Ex Parte Grum-Schwensen

Patent Trial and Appeal Board

Jun 28, 2016

13256471 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/256,471 10/12/2011 Christen Grum-Schwensen
97056 7590 06/30/2016
Levenfeld Pearlstein, LLC (Hollister Incorporated)
2 N. LaSalle St.
Suite 1300
Chicago, IL 60602
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.
368 (37150-92615) 2645
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTEN GRUM-SCHWENSEN
Appeal2014-006103
Application 13/256,471
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Decision rejecting claims 1-7 .1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE and ENTER A NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submits the real party in interest is Hollister Incorporated. Br. 3.
Appeal2014-006103
Application 13/256,471
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An ostomy appliance comprising an adhesive wafer
for one of directly or indirectly securing an ostomy pouch to a
person's skin, wherein the wafer comprises a starter hole
surrounded by a plurality of cutting guidelines for enabling the
person to cut the hole into a desired aperture size, and wherein
the cutting guidelines substantially converge with the starter hole
at an upper region of the hole.
REJECTION
Claims 1-7 are rejected under 35 U.S.C. § 102(b) as anticipated by
Falconer (US 7,160,275 B2, iss. Jan. 9, 2007).
DISCUSSION
New Ground of Rejection -Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-7 under 35 U.S.C. § 112, second paragraph, as indefinite for failure to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
"As the statutory language of 'particular[ity]' and 'distinct[ness]'
indicates, claims are required to be cast in clear - as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir.
2014 ). "It is the applicants' burden to precisely define the invention, not the
PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Independent claims 1 and 7 both recite that "the cutting guidelines
substantially converge with the starter hole at an upper region of the hole."
For the reasons explained below, we find this phrase to be indefinite.
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Application 13/256,471
Appellant submits "the term 'converge' should be understood that the
annular cutting guidelines come close together to each other or to the hole at
one region but do not necessarily unite in a common point." Br. 7 (citing
Spec. 2, 11. 1-3). The Specification discloses "[a]s shown in figures 1 and 2,
the cutting guidelines 16 essentially converge with the starter hole 17 at the
top of the hole 17, so that the cutting guidelines 16 substantially converge
with the starter hole 17 at a radial corresponding to the longitudinal direction
of the pouch." Spec. 5, 11. 5-8 (emphasis added). This disclosure relating to
"substantially converge" is inconsistent with Appellant's definition of
"converge" and the embodiment shown in Figure 1 of Appellant's
application. Appellant indicates that the claim limitation of "the cutting
guidelines substantially converge with the starter hole at an upper region of
the hole" is supported by Figures 1-3 of Appellant's application. Br. 3.
Although the cutting guidelines in these Figures may be coming closer to
each other in the area adjacent to the upper region of starter hole 17, the
cutting guidelines (20, 30, 40, 50 in Figure 1) are each incrementally further
away, or diverging, from the upper region of starter hole 17 in the outward
radial direction corresponding to the longitudinal direction of the pouch.
Spec., Fig. 1. This is in contrast with the claim language requiring
substantial convergence with "an upper region of the [starter] hole." In
addition, none of the cutting guidelines intersect or are disposed within
starter hole 17. Id.
The claimed phrase "wherein the cutting guidelines substantially
converge with the starter hole at an upper region of the hole" is indefinite, in
light of the Specification for two reasons. First, the recitation that the
cutting guidelines are substantially converging "with the starter hole at an
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Appeal2014-006103
Application 13/256,471
upper region of the [starter] hole" is inconsistent with Appellant's Figure 1,
which shows the cutting guidelines diverging from the upper region of the
starter hole in the outward radial direction. Therefore, the scope of this
claim language is unclear, when read in light of Appellant's Specification.
In addition, claims 1 and 7 recite convergence of the cutting guidelines with
the starter hole, "at an upper region of the hole" not outside of the starter
hole adjacent its upper-most location in the wafer. This claim language is
also unclear, in light of Appellant's disclosure. Therefore, we enter a new
ground of rejection against claims 1-7 under 35 U.S.C. § 112, second
paragraph, as indefinite for failure to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
Anticipation - Falconer
The Examiner finds that Falconer discloses all the limitations of
independent claims 1 and 7. Final Act. 4. Appellant contends that Falconer
does not anticipate claims 1 and 7 because the cutting guidelines in Falconer
are concentric and "there is no one single region at which the guidelines
converge or come together with the starter hole." Br. 9. The Examiner
responds that Falconer's guidelines substantially converge "by intersecting
as shown in Fig. 4 of Falconer ... , wherein the intersection of the cutting
lines occurs in an upper region of the starter hole." Ans. 7. For the
following reasons, we do not sustain the rejection.
Claims 1 and 7 require that the "cutting guidelines substantially
converge with the starter hole." The Examiner relies on Falconer's
disclosure that circular guidelines 50a intersect with oval shaped guidelines
50b at a number of points. Falconer, Fig. 4. However, this is a convergence
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Appeal2014-006103
Application 13/256,471
between cutting guidelines 50a and 50b. None of Falconer's cutting
guidelines either intersect or come close together with the starter hole (center
hole in Figure 4) at any point, as Falconer's cutting guidelines are concentric
with the starter hole. Id. The Examiner's finding that Falconer discloses
cutting guidelines that "substantially converge with the starter hole" is not
supported by a preponderance of the evidence. Consequently, we do not
sustain the rejection, under 35 U.S.C. § 102(b), of independent claims 1 and
7, and claims 2---6 which are dependent on claim 1.
DECISION
The Examiner's decision rejecting claims 1-7 is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1-7 under 35
U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R §
41.50(b).
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise one of
the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the prosecution will be remanded
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Appeal2014-006103
Application 13/256,471
to the Examiner. The new ground of rejection is binding
upon the Examiner unless an amendment or new evidence
not previously of Record is made which, in the opinion of
the Examiner, overcomes the new ground of rejection
designated in this decision. Should the Examiner reject the
claims, Appellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
REVERSED; 37 C.F.R. § 41.50(b)
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