Ex Parte Duering et al

Patent Trial and Appeal Board

May 9, 2017

13386960 (P.T.A.B. May. 9, 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.
13/386,960 02/15/2012 Klaus Duering 4121-186 7969
7590 05/11/2017
Hultquist IP
P.O. Box 14329
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
BARIA, DINAH N
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/11/2017 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS DUERING and
JOACHIM GEORG PFEFFER
Appeal 2015-006728
Application 13/386,960
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from the final rejection of
claims 9, 11, 12, 16, 21, and 22. Appeal Br. 11. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-006728
Application 13/386,960
CLAIMED SUBJECT MATTER
Claim 9, the sole independent claim on appeal, is reproduced below.
9. An insertion tube for inserting an apnea stent, the insertion
tube comprising a proximal end and a distal end, wherein the
insertion tube has a segment of a circle at its distal end only, to
facilitate insertion in a respiratory duct, wherein the segment of
a circle has a bend of about 80° -120° and a radius of about 3 cm
to 7 cm, and wherein the proximal end is substantially linear.
REJECTIONS
Claims 9, 11, 12, 16, 21, and 22 are rejected under 35 U.S.C. § 112,
first paragraph, for lack of an adequate written description.
Claims 9, 11, 12, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Levin (US 2003/0133877 Al, pub. July 17, 2003).
Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levin and Waters (US 2006/0249161 Al, pub. Nov. 9,
2006).
ANALYSIS
Claims 9, 11, 12, 16, 21, and 22
for lack of an adequate written description
The Examiner found that the phrase “the insertion tube has a segment
of a circle at its distal end only” in claim 9 was not described so as to convey
that the inventors had possession of this subject matter. Final Act. 3. The
Examiner found that the Specification discloses the insertion tube as having
a distal end with a portion bent approximately in the shape of a segment, but
does not describe this feature as being “only” at the distal end. Id.', Ans. 2.
The Examiner treated the term “only” as a negative limitation for which a
written description was lacking. Final Act. 3; Ans. 2—3.
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Application 13/386,960
We agree with Appellants that their Specification describes insertion
tube 6 as preferably having a portion bent in the shape of a segment at its
distal end. Spec. 13; Appeal Br. 4—5. The Examiner also recognizes this
disclosure. Ans. 3. We find no disclosure of the segment being placed at
any other part of insertion tube 6, and the Examiner has not cited any such
disclosure. Reply Br. 3^4. Even if there were such a disclosure, Appellants
limited the scope of their claims to an insertion tube with a segment only at
distal end 7, as illustrated in Figures la and 9. Thus, we do not sustain the
rejection of claims 9, 11, 12, 16, 21, and 22 for lack of written description.
Claims 9, 11, 12, and 16
as unpatentable over Levin
Appellants argue claims 9, 11, 12, and 16 as a group. Appeal Br. 6—
10. We select claim 9 as representative, with claims 11, 12, and 16 standing
or falling with claim 9. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Levin discloses an insertion tube 100 having
distal end 103 and proximal end PE and a segment of a circle at its distal end
only with a bend of about 90°—100° as recited in claim 9. Final Act. 4. The
Examiner found that Levin does not disclose the radius of the circle as being
about 3 cm to 7 cm, but reasoned that this radius would have been obvious
to a skilled artisan in view of Levin’s disclosure of a circular segment of
similar angle range to that recited in claim 9 for insertion into the nose. Id.
at 4—5. The Examiner found that Levin’s device is inserted into the nose of
a human and reasoned that it would be of the same size scale as the claimed
insertion tube irrespective of its intended use and therefore has the claimed
radius of curvature because its angle of curvature is within the claimed
range. Ans. 8.
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Appeal 2015-006728
Application 13/386,960
Appellants argue that Levin discloses its angle of curvature as formed
by the intersection of the longitudinal axes of the distal and proximal ends
and this is distinguishable from the claimed circle bend of about 80 to 120
and radius of about 3 cm to 7 cm. Appeal Br. 7.
This argument does not apprise us of error in the Examiner’s findings
and determination of obviousness as set forth above. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice as set forth
in Ex parte Frye of requiring appellants to identify error in a rejection); Ex
parte Frye, 94 USPQ 2d 1072, 1075 (BPAI 2010) (precedential) (a panel
reviews rejections for error based on the issues identified by an appellant).
Moreover, Fevin discloses insertion tube 100 as having an “elongate
body [that] is angled at the distal end, with respect to the longitudinal axis at
the proximal end.” Fevin 1283. Figure 4A of Fevin illustrates this shape
with distal end 103 being curved relative to the proximal end (where the lead
line for body 100 contacts body 100). The proximal end is illustrated as
