Ex Parte Conway et al

Patent Trial and Appeal Board

Jan 25, 2018

13682406 (P.T.A.B. Jan. 25, 2018)

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.
13/682,406 11/20/2012 Anthony J. Conway 101674.0068P 1025
7590
RUT AN & TUCKER, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
01/29/2018 EXAMINER
WENG, KAI H
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J. CONWAY and SARAH L. GRINDE
Appeal 2017-000639
Application 13/682,406
Technology Center 3700
Before BRETT C. MARTIN, THOMAS F. SMEGAL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—10, 12—20, 23, and 24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
CLAIMED SUBJECT MATTER
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1 Appellants identify Rochester Medical Corporation as the real party in
interest. Appeal Br. 4.
2 Appeal is taken from the Final Office Action dated June 5, 2015.
Appeal 2017-000639
Application 13/682,406
1. A catheter retention sheath, comprising:
a sheath configured to fit over a penis;
the sheath comprising a catheter retainer, the catheter
retainer configured to couple to a shaft of a urinary catheter;
the catheter retainer defining an aperture, a first portion of
the aperture being configured to allow axial movement of the
shaft of the urinary catheter through the aperture, a second
portion of the aperture being configured to retain the shaft of the
urinary catheter.
REJECTIONS
I. Claims 1—7, 10, 12, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Rowland (US 4,419,097; issued Dec. 6, 1983).3
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rowland and Viswanathan (US 2007/0149946 Al;
published June 28, 2007).
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rowland and Nielsen (US 1,661,494; issued Mar. 6,
1928).
IV. Claims 13—17 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Rowland and Cisko (US 2008/0215021 Al; issued
Sept. 4, 2008).
V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rowland, Cisko, and Highgate (US 4,768,503; issued
3 The Examiner’s inclusion of claim 11 in the Final Action is a
typographical error; claim 11 is cancelled. Final Act. 2; Appeal Br. 4.
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Sept. 6, 1988).
VI. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rowland.
ANALYSIS
Rejection I
Independent claims 1 and 20, and dependent claims 2, 3, and 12
Regarding independent claim 1, the Examiner finds, inter alia, that
Rowland discloses a catheter retainer (i.e., housing 14, which comprises
attachment 10 for use in combination with a catheter tube 12) having an
aperture (i.e., aperture 20 and slit 24) with a first portion (i.e., aperture 20)
configured to allow axial movement a shaft of a catheter through the
aperture, and a second portion (i.e., slit 24) configured to retain the catheter
shaft. Final Act. 2 (citing Rowland 2:47—50, 58—60); see also Rowland
2:27-29, 36-38.
Appellants argue that Rowland’s slit 24 cannot disclose a second
portion of the aperture, as claimed, because “[a]s used in the specification
and claims, a slit is not an aperture.” Appeal Br. 8. In support, Appellants
maintain that Figure 3 of Appellants’ Specification ‘“schematically
illustrates tube 5 showing lumen 17 and slit 13, which form catheter
retention opening 15,’” whereby the Specification “differentiates between a
slit and an opening or aperture.” Id. (quoting Spec. 1264 (16:12—13), Fig.
4 Appellants cite to both the US publication of Application No. 13/682,406
(i.e., US 2014/0142554 Al; published May 22, 2014), for example, by
paragraph number, and also to the Specification as originally filed, for
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3). Appellants further maintain that “a slit is never used as one of the
portions of the aperture” in the Specification. Reply Br. 4.
We understand Appellants’ argument to be that because Appellants’
Specification identifies catheter retention opening 15 as a second portion of
an aperture (which retains the catheter shaft because the catheter shaft is
urged into lumen 17 (see, e.g., Spec. 16:12—13)), and also because slit 13, as
described in Appellants’ Specification, is not what is intended to be the
claimed second portion, Rowland’s slit 24 cannot disclose a second portion
of the aperture, as claimed, or put another way, the claimed second portion
cannot read on Rowland’s slit.
As set forth supra, claim 1 merely requires an aperture* * * 5 (or opening)
to have first and second portions (each configured to perform certain
functions), and thus, neither requires the claimed second portion to be a
lumen nor excludes the claimed second portion from being a slit. An
ordinary meaning of the term “slit,” consistent with the Specification, is “a
long narrow cut or opening” (Webster’s Third New Int’l Dictionary
2144 (1993)), and therefore, a slit may be a specific type of aperture (or
opening), for example, a long, narrow one. See also Ans. 5 (“[a] slit is a
form of an aperture.”). Here, Rowland discloses that slit 24 is not only a cut
example, by page and line number. See Appeal Br. 8 (citing 126); id. at 9
(citing “p. 1, lines 11—13, 19-21; p. 5, lines 4—6.”). We cite to the original
Specification as filed.
