Ex Parte Dalton

Board of Patent Appeals and Interferences

Jun 13, 2012

11252329 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/252,329 10/17/2005 Michael J. Dalton 9250/10 8562
7590 06/13/2012
Cardinal Law Group
Suite 2000
1603 Orrington Avenue
Evanston, IL 60201
EXAMINER
OSINSKI, BRADLEY JAMES
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
06/13/2012 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 MICHAEL J. DALTON
____________________

Appeal 2010-007591
Application 11/252,329
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007591
Application 11/252,329

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 3-7, 14-16, 18 and 21-28. We have jurisdiction under 35 U.S.C.
§ 6(b).

According to Appellant, the invention relates to medical devices, and
more specifically to implantable drug delivery depots or ports for the
subcutaneous delivery of fluids to the body. Spec. 1, para. [0001]. Claim 3,
reproduced below, is illustrative of the claimed subject matter.
3. An implantable port device, comprising:
an elastomeric hollow port body, the elastomeric hollow
port body comprising a cylindrical port body, including an
inner surface and an outer surface, the inner surface forming a
lumen for receiving fluid, wherein the elastomeric hollow port
body comprises at least one inverted silicone elastomeric tube,
the device further comprising:
a first port end portion sealingly attached to a first
end of the port body; and
a second port end portion attached to a second end
of the port body, the second port end portion having an
outlet for fluid communication with a fluid delivery
tube.

REJECTIONS
The Examiner makes the following rejections:
I. Claims 3-7, 14-16, 18 and 22-28 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Kolff (US 4,184,497, iss. Jan. 22, 1980) in
view of Wendl (US 6,032,960, iss. Mar. 7, 2000. Ans. 3.
Appeal 2010-007591
Application 11/252,329

3
II. Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Kolff and Wendl and further in view of Magram (US 5,405,316,
iss. Apr. 11, 1995). Ans. 5.

GROUPING OF CLAIMS

Appellant argues claims 3-7, 14-16, 18 and 22-28 as a group. App.
Br. 10.
In accordance with 37 C.F.R. 41.37(c)(1)(vii), we select claim 3 as
representative of claims 4-7, 14-16, 18 and 22-28. Therefore, we will treat
claims 4-7, 14-16, 18 and 22-28 as standing or falling with representative
claim 3.
Appellant does not present any separate arguments contesting the
rejection of claim 21, which depends from claim 3. Thus, our decision on
the rejection of claim 3 will also be dispositive as to the rejection of claim
21.

We AFFIRM.

OPINION
As an initial matter, we decline Appellant’s invitation to search for
and consider arguments not actually raised in the Appeal Brief. See App.
Br. 10 (“Rather than simply reiterate the arguments previously presented,
each of which is incorporated as if repeated herein, Appellant focuses on the
Examiner’s errors in applying the law.”). The MPEP states that
[i]t is essential that the Board be provided with a brief fully
stating the position of the appellant with respect to each ground
Appeal 2010-007591
Application 11/252,329

4
of rejection presented for review in the appeal so that no search
of the record is required in order to determine that position.
Thus, the brief should not incorporate or reference previous
responses.

MPEP at § 1205.02. Further, 37 C.F.R. § 41.37(c)(1)(vii) provides that
“[a]ny arguments or authorities not included in the brief or a reply brief filed
pursuant to § 41.41 will be refused consideration by the Board, unless good
cause is shown.” As such, we consider only those of Appellant’s arguments
actually raised in his appellate briefs.
According to the “Background of the Invention” section of
Appellant’s specification,
implantable ports are implanted between the skin and
underlying fascia of the body and allow for the injection of
fluids through a self-sealing septum or diaphragm located just
under the skin and connected to a catheter or outlet tube which
is placed in a vein. The implantable port is connected to a
catheter or an outlet tube that is placed in a vein. Selfsealing
septum have been used in the field of oncology for many years.
The design of currently available implantable ports requires a
flat silicone disk contained and compressed between two rigid
frames. These frames with openings for the silicone compresses
the silicone so that any puncture to the silicone is closed by
excess material forcing the hole closed. The design, therefore,
relies on a rigid top and bottom surface to compress the silicone
in such a manner as to enable a puncture to close when the
needle is removed.

