Ex Parte Gonzales et alDownload PDFPatent Trial and Appeal BoardSep 21, 201612794321 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121794,321 06/04/2010 32425 7590 09/23/2016 NORTON ROSE FULBRIGHT US LLP 98 SAN JACINTO BOULEVARD SUITE 1100 AUSTIN, TX 78701-4255 FIRST NAMED INVENTOR Donald A. Gonzales 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. ENTR.P0032US/l 100121 l 8559 EXAMINER RODJOM, KATHERINE MARIE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): aoipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD A. GONZALES, FRED B. DINGER III, PRASAD NALLURI, JEFFREY S. WRANA, GABRIELE G. NIEDERAUER, and MICHIE. GARRISON Appeal2014-007398 Application 12/794,321 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3-15, and 18-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2014-007398 Application 12/794,321 CLAIMED SUBJECT MATTER The claims are directed to a device for providing therapy to an anatomical structure. Claim 1, the only independent claim, is reproduced below, and it illustrates the claimed subject matter: 1. An insertion device configured for inserting a therapeutic component comprising an inflatable balloon coupled to a sleeve into a paranasal sinus of a patient's nose, the insertion device compnsmg: a shaft comprising a proximal end and a distal end, the shaft configured to removably receive the sleeve of the therapeutic component; an articulating portion comprising a plurality of jointed articulating segments proximal to the distal end of the shaft, wherein the inflatable balloon is disposed between the articulating portion and the distal end of the shaft during use; a handle portion proximal to the proximal end of the shaft; and a positioning member configured to move the articulating portion from a first position adapted for insertion into the nose to a second position adapted for insertion into the paranasal sinus. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mikus Seraj Kelley Thompson US 2002/0087152 Al us 6,743,227 us 6,836,687 US 2007 /0244473 Al REJECTIONS The Examiner made the following rejections: July 4, 2002 June 1, 2004 Dec. 28, 2004 Oct. 18, 2007 Claims 1, 3-15, and 18-21 are provisionally rejected based on non- statutory obviousness-type double patenting. 2 Appeal2014-007398 Application 12/794,321 Claims 1, 3-8, 18-21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Thompson. Claims 1, 3-11, 14, 15, and 18-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kelley and Thompson Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kelley, Thompson, and Mikus. 1 ANALYSIS Provisional Double Patenting Rejection The provisional double patenting rejection is not argued by Appellants, and we therefore summarily affirm that rejection. Anticipation by Thompson Appellants argue claims 1, 3-8, and 18-21 as a group. Appeal Br. 5- 9. We select claim 1 as representative, and claims 3-8 and 18-21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that Thompson does not anticipate because his device is for an entirely different purpose. Appeal Br. 5. Our reviewing court has held that a statement of intended use in an apparatus claim cannot distinguish over a prior art apparatus that discloses all of the recited limitations and is capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The "configured for 1 The Examiner has withdrawn the rejection of claims 9-11, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Thompson and Seraj. Ans. 2. 3 Appeal2014-007398 Application 12/794,321 inserting" language in claim 1 recites an intended use and does not serve to distinguish the claimed subject matter from another device capable of the same use. Moreover, the reference relied upon by the Examiner, Thompson, specifically states its device is for the "guidance of ... medical devices into a body" (Thompson i-f 3), and describes use in ear, nose and throat surgery (Id. i-f 15). Therefore, even if we were to consider intended use, we find that the alleged difference between Thompson's and Appellants' intended use does not provide a basis for distinguishing Thompson. Likewise, Appellants' argument that Thompson does not show use of his device with a balloon is unavailing. Appeal Br. 6-8. We concur with the Examiner's finding that a balloon is not affirmatively claimed. Final Act. 8-9. According to claim 1, the "insertion device is configured for inserting ... an inflatable balloon," but the claim does not specifically recite the balloon itself. Indeed, the balloon is only in place "between the articulating portion and the distal end of the shaft during use." Claim 1 (emphasis added.) Thus the balloon is not part of the insertion device of claim 1. See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Therefore, the fact that Thompson does not show a balloon does not persuade us that the Examiner erred. Appellants next argue that Thompson does not show an inflatable balloon disposed between the articulating portion and the distal end of the shaft during use. Appeal Br. 6. As set forth above, we agree with the Examiner that the balloon is not positively recited in the claim. Our review of the Specification and drawings reveals that the Appellants' balloon 130 is carried by the last (most distal) link (unnumbered but shown, e.g., in Figures 4 Appeal2014-007398 Application 12/794,321 1 F and 1 G), and, beyond being the last, that link differs from the others in the articulating portion by being smaller in diameter and longer. In the embodiment illustrated in Figures 11 D-11 F, the distal link (unnumbered) is virtually the same diameter as the links 1133, and there is no description of how the distal link might be "configured" for inserting a balloon. See, e.g., i-f 175-176. Thus, based on our review of Appellants' Specification, we find no substantial description of structural configuration of the link on which the balloon is disposed. In contrast, Thompson specifically discloses that the links of his flexible section may be of different lengths and sizes. Thompson i-f 69. As the Examiner found, the structural limitation imposed on the shaft by the limitation "wherein the inflatable balloon is disposed between the articulating portion and the distal end of the shaft during use" "requires that the shaft have some length between an articulating portion and distal end [so] that a balloon may be located." Final Act. 9. Thompson discloses a space for that purpose and that, for example, the final link could be varied in size or length. Thompson i-f 69. Appellants' argument that there is no length between the