5 An ordinary meaning of the claim term aperture, consistent with the
Specification is “an opening or an open space” (Webster’s Third New
Int’l Dictionary 99 (1993)).
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in housing 14, but also an opening through which the catheter (tube 12) may
be forced. See Rowland 2:58—61 (“it may be desirable to place the housing
14 over the tube 12 in a transverse direction by forcing the tube 12 through
the slit 24 until the tube 12 reaches the aperture 20.”). Thus, in view of the
language of claim 1, Appellants’ argument does not apprise us of error in the
Examiner’s finding that Rowland’s slit 24 is a second portion of an aperture.
Appellants also argue that the principle of claim differentiation
precludes Rowland’s slit 24 from being interpreted as an aperture, because
claim 10 recites “a slit as being something different and distinct from the
aperture portions.” Appeal Br. 9. Indeed, claim 10 depends from claim 1
and further recites “wherein the catheter retainer further defines a slit that
couples the first portion of the aperture to the second portion of the
aperture.” Appeal Br. 21 (Claims App’x). However, claim 10 requires a slit
in addition to the claimed second portion of the aperture, and thus, we are
not apprised of error in the Examiner’s findings that Rowland’s slit 24
discloses the second portion of the aperture, as recited in claim 1.
Appellants further argue that “the catheter in Rowland is not
‘retained’ in the slit 24 and never would be.” Appeal Br. 9. In support,
Appellants submit that the claim term “retain” is used in the Specification
“to indicate that movement is inhibited,” and that “a portion of the Rowland
device through which the catheter only moves on its way to the central
opening cannot be said to ‘retain’ the catheter.” Id. (citing Spec. 1:11—13,
19-21, 5:4—6). Appellants argue that “[wjhile retention can include reduced
movement, it does not logically follow that any reduced movement is
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therefore retention” (Reply Br. 4), concluding that Rowland’s slit 24 “is not
designed to hold the catheter for any length of time; rather, the slit is merely
a way for the catheter to move from outside the device to the central opening
prior to catheterization.” Id. at 5.
An ordinary meaning of the claim term “retain,” consistent with the
Specification, is “to hold secure or intact (as in a fixed place or condition).”
Webster’s Third New Int’l Dictionary 1938 (1993). As set forth supra,
claim 1 requires the second portion of the aperture to be “configured to
retain the shaft of the urinary catheter,” however, claim 1 does not require
the shaft to be retained in the second portion of the aperture, as argued by
Appellants. Rowland discloses that “it may be desirable to place the housing
14 over the tube 12 in a transverse direction by forcing the tube 12 through
the slit 24 until the tube 12 reaches the aperture 20” (Rowland 2:58—61), and
that after the tube 12 reaches aperture 20 and the slit is no longer being
forced open, “aperture 20 is in a snug engagement with the outer periphery
of the tube 12” {id. at 3:2 4). Rowland also teaches that housing 14 “is
relatively rigid, but sufficiently yieldable for facilitating [this] use.” Id. at
2:28—33. Thus, we determine that a preponderance of evidence supports the
Examiner’s finding that Rowland explicitly teaches that when tube 12 is not
being forced through slit 24, slit 24 is configured to return to a position that,
in turn, maintains aperture 20 in a position of snug engagement with the
shaft of the catheter, and therefore, Rowland’s slit 24 is “configured to retain
the shaft of the urinary catheter,” as claimed.
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Finally, Appellants argue that Rowland requires “the catheter [to] be
coupled with the housing prior to the catheter being inserted into the patient”
and “teaches moving the catheter through the slit prior to insertion into the
patient.” Appeal Br. 10. However, as correctly determined by the
Examiner, “the claims do not recite any order.” Ans. 7. Thus, Appellants’
argument does not apprise us of error in the Examiner’s findings.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Rowland. Appellants
present the same arguments for the patentability of independent claim 20 as
presented for the patentability of claim 1, and therefore, for the same reasons
as set forth supra, we sustain the Examiner’s rejection of claim 20. See
Appeal Br. 8—10; Reply Br. 4—6. Appellants chose not to present separate
arguments for the patentability of claims 2, 3, and 12, and therefore, we also
sustain the Examiner’s rejection of claims 2, 3, and 12 under 35 U.S.C. §
102(b) as anticipated by Rowland. See Appeal Br. 14; Reply Br. 9.
