Ex Parte Finkielsztein et alDownload PDFPatent Trial and Appeal BoardNov 6, 201711092369 (P.T.A.B. Nov. 6, 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. 11/092,369 03/29/2005 Sergio Finkielsztein 019929-0020 7373 21125 7590 11/08/2017 NUTTER MCCLENNEN & FISH LLP SEAPORT WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604 EXAMINER TYSON, MELANIE RUANO ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 11/08/2017 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 SERGIO FINKIELSZTEIN, MARCO FINKIELSZTEIN, and JOHNN. VOURNAKIS Appeal 2015-007914 Application 11/092,369 Technology Center 3700 Before LYNNE H. BROWNE, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1—6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Benz (US 2003/0028214 Al, pub. Feb. 6, 2003) and Beto (US 2006/0095073 Al, pub. May 4, 2006). We have jurisdiction under 35 U.S.C. § 6(b). Appellants’ representative presented oral arguments on October 24, 2017. We affirm-in-part. Appeal 2015-007914 Application 11/092,369 CLAIMED SUBJECT MATTER The claims are directed to an apparatus for a manual vascular compression. Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A handheld vascular compression apparatus for applying pressure to tissue in proximity to a puncture site in a body surface and a blood vessel; the handheld vascular compression apparatus comprising: (a) a handle for manually operating the handheld vascular compression apparatus; (b) a shaft extending generally perpendicularly from the handle; and (c) a pad having a top side and a bottom side and connected on the top side to a distal end of the shaft wherein the pad, when viewed from the side, is shaped as an oval knob and has a convex bottom side, which makes contact with the body surface; wherein the apparatus is made of mostly rigid material that is sturdy enough to withstand the application of downward pressure sufficient to cause a complete occlusion of an artery; wherein the handle and shaft are formed as a single member; and wherein the pad is rigidly connected to the shaft such that the handheld vascular compression apparatus is operated by manually moving the handle to thereby rock the pad along the body surface in a first direction to allow a catheter to be removed, and in a second opposed direction to provide compression along an angle of the catheter track from the body surface to the blood vessel. DISCUSSION Appellants argue claims 1—3, 5, 6, 8, and 9 together.1 See Appeal Br. 2—6. We select independent claim 1 as the representative claim, and claims 1 The requirement that the shaft be connected to the handle at a point along the long axis that is not centered on the axis appears in claim 4, not claim 1. Accordingly, we address this argument separately infra. 2 Appeal 2015-007914 Application 11/092,369 2, 3, 5, 6, 8, and 9 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address claim 4, which is argued separately, infra. Claims 1—3, 5, 6, 8, and 9 The Examiner finds that “Benz discloses a handheld compression device (10) comprising a handle (11), a shaft (12) extending generally perpendicularly from the handle, and a pad (13) having a top side connected to the shaft (for example, see Figure 1).” Final Act. 3. The Examiner further finds that “the pad has a top side that has surfaces . . . formed to receive fingers, and the device is configured to allow a user to rock the pad (for example, see Figure 4, arrows A, B, and C, and Figure 7).” Id. However, in the following sentence, the Examiner determines that “Benz fails to disclose the pad is shaped as an oval knob and has a convex bottom side.” Id. The Examiner further finds that Beto “discloses a compression device (see entire document) comprising a shaft (40, 42) and a pad (44).” Id. at 4. The Examiner finds that “Benz teaches the pad is shaped as an oval knob and has a convex bottom side (for example, see Figure 4).” Id. The Examiner’s determination that Benz does not disclose a pad shaped as an oval having a convex bottom is correct. See Benz, Fig. I.2 Further, Beto’s Figure 4, not Benz’ Figure 4, illustrates arrows A, B, and C, and Beto’s Figure 7, not Benz’ Figure 7, has a convex bottom. Thus, the fact findings in the rejection appear to contain two typographical errors which refer to Benz, rather than Beto. Accordingly, we understand the rejection to rely on Beto to meet the limitations pertaining to the shape of the pad. 2 We note that Benz Figure 4 illustrates an alternative embodiment of Benz’s handle 17, not its pad 18. 3 Appeal 2015-007914 Application 11/092,369 Turning to the Examiner’s articulated reasoning for the proposed modification, the Examiner reasons that Beto’s configuration allows the pad “to effectively engage an arterial wall thus providing multiple points of contact and dispersing the force supplied by the compression device over a greater surface area.” Final Act. 4. (citing Beto 129). Based on this reasoning, the Examiner determines that it would have been obvious “to provide Benz’ pad as taught by Beto. Doing so would provide the same advantages.” Id. Thus, we understand the proposed modification to substitute Beto’s pad for Benz’ pad such that the resulting device would have an oval shaped pad with a convex bottom. Appellants contend that Benz’ pad is not configured for rocking. See Appeal Br. 3 (quoting Final Act. 4); see also Reply Br. 4—6 (attacking Benz as lacking the features which configure a pad for rocking). This argument attacks Benz separately and does not address the combined teachings of Benz and Beto. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, as discussed supra, the rejection relies upon Beto, not Benz, for the limitations pertaining to the shape of the pad, which are the features which allow rocking. Appellants do not explain why the modified device would not meet the limitation at issue. Thus, Appellants do not apprise us of error. Appellants further contend that “Beto fails to fill in the structural or functional features that are missing from Benz.” Appeal Br. 3; see also Reply Br. 7—10. In support of this contention, Appellants argue that “Beto is not hand held, but rather a fixed machine that is intended to lock into position, not rock.'1'’ Id. However, this argument attacks Beto separately and 4 Appeal 2015-007914 Application 11/092,369 again does not address the combined teachings of Benz and Beto. Moreover, we note that the rejection does not rely on Beto’s teachings of how the pad is connected to the handle. Rather, the rejection merely contemplates substituting Beto’s pad for Benz’s pad as discussed supra. Thus, Appellants do not apprise us of error. Next, Appellants present a table comparing the various features of Benz and Beto. See Appeal Br. 4. This table is not responsive to the rejection as articulated by the Examiner as the rejection does not contemplate bodily incorporating Beto’s features into Benz’s device. Rather, as discussed supra, the rejection merely relies on Beto’s teachings pertaining to the shape of its pad. Furthermore, to the extent that Appellants are relying on the discussion in this table as the basis for the new arguments raised for the first time in the Reply Brief discussed infra, we do not understand this table to raise these arguments or allude to such arguments, such that the arguments in the Reply Brief are merely further explanation of arguments raised in the Appeal Brief. Then, Appellants contend that the combination of Benz and Beto fails to teach or suggest a device that “is operated by manually moving the handle to thereby rock the pad along the body surface in a first direction to allow a catheter to be removed, and in a second opposed direction to provide compression along an angle of the catheter track from the body surface to the blood vessel.” Appeal Br. 5. In support of this contention, Appellants argue that “[tjhis failure occurs because the structural elements of claim 1 are missing or are prevented from operating in the intended matter by the locking features of Beto.” Id. at 6. However, as discussed supra, the rejection does not propose modifying Benz to include Beto’s locking features. Rather, the rejection 5 Appeal 2015-007914 Application 11/092,369 merely proposes substituting Beto’s pad for Benz’s pad. Appellants do not explain why the proposed combination would not result in a device capable of being operated in the manner claimed. Thus, Appellants do not apprise us of error. Finally, Appellants contend that the rationale for combining the references fails. Appeal Br. 6. In support of this contention, Appellants argue that the articulated rationale is not a rationale to allow rocking. See id. Although we agree with Appellants that the Examiner’s articulated rationale is not directed to rocking, this is not indicative of error. We understand the pad of the instant invention to be “configured for rocking” due to its convex bottom. See Spec. 117. As admitted by Appellants (Appeal Br. 6), Beto discloses a pad having a convex region on its bottom. Appellants do not explain why Beto’s convex region on its bottom is not configured for rocking, and Appellants have not apprised us of error in the Examiner’s reasoning for the replacement of Benz’s pad with Beto’s pad. Such replacement would result in a device having a pad with a convex region on its bottom which, in accordance with Appellants’ Specification, is the feature that allows for rocking. Thus, Appellants do not apprise us of error. In the Reply Brief, for the first time and not in response to a position raised in the Answer, Appellants present new arguments. For example, Appellants for the first time argue that Beto’s pad does not have an oval shape with a convex bottom. Reply Br. 7. Other new arguments include an argument that the Examiner’s claim construction is in error. Id. at 10. In accordance with 37 C.F.R. § 41.41 (b)(2), lacking a showing of good cause, we do not consider the new arguments raised in the Reply Brief which are not responsive to an argument raised in the Answer. 6 Appeal 2015-007914 Application 11/092,369 For these reasons, we sustain the Examiner’s decision rejecting claim 1, and claims 2, 3, 5, 6, 8, and 9, which fall therewith. Claim 4 The Examiner determines that Benz fails to disclose a shaft “connected to the handle at a point along the long axis that is not centered on the axis.” Final Act. 4. The Examiner finds that Beto discloses a shaft “connected to the handle at a point along the long axis that is not centered on the axis.” Id. Appellants allege that the articulated rationale “is not a reason to provide an off-center handle orientation.” Appeal Br. 6. We agree. The Examiner does not sufficiently explain why one skilled in the art would modify Benz to use Beto’s handle positioning. For this reason, we do not sustain the Examiner’s decision rejecting claim 4. DECISION The Examiner’s rejection of claims 1—3, 5, 6, 8, and 9 is AFFIRMED. The Examiner’s rejection of claim 4 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation