Ex Parte DiMauro et al

Patent Trial and Appeal Board

May 19, 2017

12388563 (P.T.A.B. May. 19, 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.
12/388,563 02/19/2009 Thomas M. DiMauro 101896-1040 1715
21125 7590 05/23/2017
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
EXAMINER
SEVILLA, CHRISTIAN ANTHONY
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
05/23/2017 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):
docket @ nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS M. DiMAURO, JOHN CROMBIE,
RICHARD PELLEGRINO, and MARTIN A. REYNOLDS
Appeal 2014-000290
Application 12/3 88,56s1
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 18—25 under 35 U.S.C. § 103(a) as unpatentable
over Green et al. (US 2005/0180806 Al, pub. Aug. 18, 2005, hereinafter
“Green”) and Mazzuca (US 2005/0070915 Al, pub. Mar. 31, 2005,
hereinafter “Mazzuca”). We have jurisdiction over the appeal under 35
U.S.C. § 6(b). We REVERSE.
1 According to the Appellants, “[t]he real party in interest is DePuy Spine,
Inc.” Appeal Br. 1.
Appeal 2014-000290
Application 12/388,563
Claimed Subject Matter
Claims 18 and 22 are the independent claims on appeal. Claim 18,
reproduced below, is illustrative of the subject matter on appeal.
18. A handheld pumping system comprising:
an actuator;
a hydraulic piston driver;
a housing operatively connecting the actuator to the
hydraulic piston driver;
a pump defining an injection chamber having an exit
opening connectable to a bone needle, the injection chamber
containing bone cement and including a piston operatively
connected to the hydraulic piston driver so that actuation of the
actuator results in the receiving of pressurized fluid by the
hydraulic piston driver to selectively actuate the hydraulic piston
driver to drive the piston to force said bone cement from the
injection chamber through the exit opening;
a cement pressure relief device on the handheld pumping
system for minimizing contact between pressurized cement and
other tissue.
PRINCIPLE OF LAW
A patent application claiming priority to a chain of patent applications
adequately incorporates by reference entire applications by the broad and
unequivocal language ‘“are hereby incorporate[d] by reference.”’ Harari v.
Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (brackets in original).
ANALYSIS
The Appellants argue that the Examiner’s rejection of claims 18—25 as
unpatentable over Green and Mazzuca should be reversed because the
subject matter of the claims involved in this appeal — particularly, the
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Appeal 2014-000290
Application 12/388,563
limitation of claims 18 and 22, which recites “a cement pressure relief
device on the handheld pumping system for minimizing contact between
pressurized cement and other tissue” — is entitled to the priority date of the
parent application (i.e., US Patent Application Number 10/405,113, filed
March 31, 2003)2, which antedates the filing dates of Green (filed Feb. 12,
2004) and Mazzuca (filed Sept. 22, 2004). Appeal Br. 3—5. The Appellants
argue that the parent application properly incorporates by reference the
teachings ofU.S. Patent Application Number 10/301,451, filed November
21, 2002, in its entirety, and thus, complies with the conditions for receiving
benefit under 35 U.S.C. § 120. See Appeal Br. 6—15. The parent application
states:
In some embodiments, the vertebral body is first prepared
by lavage to create a porous matrix suitable for accepting the
cement under low pressure. In some embodiments, the lavage
procedures that are used are disclosed in U.S. patent application
Ser. No. 10/301,451, entitled “Methods of Performing
Embolism-Free Vertebroplasty and Devices Therefor,” filed
Nov. 21, 2002, the entire teachings of which are incorporated by
reference herein.
DiMauro, 146 (emphasis added); see Sub. Spec. 10,11. 6—11 (filed June 24,
2009). The Appellants’ argument is persuasive.
The Examiner takes the position that the present application fails to
comply with the conditions for receiving benefit of an earlier filing date
under 35 U.S.C. § 120 because the parent application fails to provide
adequate support or enablement in the manner provided by the first
2 The parent application is published as DiMauro et al. (US 2004/0193171
Al, pub. Sept. 30, 2004) (hereinafter “DiMauro”). The parent application
was also issued as a patent (US 8,066,713 B2, iss. Nov. 29, 2011). See
Appeal Br. 4.
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Appeal 2014-000290
Application 12/388,563
paragraph of 35 U.S.C. § 112 for “a cement pressure relief device on the
handheld pumping system for minimizing contact between pressurized
cement and other tissue,” as recited in claims 18 and 22. See Non-Final
Act. 3. The Examiner supports this position by explaining that the statement
of incorporation “fails to specifically and clearly identify a teaching of a
cement pressure relief device on a handheld pumping system” because “[t]he
incorporation statement is not specific with regard to a pressure relief device
being subject matter being incorporated.” Ans. 9-10 (citing Advanced
Display Systems, Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
Cir. 2000)). It is the Examiner’s position that “the incorporation statement
specifically identifies a teaching of lavage procedures disclosed in
Application Serial Number 10/301451” and “does not specifically and
clearly identify a teaching supporting a bone cement pressure relief device
on a handheld pumping system.” Ans. 9-10.
As discussed above, the statement in the parent application refers to
“the entire teachings” of U.S. Patent Application Number 10/301,451.
Moreover, we agree with the Appellants that the holding of Harari v. Lee,
656 F. 3d 1331, 1334 (Fed. Cir. 2011), applies in this case because the
statement uses the broad and unequivocal language to incorporate the
reference. See Reply Br. 4. As such, we determine that the Appellants
properly incorporate the entirety of the teachings of U.S. Patent Application
Serial No. 10/301,451. Accordingly, the present application is entitled to the
priority date of the parent application which, as discussed above, antedates
the filings dates of both Green and Mazzuca.
Thus, the Examiner’s rejection of claims 18—25 under 35 U.S.C.
§ 103(a) as unpatentable over Green and Mazzuca is not sustained.
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Appeal 2014-000290
Application 12/388,563
DECISION
We REVERSE the Examiner’s decision rejecting claims 18—25.
REVERSED
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