Ex Parte Schwartz

Patent Trial and Appeal Board

Feb 15, 2017

12470870 (P.T.A.B. Feb. 15, 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.
12/470,870 05/22/2009 Lyman D. Schwartz 1-1274 4724
22209 7590
Hooker & Habib, P.C.
150 Corporate Center Drive
Suite 203
Camp Hill, PA 17011-1759
02/15/2017 EXAMINER
SIMPSON, SARAH A
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
02/15/2017 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 LYMAN D. SCHWARTZ
Appeal 2015-004092
Application 12/470,870
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
22, 25 and 27—30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-004092
Application 12/470,870
CLAIMED SUBJECT MATTER
The claims are directed to a phimosis treatment device. Claim 22,
reproduced below, is illustrative of the claimed subject matter:
22. A device for treating phimosis, the device comprising an
elongate, one-piece body comprising a coil spring and opposed
arms connected to the spring, and two enlarged engagement
members, each member on the free end of one of the arms, each
engagement member comprising an outer rib, an inner rib located
inwardly from the outer rib and an engagement recess between
the ribs, the engagement recess on each engagement member
facing away from the engagement recess on the other
engagement member;
the device having a neutral position where the spring is
not stressed, where the arms extend in generally the same
direction away from opposed sides of the coil spring to arm free
ends located adjacent to each other and spaced away from the
spring, and where the ends of the arms are spaced apart from
each other, and an application position where the arms are closer
together than when in the neutral position and the spring is
compressed to bias the engagement members away from each
other and toward the neutral position; wherein when the device
is in the application position and the engagement recesses are
positioned in a foreskin slit and the arms are released, the spring
biases the engagement recesses apart to enlarge the slit.
REJECTIONS
Claims 22, 25 and 27—29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moseley (US 2,544,037, issued Mar. 6, 1951),
Nates (US 5,423,831, issued Jun. 13, 1995), and Roeloffs (US 569,839,
issued Oct. 20, 1896).
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moseley, Nates, Roeloffs and Kees (US 4,961,743, issued Oct. 9,
1990).
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Appeal 2015-004092
Application 12/470,870
OPINION
Claims 22, 25 and 27—29 are argued as a group, with claim 22 being
representative under 37 C.F.R. § 41.37(c)(iv). Appeal Br. 11—21.
The Examiner found Moseley discloses the basic device of claim 22,
but relied on Nates as teaching ribs and Roeloffs as teaching the arm-
extension direction. Final Act. 2—5. Appellant discusses Moseley and
Roeloffs and does not take issue with any of the Examiner’s findings,
reasoning, or conclusions specifically relating to Nates.
Initially, Appellant contends Moseley is non-analogous art. Appeal
Br. 12—15. Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992). The Examiner contends Moseley satisfies
either prong of the analogous arts test. Ans. 6—7.
“[References [are] within the same field of endeavor where they
‘have essentially the same function and structure.’” In re Bigio, 381 F. 3d
1320, 1326 (Fed. Cir. 2004). With the above exceptions noted, Moseley and
Appellant’s device certainly have many structural similarities (cf. Moseley
Fig. 3 and Application Fig. 1), such as loops (Moseley 20; Application 20)
torsionally biased legs (Moseley 22, 24; Application 14), and engaging
members (Moseley 26, 28 and col. 2,11. 46—50; Application 16 and Spec.
3:5—10). They function similarly in that force is applied to the legs to
overcome the spring bias (Moseley col. 2,11. 13—24; Application 28 and
Spec 3:11—18) before positioning the devices on the patient and removing
that force so that the biasing force generated by the spring is then applied to
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Application 12/470,870
the patient. It is true that the use of Appellant’s device differs from that of
Moseley. Appellant compresses legs 14 so that they may subsequently
generate a stretching force on a foreskin slit (Spec. 3:19-4:2). Moseley
expands legs 22, 24 so that loop 20 may subsequently generate a
compressive force about the prepuce to encourage hemostasis. Although
Moseley and Appellant may use their devices in dissimilar ways, they are
structurally and functionally very similar. For a claim directed to an
apparatus, the particular use to which it is put does not necessarily define the
scope of prior art relevant to the inquiry under § 103(a). See MPEP
§ 904.01(c) (“a brick-cutting machine and a biscuit cutting machine may be
considered as having the same necessary function”). Accordingly, we agree
with the Examiner that Moseley is within the field of Appellant’s endeavor.
Turning to the particular problem with which Appellant was
concerned, as the Examiner correctly points out, Appellant acknowledges
that circumcision was a known method for treating phimosis. Ans. 6—7
(citing Spec. para. 4). Thus, circumcision devices and techniques, such as
that disclosed in Moseley, logically would have commended themselves to
an inventor’s attention when considering the problem with which Appellant
was concerned of treating phimosis. See In re Clay, 966 F.2d at 659.
Accordingly, we agree with the Examiner that Moseley satisfies this prong
of the analogous art test as well.
Appellant additionally argues that “[t]he examiner has not provided a
rational underpinning to support the conclusion of obviousness based on the
cited combination of references.” Appeal Br. 18. This argument is premised
first upon attacking a position clearly divergent from that taken by the
Examiner: The Examiner does not propose to modify Moseley’s device by
unwinding the device and eliminating the loop. See Appeal Br. 20.
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Application 12/470,870
Appellant continues this argument alleging that further winding Moseley’s
device to bring legs closer and extending generally in the same direction
would make it more difficult to change the size of the loop. We are not
apprised of any technical reasoning or evidence to support Appellant’s
assertion. As the Examiner correctly points out, Moseley illustrates in
Figure 3 an already expanded condition. Ans. 7—8. Bringing the legs closer
in a neutral position would make them easier to manipulate by, for example,
a single hand or instrument. Ans. 8.
Appellant additionally argues that the age of and time between
Moseley and Roeloffs is objective evidence of nonobviousness that the
Examiner has not considered. Appeal Br. 16—17 (citing Leo Pharm. Prods.
v. Rea 726 F.3d 1346 (Fed. Cir. 2013)); Reply Br. 5—6. Although this
evidence may not have weighed heavily against the Examiner’s conclusion
of obviousness, we are not apprised of any reason to believe that the
Examiner failed to consider the age of the references in making or
maintaining the rejection. The Examiner cites the familiar rule that age, or
length of time between the issuance of, references, without more, is
generally not indicative of nonobviousness. Ans. 7; see MPEP §§ 2145(VII)
(citing, inter alia, In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“The
mere age of the references is not persuasive of the unobviousness of the
combination of their teachings, absent evidence that, notwithstanding
knowledge of the references, the art tried and failed to solve the problem.”)
reaffirmedby In re Ethicon, 844 F.3d 1344 (Fed. Cir. Jan. 3 2017)).
Appellant has not entered any objective evidence to show, for example,
failure of others, long-felt need, or unexpected results, nor does the
Examiner predicate the rejection on an “obvious to try” rationale as in Leo.
See, e.g., In re Ethicon, supra', see also Arlington Indus. Inc. v. Bridgeport
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Application 12/470,870
Fittings, Inc., 581 F. App’x 859, 864 (Fed. Cir. Aug. 29, 2014)
(nonprecedential).
On the totality of the record regarding claim 22, the evidence of
obviousness outweighs the evidence against.
Turning to claim 30, Appellant alleges that Kees “does not qualify as
prior art,” but does not substantiate this with any nonanalogous art argument
or other explanation as to why Kees should not be considered as within the
scope of prior art to be considered in an obviousness analysis. Appeal Br.
22. Appellant argues that “Kees does not address a need or problem known
with respect to Moseley.” Appeal Br. 22. This argument is foreclosed by
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the
Court rejected the rigid requirement of a teaching or suggestion or
motivation to combine known elements in order to show obviousness. KSR
Int’l Co., 550 U.S. at 415. The Court noted that an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. Here, the Examiner’s reasonable and rational analysis is that the skilled
artisan could select the coil number based on the desired distribution of
stress on Moseley’s guard or collar 10 and, in turn, on the prepuce. Final
Act. 5; Ans. 9. Neither Moseley nor Kees must themselves recognize this
modification as desirable or identify a specific problem solved by the
Examiner’s proposed modification. “KSR expanded the sources of
information for a properly flexible obviousness inquiry to include . . . ‘any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent’; and the background knowledge, creativity, and
common sense of the person of ordinary skill.” Perfect Web Techs., Inc. v.
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Application 12/470,870
InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009). Contrary to Appellant’s
argument (Appeal Br. 24; Reply Br. 4), articulating reasoning not expressly
disclosed in the cited prior art does not amount to relying on facts within the
Examiner’s personal knowledge triggering the requirement to enter an
affidavit under MPEP § 2144.03(C). Indeed, the very portion of Kees cited
by Appellant (Appeal Br. 24—27 (citing Kees col. 1,11. 13—17)), which
derives from a discussion of the background of Kees invention, supports the
Examiner’s as opposed to Appellant’s position: “In conventional spring
designs, one can select material, shape, cross section and the number of
coils, among other things, to provide the desired spring performance.” Kees
col. 1,11. 35—38 (emphasis added). Thus, we agree with the Examiner that it
would have been obvious to employ multiple coils in Moseley to distribute
stress over a larger area. Final Act. 5; Ans. 9. Accordingly, we sustain the
rejection of claim 30.
DECISION
The Examiner’s rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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