Ex Parte Piferi et alDownload PDFPatent Trial and Appeal BoardSep 12, 201612631300 (P.T.A.B. Sep. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/631,300 12/04/2009 Peter Piferi 20792 7590 09/13/2016 MYERS BIGEL & SIBLEY, PA PO BOX 37428 RALEIGH, NC 27627 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. 9450-45 1485 EXAMINER PETRIK, KARI K ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 09/13/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER PIFER! and CAROL BARBRE Appeal2014-008955 Application 12/631,300 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-5, 7-11, and 29-37. App. Br. 1. Claims 6 and 12-28 have been canceled. App. Br. 21, 22, Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal2014-008955 Application 12/631,300 THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to "surgical drapes with patches and/or patches for surgical drapes and methods for using the same." Spec. i-f 4. Claims 1 and 34 are independent. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A surgical drape comprising: a surgical drape having first and second opposing primary surfaces; and at least one flexible patch having first and second opposing primary surfaces, wherein the at least one patch is fixably attached to one of the opposing primary surfaces of the surgical drape and overlies and covers at least a major portion of an aperture in the surgical drape, and wherein the at least one patch defines a through-port thereby allowing at least one cable, tool, or instrument to extend therethrough and through the surgical drape and be snugly held by the patch; wherein the at least one patch comprises a polymer with increased rigidity relative to an underlying portion of the surgical drape that the patch is attached to. Moose Canty Butterworth Ewers REFERENCES RELIED ON us 4, 196, 723 us 4,323,062 us 5,345,946 US 6,939,296 B2 Apr. 8, 1980 Apr. 6, 1982 Sept. 13, 1994 Sept. 6, 2005 THE REJECTIONS ON APPEAL 1 Claims 1-5, 7-11, and 29-37 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 1 The Examiner withdrew the "rejection under 35 U.S.C. [§] 103(a) as being unpatentable over Canty (US 4,323,062) in view of Ewers et al (US 6,939,296)." Ans. 5. Because all of the prior art rejections are based on the combination of Canty and Ewers (either by themselves or in combination 2 Appeal2014-008955 Application 12/631,300 Claims 1-5, 7-11, and 29-37 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. ANALYSIS The re} ection under 3 5 U.S. C. § 112, first paragraph Claims 1 and 34 As emphasized by the Examiner, independent claims 1 and 34 recite "at least one flexible patch ... wherein the at least one patch comprises a polymer with increased rigidity relative to an underlying portion of the surgical drape." Final Act. 3. The Examiner states, "[t]here is no support that the entire patch itself is flexible and of a polymer that has increased rigidity relative to an underlying portion of the drape." Final Act. 4; see also Ans. 6. Appellants disagree with the Examiner and reference paragraph 55 of Appellants' Specification. App. Br. 6; see also Reply Br. 3. Paragraph 55 states, in relevant part: The patch 30 can be planar and flexible to conform to underlying material. In some embodiments, the patch 30 has increased structural rigidity relative to the portion of the surgical drape it is affixed to. For example, a patch 30 of silicone can have increased structural rigidity relative to a polyethylene portion of a drape 20. Appellants additionally reference paragraph 38 of Appellants' Specification. Reply Br. 3--4. Paragraph 38 of Appellants' Specification with another reference), and because there is no indication that the other references teach that which is disclosed by the combination of Canty and Ewers, we consider the Examiner's withdrawal of the "rejection" under 35 U.S.C. § 103(a) to be applicable to all of the asserted prior art rejections. 3 Appeal2014-008955 Application I2/63 I,300 states, in relevant part: "The patch can be of any suitable material, including a polymer, fabric, textile or a combination thereof and can provide increased structural rigidity to the surface of the surgical drape." From the foregoing, it is apparent that Appellants' Specification provides clear and ample support for "at least one flexible patch ... wherein the at least one patch comprises a polymer with increased rigidity relative to an underlying portion of the surgical drape" as recited in claims I and 34. Accordingly, based on the record presented, we do not sustain the Examiner's rejection of independent claims I and 34, or of dependent claims 2-5, 7-I I, 29-33, 36, and 37, under 35 U.S.C. § I I2, first paragraph. Claim 35 Specifically with respect to claim 35, the Examiner states: Claim 3 5 recites "wherein the at least one patch has a maximum thickness that is greater than a thickness of the underlying