11610836 (P.T.A.B. Feb. 11, 2015)

Ex Parte Santilli et al

Patent Trial and Appeal BoardFeb 11, 2015

11610836 (P.T.A.B. Feb. 11, 2015)

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. 11/610,836 12/14/2006 Albert N. Santilli KSI-16285.001 3403 77096 7590 02/11/2015 WAYNE D PORTER, JR LAW OFFICES OF WAYNE D. PORTER, JR. 1370 ONTARIO STREET, SUITE 600 CLEVELAND, OH 44113 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 02/11/2015 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 ALBERT N. SANTILLI and ROBERT MICHLER __________ Appeal 2012-006027 Application 11/610,836 Technology Center 3700 __________ Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have requested rehearing of the decision entered on November 21, 2014 (hereinafter “Decision”). That Decision affirmed-in- part the rejections made by the Examiner in the Final Rejection of November 2, 2010. Appellants filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52 on January 21, 2015. We have jurisdiction under 35 U.S.C. § 6(b). A request for rehearing “must state with particularity the points [of law or fact] believed to have been misapprehended or overlooked by the Board,” and must comply with 37 C.F.R. § 41.52(a)(1). Appellants’ Request is Granted-In-Part. Appeal 2012-006027 Application 11/610,836 2 DISCUSSION Rejection of Claim 2 under 35 U.S.C. §102(b) in View of Garvey Appellants argue that we overlooked the fact that claim 2 was separately argued at page 11 of the Appeal Brief. (Req. Reh’g 2.) Appellants argue that claim 2 should not have fallen with claim 1 and that Garvey does not disclose the limitations of claim 2 (id.). Claim 2 recites that “those portions of the first and second members that come into contact with the conduit are rounded.” Garvey Figure 2 shows an embodiment of the surgical clip 10 with a “substantially uniform elliptical cross section 32.” (See FF3, (citing Garvey 3:58–65).) Focusing on the various cross-sectional configurations depicted in Garvey Figures Figures 2–4, Appellants contend that the Examiner errs because “none of the members that contact tissue are round in cross-section.” (Req. Reh’g 2; see also App. Br. 11.) We do not find Appellants’ argument persuasive. The plain langue of Garvey column 2, lines 58–65 describes tissue- contacting members having a “substantially uniform elliptical cross section,” which we interpret as “rounded” tissue-contacting members in accord with claim 2. In addition, to the extent that Appellants argue that examination of Figure 2 shows “a rectangular transverse cross-section with rounded corners,” but with “flat, not rounded” tissue-contacting portions (App. Br. 11), we credit the Examiner’s finding that “[t]he round sides of the device as shown in Figs 2-3 would contact the tissue” (Ans. 7). We take issue with Appellants’ implication that anticipation of claim 2 demands a member that is “round in cross-section.” (See Req. Reh’g 2.) Round cross-sections are specific to claim 3. Claim 2 more broadly recites Appeal 2012-006027 Application 11/610,836 3 that “portions of . . . members that come into contact with the conduit are rounded.” Applying the broadest reasonable interpretation in light of the Specification, claim 2 encompasses any linear section of a member that comes in contact with the conduit. Thus, portions of first and second members with substantially rounded cross-sections (as shown in Garvey Figure 2) would satisfy the claim language even if they had substantially flattened inner aspects. For these reasons, we find Appellant’’ arguments fail to identify any misapprehension or overlooked point of fact or law. Rejection of Claims 2 and 3 under 35 U.S.C. §102(a) in View of Cosgrove Claims 2 and 3 recite that the first and second members are “rounded” or “round,” respectively. Our Decision found no error in the Examiner’s determination that these elements are satisfied by Cosgrove Figures 20, 20A, and 21A–21C. (Decision 11.) Appellants argue that Cosgrove Figures 20, 20A, and 21A–21C “do not disclose the configuration of first and second members as claimed in claims 2 and 3,” but instead disclose a fabric covering which “does not permit one to determine the cross-sectional configuration of whatever is encased by the fabric covering.” (Req. Reh’g 2–3.) Prior to the filing of Appellants’ Request for Rehearing, Appellants’ argument that Cosgrove’s fabric obscures some underlying structure is conspicuously absent.1 See App. Br. 15 (arguing only the “rounded” or 1 At best, Appellants argue that “[a]lthough Cosgrove discloses a fabric covering 60 (see paragraph 0077), there is no teaching or suggestion of . . . both clamping members being rounded or round” (App. Br. 17), and that Appeal 2012-006027 Application 11/610,836 4 “round” limitations of claims 2 and 3). Because “Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing” (except as permitted by paragraphs (a)(2) through (a)(4), which do not apply here), Appellants’ argument is untimely. See 37 C.F.R. § 41.52(a)(1). We do, however, recognize Appellants’ observation that the orientation of suture 222 in Figures 20 and 20A suggests that the inner surface of clamp walls 22 are at least partially flat. (See Req. Reh’g 3.) As this observation, which we overlooked in the Decision, draws into question the shape of the inner portions of the clamp walls not transversed by suture 222, we do not maintain that Cosgrove discloses a device “wherein the first and second members, in cross-section, are round,” as required by claim 3. Accordingly, the rejection of claim 3 as anticipated by Cosgrove is reversed. As we noted in FF5, however, “in Cosgrove Figures 20A and 21A, the clamp walls have a round aspect.” Because, as the Examiner found with respect to Garvey, the “round sides . . . would contact the tissue” (see Ans. 7), we maintain that Cosgrove discloses a device wherein “portions of the first and second members that come into contact with the conduit are rounded,” as set forth in claim 2, even if Figures 20 and 20A are interpreted as suggesting that the inner surface of clamp walls 22 are partially rounded and partially flat. In the alternative, Cosgrove likewise satisfies the claimed limitations under our reading of claim 2, discussed above with respect to Garvey. “FIGS. 20, 20A, and 21A-21C illustrate a clamp having flat members with rounded ends and a fabric covering” (Reply Br. 2). Appeal 2012-006027 Application 11/610,836 5 For the above reasons, we find that Appellants have not sustained their burden of showing that the Board misapprehended or overlooked any issues in sustaining the rejection of claim 2 as anticipated by Cosgrove. We find that Appellants have sustained their burden of showing that the Board misapprehended the relevant evidence in sustaining the rejection of claim 3 as anticipated by Cosgrove. Rejection of Claims 14 and 15 under 35 U.S.C. §103(a) in View of Garvey and Cosgrove Appellants argue that, in affirming the Examiner’s finding that claims 14 and 15 are unpatentable under 35 U.S.C. § 103(a) in view of Garvey and Cosgrove, “the Board … did not address the limitation that ‘those portions of the first and second members that contact the conduit being rounded to minimize stress concentrations in the conduit.’” (Req. Reh’g 3.) “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Terms that “merely set forth the intended use for, or a property inherent in, an otherwise old composition ... do not differentiate the claimed composition from those known in the prior art.” In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). With respect to claim 14, from which claim 15 depends, we found that the requirement for portions of those members that contact the conduit to “minimize stress concentrations in the conduit,” is a mere statement of intended use unsupported by specific structural requirements in the claim. (Decision 7–8.) As set forth above, having reconsidered our rejections of claim 2 as anticipated by Garvey and by Cosgrove, we maintain that both Appeal 2012-006027 Application 11/610,836 6 references disclose rounded first and second members that come into contact with the conduit as required by claims 14 and 15.2 Appellants have not sustained their burden of showing that we misapprehended or overlooked any issues in sustaining the rejection of claims 14 and 15 under 35 U.S.C. §103(a) in view of Garvey and Cosgrove. DECISION We have granted Appellants’ request to the extent that we have reconsidered our decision entered November 21, 2014. We amend our Decision to reverse the rejection of claim 3 as anticipated under 35 U.S.C. § 102(a) in view of Cosgrove. We deny Appellants’ remaining requests. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v)(2009). GRANTED–IN–PART lp 2 Appellants recognize that Cosgrove Figures 10 and 11 exemplify the use of “one round member” (Req. Reh’g 3.) According to Cosgrove, “[t]his provides for more uniform and efficient force distribution along the length of clamp 80 in the closed position as shown in Fig. 10.” (Cosgrove ¶ 80.) We note that “mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA 1960). As Appellants do not argue secondary considerations, we find that the use of round members in Cosgrove Figures 10 and 11 further supports a finding of obviousness.