Ex Parte Fortier

Patent Trial and Appeal Board

May 31, 2016

11345336 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111345,336 0210212006
104919 7590 06/02/2016
Fay Kaplun & Marcin, LLP -- BSC
150 Broadway, suite 702
New York, NY 10038
FIRST NAMED INVENTOR
Richard Fortier
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10121117602 8935
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
okaplun@fkmiplaw.com
fkmiplaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD FOR TIER
Appeal2014-002571 1
Application 11/345,3362
Technology Center 3700
Before ROBERT L. KINDER, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 21-31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Sept. 23, 2013) and Reply Br. ("Reply Br.," filed Dec. 11, 2013), and the
Examiner's Answer ("Ans.," mailed Oct. 17, 2013) and Final Office Action
("Final Act.," mailed Apr. 23, 2013).
2 Appellant identifies Boston Scientific Scimed, Inc. as the real party in
interest. App. Br. 2.
Appeal2014-002571
Application 11/345,336
CLAHvIED TI'-JVENTION
Appellant's claimed invention "relates generally to the field of tissue
ligation, and more particularly[,] to an improved distal end for a device for
dispensing ligating bands." Spec. i-f 2.
Claim 21, reproduced below, is representative of the subject matter on
appeal:
21. A ligating band dispensing device comprising:
(a) a supporting structure comprising a substantially
cylindrical support surface adapted to receive a plurality of
ligating bands and a trigger line on an outer surface thereof,
wherein the support surface has a proximal end and a distal end
and a channel extending axially therethrough from the distal end
to the proximal end, wherein the support surface includes at least
one primary ridge maintaining the plurality of ligating bands in
a position remote from the trigger line, and wherein the at least
one primary ridge includes a plurality of transverse ridges on an
outer face; and
(b) a plurality of ligating bands stretched onto the support
surface and adapted to be deployed off of the distal end of the
support surface;
wherein the ligating bands and the transverse ridges on the
support surface are dimensioned to induce a rolling action, the
width of the bands when stretched on the support surface being
substantially the same as the pitch of the transverse ridges on the
support surface and each band abutting against the transverse
ridge that is adjacent to the band on the distal side of the band.
REJECTION
Claims 21-31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fortier (US 5,913,865, iss. June 22, 1999), Ahmed (US 5,320,630, iss.
June 14, 1994 ), and Bauriedel (US 1,822, 194, iss. Sept. 8, 1931 ).
2
Appeal2014-002571
Application 11/345,336
DISCUSSION
Independent claim 21 and dependent claims 22-28
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claim 21under35 U.S.C. § 103(a) because neither Ahmed nor
Bauriedel, on which the Examiner relies, teaches or suggests "the width of
the bands when stretched on the support surface [are] substantially the same
as the pitch of the transverse ridges on the support surface," as recited in
claim 21. App. Br. 5-8; see also Reply Br. 2-5. The Examiner finds that
Ahmed and Bauriedel each disclose the argued limitation. Final Act. 5
(citing Ahmed, Figs. 11, 13; Bauriedel, [1,] 11. 41--44 and 83-85, and Figs. 1,
2).
Appellant's Specification at Figure 6 depicts a groove profile of a
prior art ligating band dispensing device:
FIG. 6 PRIOR ART
Figure 6 shows pitch P 1 of grooves in a prior art device having a pitch of
0.039". The Specification describes that the prior art ligating band
dispensing device is used with bands having a (reduced) width of 0.05"
when stretched into the housing, which is "substantially greater" than the
pitch of 0.039". Spec. i-f 23. In contrast, the Specification describes an
3
Appeal2014-002571
Application 11/345,336
exemplary embodiment in which the device a groove pitch of 0.06" and the
bands having a width of 0.06" when stretched onto the housing. Id. i-f 25.
The Specification describes the width of the bands when stretched and the
pitch as being "substantially the same as the pitch of the transverse grooves."
Id.
The Examiner modifies Figure 13 of Ahmed as follows:
!iCM.
I
ti
~
Final Act. 2. Figure 13 of Ahmed, as modified by the Examiner,
superimposes vertical dashed lines on a fragmentary view of a tubular
