Ex Parte Miller

Patent Trial and Appeal Board

May 9, 2016

12907296 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/907,296 10/19/2010
50855 7590 05/11/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Jeffrey Miller
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.
H-US-02015 (203-6779 I) 1775
EXAMINER
GRAY, LINDA LAMEY
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY MILLER 1
Appeal2014-008750
Application 12/907 ,296
Technology Center 1700
Before LINDA M. GAUDETTE, JACQUELINE WRIGHT BONILLA and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-10 and 24. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies Covidien LP as the real party in interest. App. Br. 1.
Appeal2014-008750
Application 12/907 ,296
BACKGROUND
The subject matter involved in this appeal relates to a hemostatic tape
dispenser. Spec. 2-3. 2 Claims 1 and 24 illustrate the subject matter on
appeal and are reproduced from the Claims Appendix of the Appeal Brief as
follows:
1. A hemostatic tape dispenser comprising:
a hemostatic tape which includes a porous substrate, a
first hydrogel precursor and a second hydrogel precursor
applied to the porous substrate, and a release sheet;
a housing configured to receive a roll of the hemostatic
tape;
a first support positioned on the housing for supporting
the roll of the hemostatic tape;
a second support positioned on the housing, the second
support configured to receive a length of the hemostatic tape
which extends from the roll;
a cap pivotably connected to a portion of the housing for
sealing the roll of the hemostatic tape in the housing wherein
the cap further includes a cutting member configured to
separate at least a portion of the length of tape from the roll.
24. A hemostatic tape dispenser comprising:
a hemostatic tape including a porous substrate having
pores, a first hydro gel precursor in the form of particles applied
within the pores of the porous substrate, a second hydro gel
precursor in the form of a film applied to an outer surface of the
porous substrate and at least one release sheet applied to an
outer surface of the hemostatic tape, wherein the first hydro gel
precursor and the second hydrogel precursor are spatially
separated in different layers of the hemostatic tape and are in
different forms;
2 We cite to the Specification ("Spec.") filed Oct. 19, 2010; Final Office
Action ("Final Act.") mailed Nov. 7, 2013; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
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Appeal2014-008750
Application 12/907 ,296
a housing configured to receive a roll of the hemostatic
tape;
a first support positioned on the housing for supporting
the roll of the hemostatic tape;
a second support positioned on the housing, the second
support configured to receive a length of the hemostatic tape
which extends from the roll;
a cap pivotably connected to a portion of the housing for
sealing the roll of the hemostatic tape in the housing; and,
a cutting member operatively coupled with the housing
and configured to separate at least a portion of the length of
tape from the roll.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 1, 2, 4---6 and 8-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over W olteger, 4 Khosravi 5 and Martineau. 6
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Woiteger, Khosravi, Martineau and Huey. 7
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
W olteger, Khosravi, Martineau and Schaar. 8
IV. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wolteger, Khosravi, Martineau and Bennet. 9
3 Ans. 2-6; Final Act. 2-5.
4 US 2,391,112, issued Dec. 18, 1945 ("Wolteger").
5 US 2008/0097521 Al, published Apr. 24, 2008 ("Khosravi").
6 US 2003/0149406 Al, published Aug. 7, 2003 ("Martineau").
7 US 2007/0276308 Al, published Nov. 29, 2007 ("Huey").
8 US 4,212,296, issued Jul. 15, 1980 ("Schaar").
9 US 2010/0100123 Al, published Apr. 22, 2010 ("Bennett").
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Application 12/907 ,296
DISCUSSION
I
With regard to Rejection I, Appellant argues claims 1, 2, 4---6 and
8-10 as a group. App. Br. 4-7; Reply Br. 2--4. We select claim 1 as
representative and decide the propriety of Rejection I based on the
representative claim alone. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Claims 2, 4-6
and 8-10 stand or fall with claim 1. Id.
