Ex Parte Sansoucy

Patent Trial and Appeal Board

Mar 31, 2016

12894966 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/894,966 09/30/2010
127558 7590 04/04/2016
Covidien LP/Shumaker & Sieffert P.A.
Attn: IP Legal Department
15 Hampshire Street
Mansfield, MA 02048
FIRST NAMED INVENTOR
Michael R. Sansoucy
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-KN-01690 (1502-693) 6938
EXAMINER
THOMAS, JR, BRADLEY G
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
iplegalus@covidien.com
pairdocketing@ssiplaw.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. SANSCOUCY
Appeal2014-004727
Application 12/894,966
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
antimicrobial luer adapter. The Examiner rejected the claims for
anticipation and obviousness. We have jurisdiction under 3 5 U.S. C. § 6(b ).
We reverse.
1 Appellant identifies the Real Party in Interest as Covidien LP (see Br. 1 ).
Appeal2014-004727
Application 12/894,966
Statement of the Case
Background
Appellant's invention "relates to an antimicrobial luer adapter for use
with a medical device" (Spec. i-f 1 ).
The Claims
Claims 1-24 are on appeal. Independent claim 1 is representative and
reads as follows (emphasis added):
1. A luer adapter, comprising:
a body including an inner surface defining a lumen, and
first and second ends, each end being adapted to connect to a
medical device;
an antimicrobial material positioned on at least a portion
of the inner surface; and
a barrier positioned between the lumen and the
antimicrobial material, wherein the barrier permits the passage
of the antimicrobial material therethrough upon exposure to
moisture.
The Issues
A. The Examiner rejected claims 1-3, 8-19, 21, 22, and 24 under 35
U.S.C. § 102(a) as being anticipated by Gilchrist2 (Ans. 2-3).
B. The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
obvious over Gilchrist and Rucker3 (Ans. 4).
C. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Gilchrist and Gibbins4 (Ans. 4--5).
2 Gilchrist, US 5,049,139, issued Sept. 17, 1991.
3 Rucker, US 2008/0051911 Al, published Feb. 28, 2008.
4 Gibbins et al., US 8,203,029 B2, issued June 19, 2012.
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Application 12/894,966
D. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as obvious
over Gilchrist and Scott5 (Ans. 6-7).
E. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as obvious
over Gilchrist and Khan6 (Ans. 7).
F. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as obvious
over Gilchrist and Burroughs7 (Ans. 7-8).
A. 35 U.S.C. § 102(a) over Gilchrist
The Examiner finds that Gilchrist teaches "a barrier ( 44, the water-
soluble glass surrounds and acts as a barrier that encases the silver ions
separating it from the lumen of the device until the glass is exposed to
moisture) positioned between the lumen and the antimicrobial material
('silver'), wherein the barrier permits the passage of the antimicrobial
material therethrough upon exposure to moisture" (Ans. 2; citing Gilchrist
Fig. 3, 2:63-3:15, 3:23-37).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's finding that Gilchrist teaches "a barrier
positioned between the lumen and the antimicrobial material, wherein the
barrier permits the passage of the antimicrobial material therethrough upon
exposure to moisture," as required by claim 1, and as similarly required by
claim 13?
5 Scott et al., US 2005/0159704 Al, published July 21, 2005.
6 Khan et al., US 4,925,668, issued May 15, 1990.
7 Burroughs, US 5,026,359, issued June 25, 1991.
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Appeal2014-004727
Application 12/894,966
Findings of Fact
1. Gilchrist teaches
[an apparatus] for use in fluid flow lines to or from a living body
in order to reduce the incidence or growth of bacteria comprising
in the flow line a connecting member which includes water-
soluble silver impregnated glass, whereby the glass undergoes
slow dissolution with concomitant release of silver into the fluid.
The silver has antibacterial or bacterial static properties.
(Gilchrist Abstract.)
2. Gilchrist's Figure 3 is reproduced below:
18'"' 4
fig. 3
Gilchrist's Figure 3 illustrates a connector having a first portion 14, a second
portion 18, and "an ingot 44 of silver-contaminated water-soluble glass
between them" in which "[t]he ingot 44 is in the form of a solid sleeve 46
having an annular flange 48 . .. and a corresponding shoulder 47" and "[t]he
sleeve 46 fits within the first portion 14 so as to contact fluid passing
through the connector" (Gilchrist 5:28-38).
3. The Specification teaches that "[o]ne or both of the inner
surface and the outer surface may include a barrier positioned adjacent the
antimicrobial element," and that "[t ]he antimicrobial material of the
antimicrobial element is able to pass through the barrier upon exposure to
moisture" (Spec. i-f 12; see also Br. 3); that "[a] barrier such as a hydrophilic
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Appeal2014-004727
Application 12/894,966
material 140 may be attached to the antimicrobial material 130 such that the
