Ex Parte Harmanli

Patent Trials and Appeals Board

Jun 28, 2019

13633247 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/633,247 10/02/2012
113961 7590 07/01/2019
Bulkley, Richardson and Gelinas, LLP
1500 Main Street, Suite 2700
Springfield, MA 01115-5507
FIRST NAMED INVENTOR
Oz Harmanli
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.
09023P-DIV-002 2245
EXAMINER
NGUYEN,CAMTUTRAN
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
07/01/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte OZ HARMANLI
Appeal 2018-008715
Application 13/633,247
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-11, 13, 14, and 16. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE.
Appeal 2018-008715
Application 13/633,247
THE INVENTION
Appellant's invention is a vaginal pessary. Spec. ,i 2. Claim 1,
reproduced below, with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A vaginal pessary, which comprises:
a cylindrical body
which terminates in blunt, rounded or shaped distal and
proximal ends,
which is yieldably extensible into an uncoiled elongate
configuration
for placement in an insertion/withdrawal device and
self-retracting into a helically or spirally coiled
configuration
having a non-cylindrical overall shape upon leaving the
insertion/withdrawal device; and
means for withdrawal of the pessary from a vaginal cavity
attached to the proximal end of the cylindrical body,
wherein the vaginal pessary is adapted for use within the
vaginal cavity and manages pelvic organ prolapse.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Warmoth
Mohajer
Biswas
Yeung
Ulmsten
Zunker'025
Zunker '485
Kusleika
Sokal
Ellingwood
us 328,553
us 4,821,741
us 5,036,867
WO 01/26588 A2
US 6,645,137 B2
US 6,770,025 B2
US 6,808,485 B2
US 7,166,120 B2
US 2008/0051740 Al
US 8,556,930 B2
2
Oct. 20, 1885
Apr. 18, 1989
Aug. 6, 1991
June 7, 2000
Nov. 11, 2003
Aug. 3, 2004
Oct. 26, 2004
Jan.23,2007
Feb.28,2008
Oct. 15, 2013
Appeal 2018-008715
Application 13/633,247
The following rejections are before us for review: 1
1. Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Warmoth, Zunker '485, Ellingwood, and Mohajar.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Warmoth, Zunker '485, Ellingwood, Mohajar, and Ulmsten.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Warmoth, Zunker '485, Ellingwood, Mohajar, Biswas, and
Zunker '025.
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Warmoth, Zunker '485, Ellingwood, Mohajar, and Yeung.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Warmoth, Zunker '485, Ellingwood, Mohajar, and Sokal.
6. Claims 9 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warmoth, Zunker '485, Ellingwood, Mohajar, and
Kusleika.
7. Claims 10, 11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Warmoth, Zunker '485, Ellingwood, Mohajar, and
Biswas.
Claim 1
OPINION
Unpatentability of Claims 1, 2, 6, and 7
over Warmoth, Zunker '485, Ellingwood, and Mohajar
The Examiner finds that the combination of Warmoth, Zunker '485,
Ellingwood, and Mohajar disclose all of the elements of claim 1 and
1 A rejection under 35 U.S.C. § 112, second paragraph, has been withdrawn
by the Examiner. Ans. 3 7.
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Appeal 2018-008715
Application 13/633,247
concludes that it would have been obvious to achieve the claimed invention
by combining the teachings of the four references. Non-Final Action 5-7.
In particular, the Examiner finds that Warmoth' s pessary is yieldably
extensible into an uncoiled elongate configuration as claimed. Id. at 5.
Appellant argues that Warmoth' s pessary is not yieldably extensible
as claimed. Appeal Br. 10. Appellant asserts that Warmoth would reach its
elastic limit before becoming uncoiled in which case it would undergo
plastic deformation and never return to its original shape. Id.
In response, the Examiner states that the claim does not recite any
degree or amount of uncoiling. Ans. 38. With that in mind, the Examiner
finds that Warmoth is yieldably extensible into an uncoiled elongate
configuration. Id.
Appellant's claims have not recite to what degree of elongation
or uncoiled configuration being exerted on the claimed
cylindrical body. Warmoth's spring-metal wire is yieldable
extensible to an uncoiled elongate configuration and self-
retracts to a point prior to the elastic limit or yield point.
Id. The Examiner's response requires us to construe the terms "uncoiled"
and "elongate," which terms are used in conjunction with each other.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the
broadest reasonable interpretation, the Board's construction "cannot be
divorced from the specification and the record evidence." In re NTP,
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Appeal 2018-008715
Application 13/633,247
Inc., 654 F.3d 1279, 1288 (Fed. Cir.2011). A construction that is
"unreasonably broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).2
In construing claims, we cannot look at the ordinary meaning of a
term in a vacuum. E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, 921
F.3d 1060, 1068 (Fed. Cir. 2019). It is the use of words in the context of the
written description and as customarily used by those of skill in the relevant
art that accurately reflects both the 'ordinary' and 'customary' meaning of
the terms in the claims." Ferguson Beauregard/Logic Controls, Div. of
Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
Thus, construing the terms of a claim without considering the context in
which those terms appear is not reasonable. Trivascular, Inc. v. Samuels,
812 F.3d 1056, 1062 (Fed. Cir. 2016).
In the instant case, the context of the claim, as read in light of the
Specification, informs us that the pessary is "uncoiled" into an "elongate"
configuration and that it uncoils to fit into an insertion/withdrawal device.
Claims App. claim 1 Spec. 47, Fig. 15. In this regard, the pessary is forcibly
elongated to a preferred diameter of not more than about 2.5 cm. Claims
App., claim 1, Spec. 47, Fig. 15. Following deployment, it exhibits a
diameter on the order ofup to about 9.0 cm. Spec. 36. Moreover, the
insertion/withdrawal device is not just for insertion. The context of claim 1,
supported by the Specification, indicates that the pessary is both inserted and
removed using the insertion/withdrawal device. Id. Claims App., claim 1,
2 Overruled on other grounds by Aqua Products, Inc. v. Mata!, 872
F.3d 1290 (Fed. Cir. 2017).
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Appeal 2018-008715
Application 13/633,247
Spec. ,i,i 58-59. Not only that, but the device, once deployed, must be
capable of returning to an elongated uncoiled state for removal. Claims
App. claim 1. Thus, while the claim does not expressly recite a precise
amount of uncoiling and elongation, there is sufficient context from which a
person of ordinary skill in the art may discern that the claimed device is
designed and intended to transition in diameter from a stowed condition of
about 2.5 cm to a deployed condition that may be as large as about 9.0 cm
and then, be capable of returning to its pre-deployment size and condition
for removal. Spec. ,i,i 36-37, See, e.g., MPEP § 2 l 73.05(b )(I)( explaining
that it is appropriate to consult the Specification to ascertain a standard for
measuring the degree implied by a claim term)
Furthermore, with respect to removal, a person of ordinary skill in the
art would understand that the force required to return the device to its pre-
deployment size and condition must be such that removal can be readily
performed by the patient wearing the device.
The present invention ... provides a compactable vaginal
pessary that easily expands once inside a patient's vagina, that
can be removed, cleaned and reinserted daily, or as needed, by
the patient.
Spec. ,i 10; see also ,i,i 11, 14, 18, 29.
Warmoth discloses a deployed condition diameter of about 2.5 inches
(or about 6.25 cm). Warmoth is silent on the issue of whether, and to what
extent, its spring-wire coil may be elongated in length and compressed in
width to permit being placed within an insertion/withdrawal device.
Warmoth is equally silent as to the amount of force required to return its
device to an uncoiled state for removal through and with an
insertion/withdrawal device. In that regard, we note that neither the
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Application 13/633,247
Examiner nor Appellant provide evidence or persuasive technical reasoning
regarding the extent to which Warmoth is capable of being stretched in
length and narrowed in width. We decline to speculate as to any precise
limit that may be required by uncoiling and deployment of Appellant's
invention.
Under the circumstances, the uncertainty in regard to the evidence, or
lack thereof, will need to resolved against the party who bears the burden of
proof on this issue. The PTO bears the initial burden of showing a prima
facie case of obviousness. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir.
2014). When a prima facie case of obviousness is made, the burden then
shifts to the applicant to come forward with evidence and/or argument
supporting patentability. Id. However, where the Examiner fails to set forth
a prima facie case of obviousness, the burden to rebut the Examiner's
findings and conclusion never shifts to Appellant. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
We are mindful that, in a proper case, the Examiner may shift the
burden to Appellant by demonstrating a "sound basis" for believing that the
product of the prior art and Appellant's invention are the same. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (explaining that when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that
where the claimed and prior art products are identical or substantially
identical, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
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Application 13/633,247
claimed product). However, we decline to invoke Spada or Best under the
facts and circumstances of this case.
Warmoth discloses a pessary from the late 19th Century. Warmoth
(issued 1885). It is comprised of spring-metal wire. Warmoth 1, 1. 42. The
wire is coiled a number to times from its lower end. Id. at 1, 11. 57-59. The
coils are about two and one-half inches ( 6.25 cm) in diameter. Id. at 1,
11. 59-65. To insert the device, it is disposed sideways to the orifice of the
vagina, compressed, and inserted in its compressed condition. Id. at 1,
11. 68-71. After being inserted, it is turned or arranged to a desired
orientation and then the compression is relieved. Id. at 1, 11. 70-87. There is
no evidence in the record to support a finding that Warmoth is capable of
being uncoiled and elongated in the manner claimed by Appellant, whether
for insertion or removal. In particular, there is no evidence that Warmoth,
modified as proposed, could be removed in accordance with claim 1.
Moreover, the Examiner fails to demonstrate a sound basis for believing that
Warmoth is capable of satisfying the yieldably extensible limitation of
claim 1 for either insertion or removal. Inasmuch as the Examiner failed to
make out a prima facie case of unpatentability, we need not further address
Appellant's arguments and evidence. We do not sustain the rejection of
claim 1.
Claims 2, 6, and 7
Claims 2, 6, and 7 are all independent claims. Claims App. As with
claim 1, they all contain a limitation directed to a pessary that is yieldably
extensible into an uncoiled elongate configuration for placement in an
insertion/withdrawal device. Id. The Examiner's rejection of these claims
suffers from the same infirmities that we have discussed above with respect
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Appeal 2018-008715
Application 13/633,247
to claim 1. Consequently, we do not sustain the rejection of claims 2, 6,
and 7.
Unpatentability of
Claims 3-5, 8-11, 13, 14, and 16 over Combinations
based on Warmoth, Zunker '485, Ellingwood, and Mohajar
These claims are rejected over Warmoth, Zunker '485, Ellingwood,
and Mohajar in combination with various other references. Claims 3-5, 8, 9,
11, 13, and 14 are independent claims. Claims App. Claim 10 depends
from claim 9. Id. With respect to each independent claim, there is a
limitation directed to the pessary being "yieldably extensible into an
uncoiled elongate configuration for placement in an insertion/withdrawal
device" in a manner substantially similar, if not identical, to the limitation
discussed above in connection with the rejection of claim 1. Claims App.
As with claim 1, the Examiner, once again, makes unsupported assertions of
fact that Warmoth's device is yieldably extensible as claimed. Non-Final
Action 13-30. We have reviewed the additional cited art and the
Examiner's findings and we determine that these additional references do
not cure the deficiencies we have noted above with respect to the rejection of
claim 1. Thus, for the same reasons, we do not sustain the rejection of
claims 3-5, 8-11, 13, 14, and 16.
DECISION
The decision of the Examiner to reject claims 1-11, 13, 14, and 16.
REVERSED
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