Ex Parte Vaillancourt et al

Patent Trial and Appeal Board

Aug 24, 2018

14738223 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/738,223 06/12/2015 Michael J. Vaillancourt
27162 7590 08/27/2018
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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.
733900.109 1075
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/27/2018 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 MICHAEL J. VAILLANCOURT,
MARSHALL KERR, and JEICOL HERRERA
Appeal2017-007956
Application 14/738,223 1
Technology Center 3700
Before DONALD E. ADAMS, JENNIFER MEYER CHAGNON, and
RYAN H. FLAX, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4--8, 10, and
12-14 (App. Br. 1). Examiner entered rejections under 35 U.S.C.
§§ 102(a)(l) and 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify "VLV Associates, Inc." and "Michael J. Vaillancourt"
as the real party in interest (App. Br. 1 ).
Appeal2017-007956
Application 14/738,223
STATEMENT OF THE CASE
Appellants' disclosure "relates to a wound protector" (Spec. 1 ).
Claim 1 is representative and reproduced below:
1. A wound protector comprising
a collapsible distal ring of resiliently flexible material;
a flexible sleeve extending from said distal ring and
having a loop at one end thereof; and
an expansion member disposed within said loop of said
flexible sleeve for movement between a collapsed state and an
extended state, wherein movement of said expansion member
into said extended state expands said loop peripherally while
drawing said distal ring and said expansion member towards
each other, said expansion member including a pair of U-
shaped mutually telescoping units wherein one of said units
includes a pair of parallel arms of solid cross-section and the
other of said units includes a pair of parallel arms of tubular
cross-section receiving said arms of said one unit in telescoping
relation.
(App. Br. 16 (emphasis added)2,3.)
The claims stand rejected as follows:
I. Claims 1, 4, 8, and 10 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by O'Prey. 4
II. Claims 6, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of O 'Prey and Hu. 5
2 We recognize that the Claims Appendix of Appellants' Brief is not
paginated. Therefore, we refer to page number of Appellants' Claims
Appendix as if it was numbered consecutively following page 15 of
Appellants' Brief.
3 We acknowledge Examiner's claim interpretation (Final Act. 3-5).
4 O'Prey et al., US 2013/0150681 Al, published June 13, 2013.
5 Hu et al., US 2002/0004628 Al, published Jan. 10, 2002.
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Application 14/738,223
III. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of O 'Prey and LiDonnici. 6
IV. Claims 5 and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of O'Prey and Hogendijk. 7
Rejections III and IV:
On this record, Appellants do not present separate arguments
regarding Rejections III and IV. Therefore, Rejections III and IV are
summarily affirmed and will not be discussed further.
Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that O'Prey teaches Appellants' claimed invention?
ANALYSIS
Appellants' claimed invention requires, inter alia, an expansion
member that includes a pair of U-shaped mutually telescoping units wherein:
(a) one of said units includes a pair of parallel arms of solid cross-section
and (b) the other of said units includes a pair of parallel arms of tubular
cross-section (see App. Br. 16-17 (Appellants' independent claims 1 and
8)).
According to Examiner, 0 'Prey teaches Appellants' claimed wound
protector including "a pair of U-shaped mutually telescoping units ...
wherein one of said units [] includes a pair of parallel arms ... of solid
6 LiDonnici, US 2004/0186354 Al, published Sept. 23, 2004.
7 Hogendijk et al., US 6,051,007, issued Apr. 18, 2000.
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Application 14/738,223
cross-section ... and the other of said units [] includes a pair of parallel arms
of tubular cross-section" (Final Act. 8 6-7; see also App. Br. 8). Appellants,
however, contest Examiner's conclusion that one of O'Prey's telescoping
units includes a pair of parallel arms of solid cross-section as is required by
Appellants' claimed invention (see App. Br. 8 ("Appellants do not regard the
extensions ... of O'Prey to be of solid cross-section")). In this regard,
Appellants contend that "there is no disclosure in O'Prey that the extensions
... are of solid cross-section" (id. at 9). Appellants further contend that
Examiner provides no evidence to support a finding that one of O'Prey's
telescoping units includes a pair of parallel arms of solid cross-section as is
required by Appellants' claimed invention, or that such a solid cross-
sectional pair of parallel arms would have been inherent in O'Prey's
disclosure (id. at 10-11). We agree.
We are not persuaded by Examiner's position that O'Prey inherently
discloses "extensions ... of solid cross section," because the extensions
have "'three dimensions (length, breadth, and thickness)"' or assertion that
Appellants' have "not provided a special definition in the specification or []
argued a specific definition in the Remarks which requires the arms of solid
cross section to be free from cavities or voids or without openings and the
claim as presented does not require such a limitation" (Ans. 12).
Appellants' claimed invention requires a pair of telescoping units, wherein
one unit includes a pair of parallel arms of solid cross-section and the other
unit includes a pair of parallel arms of tubular cross-section (see App. Br. 16
and 17 (Appellants' independent claims 1 and 8)). There can be no doubt
that the pair of parallel arms of solid cross-section and the pair of parallel
8 Office Action mailed August 18, 2016.
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Application 14/738,223
arms of tubular cross-section, required by Appellants' claimed invention, all
exist in three dimensional space and, thus, all have length, breadth, and
thickness. Therefore, Examiner's assertion that the capacity of having
length, breadth, and thickness, inherently suggests a solid, as opposed to a
tubular, cross-section lacks an evidentiary basis on this record.
We are also not persuaded by Examiner's intimation that, because
Appellants' Specification did not define the terms "solid" and "tubular," a
person of ordinary skill in this art would understand the terms to have the
same meaning (see Ans. 12). Such an interpretation of the terms in
Appellants' claims would render the use of the terms "solid" and "tubular"
superfluous. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364,
1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the
terms of the claim is preferred over one that does not do so."); Power Mosfet
Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)
( explaining that a claim construction which renders claim terms superfluous
is generally disfavored). Thus, absent evidence to the contrary, of which
there is none, we find that a person of ordinary skill in this art would
understand the term "solid" in the context of Appellants' claims to mean not
tubular (see App. Br. 16 and 17 (Appellants' independent claims 1 and 8)).
Therefore, for the reasons set forth above, the evidence on this record falls in
favor of Appellants' assertion that O 'Prey fails to disclose a pair of parallel
arms of solid cross-section, even if such a solid cross-section may contain
cavities, voids, or openings that would be distinct from an arm having a
tubular cross-section (App. Br. 9-11; cf Ans. 12 (Examiner asserts that
Appellants failed to establish that the term "solid cross section" "requires the
arms ... to be free from cavities or voids or without openings")).
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CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that O'Prey teaches Appellants' claimed invention. The
rejection of claims 1, 4, 8, and 10 under 35 U.S.C. § 102(a)(l) as being
anticipated by O'Prey is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Examiner finds that O'Prey discloses Appellants' claimed invention,
"includ[ing] a rectilinear rod ... , a pair of elbows ... and a pair of parallel
arms ... , [wherein], each said elbow of said pair of elbows [is] secured to
one end of a respective arm of said pair of parallel arms" and "each elbow is
also secured to a respective end of said rectilinear rod" (Final Act. 9).
Examiner finds, however, that O'Prey "is silent" with regard to whether the
connection between the elbows and arms are "releaseably secured
connection[s]," as required by Appellants' claims 6, 13, and 14 (id.).
Examiner, therefore, relies upon Hu to disclose "a releasable
connection between components of [an] expansion member [] for the
purpose of allowing [] separable components to have a variety of features
and functionalities without requiring a completely new retractor
construction" (Final Act. 10-11 ).
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Based on the combination of O' Prey and Hu, Examiner concludes
that, at the time Appellants' invention was made, it would have been prima
facie obvious
to modify the connection between the elbows and the rectilinear
rod to be a releasable connection as taught by Hu in order to
create modular components which can provide a variety of
features and functionalities without having to stock entirely
different surgical retractors and since it has been held that
constructing a formerly integral structure in various elements
involves only routine skill in the art.
(Id.) We are not persuaded.
As Appellants explain, dependent claims 6, 13, and 14 depend from
claims 1 and 8 respectively (see App. Br. 11 and 14). As discussed above,
Examiner failed to establish an evidentiary basis on this record to support a
finding or conclusion that O'Prey discloses a pair of parallel arms of solid
cross-section as set forth in Appellants' claims 1 and 8. In addition,
Examiner failed to establish that Hu makes up for this deficiency in O'Prey.
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 6, 13, and 14
under 35 U.S.C. § 103(a) as unpatentable over the combination of O'Prey
and Hu is reversed.
AFFIRMED-IN-PART
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