Ex Parte Evans et alDownload PDFPatent Trial and Appeal BoardJul 22, 201612267160 (P.T.A.B. Jul. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/267, 160 11/07/2008 John G. Evans 34284 7590 07/26/2016 Rutan & Tucker, LLP 611 ANTON BL VD SUITE 1400 COST A MESA, CA 92626 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. 101672.0084P 5564 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 07/26/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@rutan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN G. EVANS, MARK HENRY VADER, MURTAZA AMIN, DAVID M. CISE, and KELLY J. CHRISTIAN Appeal2013-004437 Application 12/267,160 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John G. Evans et al. (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-8 and 11--47. Claims 9 and 10 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal2013-004437 Application 12/267,160 THE INVENTION Appellants' invention is directed to an implantable multi-lumen port. Independent claim 1, reproduced below, is illustrative: 1. An implantable multi-lumen port, comprising: a housing defining at least a first fluid reservoir and a second fluid reservoir; a needle-penetrable first septum that provides selective access to the first fluid reservoir; a needle-penetrable second septum that provides selective access to the second fluid reservoir; and a set of palpation features, including: a first plurality of protrusions included proximate a periphery of the first septum, the first plurality of protrusions defining a first sub-pattern; and a second plurality of protrusions included proximate a periphery of the second septum, the second plurality of protrusions defining a second sub-pattern, the first and second plurality of protrusions palpable following implantation of the port in a patient so as to determine a relative position of the first septum with respect to the second septum, wherein a third sub-pattern different from the first sub- pattern and the second sub-pattern is defined by adjacent protrusions from the first and second plurality of protrusions to aid in determining the respective positions of the first septum and the second septum. THE REJECTIONS ON APPEAL The Examiner has rejected: (i) claims 1, 2, and 11under35 U.S.C. § 102(b) as being anticipated by Fenton (US 4,673,394, issued June 16, 1987); (ii) claims 25, 26, 28-30, 32-36, and 41--46 under 35 U.S.C. 2 Appeal2013-004437 Application 12/267,160 § 102(b) as being anticipated by Beasley (US 2006/0224129 Al, published Oct. 5, 2006); (iii) claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Fen ton in view of Beasley; (iv) claims 12-24 under 35 U.S.C. § 103(a) as being unpatentable over Beasley in view of Powers (US 5,833,654, issued Nov. 10, 1998); (v) claims 27, 31, and 38--40 under 35 U.S.C. § 103(a) as being unpatentable over Beasley in view of Zinn (US 2007 /0233017 Al, published Oct. 4, 2007; and (vi) claim 37 under 35 U.S.C. § 103(a) as being unpatentable over Beasley. ANALYSIS Claims 1, 2, and 11--Anticipation by Fenton The Examiner finds that Fenton discloses all limitations set forth in claim 1, including a third sub-pattern of protrusions, different from first and second sub-patterns, that is defined by adjacent protrusions from the first and second plurality of protrusions, with the third sub-pattern aiding in determining the respective positions of the first and second septa. Final Act. 2-3. More specifically, the Examiner regards the convex shapes along which the adjacent protrusions of the first and second plurality of protrusions extend as constituting the third sub-pattern. Id. at 3. The Examiner provides an annotated version of Figure 6 of Fenton to illustrate where the Examiner finds the third sub-pattern to exist. Ans. 1 7. 3 Appeal2013-004437 Application 12/267,160 Appellants principally argue that Fenton does not expressly disclose the limitation at issue, nor is such inherent in the Fenton disclosure. Appeal Br. 11-13; Reply Br. 4. Regarding the alleged lack of explicit disclosure, Appellants note that Figure 6 of Fenton does not "expressly" show any protrusions, and that Figure 6A does not show adjacent protrusions from separate sets of protrusions, in that that drawing figure shows only one septum. Reply Br. 4. Appellants fail to note, however, that Fenton discloses that "FIG. 6A shows a detail of a preferred embodiment of a multi-reservoir implantable device, such as the device of FIG. 6, but having formed thereon bumps or other tactile features." Fenton, col. 5, 11. 3---6. Not only that, Appellants appear to ignore that the device shown in Figure 6A, which Appellants maintain has only a single septum, is plainly illustrated as only a portion of a device. Taking these factors into account, Fenton would be understood by a person of ordinary skill in the art as containing an express disclosure that features of the device shown in Figure 6A may also form a part of the device in Figure 6. Accordingly, Appellants' attempt to have Figures 6 an 6A of Fenton considered as two different embodiments is not well taken, and is not persuasive of a lack of explicit disclosure of a third sub-pattern produced by adjacent protrusions. Appellants additionally argue that "the Examiner has improperly assumed that the alleged arrangement of protrusions around each septum would be the same," and that Fenton instead discloses that the tactile features preferably have different arrangements to aid in distinguishing one reservoir from another. Reply Br. 4. The Examiner, however, does not and need not rely on a particular and precise pattern of individual tactile features at the periphery of each septum. The Examiner has established that tactile 4 Appeal2013-004437 Application 12/267,160 features are provided along the two retaining rings 4, and that the adjacent group of protrusions from each of the two retaining rings are positioned along two arcuate sections that constitute a third sub-pattern that is different than the first and second sub-patterns. See Ans. 17, Figure A (annotated Figure 6 of Fenton). Appellants further argue that the Examiner's finding of two convex shapes providing a third sub-pattern in Fenton does not evidence that such pattern would "aid in determining the respective positions of the first septum and second septum," as claimed. Appeal Br. 12. Appellants maintain that the Examiner relies on a passage in Fenton that is directed to a device that employs more than two (i.e., three or more) reservoirs, thus purportedly negating the ability of the pair of convex shapes to aid in determining the positions of first and second septa. The argument is misplaced, in that Appellants refer only to the last sentence of the paragraph in Fenton discussing Figure 6A, while ignoring the first part of that paragraph that refers expressly to Figure 6, a device having only two reservoirs. See Fenton, col. 5, 11. 3-17. As such, we are not apprised of Examiner error in rejecting claim 1 as anticipated by Fenton, and that rejection is sustained. Appellants do not provide additional arguments directed to dependent claims 2 and 11, and therefore those claims fall with claim 1. Claims 25, 26, 28-30, 32-36, and 41--46--Anticipation by Beasley Appellants maintain that the Examiner's findings are deficient with respect to the claim 25 limitation requiring a radiographically visible indicator having first and second portions in which the first and second 5 Appeal2013-004437 Application I2/267,I60 portions include "information regarding" a first and second sub-pattern, respectively, as well as regarding a first and second reservoir. Appeal Br. I3-I5; Reply Br. 5-7. The Examiner's position is that this limitation is met by at least three different elements or aspects of the Beasley device, each of which "includes information regarding" the first and second sub-patterns and reservoirs, by virtue of including the location of the first and second septa. 1 Final Act. 4; Ans. 20. The Examiner explains that, "[b ]y identifying the location of the first septum, the first portion 'includes information regarding the first sub-pattern and first reservoir' (as claimed) because the location of the sub-pattern (that is formed on the first septum, as seen in Fig. 9 [of Beasley]) and of the first reservoir is 'information regarding' those two components." Ans. 20-2 I. The same explanation is given for the second portion of the objects. Id. at 2 I. In short, according to the Examiner, "the location of a component is 'information regarding' the component." Id. The Examiner's interpretation of "information regarding" is appropriate to an extent. Appellants argue that the purported indicators relied on by the Examiner do not provide information as to "how many protrusions [making up the sub-patterns] are on the first or second septum, let alone in what type of sub-pattern the protrusions are arranged." Appeal Br. I4-I5. The Examiner is correct in noting that those specific types of 1 The Examiner specifically cites to (1) titanium bottom cup members I 4A and I4B in Figures IA and IC; (2) the disclosure of a "metal feature" that may be included within a septum, in paragraph 7 6; and (3) suture openings extending through the port housing in Figure IB, as the radiographically visible indicators. Final Act. 3-7. 6 Appeal2013-004437 Application 12/267,160 information regarding the sub-patterns are not required by claim 25. Ans. 21. However, claim 25 calls for "information regarding" the first (or second) reservoir as well as "information regarding" the first (or second) sub-pattern defined by a first (or second) plurality of protrusions. It might well be understood that, for example, a titanium cup positioned at the bottom of a reservoir underlying a septum would provide "information regarding" (i.e., the location of) the reservoir. By separately reciting that the radiographically visible indicator is also to provide "information regarding" the first (or second) sub-pattern, the claimed indicator must provide information different from, or in addition to, the "information regarding" the reservoir. To construe the claim more broadly, as the Examiner has, as encompassing a device providing a single piece of information "regarding" both the reservoir and the sub-pattern, effectively reads out of the claim the requirement that the indicator separately include information regarding a sub-pattern of protrusions. Cf, In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) (claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means). As Appellants argue, the Examiner has not shown that the purported indicators include information as to whether protrusions are or are not provided on the septa of an access port at the outset, or, if provided, are in any sort of pattern. Appeal Br. 15 ("a clinician ... would have no idea whether the septa included any protrusion at all or whether there even exists a pattern of any kind."). The Examiner's response is that "Beasley discloses that the septa have protrusions in a pattern there[]upon (as seen in Fig. 9) 7 Appeal2013-004437 Application 12/267,160 and the claims do not presently state that the indicator must indicate the shape of the pattern." Ans. 21. Again, we agree with the latter observation, but the former points to a flaw in the Examiner's position, namely that the Examiner presupposes that protrusions forming sub-patterns will necessarily be present on the septa of any given access port. If such were the case, information regarding the location of the septa might well be seen as providing information in the form of the general location of a sub-pattern of protrusions. However, notwithstanding the Beasley Figure 9 embodiment disclosing a sub-pattern of protrusions on a septum, it is the function of the claimed indicator, and not foreknowledge on the part of the clinician, to provide, upon radiographic imaging thereof, some form of information that a plurality of protrusions are present in some form of a sub-pattern. The rejection of claim 25, and of claims 26, 28-30, 32-36, and 41--46 depending therefrom, is not sustained. Claims 3--8--Unpatentable over Fenton and Beasley Claim 3 depends from independent claim 1 and requires that the first and second pluralities of protrusions, recited in claim 1 as being included proximate a periphery of respective first and second septa, are "defined by" the respective first and second septa "about the periphery of' the first and second septa. Both the Examiner and Appellants construe these additional limitations as requiring first and second pluralities of protrusions to be disposed on the respective first and second septa. Final Act. 8; Appeal Br. 18-20. 8 Appeal2013-004437 Application 12/267,160 The pertinent disclosure in Fenton is that first and second pluralities of protrusions are provided on retaining rings surrounding first and second septa, but not on the septa themselves. Fenton, col. 5, 11. 3-13. In rejecting claim 3 as being unpatentable over Fenton in view of Beasley, the Examiner takes the position that, "modifying Fenton to include additional protrusions near the center of the septa (as seen in Fig 9 of Beasley et al.) would provide an indication that aids in ensuring that exact center of each septum." Ans. 26. Appellants point out that the resulting structure, taking the above modification proposed by the Examiner into account, would be a port in which "both sets of protrusions are retained simultaneously ... , such that each septum has two sets of protrusions, one set about a periphery of the septum on the housing as ... in Fenton and one set on the septum itself as ... in Beasley." Reply Br. 11. Appellants "submit[] that this [is] improper at least because the claims require a single set of a 'first plurality' and 'second plurality' of protrusions that satisfy each and every requirement" of the claims. Id. at 12. In particular, Appellants note that the same first and second sets of protrusions must both define first and second sub-patterns that together define a third sub-pattern, as well as be "defined by" the first and second septa. Id. As suggested by Appellants, claim 3 does require that the same first and second pluralities of protrusions as defining first and second sub- patterns in claim 1, also be defined by the first and second septa as set forth in claim 3. The Examiner's proposed modification to Fenton in view of Beasley fails to take this into account, and results in a structure not meeting all requirements of claim 3. 