Dependent claim 4
The Examiner relies on Rowland for disclosing the limitation of claim
4, which depends from claim 1: “wherein the second portion of the aperture
is configured to immobilize the urinary catheter in the sheath.” Final Act. 3
(citing Rowland 2:58—60); Appeal Br. 20 (Claims App’x).
Appellants argue that “a catheter is not held in the Ro[w]land slit 24,
let alone immobilized in the slit 24, and the catheter is only in the slit 24 as it
moves on its way to the first portion aperture.” Appeal Br. 11.
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Notably, claim 4 does not require the second portion to be configured
to immobilize the catheter in the second portion (i.e., Rowland’s slit 24), as
argued by Appellants; rather, claim 4 requires the second portion to be
configured to immobilize the catheter in the sheath. Notwithstanding, a
preponderance of evidence fails to support the Examiner’s finding that
Rowland’s slit 24 is configured to immobilize6 the catheter in the sheath,
because Rowland’s disclosure of a “snug engagement” between aperture 20
and the periphery of catheter tube 12 stops short of disclosing
immobilization. See Rowland 2:54—56 (disclosing “manually sliding the
housing 14 along the tube”).
Accordingly, we do not sustain the Examiner’s rejection of claim 4
under 35 U.S.C. § 102(b) as anticipated by Rowland.
Dependent claim 5
The Examiner relies on Rowland for disclosing the limitation of claim
5, which depends from claim 1: “wherein, after the urinary catheter is
inserted in the subject, the second portion of the aperture is configured to
restrict motion of the urinary catheter with respect to the subject’s penis and
bladder.” Final Act. 3; Appeal Br. 20 (Claims App’x).
Appellants argue that “the Rowland slit 24 is not used to restrict the
motion of a catheter, and the catheter is only in the slit 24 as it moves on its
6 An ordinary meaning of the claim term “immobilize,” consistent with the
Specification, is “to make immobile : fix in place or position : render
incapable of movement.” Webster’s Third New Int’l Dictionary 1130
(1993).
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way to the alleged first portion aperture.” Appeal Br. 11; see also Reply Br.
8.
As discussed supra, a preponderance of the evidence supports the
Examiner’s finding that Rowland’s slit 24 is configured to retain the shaft of
the catheter, as set forth in claim 1. Rowland also discloses that “aperture 20
is in a snug engagement with the outer periphery of the tube 12 and thus
substantially precludes relative movement between the tube and the flesh of
the male member.” Rowland 3:2—6. Thus, a preponderance of the evidence
supports the Examiner’s finding that when tube 12 is not being forced
through slit 24, slit 24 is configured to return to a position that maintains
aperture 20 in a position of snug engagement with the shaft of the catheter,
such that after tube 12 is inserted into the subject, motion is restricted
between the catheter (i.e., tube 12) and the subject, as required by claim 5.
Accordingly, we sustain the Examiner’s rejection of claim 5 under
35 U.S.C. § 102(b) as anticipated by Rowland.
Dependent claim 6
The Examiner relies on Rowland for disclosing the limitation of claim
6, which depends from claim 1: “wherein the second portion of the aperture
is, in a relaxed state, approximately the same size as or smaller than the
outside diameter of the shaft of the urinary catheter.” Final Act. 3 (citing
Rowland, Fig. 1); Appeal Br. 20 (Claims App’x).
Appellants argue that Figures 1 and 3 of Rowland “show that slit 24 is
much longer than the diameter of the opening 20 and a catheter 36 inserted
through the opening 20.” Appeal Br. 13. The Examiner responds that “the
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diameter of the slit from side to side (width) is smaller than the outside
diameter of the shaft of the urinary catheter.” Ans. 9. Appellants reply that
“it is axiomatic that a slit width cannot properly be considered a diameter at
least because a slit does not have a circular cross-section.” Reply B. 8.
Neither claim 6 nor claim 1 from which claim 6 depends requires the
second portion of the aperture to have a circular shape. Thus, we are not
persuaded by Appellants’ argument. Moreover, in a relaxed state,
Rowland’s slit 24 appears closed, as depicted in Figure 1 of Rowland, and
therefore, a preponderance of the evidence supports the Examiner’s finding
that Rowland’s slit 24 has a smaller size than the outside diameter of the
shaft of the urinary catheter. As discussed supra, slit 24 must be forced
open to allow a catheter to pass there through.
