Ex Parte Zeltzer et al

Patent Trial and Appeal Board

Oct 21, 2016

12560140 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/560,140 09/15/2009
25243 7590 10/24/2016
KELLEY DRYE & WARREN LLP
3050 K STREET, NW
SUITE400
WASHINGTON, DC 20007
FIRST NAMED INVENTOR
Paul M. Zeltzer
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.
022753-0001 9730
EXAMINER
DOUGHERTY, SEAN PATRICK
ART UNIT PAPER NUMBER
3736
MAILDATE DELIVERY MODE
10/24/2016 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 PAUL M. ZEL TZER and LLOYD FISCHEL
Appeal2014-005179
Application 12/560,140
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and JILL D. HILL,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul M. Zeltzer and Lloyd Fischel (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 21-23. 1
We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing in accordance
with 37 C.F.R. § 41.47 was held on October 13, 2016. We REVERSE.
1 Appellants filed an amendment, canceling withdrawn claims 1-20 and
24--34, with their Appeal Brief, on November 12, 2013. See 37 C.F.R.
§ 4 l.33(b )(1) (permitting such amendments). The Examiner does not
explicitly indicate whether this amendment has been entered. See Ans. 2,
5-7. We leave it to the Examiner to clarify the status of these claims upon
return of jurisdiction of this application to the Examiner. In either case,
whether canceled or pending and withdrawn from consideration, claims
1-20 and 24--34 are not involved in this appeal.
Appeal2014-005179
Application 12/560,140
THE CLAIMED SUBJECT MATTER
Claim 21, reproduced below, is illustrative of the claimed subject
matter.
21. A device for withdrawing spinal fluid from or injecting fluid
into a spinal canal, comprising:
a solid trocar rod having a front tip with a beveled planar
surface;
a cannula having a beveled patient end, a non-patient end,
an outer surface, and a central passage adapted to receive said
trocar rod;
one or more depth markings on said cannula; and
an orientation marking on said cannula; and
an orientation marking on said trocar.
REJECTION
Appellants request our review of the Examiner's rejection of claims
21-23 under 35 U.S.C. § 102(b) as anticipated by Henriques de Gatztafiondo
(US 3,993,079, iss. Nov. 23, 1976, hereinafter "Henriques").
DISCUSSION
Independent claim 21 requires "a solid trocar rod." Br. 16 (Claims
App.). In rejecting claim 21 as anticipated by Henriques, the Examiner
reads the claimed "solid trocar rod" on "element 1" of Henriques, "not[ing]
that the walls of the trocar rod are solid." Ans. 2. The Examiner insists that
"the trocar" (i.e., Henrique' s needle 1) "may be considered solid" because it
has "solid walls." Id. at 5.
Appellants contend that Henrique' s needle 1 is hollow, not solid, and,
thus, is not a "solid trocar rod" as called for in claim 21. Br. 12. Appellants
add that "the present application expressly distinguishes the claimed trocar,
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Appeal2014-005179
Application 12/560,140
which is solid with a front tip planar surface, from the type disclosed in
[Henriques]." Id. at 13 (citing Fig. 3; para. 14).
Appellants' argument is persuasive. A person having ordinary skill in
the art would have readily understood, from the description and depiction of
trocar 40 in the present application, that the application uses the terminology
"solid trocar rod" to denote a solid (not hollow) structure. See Spec., para.
10 (describing a "solid sty let or trocar" and pointing to Figures 4 and 5
regarding "the shape of the trocar beveled planar surface 42"); Fig. 4
(depicting a solid, cross-hatched trocar beveled planar surface); para. 41
(disclosing that "as the trocar 40 is withdrawn, spinal fluid may flow from
the patient 50 spinal canal 52 into the cannula 20 central passage"). This
solid trocar construction is significant for a spinal tap procedure because it
"is used to prevent the tip of the spinal needle from becoming blocked by
tissue as the needle passes through skin and other tissues or advancing skin
cells into the spinal canal." Spec, para. 5. The Examiner's construction of
"solid trocar rod" as encompassing a hollow needle with solid walls
effectively reads the term "solid" out of the claim recitation, and, thus, is
unreasonable, when considered in light of Appellants' Specification. See
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(disfavoring claim constructions which render phrases in claims
superfluous).
Moreover, we also find persuasive Appellants' argument that
Henriques fails to disclose the claimed cannula orientation marking and
trocar orientation marking. Appeal Br. 13. The Examiner posits that
connecting portions 6 and 9 constitute orientation markings because they
"are visible to an operator of the device" and, thus, indicate the relative
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Appeal2014-005179
Application 12/560,140
"orientation[s]" (in the distal or proximal direction) of needle 1 and trocar 2.
Ans. 6. This position is untenable, as such indication of the locations of
needle 1 and trocar 2 relative to one another in the distal or proximal
direction is not the same as indicating orientation or relative orientation.
Accordingly, for the above reasons, we do not sustain the rejection of
independent claim 21, or claims 22 and 23, which depend from claim 21, as
anticipated by Henriques.
DECISION
The Examiner's decision rejecting claims 21-23 is reversed.
REVERSED
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