Ex Parte Dahlinger

Board of Patent Appeals and Interferences

Aug 15, 2010

11076145 (B.P.A.I. Aug. 15, 2010)

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.
11/076,145 03/09/2005 Eric Dahlinger DAHLIN.1005 5892
26812 7590 08/16/2010
HAYES, SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
EXAMINER
ARAJ, MICHAEL J
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
08/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC DAHLINGER
____________

Appeal 2009-007566
Application 11/076,145
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL W. O'NEILL, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007566
Application 11/076,145

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STATEMENT OF THE CASE
Eric Dahlinger (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1, 2, 4, 5, 7, and 8 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; claims 1-6 under 35 U.S.C. § 102(b) as being
anticipated by Mikhail (US Pat. 5,624,395); claims 8 and 9 under 35 U.S.C.
§ 102(b) as being anticipated by Berger (US Pat. 5,658,310); and claim 7
under 35 U.S.C. § 103(a) as being unpatentable over Mikhail. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellant’s claimed invention is directed to a surgical device in the
form of an access port or sleeve for passing surgical instruments into
locations within the body. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A surgical access device, comprising:
a tubular housing having two ends, each end having an
opening there-through;
a malleable, constantly bulbous, undeflatable exterior
region along a portion of the tubular housing; and
a contiguous seal within the tubular housing.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

Appeal 2009-007566
Application 11/076,145

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ISSUES
The dispositive issues presented in this appeal are:
1. Does Appellant’s Specification provide support for the limitation in
Appellant’s claims that the malleable, constantly bulbous exterior
region is “undeflatable,” so as to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph?
2. Did the Examiner err in finding that Mikhail’s balloon 18 is
“constantly bulbous” and “undeflatable,” as called for in claims 1-7?
3. Did the Examiner err in finding that Berger’s balloon 16 is
“constantly bulbous” and “undeflatable, as called for in claims 8 and
9?

DISCUSSION
Issue 1
The written description requirement found in the first paragraph of 35
U.S.C. § 1l2 is separate and distinct from the enablement requirement of that
provision. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991)). The purpose of the written description requirement in 35
U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.’” Id.
“[T]he test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. This test
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id.
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The Examiner found that the disclosure of Appellant’s application
does not reasonably convey to those skilled in the art that Appellant had
possession of the invention now claimed, specifically, a surgical access
device (claim 1) or method of using a surgical access device (claim 8) as
claimed comprising a malleable, constantly bulbous, “undeflatable” exterior
region (or step of inserting such). Ans. 3. The Examiner correctly found
that Appellant’s tubular housing has two ends, each of which has an opening
there-through. Ans. 7; see cl. 1. The Examiner further correctly found that
Appellant’s Specification describes the malleable bulbous exterior region as
“adaptable to the interior of a bone tunnel, and able to regain pre-insertion
shape when removed from the tibia tunnel” and “as being ‘able to adapt and
compress to fit within a bone tunnel.’” Ans. 7; Spec. 6, 7. Additionally, the
Examiner found that Appellant’s Specification discloses that the malleable,
bulbous exterior region is compressed by the inner walls of the tunnel and
designed to provide an elastic force outward on the inner walls of the tunnel.
Ans. 7; Spec. 10. The Examiner then reasoned that if the bulbous exterior
region is compressed by any amount by the bone tunnel, then the volume
(i.e., air) contained within this region is reduced and the air is pushed out of
the housing, which, according to the Examiner, constitutes deflation. Ans. 7.
Appellant, on the other hand, asserts that the Examiner has incorrectly
equated compression with deflation. Reply Br. 4. According to Appellant,
the bulbous exterior region does not get deflated or lose firmness when
compressed; rather it maintains a responsive force to provide a liquid tight
seal. Reply Br. 4-5. Further, Appellant urges that because the present
Specification does not disclose a mechanism or step for inflating the bulbous
exterior region, the bulbous exterior region is undeflatable. Reply Br. 5.
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We find that Appellant’s Specification does not use the term
“undeflatable,” or otherwise expressly describe the bulbous exterior region
as incapable of deflation. On the other hand, Appellant’s Specification does
not mention either inflation or deflation of the malleable, bulbous exterior
region. Appellant’s Specification also does not describe movement of air
within the interior of the tubular housing. Appellant’s Specification does,
however, describe an opening through each end of the tubular housing.
Spec. 5. Thus, air seemingly could escape from within the tubular housing
to permit collapse of the malleable bulbous exterior region when compressed
by the inner wall of the bone tunnel.
Appellant’s Specification, as noted above, does not use the term
“undeflatable,” much less define it. Appellant asserts that the term
“undeflatable” means “not capable of losing firmness through the escape of
contained gas.” App. Br. 20, 24. The Examiner does not challenge that
definition, or offer a different definition. Thus, we accept Appellant’s
proffered definition in construing the claim term “undeflatable.”
We do not agree with the Examiner that the description of the bulbous
exterior region in Appellant’s Specification as adaptable and compressible,
and capable of exerting an elastic force outward on the inner wall of the tibia
tunnel, conveys that the bulbous region necessarily is capable of being
collapsed or losing firmness through the escape of contained gas, even when
considered in light of the description of openings through both ends of the
tubular housing. On the other hand, we do not agree with Appellant that this
description of the bulbous exterior region, even without an express
disclosure of any mechanism for inflating or deflating the bulbous region, is
sufficient to reasonably convey to persons of ordinary skill in the art that the
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bulbous region necessarily is incapable of losing firmness through the
escape of contained gas. That one of ordinary skill in the art might see the
scenario asserted by Appellant as possible within the context of the
description in Appellant’s Specification is insufficient to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph. See, e.g.,
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)
and In re Wohnsiedler, 315 F.2d 934, 937 (CCPA 1963). See also In re
Barker, 559 F.2d 588, 593 (CCPA 1977)
That a person skilled in the art might realize
from reading the disclosure that such a step is
possible is not a sufficient indication to that
person that [the] step is part of appellants’
invention. Such an indication is the least
that is required for a description of the
invention under the first paragraph of § 112.

Accordingly, we find that Appellant’s Specification does not provide
support for the limitation in Appellant’s claims that the malleable, constantly
bulbous exterior region is “undeflatable,” so as to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph.
We sustain the rejection of claims 1, 2, 4, 5, 7, and 8 under 35 U.S.C.
§ 112, first paragraph. Pursuant to our authority under 37 C.F.R. § 41.50(b)
(2010), we also enter a new ground of rejection of claims 3, 6, and 9, which
depend from claims 1 and 8, and thus also contain the limitation that the
malleable, constantly bulbous exterior region is “undeflatable,” under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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Issue 2
The Examiner found that Mikhail shows a malleable, constantly
bulbous exterior region (balloon 18) in an uninflated state in figure 2a. Ans.
8. The Examiner further found that because the balloon 18 is uninflated, it
cannot be deflated, and thus is “undeflatable.” Id. Appellant argues that
Mikhail’s balloon is neither “undeflatable” nor “constantly bulbous.” App.
Br. 20-21.
Figure 2a of Mikhail shows the balloon 18 connected to and molded
unitarily with the proximal portion 16 of the catheter body 12 such that the
balloon 18 extends in an inverted configuration, from which it is then folded
until its distal end 46 contacts tapered neck 48 and seating region 50 of the
catheter, with the distal end 46 adhered to the seating portion 50. Col. 10, l.
57 to col. 11, l. 10. Mikhail teaches that “the inflatable balloon 18 is initially
formed with the intermediate segments 112 of the side walls slightly curved
or bowed to minimize the inflation pressure initially required to induce
inflation.” Col. 18, ll. 60-63. The balloon may be retracted “to a completely
deflated and collapsed configuration” by drawing a vacuum. Col. 18, ll. 63-
67. Thus, we find that Mikhail’s balloon is “constantly bulbous,” in that in
its rest state, in which it is not subjected to any external forces, it is slightly
curved or bowed, that is, it has a bulbous (curved or bowed) shape. This
passage, however, also makes clear that Mikhail’s balloon 18 is deflatable
(i.e., capable of being collapsed or losing firmness through the escape of
contained gas).
In light of the above, we do not agree with Appellant that the
Examiner has erred in finding that Mikhail’s balloon 18 is “constantly
bulbous,” as called for in claims 1-7. We do agree with Appellant, however,
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that the Examiner has erred in finding that Mikhail’s balloon 18 is
“undeflatable,” as called for in claims 1-7.
Accordingly, we reverse the rejection of claims 1-6 as being
anticipated by Mikhail. In rejecting claim 7 as being unpatentable over
Mikhail, the Examiner has not articulated any reason why it would have
been obvious to modify Mikhail to render balloon 18 “undeflatable.”
Rather, the rejection of claim 7 is fatally tainted by the Examiner’s same
flawed finding that Mikhail’s balloon is “undeflatable.” Thus, we reverse
the rejection of claim 7 as well.
Issue 3
We reverse the rejection of claims 8 and 9 as being anticipated by
Berger for essentially the same reasons as the rejections based on Mikhail.
Specifically, while Berger’s depiction of a bulbous balloon 16 in figure 1
leads us to find that the balloon is “constantly bulbous,” the Examiner has
not established that the balloon is “undeflatable” (i.e., incapable of losing
firmness through the escape of contained gas), by, for example, drawing a
vacuum on the balloon.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we enter
the following new ground of rejection.
Claims 3, 6, and 9 are rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not sufficiently described in the
present specification to reasonably convey to one skilled in the art that
Appellant had possession of the invention now claimed at the time the
present application was filed. For the reasons discussed above, the
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limitation that the malleable, constantly bulbous exterior region is
“undeflatable,” which is contained within each of these claims by virtue of
their dependence from claim 1 or claim 8, lacks support in the application as
originally filed.

DECISION
The Examiner’s decision is affirmed as to claims 1, 2, 4, 5, 7, and 8,
and reversed as to claims 3, 6, and 9. We enter a new ground of rejection of
claims 3, 6, and 9 under 35 U.S.C. § 112, first paragraph.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, 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 "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that 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
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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. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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)(1)(iv) (2007).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

Appeal 2009-007566
Application 11/076,145

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hh

HAYES, SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101