Ex Parte Willis et al

Patent Trial and Appeal Board

Jun 3, 2013

11769762 (P.T.A.B. Jun. 3, 2013)

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.
11/769,762 06/28/2007 Allan F. Willis KCX-332CIPDV(64031946US01 5378
22827 7590 06/03/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
GILBERT, ANDREW M
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
06/03/2013 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 ALLAN F. WILLIS, ALAN CONLIN,
and DONALD J. MCMICHAEL
____________

Appeal 2011-001674
Application 11/769,762
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 14-20 (App. Br.
1).2 The Examiner entered rejections under 35 U.S.C. § 102(b) and 35
U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Kimberly-Clark Worldwide, Inc. (App. Br. 1).
2 Pending claims 1-13 stand withdrawn from consideration (Final Rej. 1).
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STATEMENT OF THE CASE
The claims are directed to a medical product defining a fluid path.
Claim 14 is representative and is reproduced in the Claims Appendix of
Appellants’ Brief.
Claims 14-17 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Dikeman.3
Claims 14-16 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fink.4
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dikeman or Fink in combination with Mikhail.5,6

The Rejection over Dikeman:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Dikeman teaches Appellants’ claimed invention?

3 Dikeman, US 6,419,670 B1, issued July 16, 2002.
4 Fink, US 4,960,412, issued October 2, 1990.
5 Mikhail et al., US 6,050,934, issued April 18, 2000.
6 We recognize Examiner’s reference to “Atkinson”, which is not cited in the
statement of the rejection or listed in the “Evidence Relied Upon” section of
the Answer (see Ans. 6; Cf. id. at 3). Therefore, we find that Examiner’s
reference to “Atkinson” represents a typographical error.
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FACTUAL FINDINGS (FF)
FF 1. Appellants’ Figures 11 and 12 are reproduced below:

Figures 11 (a cross-sectional view) and 12 (a perspective view) illustrate an
exemplary embodiment of Appellants’ valve member 42, which “includes
two walls 70, 72 on opposite sides of the central axis … that extend from the
peripheral portion 68” that contain stiffening members 400 and 402 (Spec. 4:
18-20; 6: 26-29; and 8: 32).
FF 2. Dikeman teaches “a medical product defining a fluid path” as
illustrated in Dikeman’s figure 3, Examiner’s annotation of Dikeman’s
figures 6 and 7, and Dikeman’s figure 10 reproduced below:

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“FIG. 3 is a fragmentary top plan view of [Dikeman’s] delivery tube
assembly” (Dikeman, col. 3, ll. 24-25). Examiner’s annotated “FIG. 6 is a
fragmentary sectional view of the delivery tube assembly, taken along line
6-6 of FIG. 3,” which Examiner annotated to identify what Examiner
interprets as the peripheral portion of the valve member (id. at ll. 30-31;
Ans. 7-8). Examiner’s annotated “FIG. 7 is a fragmentary sectional view of
the delivery tube assembly similar to FIG. 6, illustrating the connector of the
supply tube assembly coupled with the delivery tube assembly of the tube
set,” which Examiner annotated to identify what Examiner interprets as the
peripheral portion of the valve member (Dikeman, col. 3, ll. 32-35; Ans. 8).
“FIG. 10 is a sectional view taken along line 10-10 of FIG. 3” (id. at col. 3,
ll. 41-42).
FF 3. Dikeman’s medical product comprises a valve assembly that
comprises: (a) a valve housing that includes an outer 36 and inner 38
element and (b) a valve body 34 (Dikeman, col. 4, ll. 61-66; see generally
Ans. 3-4 and 9).
FF 4. Dikeman’s valve body 34 includes: (a) a tubular side wall 48 that
defines a first and second end, (b) a thin flexible end wall or membrane 50
that extends across the first end of the body, and (c) a pair of ribs 54 formed
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in the inner surface of the end wall and extending radially in a direction
transverse to the length of a diametric slit 52 in membrane 50 (Dikeman, col.
5, ll. 43-60; see generally Ans. 3-4 and 9).
ANALYSIS
Examiner finds that Dikeman’s flexible side walls/membrane 50
extends from the portion of annotated FIG. 6 that Examiner labeled as the
peripheral portion of the valve member (Ans. 8-9). Based on this finding,
Examiner reasons that since the stiffening members 54 “are located on the
flexible side wall 50 … they do not contact the valve housing 36, the
peripheral portion (circled region in annotated [figure 6]), or any object 68
inserted therein when the valve member is in the open position as shown in
[annotated] Fig 7” (Ans. 8-9; see also id. at 4). We are not persuaded.
Notwithstanding Examiner’s assertion to the contrary, the portions of
annotated FIG. 6, that Examiner labeled as the peripheral portion of the
valve member are part of Dikeman’s flexible end wall/membrane 50 and are
not a peripheral region from which the flexible end wall/membrane 50
extends as required by Appellants’ claimed invention (App. Br. 6; FF 2 and
4; Cf. Ans. 8-9). As it relates to Appellants’ claims, the peripheral portion of
Dikeman’s device “includes the ring-shaped tubular sidewall 48,” that
defines, inter alia, a first end across from which Dikeman’s thin flexible end
wall or membrane 50 extends (FF 2 and 4). Based on the foregoing,
Examiner failed to establish an evidentiary basis on this record to support a
conclusion that Dikeman’s ribs, or stiffening members, 54 remain free from
contact with the peripheral portion of the valve member, e.g., 48, when the
valve member is in the open position as is required by Appellants’ claimed
invention (see FF 2, annotated FIG. 7).
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CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Dikeman teaches Appellants’ claimed invention.
The rejection of claims 14-17 and 20 under 35 U.S.C. § 102(b) as being
anticipated by Dikeman is reversed.

The rejection over Fink:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Fink teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 5. Fink teaches a medical product defining a fluid path as illustrated in
Examiner’s annotation of Fink’s figure 3 and Fink’s figures 3-5 reproduced
below:

“FIG. 3 is a fragmented cross-sectional view of [Fink’s] introducer valve
assembly … with the catheter tube [22] in position [between lips 48] in the
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introducer valve assembly” (Fink, col. 3, ll. 23-26 and col. 4, ll. 17-19).
Examiner annotated Fink’s FIG. 3 to identify what Examiner believes to
represent stiffening members, a valve housing, and flexible side walls
extending from a peripheral portion. “FIG. 4 is a cross-sectional view of the
introducer valve assembly” (id. col. 3, ll. 27-28). “FIG. 5 is a[] perspective
view taken in isolation of the base of a duck-bill valve in the introducer
valve assembly showing its reinforcing rib [58]” (id. at ll. 29-31 and col. 4,
ll. 59-61).
FF 6. Fink teaches that “valve 32 includes a generally cylindrical disk 38
and a mounting, or positioning, ring 40 integrally connected to … or
external to disk 38,” wherein “[d]isk 38 has a diametrically positioned valve
slit 46 having opposed valve lips 48 … [a] pair of diametrically opposed
holding bosses 50 … connected to disk inner cylindrical rim 42,” and “[a]
diametrical reinforcing rib 58[, defined by arched recesses 56, that] …
extends between valve lips 48 and ring 60 in alignment with holding bosses
50.” (id. col. 4, ll. 4-66; see App. Br. 9-10).
ANALYSIS
Appellants’ claims require, inter alia, that a stiffening member be
located on one of the opposing flexible walls that extend from the peripheral
portion of the valve member toward the central axis of the opening in the
valve housing (see Claim 14). In addition, Appellants’ claims require that
the stiffening member remains free from contact with the valve housing, the
peripheral portion of the valve member, and any object inserted therein
when the valve member is in the open position (id.).
Examiner interprets Fink’s drawings to teach that (a) “opposing
flexible valve walls (48, 56) … extend from a peripheral portion (annotated
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circle region [of Fink’s Fig. 3]) of the valve member (40)” and (b)
“stiffening members (58 …) are located on opposing sides of these flexible
valve lip walls (48, 56)” (Ans. 11). Based on this interpretation of Fink,
Examiner finds that Fink’s stiffening members 58 “are free from contact
from the valve housing (24), the peripheral portion of the valve member
(annotated circle region), and an object (22) inserted therein when in the
open position” (Ans. 11). We are not persuaded.
As Appellants explain, Fink’s valve lips 48 extend from ring 60,
which would be considered the peripheral portion of the first valve 32 (App.
Br. 9; FF 5-6). Stiffening member or “rib 58 is in constant contact with …
ring 60, [therefore,] the stiffening member contacts the peripheral portion of
the … valve member” when the valve member is in the open position (App.
Br. 10).
We recognize, but are not persuaded by Examiner’s assertion that
“[r]ing 60 … [is] not structurally required to be the peripheral portion of the
valve member,” which is inconsistent with the requirements of Appellants’
claimed invention as they may apply to Fink’s disclosure (Ans. 12; Cf. FF 5-
6; Claim 14).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Fink teaches Appellants’ claimed invention. The
rejection of claims 14-16 and 20 under 35 U.S.C. § 102(b) as being
anticipated by Fink is reversed.

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The rejection over the Dikeman or Fink in combination with Mikhail:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 7. Examiner relies on Dikeman and Fink as discussed above (see FF 2-
6).
FF 8. Examiner finds that Dikeman and Fink fails to suggest a valve
member that “is at least partially made from a material that has a durometer
value of less than 10 Shore A” and relies on Mikhail to make up for this
deficiency in either Dikeman or Fink (Ans. 6).
ANALYSIS
Based on Dikeman or Fink in combination with Mikhail, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to modify the valve suggested by either Dikeman
or Fink to have a durometer value of less than 10 Shore A or between about
8 to less than 10 Shore A as suggested by Mikhail (see Ans. 6-7).
Examiner, however, failed to establish an evidentiary basis to support
a conclusion that Mikhail makes up for the deficiencies in Dikeman or Fink
discussed above relative to the anticipation rejections.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 18 and 19
under 35 U.S.C. § 103(a) as unpatentable over the combination of Dikeman
or Fink in combination with Mikhail is reversed.
REVERSED
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