portion of the surgical drape that the patch is attached" which is not supported by the original specification. Applicant's Figures appear to show the patch and drape of being about the same thickness. Final Act. 4; see also Figs. IA, IB, IC, 5, and 9A. In response, Appellants make two arguments. First, Appellants assert that "[a]t least Figures IA, IB, IC and 5 illustrate the patch 30 having a thickness greater than that of the drape 20." App. Br. 7; Reply Br. 7. Second, Appellants assert: "Furthermore, paragraph [0054] of the specification states that the patch may have thickness up to about 0.5 inches. Appellant submits that one skilled in the art would understand that such a patch would have a thickness that is greater than a thickness of a typical surgical drape." App. Br. 7; Reply Br. 7. 4 Appeal2014-008955 Application 12/631,300 Appellants' arguments are not persuasive. Turning to Appellants' first argument that Appellants' drawings illustrate the patch having a thickness greater than the drape, Appellants' Specification addresses the supplied drawings stating, "[t]hicknesses and dimensions of some components may be exaggerated for clarity." Spec. i-f 35. Hence, by Appellants' own admission, the drawings cannot be relied upon for representing the true relative thicknesses of the claimed surgical drape and patch. Referring to Appellants' second argument that a skilled person would understand that a patch would be thicker than the drape, Appellants have provided no support for this allegation, and it is not otherwise self-evident from the record. That is, the Specification is silent as to the thickness of a typical surgical drape and as such, there is no dimension to which the thickness of the patch may be compared. Further, Appellants have provided no affidavits or other evidence indicating the thickness of a typical drape. In other words, absent evidentiary support, we consider Appellants' allegation to be speculative and conclusory. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take the place of evidence."); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value). For this reason, we do not accept Appellants' argument that the patch, even at 0.5 inches in thickness, is thicker than a typical surgical drape. Accordingly, based on the record presented, we sustain the Examiner's rejection of claim 35 under 35 U.S.C. § 112, first paragraph. 5 Appeal2014-008955 Application 12/631,300 The rejection under 35U.S.C.§112, second paragraph Regarding this rejection, the Examiner again addresses independent claims 1 and 34 and their recitation of "at least one flexible patch ... wherein the at least one patch comprises a polymer with increased rigidity relative to an underlying portion of the surgical drape." Final Act. 5. The Examiner links the rejection of claim 1 with its dependent claim 4 and concludes that the language of those claims, when read together, is inconsistent. See Ans. 7-8. In particular, the Examiner states: The arrangement of Claim 4 is exemplified in Figure 3B ... As discussed above, the disclosure does not specify that the embodiment of Figure 3B that the second material is flexible or that the inner portion [] has increased structural rigidity relative to the portion of the drape to which it is attached. Claim 1 appears to require that the whole patch is made of a flexible polymer having increased rigidity, whereas claim 4 is now reciting that the inner portion is flexible and a second portion is more rigid which is unclear. It is unclear if the recited first and second materials of claim 4 are different materials (as claimed) than the polymer material of claim 1. Ans. 7; see also Final Act. 5. In response, Appellants again reference paragraph 55 of Appellants' Specification, and specifically emphasize its teaching that, "[ fJor example, the inner portion may be thinner than the outer portion and/or the inner portion may comprise a different, more flexible material than the outer portion." Reply Br. 9-10. Appellants assert, "[t]his does not mean that the outer portion is not flexible or is rigid, as the Examiner appears to be asserting." Reply Br. 10. Appellants conclude: [T]he present application does not preclude the second material from being flexible. Further, the present application does not preclude the inner portion from having increased structural rigidity relative to the portion of the drape to which it is attached. 6 Appeal2014-008955 Application 12/631,300 The configuration of Claim 4 provides a patch that has a flexible inner portion that has increased structural rigidity relative to the underlying drape and a perimeter portion that is also flexible but with increased structural rigidity relative to the inner portion. That is, Claim 4 depends from Claim 1 and simply adds a structural limitation to the patch and does not contradict Claim 1 many way. Reply Br. 9. Appellants' arguments are persuasive. The Examiner fails to appreciate that the entire patch can be flexible and have increased rigidity relative to an underlying portion of the surgical drape to which it is attached, wherein the patch may also have an inner portion with a flexible material and "a second material with increased structural rigidity" (albeit still flexible) "about a perimeter of the flexible material of the inner portion" as claimed. As noted above, each of these possibilities is set forth in paragraph 55 of Appellants' Specification. Accordingly, based on the record presented, we do not sustain the rejection of independent claims 1 and 34 and dependent claims 2-5, 7-11, 29-33, and 35-37 under 35 U.S.C. § 112, second paragraph. NEW GROUND OF REJECTION It is understood that "[t]he rejection under 35 U.S.C. [§] 103(a) as being unpatentable over Canty (US 4,323,0620) in view of Ewers et al (US 6,939,296) has been withdrawn" by the Examiner but that no reason for the withdrawal has been provided. Ans. 5. However, we enter a new ground of rejection of claims 1-5, 7, 8, 10, 11, 29-34, 36, and 37 under 35 U.S.C. § 103(a) for reasons different from, but also in addition to, those stated by the Examiner. See Final Act. 2-3. We do not enter a new ground of rejection with respect to claims 9 and 35. This new ground of rejection 7 Appeal2014-008955 Application 12/631,300 tracks the rejection expressed by the Examiner in the Final Office Action at pages 5 to 12 (with the exception that we do not adopt that language directed to claims 9 and 35). We do not replicate this language here but will reference the Final Office Action as needed. Regarding the stated rejection of claims 1--4, 8, 11, 29-34, 36, and 37 as being unpatentable over Canty and Ewers (Final Act. 6-10), Appellants acknowledge the correlation of "reinforcement sheet 14 of Canty as the surgical drape and the latex sheet 60 as the patch of Claim 1." App. Br. 11; see also Final Act. 6. Appellants respond to the rejection stating, "[t]he tubing T of Canty does not extend through at least the portion of the reinforcement sheet 14 that is attached to the main sheet 12." Appeal Br. 11. There is no claim requirement that the tubing extend through a portion "attached to the main sheet 12," only that a "cable, tool, or instrument" extend through a surgical drape, and Appellants do not explain how Canty fails to teach tube T extending through sheet 14.2 See Canty Figs. 8, 9. "Appellant[s] further submit[] that the latex sheet 60 does not snugly hold tubing passing therethrough." App. Br. 11. However, Appellants appear to disregard that portion of Canty which teaches that flap 3 8 is 2 Canty discloses a surgical drape 10 "having a main sheet 12 and a reinforcement sheet 14" (Canty 2:29-31) and that "sheet 14 is folded" (Canty 3 :42) to form "a flap 38 comprising the doubled reinforcement sheet 14" (Canty 2:51-52). Canty also teaches that "tubing Tor the like may be readily threaded through the cross slits 64 in the flap 38 in order to receive and retain the tubing Tor the like in place during the surgical procedure." Canty 4: 4--7. Of further interest is Appellants' acknowledgement that "Canty explains the flap 38 is the member that actually retains the tubing in place." App. Br. 11. 8 Appeal2014-008955 Application 12/631,300 formed with "a pair of elongated sheets 58 and 60 of relatively high friction material, such as latex, on opposed sides of the flap 38." Canty 3 :46-48 (emphasis added); see also Canty Figs. 6-9. Nor is there any dispute that Canty discloses "cross slits 64 extending through the flap 38 and high friction sheets 58 and 60" (Canty 3:50-55, emphasis added) or that cross slits 64 receive tubing T or the like, such that the tabs 66 [formed by the cross slits] frictionally engage against the wall of the tubing T or the like to retain it in place, with the sheets 58 and 60 of relatively high friction material enhancing the frictional engagement between the tabs 66 and the tubing T or the like. Canty 3:65 to 4:3 (emphasis added). Appellants do not address these teachings in Canty or explain how they are not applicable to the limitation/arguments set forth above. Appellants further contend, "the slits 64 and tabs 66 are defined by the flap 38, which in tum is defined by the folded reinforcement sheet 14 and not the latex sheets 58, 60." App. Br. 12 (emphasis added). However; this contention appears to be contradicted by the above express teachings in Canty, and Appellants do not explain how this is not the case. As stated in the rejection, Ewers is relied upon for teaching "providing a seal made of a flexible polymer material having increased rigidity." Final Act. 6, referencing Ewers 10:3-16 and 12:8-18. Appellants contend that "Ewers describes pads or seals that are applied to a patient's abdominal wall." App. Br. 12; see also id. at 14. Being applied to a patient's abdominal wall is not germane to the reason Ewers is relied upon. Appellants further "submit[] that Ewers does not teach or suggest a seal that has increased rigidity relative to a portion of a surgical drape to which the seal is attached." App. Br. 13. However, Appellants do not explain how 9 Appeal2014-008955 Application 12/631,300 there is error in relying on Ewers for teaching a seal whose rigidity, or flexibility, can be tailored as needed. 