being “substantially linear” as claimed. This configuration is similar to
Figures la and 9 of Appellants’ disclosure in which distal end 7 is shown as
being curved with respect to the proximal end of insertion tube 6.1
1 Appellants do not provide a written description in their Specification or the
original claims for insertion tube 6 being linear or substantially linear. Their
Summary of Claimed Subject Matter cites page 13, line 23 to page 14, line
15 as support for “wherein the proximal end is substantially linear.” Appeal
Br. 3. These disclosures describe insertion tube 6 as preferably having “a
portion which is bent approximately in the shape of a segment” that “extends
over an angle of about 80° to 120° and has a radius of about 3 cm to 7 cm
(figures la, 9).” Spec. 13. Page 14 of the Specification describes materials
and the shore hardness of insertion tube 6. Appellants apparently rely on
their drawings to disclose that “the proximal end is substantially linear.”
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Appeal 2015-006728
Application 13/386,960
Appellants also argue that Levin’s device is used for intranasal drug
delivery and therefore is inserted in the apex of the nasal cavity, whereas the
claimed insertion tube is placed in the respiratory duct that is located below
the inferior concha and needs to be sufficiently straight. Appeal Br. 8—9.
Appellants also argue that modification of Levin’s tube to meet the claimed
structure of an insertion tube would render Levin’s tube unsatisfactory for its
intended use of administering a pharmaceutical agent. Id. at 10.
These arguments do not apprise us of error in the Examiner’s finding
that Levin discloses an insertion tube with a bend within the claimed range
of about 80° to 120°, or the Examiner’s determination that the claimed radius
of about 3 cm to 7 cm would have been obvious or inherent in view of this
disclosed bend because insertion tube 100 of Levin is used in human nasal
passages just like the claimed insertion tube. Ans. 8. The fact that Levin’s
tube 100 may be intended for a different use than the claimed insertion tube
is not a structural distinction when Levin discloses all of the features of the
claimed insertion tube for use in a human nasal cavity like the claimed tube.
Appellants argue for the first time in the Reply Brief that Levin lacks
a circle at its distal end only with the claimed bend and radius. Reply Br. 6.
This argument is untimely because it could have been raised in the Appeal
Brief, but was not. 37 C.L.R. § 41.41. No new issue was raised by the
Examiner’s statement in the Answer that “Levin doesn’t specifically state
the segment of a circle is only at the distal end of the tube, [and] neither does
the specification of the current application.” See Ans. 4. Thus, Appellant’s
Reply Brief is untimely.
Levin discloses the proximal end of body 100 with a similar “substantially
linear” configuration in figure 4A as discussed above.
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Appeal 2015-006728
Application 13/386,960
The Examiner’s statement points out that Levin does not describe
insertion tube 100 expressly in the same terms as claim 9 to have a segment
of a circle at its distal end only. Instead, Levin discloses that insertion tube
100 curves toward its distal end at angles that encompass the curvature
recited in claim 9.
Appellants’ argument that Levin does not disclose the claimed radius
because it is inserted into a different portion of the nasal passage than the
claimed insertion tube (Reply Br. 6—7) is not persuasive because it does not
address the Examiner’s finding that Levin discloses a tube with the claimed
curvature or reasoning that such curvature would yield the claimed radius
because it is used on a human nasal passage. Ans. 8.
Thus, we sustain the rejection of claims 9, 11, 12, and 16.
Claims 21 and 22
as unpatentable over Levin and Waters
Appellants argue that the Examiner’s reliance on Waters to disclose
the shore hardness recited in claims 21 and 22 does not cure the deficiencies
of Levin as to claim 9 from which claims 21 and 22 depend. Appeal Br. 11.
Because we sustain the rejection of claim 9 as unpatentable over Levin, there
are no deficiencies for Waters to cure in this regard. Appellants’ argument
that Levin and Waters are non-analogous art (Reply Br. 8—9) is untimely.
See 37 C.L.R. § 41.41; Ans. 4—5. Moreover, Appellants acknowledge that
Levin and Waters teach tubes that transmit substances to or from the nasal
cavity. See Reply Br. 8. The claimed tube is inserted into a nasal cavity to
introduce an apnea stent therethrough. Spec. 13—14. Levin and Waters are
reasonably pertinent to this problem that Appellants have addressed and thus
are analogous art. Thus, we sustain the rejection of claims 21 and 22.
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Appeal 2015-006728
Application 13/386,960
DECISION
We reverse the rejection of claims 9, 11, 12, 16, 21, and 22 for lack of
written description.
We affirm the prior art rejections of claims 9, 11, 12, 16, 21, and 22
under 35 U.S.C. § 103(a).
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).
AFFIRMED
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