Spec. 1, para. [0002]. Appellant’s specification discloses a method “of
providing a hollow silicone tube having a uniform density and inverting the
hollow silicone tube to form a port body having a silicone density gradient.”
Spec. 3, para. [0009]. “The density gradient thus formed combined with the
compressive force created by the inversion of the elastomer tube creates a
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07591
/252,329
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Appeal 2010-007591
Application 11/252,329

6
compressive forces interacting to create the density gradient (Col. 6 lines 27-
35).” Ans. 3-4.
Independent claim 3 requires, in relevant part, that “the elastomeric
hollow port body comprises at least one inverted silicone elastomeric
tube[.]” The Examiner found that
[i]nversion of a tube will still result in a tube, the actual
inversion of the tube is directed to a method of making a device
and does not yield a structural difference other than the above
mentioned radial density gradient.

Ans. 3.
We agree with the Examiner that inversion of a tube still results in a
tube. Indeed, Appellant’s specification concedes this point, referring to
structure 300 as a “tube” and also referring to structure 300' as a “tube.”
Spec. 6, para. [00028], Figs. 3A and 3B.
We also agree with the Examiner that the actual inversion of a tube is
directed to a method of making a device. Indeed, Appellant’s specification
concedes this point, referring to a “method compris[ing] the steps of
providing a hollow silicone tube having a uniform density and inverting the
hollow silicone tube to form a port body having a silicone density gradient.”
Spec. 3, para. [0009].
We do not agree with the Examiner that inversion of a silicone
elastomeric tube necessarily yields a structural difference of a radial density
gradient. Instead, it depends on the structural qualities of the starting tube
that is then inverted. For example, inverting Appellant’s tube 300' as shown
in Figure 3B would result in tube 300 having a uniform density as shown in
Figure 3A and not a radial density gradient. Radial density gradient is not a
limitation, either express or implied, of claim 3.
Appeal 2010-007591
Application 11/252,329

7
Independent claims 5 and 14, unlike claim 3, do recite a limitation
directed to a radial density gradient. More specifically, they each recite a
port body that “comprises a plurality of silicone elastomeric tubes, the
plurality of elastomeric tubes forming a radial density gradient of silicone[.]”
The Examiner found that “[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to form a radial density
gradient and compressive forces with the multiple layers of Kolff as taught
by Wendl to decrease the chance of leakage in the device.” Ans. 4
Appellant argues that “the use of a multi-layered structure is
inappropriate and any reference, such as Wendl, that teaches use of a multi-
layered structure can only teach away from the claimed invention.” Ans. 11.
We reject Appellant’s argument.
Appellant’s own claimed invention is directed to multi-layered
structures. For example, claim 3 recites “at least one inverted silicone
elastomeric tube,” claim 5 recites “a plurality of elastomeric tubes[,]” and
claim 14 recites “a plurality of inverted silicone elastomeric tubes[.]”
Further, Appellant’s specification extensively teaches that multiple layers
are appropriate. Spec. 8-12, para. [00032]-[00048].
We find the Examiner did not err in rejecting claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Kolff in view of Wendl. We thus sustain the
rejection of claim 3, and claims 4-7, 14-16, 18 and 22-28, which fall
therewith. We also sustain the rejection of claim 21 under 35 U.S.C.
§ 103(a) as unpatentable over Kolff, Wendl, and Magram, as Appellant has
not presented any separate arguments against this rejection.

Appeal 2010-007591
Application 11/252,329

8
DECISION
The Examiner’s rejection of claims 3-7, 14-16, 18 and 21-28 is
AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

MP