Ex Parte Coates

Patent Trial and Appeal Board

Sep 28, 2017

12078920 (P.T.A.B. Sep. 28, 2017)

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.
0120/0011 6530
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/078,920 04/08/2008
135866 7590 09/28/2017
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
Daniel Jay Coates
09/28/2017 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 DANIEL JAY COATES
Appeal 2016-000877
Application 12/078,920
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Jay Coates (“Appellant”) appeals under 35 U.S.C. § 134(a)
from a final rejection of claims 1—18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-000877
Application 12/078,920
THE INVENTION
Appellant’s invention is directed to a tracheal tube. Claim 1,
reproduced below, is illustrative:
1. A tracheal tube comprising:
a tubular shaft having a tubular outer surface,
a cuff including two ends and two collars with each of the two
ends having a corresponding one of the two collars, said cuff
having its original inner surface inverted so that its original outer
surface at said two collars are attached to the tubular outer
surface proximate to a patient end of said shaft at spaced
locations while the original inner surface of the two collars are
exposed to the environment,
a lumen extending along at least a portion of said shaft with its
patient end located inside said cuff for enabling a fluid to be input
from a machine end of the lumen into said cuff for inflating said
cuff,
the original inner surface of said cuff being smooth so that the
original inner surface of said cuff exposed to the environment is
smooth,
the cuff having a circular section with collars at opposite ends
and an inflatable portion therebetween, the inflatable portion
having a flash line formed on the original outer surface of the
cuff by molding of the cuff, the flash line preventing the
inflatable portion of the cuff from being stuck to the outer
circumferential surface of the shaft.
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Application 12/078,920
REJECTIONS
The Examiner rejects:
(i) claims 1, 5, 6, 10, 15, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Eamkaow (US 3,889,688, issued June 17, 1975) in view
of Jones (US 6,143,228, issued Nov. 7, 2000);
(ii) claims 2, 11, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Eamkaow in view of Jones and Coleman (US 5,040,531,
issued Aug. 20, 1991);
(iii) claims 3,12, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Eamkaow in view of Jones and Anderson (US 6,705,320
Bl, issued Mar. 16, 2004);
(iv) claims 4 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Eamkaow in view of Jones and Parry (US 2002/0005202 Al, published
Jan. 17, 2002);
(v) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Eamkaow in view of Jones and Kawam (US 2003/0047206 Al, published
Mar. 13, 2003); and
(vi) claims 7—9 under 35 U.S.C. § 103(a) as being unpatentable over
Eamkaow in view of Jones, Parry, Coleman, and Anderson.
ANALYSIS
Rejection (i)—Claims 1, 5, 6, 10, 15, and 18
Appellant argues the claims that are subject to this rejection as a
group, and do not present any arguments for the separate patentability of any
of the claims. We take claim 1 as representative of the group, and the
remaining claims stand or fall with claim 1.
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Application 12/078,920
The Examiner finds that Eamkaow discloses the claimed device, with
the exception of inverting the cuff in order to position any flash line present
on the inside of the cuff, and in order that a smooth surface is provided on
the outside of the cuff. Final Act. 3. The Examiner cites to Jones as
teaching injection molding an article, and inverting it so that the flash or
parting line is to the interior, and so that the inner surface as molded is
exposed at the exterior. Id.
Appellant makes a number of arguments as to the differences between
Jones and the subject matter of claim 1. Appeal Br. 13—14. The arguments
do not identify error in the Examiner’s rejection, which is not based on Jones
alone, nor does the rejection apply the entirety of, or bodily incorporate, the
Jones process in the proposed modification to Eamkaow. In re Keller, 642
F.2d 413, 425 (CCPA 1981) (test for obviousness not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference).
Appellant cites to several exhibits (Appendicies Al—A5) submitted
with the Appeal Brief, and a Declaration of Christopher Stratton Turnbull
(“Turnbull Declaration” or “Declaration”), as evidencing the known and
commonly employed methods of removing flash or parting lines from
injection-molded tracheal cuffs, none of which involve inverting the cuff.