articulating portion and the distal end where a balloon may be located is not persuasive in view of the disclosure of Thompson showing a link where a balloon would fit, and in any event, Thompson's final link 20 may be elongated to accommodate a balloon of the size shown in Appellants' Specification (but not required by Appellants' claims). Appellants argue, in their Reply Brief, that "configured to" requires a device that is configured for inserting an inflatable balloon into a patient's paranasal sinus. Reply Br. 3. Thompson, on the other hand, specifically states his device is intended for "ear, nose, and throat" "surgical 5 Appeal2014-007398 Application 12/794,321 procedures." Thompson il I 5. Because Thompson meets both the intended use and the structural requirements of claim 1, we are not persuaded of Examiner error. Appellants then argue that the Examiner was picking and choosing parts of a reference, rather than considering the reference as a whole. Reply Br. 5. The case law cited relates to obviousness rejections under§ 103, and not to§ 102 anticipation rejections such as that at hand. A reference may be from an entirely different field of endeavor than that of the claimed invention or may be directed to an entirely different problem from the one addressed by the inventor, yet the reference will still anticipate if it explicitly or inherently discloses each and every limitation recited in the claim. State Contracting &Eng'g Corp. v. CondotteAm., Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003). Accordingly, Appellants' argument does not persuade us the Examiner erred. Finally, Appellants argue that the Examiner shifted the burden of proof onto Appellants to establish patentability, citing the Examiner's statement (Final Act. 9), "[Appellants have] failed to provide evidence that Thompson is incapable of being used with a balloon catheter." Appeal Br. 8-9. Appellants assert this was error. We disagree. Once the Examiner has provided notice of the reason why a patent applicant is not entitled to a patent on the claim scope he seeks, the burden of going forward (but not the burden of persuasion) shifts to the applicant. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (Precedential); see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) ("[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the 6 Appeal2014-007398 Application 12/794,321 prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on."). It was not error for the Examiner to note the kind of evidence Appellants might have offered but did not. Obvious over Kelley as modified by Thompson Claims 1, 3-11, 14, 15, and 18-21 have been rejected over Kelley as modified by Thompson. Final Act. 6-7. Appellants argue these claims as a group (Appeal Br. 12-13), and we select claim 1 as representative. Claims 3-11, 14, 15, and 18-21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants first argue that Kelley does not have an "articulatable portion,"2 but they do not develop this position or support it with argument. Appeal Br. 12; Reply Br. 7-8. The Examiner finds that "Kelley fails to teach the articulating portion comprises a plurality of joined articulating segments." Final Act. 6. The Examiner cites Thompson for its disclosure of "an insertion device (Fig[.] 1) comprising a shaft (12) and articulating portion comprising a plurality of jointed articulating segments (24, 26) proximal to the distal end (20/30) of the shaft." Final Act. 6. The Examiner concluded it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device of Kelley such that the articulating portion comprised a plurality of jointed, articulating segments as taught by Thompson. Final Act. 6-7. We are not persuaded by 2 Claim 1 includes the limitation "an articulating portion"; in co-pending Appeal 2014-007 407 the corresponding limitation is "an articulatable shaft." (Emphasis added.) We give no weight to the difference between these two phrases in deciding the present appeal. 7 Appeal2014-007398 Application 12/794,321 Appellants' argument, because it does not address the Examiner's proposed combination of references. Appellants next argue that neither Kelley nor Thompson discloses a length between the articulating portion and the distal end of the shaft where an inflatable balloon could be disposed during use. Appeal Br. 13; Reply Br. 8. As discussed above, we find that Thompson meets the structural limitations imposed by the phrase in claim 1 "wherein the inflatable balloon is disposed between the articulating portion and the distal end of the shaft during use." Further, responding to Appellants' argument, the Examiner points out (Ans. 5) that Kelley, Figure 5, shows a balloon mounted on a distal portion of the device which is also curved. Therefore, both Kelley and Thompson meet the structural requirements of claim 1, and we are not persuaded by Appellants' argument alleging that neither Kelley nor Thompson teaches a distal end of the shaft between the articulating portion and the distal end of the shaft on which a balloon can be mounted during use. The Examiner's Answer notes that there is no requirement in claim 1 that the device of claim 1 mount a balloon on a single link of the articulating portion and that the Appellant "fails to claim the balloon is located entirely distal of the distalmost joint or jointed segment or define the proximal and distal end of the articulating portion such that it does not read on a portion of the curved/articulatable shaft." Answer 5. Appellants' argument that "there is no portion of [Kelley's deflection mechanism] that is operated independently of the remainder" is not directed to any limitation in claim 1. Reply Br. 9. There is no requirement in claim 1 that the balloon be disposed on an independently operable portion of the device. In fact, as pointed out 8 Appeal2014-007398 Application 12/794,321 above, the only difference between the distal-most segment of Appellants' device and the proximal segments of the device are its length and size, both of which are described in Thompson as selectable according to need. Thompson i-f 69. In view of the foregoing we are not persuaded the Examiner erred. Obvious over Kelley as modified by Thompson and Mikus Appellants present no argument concerning the rejection of claims 12 and 13, and this rejection is summarily affirmed. DECISION For the above reasons, the Examiner's rejection of claims 1, 3-15, and 18-21 is affirmed. 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 9 Copy with citationCopy as parenthetical citation