Ex Parte Kutluhan

Patent Trial and Appeal Board

Oct 19, 2017

11720719 (P.T.A.B. Oct. 19, 2017)

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.
11/720,719 06/01/2007 Ahmet Kutluhan PHDLl 169-001 2097
26948 7590
VENJURIS, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
docketing @ venj uris. com
vclmdocket @ venj uris. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMET KUTLUHAN
Appeal 2015-007710
Application 11/720,7191
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ahmet Kutluhan (“Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated
Dec. 30, 2013, hereafter “Final Act.”) rejecting claims 1, 2, 4, 6, 7, 13,
and 15—28.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
1 According to Appellant’s Appeal Brief (hereafter “Br.”), filed
April 2, 2015, the inventor, Ahmet Kutluhan, is the real party in
interest. Br. 2.
2 Claims 3, 5, 8—12, and 14 are canceled. Br. 18—19 (Claims App.).
Appeal 2015-007710
Application 11/720,719
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s “invention relates to a mastoid antral ventilation
tube that aerates and drains the middle ear by the route of mastoid
antrum.” Spec. 1,11. 4—5.
Claims 1,17, and 27 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A mastoid antral ventilation tube comprising: an
external cannula having a tab section, a neck section, a
bend section and a shaft section, and an inner cannula
having a thin and narrow canal with a syringe-adapted tip
which remains outside an external ear canal for drug
administrations and a drainage canal wherein the drainage
canal allows for drainage and aspiration of mastoid antrum
and wherein the thin and narrow canal and the drainage
canal are adjacent to one another.
REJECTION
I. The Examiner rejected claims 1, 2, 6, 7, 13, 15—18, 20-
24, and 27 under 35 U.S.C. § 102(b) as being anticipated
by Baran (US 5,964,223, issued Oct. 12, 1999, hereafter
“Baran ’223”).
II. The Examiner rejected claims 4 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Baran ’223 and
Baran (US 5,642,730, issued July 1, 1997, hereafter
“Baran ’730”).
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Appeal 2015-007710
Application 11/720,719
III. The Examiner rejected claims 25, 26, and 28 under 35
U.S.C. § 103(a) as being unpatentable over Baran ’223.
ANALYSIS
Rejection I
The Examiner finds that Baran ’223 discloses a device including, inter
alia, an external cannula 10 having tab, neck, bend, and shaft portions, and
an inner cannula 20 having a thin and narrow canal 33 with a syringe
adapted tip 35 and a drainage canal 34. Final Act. 5—6 (citing Baran ’223,
Figs. 1, 2a; Appendix of Non-Final Action, dated June 6, 2013).
Appellant argues that Baran ’223 fails to disclose that tip 35 of lumen
33 connects to a syringe or that it is adapted to fit a syringe. Br. 12.
In response, the Examiner takes the position that Appellant’s
argument “relates to the intended use of the device.” Examiner’s Answer 2
(dated June 2, 2015, hereafter “Ans.”). According to the Examiner, “tip 35
is capable of receiving a syringe because there is an opening” and “[i]f the
prior art structure is capable of performing the intended use, then it meets
the claim.” Id. at 3.
Our reviewing court has stated that the claim term “adapted to” “is
frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ...
[a] 1 though the phrase can also mean ‘capable of or ‘suitable for.’”
In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012)). In this case, the Examiner has not explained adequately how tip 35
of Baran ’223 is “made to,” “designed to,” or “configured to” receive or fit a
syringe. Baran ’223 specifically discloses gas orifice 36 of pressurized gas
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Appeal 2015-007710
Application 11/720,719
lumen 34 directing pressurized gas across liquid orifice 35 to nebulize liquid
medication flowing through liquid lumen 33. Baran ’223, col. 6,1. 64—col.
7,1. 7, Fig. 2A. Merely because liquid orifice 35 constitutes an opening does
not mean that it is adapted to receive or fit a syringe, specifically, as opposed
to any other structure fitted to or received by an opening.
As liquid orifice 35 in the device of Baran ’223 allows liquid
medicine to exit and interact with pressurized gas from gas orifice 36 to
nebulize the liquid medicine, it is not clear how liquid orifice 35 would be
adapted to receive or fit a syringe, which may interfere with the nebulizing
process of the liquid medicine. Although we appreciate that liquid orifice 35
of Baran ’223 is adapted to receive or fit a porous or sponge-like plug, that
does not mean it is adapted to also receive or fit a syringe, as such a
determination requires speculation on the Examiner’s part. See id., col. 7,11.
8—12. A plug that allows liquid medicine to flow through has a different
structure than a syringe, and the Examiner has not explained adequately how
liquid orifice 35 Baran ’223 is capable of or is configured to receive a
syringe merely because it is capable of or is configured to receive a plug.
Accordingly, we agree with Appellant that liquid orifice 35 of Baran ’223
does not constitute a “syringe-adapted-tip,” as called for by each of
independent claims 1, 17, and 27. See Br. 12.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1, 2, 6, 7, 13, 15—18, 20—24, and 27 under 35 U.S.C.
§ 102(b) as anticipated by Baran ’223.
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Appeal 2015-007710
Application 11/720,719
Rejections II and III
The Examiner’s modification of Baran ’223 and reliance on the
disclosure of Baran ’730 does not remedy the deficiencies of Baran ’223
discussed supra. See Final Act. 7. Therefore, for the same reasons as
discussed above, we also do not sustain the rejections under 35 U.S.C.
§ 103(a) of claims 4 and 19 as unpatentable over Baran ’223 and Baran ’730
and of claims 25, 26, and 28 as unpatentable over Baran ’223.
SUMMARY
The Examiner’s decision to reject claims 1, 2, 4, 6, 7, 13, and 15—28
under 35 U.S.C. §§ 102 and 103 is reversed.
REVERSED
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