Appellant's claim 1 recites, inter alia, a housing for receiving a roll of
tape and "a cutting member configured to separate at least a portion of the
length of tape from the roll." App. Br. 15. The Examiner found that
W olteger discloses a dispenser having a cutting member in the form of a
serrated edge provided at the dispenser opening. Final Act. 2, citing
Wolteger at 1-2, Figs. 4-5; Ans. 9.
Appellant's sole argument against Rejection I is that Wolteger's
serrated edge is not a cutting member as claimed. App. Br. 4-5.
Particularly, Appellant contends that Wolteger's serrated edge serves only to
engage the fabric of a bandage extended through the dispenser opening "to
prevent retrograde movement of the fabric back into the container," and
therefore, is not configured to separate a portion of the bandage from the
roll. App. Br. 4.
Appellant's argument is not persuasive for the following reasons. As
recognized by the Examiner, Ans. 9, Appellant's Specification discloses an
embodiment in which the cutting member is a "serrated edge." Spec. i-f 92
("Cutting member 2140 is a sharpened or serrated edge ... "). The
Specification explains that, in use, a portion of tape "may be forced against
cutting member 2140 to separate the length of tape 2010 from the roll." Id.
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Application 12/907 ,296
at i-f 93. In light of the foregoing passages in Appellant's Specification, we
are persuaded that the phrase "cutting member configured to separate at least
a portion of the length of tape from the roll" in claim 1 encompasses a
serrated edge. See Oatey Co. v. JPS Corp., 514 F.3d 1271, 1277 (Fed. Cir.
2008) (explaining that where claims can reasonably be construed to include
a disclosed embodiment, "it is incorrect to construe the claims to exclude
that embodiment"). Appellant does not dispute that Wolteger's dispenser
opening includes a serrated edge. See Reply Br. 3 ("said serrated tongue
preventing retrograde motion of the bandage") (quoting Wolteger, claim 1 ).
Appellant's argument-that Wolteger's serrated edge serves to
prevent retrograde movement of material extending through the dispenser
opening-is unavailing. We agree with the Examiner's observation, Ans.
11, that preventing such retrograde movement does not preclude Wolteger's
serrated edge from additionally serving as a cutting member, against which a
portion of the bandage may be forced and separated from the roH. Neither
are we persuaded by Appellant's argument-raised for the first time in the
Reply Brief-that Wolteger's serrated edge cannot serve as a cutting
member because the tape, once cut, would no longer be prevented from
retrograde movement. Reply Br. 4. Wolteger discusses preventing
retrograde movement in the context of closing and sealing the dispenser.
Particularly, an end of an enclosed bandage is passed through the dispenser
opening such that an end of the bandage "projects slightly beyond the tips of
the teeth 15." Wolteger p. 1, col. 2, 11. 52-54. Thus, when the panel forming
the dispenser opening is folded and sealed to provide an "aseptic and sterile
storage of the dressing," the teeth prevent retrograde movement of the
bandage end. Id. at p. 2, col. 1, 11. 13-20. In use for dispensing, however,
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Application 12/907 ,296
Wolteger explains that the dispenser may be unsealed, id. at p. 2, col. 1, 11.
25-29, and the bandage "may be pulled out in sheet form and tom off," id. at
p. 2, col. 2, 11. 54-55. Appellant's argument does not persuade us that these
distinct operations disclosed in W olteger would have been viewed as
mutually exclusive by one of ordinary skill.
For the foregoing reasons, Appellant's arguments do not persuade us
of reversible error in the Examiner's finding that Wolteger's serrated edge
constitutes a cutting member as is recited in Appellant's claim 1.
Accordingly, we sustain Rejection I.
II-IV
Appellant solely relies on the same argument presented in support of
patentability of claim 1 to support the patentability of dependent claims 3
and 7 and independent claim 24. App. Br. 7-13. Accordingly, we sustain
Rejections II-IV for the same reasons given above in connection with
Rejection I.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 37 C.F.R. § 1.136.
AFFIRMED
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