12732181 (P.T.A.B. Mar. 31, 2016)

Ex Parte Farco

Patent Trial and Appeal BoardMar 31, 2016

12732181 (P.T.A.B. Mar. 31, 2016)

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. 12/732,181 03/25/2010 Joseph Anthony Farco 1000-0001 2615 96044 7590 03/31/2016 Joseph Farco 6 Hudson Drive Dobbs Ferry, NY 10522 EXAMINER SNOW, BRUCE EDWARD ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 03/31/2016 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 JOSEPH ANTHONY FARCO ________________ Appeal 2013-003444 Application 12/732,181 Technology Center 3700 ________________ Before LINDA E. HORNER, MICHAEL L. HOELTER, and RICHARD H. MARSCHALL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing (“Req. Reh’g.”) dated March 11, 2016, under 37 C.F.R. § 41.52, regarding the Decision on Appeal mailed January 12, 2016 (“Decision”) and concerning the rejection of claims 16, 18, and 191 under 35 U.S.C. §102(b) as anticipated by Estevez (US 6,822,343 B2; iss. November 23, 2004) and concerning the rejection of claims 1–9, 11– 13, 15, and 21 under 35 U.S.C. § 102(e) as anticipated by Eli (US 2009/0171448 A1; published July 2, 2009). Req. Reh’g. 1, 6. 1 In the Decision, the rejection of independent claim 21 was also sustained. Decision 13–14, 20. Appellant is not seeking a rehearing of this rejection of claim 21. Appeal 2013-003444 Application 12/732,181 2 We do not modify our opinion. THE REQUEST FOR REHEARING A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board (“Board”)].” See 37 C.F.R. § 41.52(a)(1). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. BACKGROUND Independent claims 1 and 16 are reproduced below. 1. A device, comprising: a housing comprising an inner surface and an outer surface, said housing implantable in an organism and configured to receive a fluid therein; and, an undulating wire comprising a first portion traversing said inner surface of said housing, and a second portion configured to rotate in said fluid, said first portion rotatably coupling said second portion to said housing. 16. A device, comprising: a prosthesis comprising an interior surface and an exterior surface, said prosthesis configured to receive fluid when coupled with an organism; Appeal 2013-003444 Application 12/732,181 3 a cavity between said interior surface and said exterior surface; and, a looped wire rotatably coupled within said cavity and configured to rotate in said fluid. The rejection of claims 16, 18, and 19 as anticipated by Estevez Independent claim 16 (and hence dependent claims 18 and 19) recites a prosthesis having “an interior surface and an exterior surface.” Claim 16 further recites “a cavity between” these surfaces with “a looped wire rotatably coupled within said cavity.” Appellant contends the Board erred in its earlier Decision because “there is no possible way under any reasonable reading of the claims that the generator allegedly disclosed in Estevez is located in a cavity ‘between’ the interior surface and the exterior surface of the device.” Req. Reh’g. 1. Figure 1 of Estevez is provided below for clarity and understanding. Figure 1 is a sectional view of a first example of the Estevez device. Appeal 2013-003444 Application 12/732,181 4 Appellant proposes “the exterior surface” of the Estevez prosthesis to be that portion of coupler/walls 28/22/26 “in contact with flexible sleeve 30.” Req. Reh’g. 1. Appellant also proposes “the interior surface” of the Estevez prosthesis to be that portion of coupler/walls 28/22/26 “in contact with the fluid 18.” Req. Reh’g. 1. In such a scenario, Appellant contends that “Estevez fails to disclose a cavity between these two surfaces” and consequently “the ‘cavity’ does not exist in Estevez.” Req. Reh’g. 1. Hence the Board erred. In the Decision, the Board relied, in part, on Estevez’s express disclosure of “[a] generator coupled between the inner portion and the outer portion” of the Estevez device. Decision 10–12 (referencing Estevez 1:63– 64). The Board also relied on Estevez figure 1 above disclosing a location for the generator. Decision 10–12. In short, the Board stated that Estevez expressly discloses “a cavity (i.e., where the generator is located) between inner and outer portions of the device.” Decision 10. When addressing this portion of Estevez relied on by the Board (i.e., Estevez 1:63–64), Appellant seeks to clarify what Estevez meant when Estevez referred to the generator being coupled between the “inner portion” and the “outer portion.” Req. Reh’g. 2. Appellant equates “interior portion” to “interior fluid-containing portion” 20, and “exterior portion” to “exterior fluid-containing portion” 24.2 Req. Reh’g. 2. Appellant contends that “[t]hese disclosures [to portions 20, 24] are irrelevant to the claims because 2 Appellant seems to be equating Estevez’s usage of “inner” and “outer” (as used with respect to the fluid-containing portions 20, 24 (Estevez 3:19–25) to “interior” and “exterior,” which are terms used in claim 16. Appeal 