Accordingly, we sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 102(b) as anticipated by Rowland.
Dependent claim 7
The Examiner relies on Rowland’s housing 187 for disclosing the
limitation of claim 7, which depends from claim 1: “a neck portion that
defines part or all of the second portion of the aperture.” Final Act. 3 (citing
Rowland, Fig. 1); see also Rowland 3:10; Appeal Br. 20 (Claims App’x).
The Examiner determines that “[t]he narrowing section” of housing 18 “is
interpreted as constituting a neck portion.” Ans. 9.
7 Rowland also refers to reference numeral 18 as “arcuate or substantially
spherical wall 18” (Rowland 2:35—36) and as “closed end 18” (id. at 2:48).
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Appellants submit that “slit 24 slopes down the side of a
semispherical portion of the housing 18, with no portion of the slit 24 being
associated with anything that might be considered a neck to one of ordinary
skill in the art.” Appeal Br. 13; see also Reply Br. 9 (arguing that the
Examiner’s finding “does not match any reasonable definition of neck and
has no basis in the specification”).
An ordinary meaning of the claim term “neck,” consistent with the
Specification, is “a part reduced in circumference.” Webster’s Third New
Int’l Dictionary at 1511. Rowland discloses that housing 14 “is closed by
an arcuate or substantially spherical wall 18,” such that the circumference of
housing 14 is reduced toward its closed end-wall, and depicts slit 24 on the
arcuate portion of wall 18. Rowland 2:33—36; Fig. 1. Thus, a
preponderance of evidence supports the Examiner’s finding that Rowland’s
housing 14 comprises a neck portion (spherical wall 18) that defines part or
all of the second portion (i.e., slit 24), as claimed.
Accordingly, we sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 102(b) as anticipated by Rowland.
Dependent claim 10
The Examiner relies on Rowland for disclosing the limitation of claim
10, which depends from claim 1: “wherein the catheter retainer further
defines a slit that couples the first portion of the aperture to the second
portion of the aperture.” Final Act. 3 (citing Rowland, Fig. 1); Appeal Br.
20 (Claims App’x).
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Appellants argue that “[tjhere is no separate slit that connects slit 24
to the alleged first portion.” Appeal Br. 14. The Examiner responds by
presenting an annotated Figure 1 of Rowland, reproduced below. Ans. 6.
The Examiner’s annotated Figure 1 of Rowland is a perspective view of a
catheter tube attachment, wherein the Examiner identifies structures
corresponding to the claimed first and second portions of an aperture, and
also a slit, as recited in claim 10, which depends from claim 1. See Ans. 6;
Rowland 2:3—4.
Appellants reply that “[t]he Examiner has not identified a component
that satisfies the second portion and a separate component that satisfies the
slit requirement or explained how they are coupled by a slit.” Reply Br. 9.
However, Appellants’ argument does not address the Examiner’s
findings as clarified in the Examiner’s annotated Figure 1 of Rowland set
forth supra. Moreover, the claim term “portion” means “a part of a whole”
(Webster’s Third New Int’l Dictionary at 1768), and neither claim 1 nor
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claim 10 specifies structure for delineating one portion of an aperture from
another (other than by their configuration to achieve a function), such that
we are not apprised of error in the Examiner’s finding that the claimed
second portion reads on only a portion of Rowland’s slit 24, and the claimed
slit reads on another portion of Rowland’s slit 24.
Accordingly, we sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 102(b) as anticipated by Rowland.
Rejection II
Claim 8, which depends from claim 7, further recites “wherein the
neck portion comprises a tube coupled to the sheath, the tube defining an
axial slit.” Appeal Br. 21 (Claims App’x). The Examiner relies on
Viswanathan for teaching a tube (i.e., outer sheath 484) having an axial slit
480. Final Act. 4—5; see also Viswanathan 149 (“slit 480 preferably extends
along a distal portion of the outer sheath 424, including some or all of the
portion containing the lumen 430, providing access to the lumen from
outside the outer sheath”). The Examiner reasons that it would have been
obvious to modify Rowland by adding Viswanathan’s catheter tube (i.e.,
outer sheath 484) onto the end of the Rowland’s sheath (i.e., housing 14),
“since Rowland calls for the addition of a tube onto the end of the catheter
sleeve” and “to facilitate the positioning of the catheter tube.” Final Act. 5.
Appellants argue that the Examiner admits that Rowland does not
teach the limitation of claim 8, and submit that Viswanathan fails to teach
the limitation as well. Appeal Br. 14. However, as discussed supra, the
Examiner relies on Rowland for disclosing a sheath with a neck portion
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(claim 7), as well as for suggesting an additional tubular member 36 for
receiving a catheter (which still passes through a first aperture portion in
certain embodiments), and on Viswanathan for teaching a tube (i.e., an outer
sheath 424) with axial slit 480 (claim 8). See, e.g., Rowland 3:12—14 (“wall
32 is provided with a centrally disposed bore or aperture 34 having a tubular
member 36 secured therein”), Fig. 3. The Examiner’s proposed
modification is, therefore, to add Viswanathan’s outer sheath 424 with axial
slit 480 to Rowland’s neck portion, as Rowland itself suggests adding an
additional tube 36 at aperture 34. Thus, Appellants’ argument
mischaracterizes the Examiner’s findings and does not address the rejection
as articulated by the Examiner.
Appellants also argue that “[tjhere is no reason to modify slit 24 of
Rowland based on Viswanathan,” because “[s]lit 24 is only used in Rowland
to allow the catheter to be moved into the opening 20.” Appeal Br. 14; see
also Reply Br. 10 (arguing that the Examiner improperly relies on
Rowland’s aperture 20 as the first and/or second portions of the aperture);
see also id. (arguing that “[tjhere is simply no way the neck portion can be
the curvature of the device and also be a tube coupled to the sheath”).
However, Appellants’ arguments are not responsive to the rejection as
articulated by the Examiner, as set forth supra. In other words, the
Examiner is not proposing modifying, for example, Rowland’s slit 24;
rather, the Examiner’s proposes adding Viswanathan’s outer sheath 484 with
axial slit 480 to Rowland’s neck portion at aperture 20, similar to the
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placement of Rowland’s additional tube 36. Ans. 10—11 (citing
Viswanathan 149; Rowland, Fig. 3).
Accordingly, we sustain the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a) as anticipated by Rowland and Viswanathan.
Rejection III
Claim 9, which depends from independent claim 1, further recites
“wherein the catheter retainer comprises an integral8 conical portion of thick
material that defines part or all of the second portion of the aperture, the
thick material being thicker than material of the sheath. Appeal Br. 21
(Claims App’x). The Examiner relies on Nielsen for teaching a conical
portion (i.e., “bottom end of 5”) that is integral to a sheath (i.e., envelope 4).
Final Act. 5 (citing Nielsen, Fig. 1). The Examiner explains that “[t]he
conical portion defines the bottom portion of the device which would have
the aperture in Rowland,” and determines that “[t]he section has a thicker
material” (i.e., cotton 8 and neck 5) “that makes the region thicker than the
material of the sheath.” Id. The Examiner determines that, as modified,
“[t]he cotton extends downward toward where the second aperture of
Rowland would reside and can define part of the portion as required.” Ans.
11. The Examiner also explains that “Nielsen avoids the leakage of urine by
using the cotton material,” and reasons that “[o]ne would be motivated to
8 There is no express definition for the claim term “integral” in the
Specification. An ordinary meaning of “integral,” consistent with the
Specification, is “of, or relating to, or serving to form a whole: essential for
completeness: organically joined or linked.” Webster’s Third New Inf 1
Dictionary 1173 (1993).
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modify Rowland by adding the cotton to the conical portion to prevent the
leakage of urine.” Final Act. 5—6.
Appellants argue that “[mjerely adding cotton inside the sheath of
Rowland around the opening 20 . . . would not have any impact on the
alleged second portion or slit 24.” Appeal Br. 16. Appellants also argue that
“[njothing conical defines slit 24; merely adding a separate thicker material
in the region of a linear slit does not make a conical portion that defines the
slit.” Reply Br. 11.
As set forth supra, the Examiner relies on Nielsen for disclosing an
integral conical portion of thick material, a finding Appellants do not
dispute. Therefore, Appellants’ argument that Rowland fails to define a
conical section that defines part or all of Rowland’s slit 24 is not responsive
to the rejection as articulated by the Examiner. Moreover, the Examiner
proposes modifying Rowland’s cylindrical housing both at aperture 20 and
extending downwardly to slit 24 to include a conical portion of thick
material, as taught by Nielsen. Appellants’ arguments do not address the
Examiner’s proposed modification or apprise us of error in the Examiner’s
findings or reasoning.
