Ex Parte Ellefson et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201712977561 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 12/977,561 12/23/2010 Kimberly Louise Ellefson 64673155US01 9567 23556 7590 03/01/2017 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI54956 EXAMINER REDDY, SUNITA ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 03/01/2017 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 KIMBERLY LOUISE ELLEFSON, JASON ROBERT BOON, GARRY ROLAND WOLTMAN, MARYANN ZUNKER, PATRICIA ANN SAMOLINSKI, WALTER GEORGE BAUER, VIVIAN KATE BARAD, NICOLE SARAH KAHN, GINA LYNN ROMERO, ELGER OBERWELZ, JAMES ROLFE YURCHENCO, JONAH LAWRENCE HOUSTON, TIFFANY HEATHER CARD, and MARTIN SCHNITZER Appeal 2015-002626 Application 12/977,561 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-002626 Application 12/977,561 STATEMENT OF THE CASE Kimberly Louise Ellefson et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1—4 and 7—15. Claim 5 is canceled and claims 6 and 16—20 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention is directed to a vaginal insert urinary incontinence device. Claim 1, reproduced below, is illustrative: 1. A vaginal insert device comprising: a compliant resilient material; a support portion having a distal end and a proximal end, the support portion having a plurality of foldable areas extending from the distal end to the proximal end, wherein a largest outer circumference of the support portion has an insertion diameter when the plurality of foldable areas are in a compressed position; a stabilizing portion attached to the distal end of the support portion; at least one tubular fluid passageway surrounded by the compliable resilient material of the vaginal insert device and extending between the distal end and the proximal end of the support portion and open at the distal end and the proximal end of the support portion; and a removal member attached to the vaginal insert device. 2 Appeal 2015-002626 Application 12/977,561 THE REJECTION The Examiner rejects claims 1—4 and 7—15 under 35 U.S.C. § 103(a) as being unpatentable over Bartning (US 2008/0033230 Al, published Feb. 7, 2008). ANALYSIS The Examiner finds that Bartning discloses most of the limitations in claim 1, including “at least one tubular fluid passageway surrounded by the compliable resilient material of the . . . device.” Final Act. 2-4. More specifically, the Examiner finds that the disclosure in Bartning of forming the vaginal insert from a slotted tube material amounts to a disclosure of the claimed “tubular” fluid passageway. Id. at 3, citing Bartning, paras. 27—30. Appellants argue that the claimed tubular fluid passageway is a defined space having a defined shape, namely, a tube, and that Bartning fails to disclose a compliable resilient material which surrounds and provides shape and boundaries to a fluid passageway that is tubular. Br. 4. Appellants further maintain that Bartning fails to provide any shape to any type of passageway within its device. Id. The Examiner observes that Appellants appear to be arguing that the claimed tubular fluid passageway “must be defined by a tubular outer sidewall that is contiguous between the open distal end and the proximal end,” and posits that claim 1 is not so limited. Ans. 14. The Examiner further explains the initial finding as to the disclosure in Bartning of a tubular fluid passageway, stating that “one could reasonably . . . interpret the slots in the tubes as ‘tubular fluid passageways surrounded by compliant resilient material.’” Id. at 13. Bartning, however, is silent as to any function imparted to the device therein as a result of employing a slotted tube, which 3 Appeal 2015-002626 Application 12/977,561 highlights the speculative nature of the Examiner’s finding that the slots are fluid passageways. Further, the Examiner has not established how a slot provided in a tube could reasonably be regarded as a “tubular” passageway, nor has shown how any such slot can be interpreted as being open at the distal and proximal ends of the device. The Examiner introduces, for the first time in the Answer, an alternate interpretation as to how Bartning can be regarded as disclosing the claimed tubular fluid passageway. The Examiner proffers that “the cylindrical shape of the working portion, i.e., passageway, can also be seen as ‘tubular.’” Ans. 13. We do not take issue with the characterization of the cylindrical shape of the working portion as being generally tubular. Indeed, Bartning states “working portion 1 . . . is generally cylindrical in shape and contains working surfaces 9a and 9b.” Bartning, para. 29. However, we do not regard the working portion of the device as described and illustrated in Bartning as a “fluid passageway,” in that the structure cannot, by itself, constrain fluid flow attempting to pass therethrough from one end to the other. It is the tissue surrounding the insert device in Bartning that completes what might be regarded as a fluid passageway, and, in general, the tissue would be regarded as forming the fluid passageway. In this regard, we interpret the expression “tubular fluid passageway,” in light of Appellants’ Specification, as evidenced by Figures 2, 3, and 6, in particular, to be an opening extending between a distal and proximal end of the device that is surrounded by the compliable resilient material of the device to the extent necessary to make it act as a passageway that constrains fluid to flowing therethrough. This may indeed require “a tubular outer sidewall that is contiguous between the open distal and proximal ends,” as 4 Appeal 2015-002626 Application 12/977,561 described by the Examiner. In any event, the Examiner has not established that Bartning discloses or renders obvious the claimed tubular fluid passageway. The rejection of claim 1, and of claims 2—A depending therefrom, is therefore not sustained. Claims 7 and 8 require a device having all limitations set forth in claim 1, and the rejection of those claims is similarly not sustained. Independent claim 9 recites a device having the same “tubular fluid passageway” as recited in claim 1, and the rejection of claim 9 and of claims 10-13 depending therefrom, is not sustained. Claim 14 requires a device having all limitations set forth in claim 9. The rejection of claim 14, and of claim 15 depending therefrom, is not sustained. DECISION The rejections of claims 1^4 and 7—15 under 35 U.S.C. § 103(a) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation