Ex Parte Tennican

Patent Trial and Appeal Board

May 16, 2018

13571757 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/571,757 08/10/2012
29150 7590 05/18/2018
LEE & HAYES, PLLC
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Patrick 0. Tennican
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.
H014-0019US 4256
EXAMINER
PRICE, NATHAN R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExpartePATRICKO. TENNICAN
Appeal2017-008967 1
Application 13/571,7572
Technology Center 3700
Before ANTON W. PETTING, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1--4, 6-8, 21-29, and 31-34. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 28,
2016), the Reply Brief ("Reply Br.," filed June 5, 2017), the Examiner's
Answer ("Ans.," mailed Apr. 19, 2017), and the Non-Final Office Action
("Non-Final Act.," mailed June 1, 2016).
2 According to Appellant, the real party in interest is Hyprotek, Inc. Appeal
Br. 3.
Appeal2017-008967
Application 13/571,757
BACKGROUND
According to Appellant, "[ t ]he invention pertains to intra vascular port
access devices, intravascular port cleaning devices, methods of cleaning an
intravascular port, methods of administering an agent into an intravascular
line port, methods of obtaining a blood sample from an individual, and sets
of intravascular line port caps." Spec. ,r 2.
CLAIMS
Claims 1, 27, 28, and 34 are the independent claims on appeal.
Claim 1 is illustrative of the appealed claims and recites:
1. An intravascular line port cap system, the port cap
system configured to be disposed at an end of a plunger rod on
an administration device, and the port cap system comprising:
a first cap member extending lengthwise and having an
opening at a first end thereof and a closed base at a second end
thereof, the first cap member having a chamber;
a second cap member that is smaller than the first cap
member, the second cap member being removably disposed
within the chamber of the first cap member;
an applicator material disposed within both the first cap
member and the second cap member; and
a fluid agent disposed within the first cap member and
the second cap member, and absorbed by the applicator
material,
wherein the fluid agent includes a cleansing agent.
Appeal Br. 23
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Application 13/571,757
REJECTI0NS 3
1. The Examiner rejects claim 34 under 35 U.S.C. § 112, second paragraph,
as indefinite.
2. The Examiner rejects claims 1, 4, 6, 7, 21, 23-26, and 33 under
35 U.S.C. § I03(a) as unpatentable over Hoang4 in view of Genatempo. 5
3. The Examiner rejects claims 2 and 3 under 35 U.S.C. § I03(a) as
unpatentable over Hoang in view of Genatempo, Raulerson, 6 and
Anderson. 7
4. The Examiner rejects claims 8 and 28 under 35 U.S.C. § I03(a) as
unpatentable over Hoang in view of Genatempo and Raulerson.
5. The Examiner rejects claims 22 and 32 under 35 U.S.C. § I03(a) as
unpatentable over Hoang in view of Genatempo and Potter. 8
6. The Examiner rejects claims 27 and 32 under 35 U.S.C. § I03(a) as
unpatentable over Hoang in view of Genatempo, Potter, and Berke. 9
7. The Examiner rejects claim 29 under 35 U.S.C. § I03(a) as unpatentable
over Hoang in view of Genatempo, Raulerson, and Higgins. 10
8. The Examiner rejects claim 31 under 35 U.S.C. § I03(a) as unpatentable
over Hoang in view of Genatempo, Raulerson, Potter, and Berke.
3 The Examiner has withdrawn the rejection of claim 34 under 35 U.S.C.
§ 112, first paragraph, and the rejection of claims 28, 29, and 31 under
35 U.S.C. § 112, second paragraph. See Ans. 13.
4 Hoang et al., US 8,740,864 B2, iss. June 3, 2014.
5 Genatempo et al., US 4,440,207, iss. Apr. 3, 1984.
6 Raulerson et al., US 2006/0030827 Al, pub. Feb. 9, 2006.
7 Anderson, US Des. 212,871, iss. Dec. 10, 1968.
8 Potter, US 4,781,704, iss. Nov. 1, 1988.
9 Berke et al., US 5,100,621, iss. Mar. 31, 1992.
10 Higgins, US Des. 102,368, iss. Dec. 15, 1936.
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Application 13/571,757
9. The Examiner rejects claim 34 under 35 U.S.C. § 103(a) as unpatentable
over Gingras. 11
DISCUSSION
Indefiniteness
With respect to claim 34, the Examiner finds:
assuming that an opening end of the first cap is attached to the
plunger rod, it is unclear why the second cap has been claimed
as being within the first cap, if that is the case, the second cap is
the cap that should actually be disposed at (given the
interpretation above) the plunger rod since it is closer to the
plunger rod, with a larger first cap, the second cap being
removable disposable within the chamber of the first cap.
Non-Final Act. 3. 12
We are persuaded that the rejection of claim 34 is in error. We agree
with Appellant that "whether the claim recites that the first cap is disposed at
an end of the plunger rod or that the second cap is disposed at an end of the
plunger rod, ultimately makes no difference." Appeal Br. 11. Rather, one of
ordinary skill in the art would understand the claim to require that both caps
are disposed at an end of the plunger rod and one cap is disposed within the
other. The Examiner appears to interpret the claim language to require that
the first cap is directly attached to the plunger rod, but the Examiner has not
adequately explained why the language "disposed at" must be interpreted so
narrowly. For these reasons, we do not sustain the rejection of claim 34
here.
11 Gingras, US 3,270,743, iss. Sept. 6, 1966.
12 To the extent the Examiner also rejects claim 34 based on the use of the
term "corresponding," the claim has been amended to remove that language
and this portion of the rejection has been withdrawn. See Appeal Br. 27-38;
see also Ans. 14.
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Application 13/571,757
Obviousness
Rejections over Hoang
With respect to claim 1, we are persuaded of reversible error in the
rejection by Appellant's argument that the Examiner has not shown how the
art teaches or otherwise renders obvious the claim requirement that the
second cap member is removably disposed within the chamber of the first
cap member. See Appeal Br. 12-14.
With respect to claim 1, the Examiner finds that Hoang discloses a
first cap member 60 and a second cap member 5 8 "that is smaller than the
first cap member, the second cap member being capable of being removably
disposed within the chamber of the first cap member (the second cap
member is smaller and thereby inherently capable of being disposed within
the first cap member)." Non-Final Act. 4. Further, in response to
Appellant's arguments, "the Examiner asserts that Appellant has not recited
any criticality to this cap within a cap configuration" and that "[ t ]here is no
persuasive evidence that the particular configuration of the claimed
invention is significant, if anything it would seem to only have negative
implications." Ans. 16. The Examiner also indicates that the claimed
configuration is akin to a process limitation and that the product claimed
requires only two caps, one being smaller than the other. Id. at 16-17.
We agree with Appellant that the claim requires more than the mere
capability of a second cap fitting into a first cap. Rather, the claim requires
the specific configuration of the second cap member being removably
disposed within the first cap member. The relationship between the caps is
not claimed in functional terms such that the mere capability of the art to
perform a specific function is sufficient to show that a limitation is taught by
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Application 13/571,757
the art. Rather, what is claimed is a product with a particular configuration
of two caps. The Examiner has not identified any art teaching the particular
configuration claimed. And the Examiner has not provided any reason why
a person of ordinary skill in the art would have found it obvious to modify
the art to produce a product with the configuration claimed. The fact that
Hoang's second cap may be capable of fitting within the first cap is not a
sufficient reason with adequate underpinnings to support the conclusion of
obviousness. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Based on the foregoing, we are persuaded of reversible error with the
respect to the rejection of claim 1. Accordingly, we do not sustain the
rejection of claim 1.
With respect to the other independent claims, claims 27 and 28,
rejected over various combinations of art including Hoang, the Examiner
relies on the same reasoning discussed above with respect to claim 1 to show
that similar limitations related to the configuration of first and second caps
would have been obvious. We find the rejection of these claims deficient for
the same reason discussed above with respect to claim 1. Accordingly, we
do sustain the rejection of claims 27 and 28. Regarding the dependent
claims rejected over combinations with Hoang, the Examiner does not rely
on the cited are to cure the deficiency found above with respect to the
rejection of the independent claims. Accordingly, we also do not sustain the
rejection of claims 2--4, 6-8, 21-26, 29, and 31-33.
Re} ection over Gingras
With respect to claim 34, the Examiner relies on similar reasoning as
that provided with respect to Hoang to conclude that Gingras renders
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Application 13/571,757
obvious the limitations of claim 34, including the claim requirement that a
second cap is removably disposed within the chamber of a first cap.
Specifically, the Examiner finds that Gingras teaches two caps and that it
would have been obvious to make the second cap smaller than the first so
that the second cap is capable of being disposed within the first cap. Non-
Final Act. 13. We are persuaded of reversible error in this rejection for the
same reasons discussed above with respect to claim 1. In short, the
Examiner has not identified any art that teaches the claimed configuration of
caps and the Examiner has not shown why a person of ordinary skill in the
art would have found it obvious to modify the art to produce a product with
the configuration claimed. Accordingly, we also do not sustain the rejection
of claim 34.
CONCLUSION
We REVERSE the rejections of claims 1--4, 6-8, 21-29, and 31-34.
REVERSED
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