Ex Parte Evans et al

Patent Trial and Appeal Board

Jul 22, 2016

12267160 (P.T.A.B. Jul. 22, 2016)

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.
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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.
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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
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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
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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.
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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)
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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.
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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.
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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.
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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.
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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.
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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
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