hydrophilic material 140 is positioned between the lumen 122 and the
antimicrobial material 130," and that "[t]he hydrophilic material 140 permits
the passage of at least a portion of the antimicrobial material 130
therethrough upon exposure to liquid" (Spec. i-f 27; see also Br. 3); that
"[ o ]ne or both of the inner surface 220 and the outer surface 240 may
include a barrier, such as a hydrophilic material 250, positioned adjacent the
antimicrobial material 230," and that "the antimicrobial material 230 is able
to pass through the hydrophilic material 250 upon exposure to liquid or
moisture" (Spec. i-f 34; see also Br. 3).
Principles of Law
"The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
"[C]laims are interpreted with an eye toward giving effect to all terms
in the claim." Bicon, Inc. v. Straumann Co., 441 F.3d. 945, 950 (Fed. Circ.
2006).
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitation in
dispute is the requirement for "a barrier positioned between the lumen and
the antimicrobial material, wherein the barrier permits the passage of the
antimicrobial material therethrough upon exposure to moisture," as required
by claim 1, and "a barrier positioned adjacent the at least one antimicrobial
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Appeal2014-004727
Application 12/894,966
element, wherein the at least one antimicrobial element is able to pass
through the barrier upon exposure to moisture" as required by claim 13.
Appellant contends that what the claims require is consistent with
Appellant's Specification, which describes an antimicrobial material that
passes through a barrier (Br. 3). Appellant argues that the Examiner's
interpretation of the term "barrier" ignores the remainder of the claimed
features such as "therethough" and "is able to pass through" (Br. 6).
The Examiner responds that "[a] barrier is described as a structure that
bars or impedes passage; and limits migration (as defined by the American
Heritage Dictionary of the English Language)" (Ans. 8 (emphasis omitted)),
and asserts that Appellant's own Specification describes the hydrophilic
material being adapted to control the rate of elution of the dissolved material
(Ans. 9).
We find that Appellant has the better position. Because the barrier of
claims 1 and 13 allows the passage of the antimicrobial material or element
"therethrough" or to "pass through", and because the barrier is positioned
"between" or "adjacent" the lumen and the antimicrobial material, the term
"barrier" cannot be interpreted as both a barrier and an antimicrobial
element. This is consistent with Appellant's claim 2 which recites "wherein
the barrier includes a hydrophilic material," and claim 3 which recites
"wherein the antimicrobial material defines a layer positioned on the inner
surface and the hydrophilic material defines a second innermost layer" (see
Appellant's claims 2 and 3).
We conclude that the broadest reasonable interpretation of the term
"barrier" in claims 1 and 13 is a separate element from the microbial
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Application 12/894,966
material/element, such as the barrier being one layer and the microbial
material/element being another layer, as opposed to being one and the same.
Accordingly, we are not persuaded by the Examiner's argument that
"[t]he water-soluble glass [of Gilchrist] is acting as a barrier in its broadest
interpretation for the silver that is impregnated within the glass," and
therefore, "Gilchrist teaches and suggests a barrier (glass) positioned
between the lumen and the antimicrobial material" (Ans. 8-9). The
interpretation of the water-soluble glass 44 of Gilchrist as satisfying the
"barrier" limitation is not found persuasive (FF 1-3).
Conclusion of Law
The evidence of record does not support the Examiner's finding that
Gilchrist teaches "a barrier positioned between the lumen and the
antimicrobial material, wherein the barrier permits the passage of the
antimicrobial material therethrough upon exposure to moisture," as required
by claim 1, and as similarly required by claim 13.
B-F. 35 U.S.C. § 103(a)
These rejections rely upon the underlying anticipation rejection over
Gilchrist and do not address the barrier issue. Having reversed the rejection
of claim 1, we necessarily reverse these obviousness rejections for the same
reason.
SUMMARY
In summary, we reverse the rejection of claims 1-3, 8-19, 21, 22, and
24 under 35 U.S.C. § 102(a) as anticipated by Gilchrist.
We reverse the rejection of claims 4 and 5 under 35 U.S.C. § 103(a)
as obvious over Gilchrist and Rucker.
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Application 12/894,966
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Gilchrist and Gibbins.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Gilchrist and Scott.
We reverse the rejection of claim 20 under 35 U.S.C. § 103(a) as
obvious over Gilchrist and Khan.
We reverse the rejection of claim 23 under 35 U.S.C. § 103(a) as
obvious over Gilchrist and Burroughs.
REVERSED
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