assembly. The tubular assembly includes an elastic ring 50a and a plurality
of annular ridges 84, which define grooves 85. Id. col. 8, 11. 4--12.
From the modified Figure 13, the Examiner estimates that "[t ]here is
less than a 10% difference between the width of the band and the width of
the ridges," and the Examiner, thus, concludes "the widths are 'substantially
the same."' Final Act. 2.
However, we agree with Appellant that a conclusion regarding the
dimensions of the band and pitch cannot be made based on a visual estimate
from Figure 13 of Ahmed. See In re Wright, 569 F.2d 1124, 1127 (CCPA
1977) ("Absent any written description in the specification of quantitative
4
Appeal2014-002571
Application 11/345,336
values, arguments based on measurement of a drawing are of little value.").
Here, we do not see, and the Examiner does not cite, any portion of Ahmed
indicating that Figure 13 is drawn to scale. Moreover, we agree with
Appellant that even if Figure 13 of Ahmed were to scale, the width of the
band appears larger than the pitch of the ridges, not "substantially the same,"
as recited in claim 21, as the phrase would be understood by one of ordinary
skill in the art in light of the Specification. See, e.g., Spec. i-fi-123, 25.
In response to Appellant's arguments, the Examiner additionally cites
a portion of Ahmed that describes groove 85 as being "adapted to" receive
elastic ring 50a, as disclosing the argued limitation. Ans. 5---6 (citing
Ahmed, col. 9, 11. 28-37). 3 However, the cited portion of Ahmed does not
describe the width of the band relative to pitch.
The Examiner additionally finds that Bauriedel "teaches ridges
intended to make a band roll, wherein the pitch of the ridges are
substantially the same as the pitch of the band (Figs 1-2, Lines 41--44 and
83-85)." Final Act. 5. Bauriedel relates to a spinning pot for producing
artificial silk. Bauriedel 1, 11. 1-8. Spinning pot 1 is carried by a plate 2
mounted on a shaft 3 of a motor 4. Id. 1, 11. 71-73. A rim of the plate 2 has
two grooves 6 and 7 for an indiarubber ring 8, and between the grooves there
is a swelling 9. Id. 1, 11. 76-82. When the spinning pot is pushed over the
plate 2, the ring rolls out of groove 6 over swell 9 and into groove 7. Id. 1,
11. 83-86. However, the cited portion of Bauriedel does not teach or suggest
3 The Examiner cites Ahmed at column 9, lines 28-37 as disclosing a
plurality of annular ridges defining a groove 85, which is "adapted to receive
an elastic ring 50a therein." Ans. 5-6 (emphasis omitted). However, the
language quoted by the Examiner appears at column 8, lines 7-12.
5
Appeal2014-002571
Application 11/345,336
that the width of the ring is substantially the same as the pitch of grooves 6
and 7.
To the extent the Examiner finds that a visual inspection or
measurement from Figures 1 and 2 of Bauriedel teaches or suggests the
argued limitation, Figures 1 and 2 are not indicated as being drawn to scale
and, as such, a conclusion regarding the relative dimensions of the band and
pitch cannot be made from the drawings. Further, even if Figures 1 and 2
were drawn to scale, a visual inspection suggests that the pitch of grooves 6
and 7 is substantially greater than the width of ring 8, not substantially the
same. See Bauriedel, Figs. 1 and 2.
Here, neither the cited portions of Ahmed and Bauriedel nor the
Examiner's analysis adequately explain how the proposed combination of art
teaches or suggests that "the width of the bands when stretched on the
support surface [are] substantially the same as the pitch of the transverse
ridges on the support surface," as recited in claim 21. Accordingly, we
determine that the Examiner has failed to establish a prima facie showing of
obviousness.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 21 and dependent claims 22-28 under 35 U.S.C.
§ 103(a).
Independent claim 29 and dependent claims 30 and 31
Independent claim 29 includes language substantially similar to the
language of claim 21 and stands rejected based on the same rationale applied
in rejecting claim 21. Final Act. 4--5. Therefore, we do not sustain the
Examiner's rejection of independent claim 29 and dependent claims 30 and
6
Appeal2014-002571
Application 11/345,336
31under35 U.S.C. § 103(a) for the same reasons set forth above with
respect to claim 21.
DECISION
The Examiner's rejection of claims 21-31 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
7