Ex Parte Del Vecchio

Patent Trial and Appeal Board

Oct 22, 2018

13897866 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/897,866 05/20/2013
103251 7590 10/22/2018
R. KEITH HARRISON
2139 E. BERT KOUNS
SHREVEPORT, LA 71105
FIRST NAMED INVENTOR
Daniel A. Del Vecchio
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1583 3368
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
10/22/2018 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 A. DEL VECCHIO
Appeal2018-001626
Application 13/897,866
Technology Center 3700
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE, and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b).
According to Appellant, the invention is directed to a vibrational
device for fat insertion during fat transplantation. Spec., Title. Claims 1, 9,
and 17 are the independent claims on appeal. Below, we reproduce claim 1
as illustrative of the appealed claims.
1 According to Appellant, the real party in interest is Daniel A. Del Vecchio.
Br. 3.
Appeal2018-001626
Application 13/897,866
1. A device, comprising:
a gripping portion having a first end and a second end
opposite the first end;
a vibrating motor in the gripping portion between the first
end and the second end;
an injection cannula mechanically coupled to the vibrating
motor at the first end of the gripping portion; and
a syringe coupled in fluid communication with the
injection cannula through the vibrating motor at the second end
of the gripping portion, the syringe applies positive pressure to a
material for the injection of the material from the syringe through
the gripping portion and discharge of the material from the
injection cannula, respectively, as the vibrating motor vibrates
the gripping portion.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-7, 9, 10, 13, and 14 under 35 U.S.C. § I03(a) as
unpatentable over Weber et al. (US 6,638,238 Bl, iss. Oct. 28,
2003) ("Weber) and Lee (US 2006/0224144 Al, pub. Oct. 5,
2006);
II. Claim 8 under 35 U.S.C. § I03(a) as unpatentable over Weber,
Lee, and Nita et al. (US 6,942,677 B2, iss. Sept. 13, 2005)
("Nita");
III. Claim 11 under 35 U.S.C. § I03(a) as unpatentable over Weber,
Lee, and Clark (US 4,815,462, iss. Mar. 28, 1989);
IV. Claim 12 under 35 U.S.C. § I03(a) as unpatentable over Weber,
Lee, and Mark (US 2010/0152614 Al, pub. June 17, 2010);
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Application 13/897,866
V. Claim 15 under 35 U.S.C. § I03(a) as unpatentable over Weber,
Lee, and Mozsary et al. (US 6,258,054 Bl, iss. July 10, 2001)
("Mozsary");
VI. Claim 16 under 35 U.S.C. § I03(a) as unpatentable over Weber,
Lee, Mozsary, and Johnson (US 5,002,538, iss. Mar. 26, 1991);
and
VII. Claims 17-20 under 35 U.S.C. § I03(a) as unpatentable over
Weber, Lee, and Johnson.
ANALYSIS
New ground of rejection
For the following reasons, we enter a new ground of rejection for
claims 1-20 under 35 U.S.C. § 112, second paragraph. In particular, we
reject each of the claims as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention.
As set forth above, independent claim 1 recites, in part, a "device,
comprising" "a gripping portion," "a vibrating motor," "an injection
cannula," and
a syringe coupled in fluid communication with the
injection cannula through the vibrating motor at the second end
of the gripping portion, the syringe applies positive pressure to a
material for the injection of the material from the syringe
through the gripping portion and discharge of the material from
the injection cannula, respectively, as the vibrating motor
vibrates the gripping portion.
Br. (Claims App.) (Claim 1) ( emphasis added). Appellant and the Examiner
disagree as to whether it would have been obvious to combine the references
of record such that the combination includes a syringe that applies pressure
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Appeal2018-001626
Application 13/897,866
for injecting material and for the discharge of material as the vibrating motor
vibrates. See, e.g., Answer 7-8; see, e.g., Br. 13-15. Restated, Appellant
argues that the prior art does not perform the injection and discharge that
occurs as the vibrating motor vibrates, when using the device, as recited in
claim 1.
Independent claim 1 is indefinite because the claim recites both an
apparatus and a method step of using the apparatus. See IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (a single
claim reciting "both an apparatus and the method steps of using the
apparatus is indefinite under 35 U.S.C. [§] 112, second paragraph"); cf
MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1316 (Fed.
Cir. 2017) (a claim reciting both an apparatus and a method step is not
indefinite when the "claim[] ... do[ es] not claim activities performed by the
user"). Here, Appellant's claim 1 is indefinite because the claim recites an
apparatus and a method of using the device, such that "it is unclear whether
infringement ... occurs when one creates [the device] ... or ... when the
user actually uses [the device]." See IPXL Holdings, 430 F.3d at 1384.
Independent claims 9 and 17 include recitations similar to those
discussed above with respect to claim 1, and each of the remaining
claims----claims 2-8, 10-16, and 18-20--depend from one of independent
claims 1, 9, and 1 7. See Br. ( Claims App.). Thus, we reject each of
claims 1-20 as indefinite, for the above reasons.
Rejections I-VII
For the reasons set forth above, the scope of claims 1-20 is unclear.
Consequently, we do not sustain the rejections of claims 1-20 under 35
U.S.C. § 103(a) because to do so would require speculation as to the scope
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Appeal2018-001626
Application 13/897,866
of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding
that the Board erred in affirming a rejection of indefinite claims under 35
U.S.C. § 103(a), because the rejection was based on speculative assumptions
as to the meaning of the claims). It should be understood, however, that our
decision in this regard is proforma and based solely on the indefiniteness of
the claimed subject matter, and does not reflect on the adequacy of the prior
art evidence applied in support of the rejection.
DECISION
We REVERSE, proforma, the Examiner's rejections of claims 1-20
under 35 U.S.C. § 103(a).
We ENTER A NEW GROUND OF REJECTION of claims 1-20
under 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter that Appellant
regards as the invention.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.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 [ e ]vidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the prosecution
will be remanded to the [E]xaminer ....
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(2) Request rehearing. Request that the proceeding be
reheard under §[]41.52 by the Board upon the same [r]ecord ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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