4
In other words, if the Specification provides inherent written
description support for the “such that” elements recited in claims 106 and
107, as Appellants have asserted, then Leahy necessarily provides the same
support. Whether the devices disclosed in Leahy include an “adhesive” or
not is a red herring when one considers that claims 106 and 107 do not
exclude an adhesive. Leahy teaches, at least inherently (for the same reason
that the Specification provides inherent written description support for
claims 106 and 107), that disclosed devices necessarily include the “such
that” features recited in claims 106 and 107 regardless of the presence of an
adhesive. Appellants‟ attorney argument does not persuade us otherwise.
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(stating that “arguments of counsel cannot take the place of evidence lacking
in the record”) (quoting Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA
1982).
To the extent that our reasoning differs from that of the Examiner, we
designate the affirmance a new ground of rejection under 37 C.F.R. § 41.50
(b).
Regarding the rejection based on 35 U.S.C. §102(g), Appellants state
in the request for rehearing that their “arguments from the preceding section,
regarding the [anticipation] rejection based on Leahy, are also applicable
against this rejection based on the lost count, since this rejection relies on
similar faulty logic” (Req. Reh‟g. 8). We find such arguments unpersuasive
for the reasons stated in our previous Decision and discussed above.
DECISION
We affirm the rejections of claims 73-85, 87-100, 106, and 107 as
anticipated under 35 U.S.C. § 102(e) by Leahy, and under 35 U.S.C.
Appeal 2010-011789
Application 10/600,812

5
§ 102(g) over the lost count of Patent Interference No. 104,195, for reasons
stated above, and based on inherency grounds raised in our previous
Decision (Decision 11-12, 14-16). We designate the affirmance as new
grounds of rejection. The rehearing is granted to the extent that the
affirmance is based on new grounds of rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
REQUEST GRANTED; 37 C.F.R. § 41.50(b)

cdc
Appeal 2010-011789
Application 10/600,812

1

ADAMS, Administrative Patent Judge, concurring.
Appellants contend that “Examiner asserted that „the body of the
drape [D] is not required‟ (see Examiner‟s Answer at page 9)” (Req. Reh‟g 5
(modification original)). In other words, Examiner‟s reasoning did not rely
on the presence of a drape when Leahy‟s device is in use. Because the prior
concurring opinion relied on the presence of a drape, I agree with Majority‟s
decision to enter a new ground of rejection.
For the reasons set forth in the prior concurring opinion, and
emphasized below, I am not persuaded by Appellants‟ remaining
contentions.
The comprising language of Appellants‟ independent claims 106 and
107 fails to exclude a flange adhesively attached to a drape, as taught by
Leahy (see Concurring Opinion at 1). Therefore, I am not persuaded by
Appellants‟ intimation that Leahy‟s flange, which is adhesively attached to a
drape, not the abdominal wall of the patient, will cause Leahy‟s apparatus to
perform differently than Appellants (see Req. Reh‟g 4).
Appellants fail to establish an evidentiary basis on this record to
support a finding that the means Leahy may contemplate for adhering the
drape, which is not excluded from the scope of Appellants‟ claimed
invention, to the abdomen area of a patient would be sufficiently adherent to
cause Leahy‟s apparatus to perform differently than Appellants, i.e., to
prevent:
the entry seal assembly configured to maintain a
controlled pressurized environment inside the surgical device
such that the engagement of the incision engaging portion of
the diaphragm with the incision and engagement of the distal
Appeal 2010-011789
Application 10/600,812

2

ring to the internal body tissue increases with an increase in
pressure within the controlled pressurized environment,
or
the engagement of the distal ring to the internal body
tissue providing a seal such that the incision engaging portion
of the tubular diaphragm is not subject to the controlled
pressurized environment, while the internal portion of the
tubular diaphragm is subject to the controlled pressurized
environment.
(See Appellants‟ Claims 106 and 107 respectively; Cf. Leahy, col. 5, ll. 15
(“drape D adhered to the abdomen area”).)
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”).
For the foregoing reasons, I am not persuaded by Appellants‟ contention that
the evidentiary burden was improperly shifted to Appellants on this record.
SUMMARY
The rehearing is granted to the extent that the affirmance is designated
a new ground of rejection. The rehearing is denied on all other grounds.

Appeal 2010-011789
Application 10/600,812

3

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record....
REQUEST GRANTED-IN-PART; 37 C.F.R. § 41.50(b)