Ex Parte DaltonDownload PDFBoard of Patent Appeals and InterferencesJun 13, 201211252329 (B.P.A.I. Jun. 13, 2012) Copy Citation 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 App App self- Spec and i repro As s tube surfa A'.” silico dots] as cl creat “We 3-5) eal 2010-0 lication 11 sealing sil . 7, para. [ ts inverted duced bel een in Figu 300'] in su ce B' of th Spec. 6, p ne forms in FIG. 3 A. C The Exa aimed, [bu ing a radia ndl disclos [and] a mu 07591 /252,329 icone tube 0029]. Ap counterp ow. res 3A an ch a mann e tube 300 ara. [0002 a radial gr B.” Spec. laim 3-7, 1 miner foun t] it does n l density g es a radia lti-layered that forms pellant ill art used to d 3B abov er that the ' and the o 8]. “As a adient as i 6-7, para. 4-16, 18, d that “K ot disclos radient.” l density g (due to w 5 one embo ustrates cr form a po e, “[e]last inner surf uter surfa result of th llustrated [00028]. and 21-28 olff substa e the hollo Ans. 3. T radient to inding) de diment of oss-section rt body in omer tube ace B bec ce A beco e inversio [by the con ntially dis w port bo he Examin decrease le vice that h a port bod al views o Figures 3A 300 is inv omes the o mes the in n, the den centration closes the dy being in er further akage (Co as shrink y[.]” f a tube and 3B, erted [into uter ner surface sity of the of the apparatus verted or found tha 1. 6 lines age/ t 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 Copy with citationCopy as parenthetical citation