Appeal Br. 14—15. Appellant maintains that the claimed invention
overcomes various disadvantages experienced using those prior art methods,
and that it is only through the use of hindsight that the invention appears
simple. Id. at 15. These exhibits are not indicative of error in the rejection,
as they do not address the Examiner’s proposed modification of Eamkaow in
view of Jones. They also do not evidence that the Examiner’s proposed
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Application 12/078,920
combination was made using impermissible hindsight reconstruction, in that
they simply represents evidence of current practices, which is not probative
of nonobviousness over particular teachings, such as those in Eamkaow and
Jones.1
The Turnbull Declaration is additionally cited for Mr. Turnbull’s
averment that he, as a representative of persons of ordinary skill in the art,
and without knowing of Appellant’s invention, “would not have combined
[the teachings of Jones] with a conventional tracheostomy tube such as that
disclosed in Eamkaow.” Turnbull Declaration, para 13. According to
Appellant, this “provides clear rebuttal to the ‘reasoning’ provided by the
Examiner for combining Jones with Eamkaow.” Appeal Br. 15. However,
the reason given by Mr. Turnbull for his statement that he would not
combine the teachings as did the Examiner is that, “to me the turning over of
the cover disclosed in Jones so that the moulded design is displayed in the
complete opposite of the Coates’ arrangement of turning the molded cuff
inside out to hide the flash at the mould parting line.” Turnbull Declaration,
para 13.
Considering that Jones states, as early as the Abstract on the cover
page of that patent, that one reason for inverting the injection molded object
is to position the flash on the interior surface of the object to produce an
article with a seamless exterior surface, Jones is more closely the same as,
and clearly not the complete opposite of, Appellant’s invention, if that even
were a proper comparison in an obviousness scenario. Jones, Abstract, col.
1 Appellant later argues (Reply Br. 3—5) that the exhibits were presented as
evidence of secondary considerations, which is addressed in further detail
below.
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Application 12/078,920
1,11. 8—10. To the extent that Mr. Turnbull’s averment is due to Jones
disclosing that the inverted object is to have a textured outer surface, Mr.
Turnbull does not address why the textured outer surface in the end product
of Jones would have discouraged one skilled in the art from applying the
inversion technique for moving the flash to the interior surface to the
Eamkaow device, given that it was known in the art that problems existed
with having a flash line on an external surface of such devices. Selecting
whether the resulting outer surface is to be textured or smooth does not
appear to be beyond the capabilities of the person of ordinary skill in the art.
would have been seen as something beyond the capabilities of a person of
ordinary skill in the art.
As such, the Turnbull Declaration does not apprise us of error in the
Examiner’s rejection.
Appellant argues that Jones is nonanalogous art, but fails to persuade
us that Jones would not be regarded as being reasonably pertinent to the
problem faced by Appellant, i.e., providing a smooth outer surface for an
injection-molded cuff. Appeal Br. 16—18. Appellant characterizes the
problem sought to be solved by the instant invention as achieving a smooth
outer surface for the cuff, and acknowledges that Jones is directed to
providing a textured outer surface that does not have any seams. Appeal Br.
18. Notwithstanding that the articles produced in Jones are disclosed as
having a textured surface once inverted, Jones is equally as valuable a
teaching for the concept of inverting an injection molded article so as to
position the flash on the interior surface, so that a seamless exterior is
produced, which addresses in part Appellant’s stated problem of achieving a
smooth outer surface for the cuff. Jones, col. 2,11. 4—6. As noted above, the
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difficulties encountered in current methods for removing the flash line point
nearly directly to Jones, and its teaching of inverting the article so that the
flash line is not removed, but is neither exposed on the exterior.
Additionally, Appellant’s argument that injection molding is a
manufacturing process that is used for many products, including those not in
the medical field, weighs more in favor of Jones being regarded as
analogous, rather than nonanalogous, art. Appeal Br. 16—17.
Appellant argues further that, even assuming Jones to be analogous
art, neither Eamkaow nor Jones includes any disclosure or suggestion to
combine the teachings thereof in the manner proposed by the Examiner.
Appeal Br. 19. Appellant maintains that a person skilled in the art, in trying
to come up with a cuffed tracheal tube having a smooth outside surface
“would more likely be looking into the field of art that relates to the making
of tracheal tubes and inflatable cuffs therefor,” rather than “a process of
shaping and treating plastic and non-metallic articles that are molded
followed by bending and twisting,” in reference to Jones. Appeal Br. 19.
Although Eamkaow itself does not address difficulties known to exist
in the prior art in removing flash from inflatable cuffs used on tracheal
tubes, Appellant’s Specification (p. 1, para. 2), as well as the several exhibits
presented by Appellant, and the Turnbull Declaration, all point to problems
known to exist in the art relative to flash lines produced as a result of
injection molding of the cuffs. Thus, assuming, as Appellant has, for the
purposes of this argument, that Jones is analogous art, it appears likely that a
person of ordinary skill in the art would have found it obvious to employ a
technique, i.e., the Jones technique, by which the flash, without being
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removed, is no longer present on an exterior surface of the cuff. As such,
Appellant’s argument is not indicative of error in making the rejection.