3 Further, Appellants' attempt to limit Ewers' teachings to only "a gel" or a "gel-like" substance (App. Br. 14) is not accurate. 4 Regarding Appellants' contentions concerning dependent claim 9 (App. Br. 15), as stated above, we do not adopt that portion of the Final Rejection directed to claim 9. Consequently, the Examiner's withdrawal of the obviousness rejection of claim 9 remains applicable. Regarding dependent claim 30, the stated rejection relies on Canty for disclosing this limitation. Final Act. 8. However, Appellants argue Ewers in rebuttal. App. Br. 15-16. Appellants' focus on the incorrect reference is not indicative of any error in the stated rejection. Regarding dependent claims 31, 33, and 37, Appellants' contentions do not address Canty's disclosures discussed supra, and particularly those of patch 60 having cross-slits through which tubing extends See App. Br. 16, 18. 3 When addressing the referenced portions of Ewers, Appellants acknowledge that they "describe embodiments wherein the seal has layers that have different rigidity relative to one another." App. Br. 14. However, Appellants contend that these "passages do not disclose or suggest that a seal has increased rigidity relative to a portion of a surgical drape to which the seal is attached." App. Br. 14. However, the stated rejection recites a reliance on Canty, not Ewers, for disclosing a patch that "is fixably attached to" a surface of the drape. Final Act. 6. 4 For example, Appellants acknowledge, "Ewers teaches that these pads are mixtures that can be described as a gel." App. Br. 14; see also Ewers 8:48- 49. However, Ewers states, "[i]t is contemplated that the material of the pad 35 may also include silicone, soft urethanes and even harder plastics which might provide the desired sealing qualities with the addition of a foaming agent." Ewers 8:39--42. 10 Appeal2014-008955 Application 12/631,300 Regarding dependent claim 35, the stated rejection relies on a scaling of Figure 7 of Canty (see Final Act. 9), and there is no indication that the drawings in Canty are drawn to scale. Hence, as stated supra, we do not adopt the stated rejection of dependent claim 35. Regarding independent claim 34, Appellants simply contend that this claim "is patentable over the cited art for at least the several reasons discussed above in reference to Claim 1." App. Br. 19. Appellants' contention is not persuasive that the reasons expressed in the stated rejection of claim 1 are incorrect. Further, Appellants are not persuasive that the stated reason to combine Canty and Ewers is faulty. See Final Act. 6. Regarding the rejection of claim 10 (which depends from claim 8) as being obvious over Canty, Ewers, and Butterworth (Final Act. 11 ), Appellants contend that Butterworth does not cure the defects of Canty and Ewers. App. Br. 19. However, Butterworth was not relied upon for such curing, instead, the rejection relies on Butterworth to teach a releasable cover overlying an adhesive. Final Act. 11. Appellants' contention is not persuasive that this rejection is in error. DECISION The Examiner's rejection of claims 1-5, 7-11, 29-34, 36, and 37 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner's rejection of claim 35 under 35 U.S.C. § 112, first paragraph, is affirmed. The Examiner's rejection of claims 1-5, 7-11, and 29-37 under 35 U.S.C. § 112, second paragraph, is reversed. 11 Appeal2014-008955 Application 12/631,300 We also enter a NEW GROUND of rejection regarding claims 1-5, 7, 8, 10, 11, 29-34, 36, and 37 under 35 U.S.C. § 103(a). This New Ground of Rejection is entered because it relies on reasons different from and/or additional to those stated by the Examiner and also to provide Appellants a fair opportunity to respond. Further, 37 C.F.R. § 41.50(b) provides that, "[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 that Appellants must, WITHIN TWO MONTHS, exercise one of the following options: ( 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 proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. In summary, it should be noted that the Examiner's rejections of claim 9 under 35 U.S.C. § 112, first and second paragraphs are reversed, and that 12 Appeal2014-008955 Application 12/631,300 the Examiner's rejection of this claim under 35 U.S.C. § 103(a) has been withdrawn. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation