10652681 (B.P.A.I. Feb. 13, 2012)

Ex Parte Ciaglia et al

Board of Patent Appeals and InterferencesFeb 13, 2012

10652681 (B.P.A.I. Feb. 13, 2012)

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. 10/652,681 08/29/2003 Pasquale Ciaglia 10703/033 2549 27879 7590 02/13/2012 INDIANAPOLIS OFFICE 27879 BRINKS HOFER GILSON & LIONE CAPITAL CENTER, SUITE 1100 201 NORTH ILLINOIS STREET INDIANAPOLIS, IN 46204-4220 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 02/13/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte PASQUALE CIAGLIA, MELODEE DECKARD, MARK J. HIATT, and JOSEPH P. LANE __________ Appeal 2010-009362 Application 10/652,681 Technology Center 3700 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 2, 4-15, 17, 20, 22, and 24-27. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-009362 Application 10/652,681 2 STATEMENT OF THE CASE Claims 17, 20, and 24 are the independent claims on appeal. Claim 24 is representative, and reads as follows: 24. A dilator for tracheostomies, comprising: a member extending from a proximal end to a distal end with a passageway extending therethrough, said member having a longitudinal axis, the member having a shaft portion extending distally from the proximal end, a short distal tip portion extending proximally from the distal end, said short distal tip portion having a tapered outer diameter, and a distal portion extending from the shaft portion to the short distal tip portion, the distal portion having a tapered outer diameter and a curvature which are coincident with each other along at least a portion of the longitudinal axis, said distal portion having a length, and having a demarcation along said length, said demarcation having a first outer diameter, said distal portion and said short distal tip portion defining a gradual and continuous taper substantially to the distal end of the member, said distal end defining a second outer diameter, wherein said first outer diameter is at least two times said second outer diameter. The following grounds of rejection are before us for review: I. Claims 2, 6-11, 14, 15, and 24-26 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy 1 and the admitted prior art (Ans. 3). II. Clams 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art, as further combined with Spofford 2 (Ans. 6). 1 Toy, US 3,511,243, issued May 12, 1970. 2 Spofford et al., US 5,186,168, issued Feb. 16, 1993. Appeal 2010-009362 Application 10/652,681 3 III. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art as combined with Davey 3 (Ans. 7). IV. Claims 17, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and Davey (Ans. 7). V. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art, as further combined with Davey (Ans. 9). We reverse. ISSUE Does the preponderance of the evidence support the Examiner’s conclusion that Toy, either alone or in combination, renders obvious the dilator of independent claims 17, 20, and 24, all of which require a shaft? FINDINGS OF FACT FF1. The Specification teaches that the invention is drawn “to devices for percutaneous dilation” (Spec. 1). FF2. Figure 2 of the Specification is reproduced below: 3 Davey et al., US 6,280,423 B1, issued Aug. 28, 2001. Appeal 2010-009362 Application 10/652,681 4 Figure 2 is an elevational view of the dilator of the invention (id. at 3). FF3. The Specification teaches: Dilator 10 of the present invention . . . includes a shaft portion 12 extending from a proximal end 14, and a curved tapered distal portion 16 extending from shaft portion 12 to a small tip portion 18 at distal end 20. Demarcation 22 denotes the location at which the outer diameter is 38 french. A central passageway 24 extends completely there through from proximal end 14 to distal end 20. A marking 26 is identified toward proximal end 14 from demarcation 22 that indicates the recommended depth of maximum insertion into the skin, and that is at that location at which the shaft portion 12 and the curved tapered distal portion 16 meet. (Id. at 5.) FF4. Thus, as set forth above, the shaft portion is from 14 to 26. The shaft, although tapering in, is relatively straight along its length along the longitudinal axis of the device. FF5. Figure 2 of Toy is reproduced below: Appeal 2010-009362 Application 10/652,681 5 Figure 2 shows the outer guide conduit of the apparatus of Toy. FF6. The Examiner finds that the entire device of Toy as shown in Figure 2 is a shaft (Ans. 4). FF7. The Examiner also finds that “[s]ince the Toy device is both tapered and curved along its entire length, any region of the Toy device that is distal to the proximal end could reasonably be called the distal portion” (id. at 10). ANALYSIS Appellants argue that the Examiner’s interpretation of “distal portion” and “shaft” is inconsistent with the Specification and figures (Reply Br. 4). Specifically, Appellants assert that the Examiner “overlooks the presence of the shaft between the distal portion and the proximal end” (id.). That is, Appellants argue, “[u]pon review of the present specification and claims, those skilled in the art would not overlook the presence of a shaft, nor consider the shaft to have some infinitesimal dimension so that the distal portion comprises the proximal end of the dilator” (id. at 5). We agree with Appellants. As discussed above, the shaft is relatively straight along its length along the longitudinal axis of the device from the Appeal 2010-009362 Application 10/652,681 6 proximal end 14 to the marking 26. Thus, the entire instrument of Toy cannot comprise a shaft as it is not relatively straight along its length along the longitudinal axis of the device. As to the Examiner’s alternative interpretation, that “any region of the Toy device that is distal to the proximal end could reasonably be called the distal portion,” that construction essentially reads the requirement for a shaft out of the claim. CONCLUSION OF LAW The preponderance of the evidence does not support the Examiner’s conclusion that Toy, either alone or in combination, renders obvious the dilator of independent claims 17, 20, and 24, all of which require a shaft. We thus reverse the rejection of: claims 2, 6-11, 14, 15, and 24-26 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art; claims 4 and 5 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art, as further combined with Spofford; claims 12 and 13 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art as combined with Davey; claims 17, 20, and 22 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and Davey; and Appeal 2010-009362 Application 10/652,681 7 claim 27 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Toy and the admitted prior art, as further combined with Davey. REVERSED cdc