Appellant further argues that the rejection fails to consider portions of
Jones that “run counter to an inflatable cuff attached to the shaft of a tracheal
tube.” Appeal Br. 20. Appellant details that its cuff is to have a smooth
outer surface, is to be inflatable, and is to have end collars bonded to a shaft
of a tracheal tube, and avers that “[t]he textured plastic cover sleeve of Jones
is none of those things.” Id. The specific article produced by Jones instead
has a textured internal design that, once the article is inverted, is present on
the exterior surface, and the article has an overall diameter that is slightly
less than the diameter of the article around which it is to be disposed. Id.
According to Appellant, these differences would have prevented a person of
ordinary skill in the art from reasonably predicting the successful adaptation
of the Jones technique to the Eamkaow cuff. Id.
We disagree. Appellant’s arguments focus too intently on the
application of the Jones technique to only the specific article described
therein. A person of ordinary skill in the art, however, is also a person of
ordinary creativity, not an automaton. KSR Int'l. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Appellant provides no explanation as to how any of
the differences identified would lead a person skilled in the art to believe
that the Jones molding and inversion technique would not have a reasonable
expectation of success in being used to produce the cuffs disclosed in
Eamkaow.
In the Reply Brief, Appellant argues that “there is no disclosure in
either Eamkaow or Jones to suggest the use of a flash line formed on the
original outer surface of the cuff to prevent the inflatable portion of the cuff
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Application 12/078,920
from being stuck to the outer circumferential surface of the shaft.” Reply
Br. 2. The Examiner, however, proposes to employ the teachings of Jones in
connection with the Eamkaow cuff to provide a seamless outer surface
without needing to remove the flash produced when the cuff is injection
molded. In its modified form, the flash now present on the interior surface
of the Eamkaow cuff would function to prevent the cuff from sticking to the
shaft in precisely the same manner as does the flash in Appellant’s claimed
cuff.
Appellant, for the first time in the Reply Brief, argues that the
publications presented in Appendices Al—A5 of the Appeal Brief are
evidence of “secondary considerations.” Reply Br. 3—5. Appellant
maintains that these publications evidence that, “the accepted way in which
the flash line (or the parting line) of a cuff is removed is done either
manually or by cryogenic deflashing,” and “it is clear that the current
accepted method of removing flash lines in the industry . . . has been used
for at least 30 years.” Reply Br. 3, 4. Appellant observes that
obviously these experts did not think of inventing a cuff for a
tracheostomy tube so that the smooth former inner surface is
exposed to the environment while the original exterior surface
that has the flash line faces the outer circumferential wall of the
tracheal tube, once the collars at both ends of the cuff are bonded
to the tube. Appendixes A1-A5 therefore provide evidence to
rebut the examiner’s position that it is obvious to combine Jones
with Eamkaow.
Id. at 5.
As discussed above, Appellant argues in the Appeal Brief only that
these publications evidence the use of hindsight reconstruction in making the
rejection. The characterization in the Reply Brief of the publications as
evidencing secondary considerations amounts to a new argument, raised for
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Application 12/078,920
the first time, and not responsive to any new point raised or argument made
by the Examiner in the Answer. Appellant further has not shown good cause
as to why this argument could not have earlier been presented. Accordingly,
the argument will not be considered for the purposes of this appeal. 37
C.F.R. §41.41(b)(2).2
Appellant makes a separate argument for dependent claim 5, but that
argument amounts to nothing more than restating limitations presented in
claim 5, and a naked assertion that the limitations are not found in the
Examiner’s proposed combination. Appeal Br. 21. Such an argument is not
one of any substance, and does not apprise us of error in the Examiner’s
rejection.
We have considered the remaining arguments set forth in the Appeal
Brief and Reply Brief, and find them to be unpersuasive in pointing to
Examiner error. Accordingly, none of Appellant’s arguments apprise us of
error in the rejection of claim 1 as being unpatentable over Eamkaow and
Jones. The rejection of claim 1 is therefore sustained. Claims 6, 10, 15, and
18 fall with claim 1. (See 37 C. F. R. § 41.37 (c)(l)(iv) (2015)). The
rejection is also sustained with respect to claim 5, for the reasons discussed
above
Rejections (ii)-(vi)
2 We note that, in the event further prosecution of this application ensues,
Appellant does not identify to which of the recognized secondary
considerations the publications are believed germane, although we surmise
that Appellant would assert that they are evidence of long-felt, but unsolved,
need.
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Appellant presents no additional arguments for the separate
patentability of these claims. Appeal Br. 21—22. As such, the rejections are
sustained for the same reasons discussed above.
DECISION
The rejections of claims 1—18 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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