2013-003444 Application 12/732,181 5 they merely refer to the entrance and exit of the prosthetic and not to the wall thickness making up that prosthetic.” Req. Reh’g. 2. Appellant’s correlation of Estevez’s inner and outer portions (as used at Estevez 1:63–64) to Estevez’s inner and outer fluid-containing portions 20 and 24 (as used at Estevez 3:19–25) is mis-placed. First, in Estevez, the terms “inner portion” and “outer portion” are used to establish where the generator is located (see Estevez 1:63–64) while the terms “inner fluid- containing portion 20” and “outer fluid-containing portion 24” are used to identify different fluid-containing regions in the Estevez device (see Estevez 3:19–25). In other words, these terms are used differently in different parts of the Estevez disclosure, and there is no indication that Estevez equates them as does Appellant. Second, Estevez’s fluid-containing portions 20, 24 are not “irrelevant” (Req. Reh’g. 2) because we note with particularity Estevez’s teaching of “coupler 28 that houses generator 16” (Estevez 3:23). In other words, and as illustrated in Estevez figure 1 above, the cavity containing the generator is within and/or formed as a part of coupler 28, and this coupler 28 is shown spanning vertically between portions 20 and 24.3 Alternatively, the location of generator 16 depicted in figure 1 above is also located horizontally between where Estevez’s walls 22 and 26 abut to the right of generator 16 and the end of coupler 28 to the left of generator 16. Appellant does not explain how abutting walls 22 and 26 do not correspond to Estevez’s “inner portion” while opposite these abutting walls, the end of 3 The construction Appellant proposes, which requires a cavity within the wall as shown on top of p. 4 of the Request, is narrower than the claims require because an “inner surface” and “outer surface” of the housing as required by the claims need not be inner and outer surfaces of the same wall. Appeal 2013-003444 Application 12/732,181 6 coupler 28 does not correspond to Estevez’s “outer portion” as disclosed in Estevez. Estevez 1:63–64. In summary, Appellant’s contention that “[t]here is no ‘cavity’ in Estevez” (Req. Reh’g. 4) is not persuasive the Board erred in rendering its Decision with respect to Estevez. The rejection of claims 1–9, 11–13, 15, and 21 as anticipated by Eli Appellant states that with respect to these claims, “[t]he thrust of the decision is that the rotors and blades of Eli may be integral with one another and therefore meet the claim language.” Req. Reh’g. 6; see also Decision 15–16. Appellant contends that “an integral ‘spring’ connected to a ‘rotor’ connected to a ‘blade’ do not form a looped wire, which has always been Appellant’s position.” Req. Reh’g. 6. We understand Appellant to be contending that the Board erred in agreeing with the Examiner that Eli discloses the limitation directed to an undulating wire having first and second portions.4 As indicated in the Decision, the Examiner correlates the claimed (coupling) first portion to the “stent, supporting structure” and the claimed (rotating) second portion to “for example element 830.” Decision 15 (referencing Final Act. 8). Appellant does not dispute that Eli identifies element 830 as a “rotating portion” (Eli ¶ 119; see also Fig. 8C) or that Eli teaches that “the rotating portion is stably connected to the frame” of a 4 The limitation in question, as found in independent claim 1, is “an undulating wire comprising a first portion traversing said inner surface of said housing, and a second portion configured to rotate in said fluid, said first portion rotatably coupling said second portion to said housing.” Appeal 2013-003444 Application 12/732,181 7 support structure in a variety of ways.5 Eli ¶ 20; see also Decision 15. One way expressed in Eli to connect the “rotating portion” to the frame is via “rotors.” Eli ¶¶ 102–104. In fact, Eli teaches that the “rotating portion” can comprise a “blade” and a “rotor” with the two being either molded or integrally formed together. Eli ¶¶ 102–104; see also Decision 15. In short, Eli discloses a rotor portion (i.e., “first portion”) that connects the integral blade portion (i.e., rotating “second portion”) to the frame. As such, Appellant’s contention is not persuasive that “in Eli there is no looped or undulating wire” having a coupling portion and a rotating second portion. Req. Reh’g. 6. Accordingly, Appellant is not persuasive that the Board erred in rendering its Decision with respect to Eli. DECISION Appellant’s Request for Rehearing has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request for Rehearing, but is denied with respect to our making any modification to the Decision. No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED 5 Eli also states that “[t]he vessel support structure and the rotating portion of the device are optionally and preferably made of a . . . wire frame.” Eli ¶ 15; see also Decision 15.