Accordingly, we sustain the Examiner’s rejection of claim 9 under
35 U.S.C. § 103(a) as anticipated by Rowland and Nielsen.
Rejections IV and V
Appellants chose not to present separate arguments for the
patentability of claims 13—19, which depend from independent claim 1.
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Appeal Br. 16. Therefore, for the reasons stated supra, we also sustain the
Examiner’s rejection of such claims.
Rejection VI
Dependent claim 23
Claim 23, which depends from independent claim 1, further recites
“wherein urine flow through the shaft of the urinary catheter is unobstructed
when the shaft is retained in the second portion.” Appeal Br. 22 (Claims
App’x) (emphasis added). The Examiner determines that although
“Rowland does not say the catheter is completely obstructed when moved
through the second aperture,” it would be obvious “to ensure the catheter is
unobstructed when the shaft is retained to prevent turbulent flow through the
catheter.” Final Act. 9.
Appellants argue, inter alia, that, in Rowland, “the catheter is not
retained in slit 24; rather, the catheter passes briefly through slit 24 on its
way into opening 20.” Appeal Br. 18; see also Reply Br. 12.
We are persuaded by Appellants’ argument. Although claim 1 merely
requires the second portion of the aperture (i.e., Rowland’s slit 24) to be
“configured to retain the shaft of the urinary catheter,” without specifying
how such retention is achieved, claim 23, as set forth supra, requires the
shaft to be retained in the second portion. A preponderance of evidence fails
to support the Examiner’s finding that Rowland teaches that tube 12 is
retained in slit 24; rather, as discussed supra, Rowland teaches that tube 12
is forced through slit 24.
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Accordingly, we do not sustain the Examiner’s rejection of claim 23
under 35 U.S.C. § 103(a) as unpatentable over Rowland.
Dependent claim 24
Claim 24, which depends from independent claim 1, further recites
“wherein the second portion of the aperture forms a curved shape with a
radius that is the same as or smaller than a radius of the shaft of the urinary
catheter between a longitudinal axis of the shaft of the urinary catheter and
an outer surface of the urinary catheter.” Appeal Br. 22 (Claims App’x).
The Examiner finds that “Rowland teaches a curved shape aperture,”
wherein “the aperture curves as the sheath bows out.” Final Act. 9 (citing
Rowland, Fig. 1). The Examiner determines that “Rowland does not teach a
radius but rather a slit that is smaller than the radius of the shaft.” Id. The
Examiner reasons that it would have been obvious to modify Rowland’s
attachment 10 “by replacing the slit with a circular opening to hold the
catheter since the circular opening and the slit are functional equivalents.”
Id.
Appellants correctly argue that Rowland’s slit 24 “follows the radius
of the cylindrical housing (14) which is substantially larger than the
centrally disposed aperture (20),” which “‘is of a diametric size for snugly
receiving the tube.’” Appeal Br. 18 (quoting Rowland 2:36—38). Thus, we
agree with Appellants that although Rowland discloses a second portion
(Rowland’s slit 24) that forms a curved shape, the radius is not the same as
or smaller than a radius of the shaft of the urinary catheter, as claimed.
Moreover, the Examiner does not provide factual support for determining
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that a circular aperture is the functional equivalent for a slit used to place a
housing over a tube in a transverse direction by forcing the tube through the
slit.
Accordingly, we do not sustain the Examiner’s rejection of claim 24
under 35 U.S.C. § 103(a) as unpatentable over Rowland.
DECISION
The Examiner’s rejection of claims 1—3, 5—7, 10, 12, and 20 under
35 U.S.C. § 102(b) as anticipated by Rowland is AFFIRMED.
The Examiner’s rejection of claim 4 under 35 U.S.C. § 102(b) as
anticipated by Rowland is REVERSED.
The Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Rowland and Viswanathan is AFFIRMED.
The Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Rowland and Nielsen is AFFIRMED.
The Examiner’s rejection of claims 13—17 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Rowland and Cisko is AFFIRMED.
The Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Rowland, Cisko, and Highgate is AFFIRMED.
The Examiner’s rejection of claims 23 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Rowland is REVERSED.
19
Appeal 2017-000639
Application 13/682,406
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)(l)(iv).
AFFIRMED-IN—PART
20