9 Appeal2013-004437 Application 12/267,160 Thus, the rejection of claim 3, and of claims 4--8 depending therefrom, is not sustained. Claims 12-2 4-- Unpatentable over Beasley and Powers Claim 12 requires that the protrusions from each of the first and second sets of protrusions that are adjacent a recited palpable ridge are positioned "such that a line therethrough bisects the first septum and second septum." The issued joined with respect to this claim is whether the term "bisect" is to be interpreted as requiring a division into two equal portions (Appellants' position) or more broadly as requiring only a division into any two portions (the Examiner's position). Appellants urge that the plain and ordinary meaning of "bisect," in a medical context, supports its position that "bisect" requires a division into two equal lengths or parts, and that this is consistent with the usage of "bisect" in the Specification. Appeal Br. 25 (citing definition from Mosby's Medical Dictionary; Spec., para. 42, and Fig. 3). The Examiner, not surprisingly, points to other definitions of the term that do not specify that the division or cut is necessarily to be into equal parts. Ans. 32. We do not view either the medical definition supplied by Appellants, 2 nor the Specification as necessarily determinative on this issue. Nonetheless, we find that we must side with Appellants in terms of the Examiner's position requiring an unreasonably broad interpretation of the term "bisect," in this particular instance. 2 The definition appears to relate to anatomical considerations, and, although the claimed access port is to be implanted into a patient's body, it is not, in and of itself, an anatomical structure. 10 Appeal2013-004437 Application 12/267,160 The Examiner relies on a structure in Beasley in which two septa of the configuration shown in Figure 9 thereof are employed in a port device as illustrated in Figure 1 B, in which the septa are circular and positioned side- by-side. Final Act. 8-9. It appears, from viewing Figure lB, that the only points though which lines could be drawn that would not cut the two septa into two portions would be points at the peripheral extents of each septa lying on a line tangent to the two circular septa. Given that the protrusions shown on the septum of Figure 9 are radially inward of the peripheral extent of the septum, in every instance in which a line is drawn through a protrusion on one septum and a protrusion on the other in the Figure lB arrangement, such a line would "bisect" the two septa, using the Examiner's construction. 3 Indeed, this comports with the Examiner's stated position that "a line connecting any one protrusion from the first plurality to any one protrusion from the second plurality will cut/divide the two septa and therefore 'bisect' the septa." Ans. 32. Such a construction, which results in the claim language being met regardless of the manner in which the protrusions are arranged on each septum, effectively renders the claim limitation requiring that "the adjacent protrusions positioned such that a line therethrough bisects the first septum and second septum," superfluous or meaningless, and therefore unreasonably broad. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 3 This would be true even if the protrusions were as the very extent of the periphery, provided that the line is drawn through the centers of the protrusions, which would be radially inward of the peripheral edges of the septa. 11 Appeal2013-004437 Application 12/267,160 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). Accordingly, for the claim term to have any meaning, reversion must be had to the construction advanced by Appellants, which is that the term "bisect" requires a cutting or dividing into two equal parts. Under this construction, the Examiner has not established that the arrangement of the protrusions when employing two of the Figure 9 septa of Beasley in the Figure lB access port would meet this limitation, or that an arrangement resulting in the limitation being met would have been obvious to a person of ordinary skill in the art. The rejection of claim 12 as being unpatentable over Beasley and Powers is thus not sustained. Claims 13-24 depend either directly or indirectly from claim 12, and the same rejection as to those claims is not sustained. Claims 27, 31, and 38--40--Unpatentable over Beasley and Zinn Claims 27, 31, and 38--40 all depend from independent claim 25. The Examiner does not rely on Zinn in any manner that directly addresses the deficiencies in Beasley in anticipating claim 25. Accordingly, the rejection of these claims as being unpatentable over Beasley and Zinn is not sustained. Claim 37--Unpatentable over Beasley Claim 37 depends from independent claim 25. The Examiner does not propose modifying Beasley in any manner that directly addresses the deficiencies of Beasley in anticipating claim 25. Accordingly, the rejection of claim 37 as being unpatentable over Beasley is not sustained. 12 Appeal2013-004437 Application 12/267,160 DECISION The rejection of claims 1, 2, and 11under35 U.S.C. § 102(b) as being anticipated by Fenton is AFFIRMED. The rejection of claims 25, 26, 28-30, 32-36, and 41--46 under 35 U.S.C. § 102(b) as being anticipated by Beasley is REVERSED. The rejection of claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Fenton in view of Beasley is REVERSED. The rejection of claims 12-24 under 35 U.S.C. § 103(a) as being unpatentable over Beasley in view of Powers is REVERSED. The rejection of claims 27, 31, and 38--40 under 35 U.S.C. § 103(a) as being unpatentable over Beasley in view of Zinn is REVERSED. The rejection of claim 37 under 35 U.S.C. § 103(a) as being unpatentable over Beasley is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation