Ex Parte Raspallo

Patent Trial and Appeal Board

Jan 28, 2016

12362906 (P.T.A.B. Jan. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/362,906 0113012009
87241 7590 02/01/2016
DiBerardino McGovern IP Group LLC
P.O. Box 7126
Alexandria, VA 22307
FIRST NAMED INVENTOR
Louise D. Raspallo
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.
025-004001 1990
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/01/2016 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):
contact@dmipgroup.com
docketing@dmipgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LOUISE D. RASPALLO
Appeal2013-005134
Application 12/362,906
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Louise D. Raspallo ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-19, 24, and 25, which are
all the pending claims. 1 Appeal Br. 1. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is TAPS, LLC. Appeal
Br. 1.
Appeal2013-005134
Application 12/362,906
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a laryngoscope including a
blade. See, e.g., Spec., p. 1, 1. 3-p. 3, 1. 13, Abstract. Claims 1and11 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A laryngoscope comprising:
a laryngoscope blade consisting of a proximal region
extending distally from a handle and a distal region extending
distally from the proximal region, and being configured to be
inserted into an oral cavity of a patient, the blade having an
overall length along a longitudinal axis that extends along a
direction that is distinct from a direction along which the handle
extends, an overall width along a lateral axis, and an overall
height along a transverse axis, where the overall width is
greater than the overall height, the overall length is greater than
the overall width, and each of the axes is perpendicular to the
other two axes;
wherein a cross section in the proximal region that is
taken along a plane perpendicular to the longitudinal axis of the
blade has a non-flat shape;
wherein the proximal region of the blade extends along a
plane defined by the longitudinal axis and the transverse axis;
and
wherein the distal region of the blade includes a body
defined between two sides, the body and the two sides
extending along at least a distal axis that is distinct from the
longitudinal axis such that the distal axis is at an angle relative
to the longitudinal axis and the two sides and the body are
curved along a same lateral direction about the transverse axis
relative to the longitudinal axis.
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Application 12/362,906
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Bicek
Bernard
Chen
us 2,575,253
US 6,569,110 B2
US 2009/0076334 Al
REJECTIONS
The following rejections are before us for review:
Nov. 13, 1951
May 27, 2003
Mar. 19,2009
I. Claims 1-5, 8, 9, 11-15, 18, and 19 stand rejected under
35 U.S.C. § 102(b) as anticipated by Bernard.
II. Claims 1-5, 8, 11-15, 18, 24, and 25 stand rejected under
35 U.S.C. § 102(b) as anticipated by Bicek.
III. Claims 4, 6, 10, 14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bernard.
IV. Claims 1---6, 8, 10-16, 18, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bicek.
V. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bicek and Chen.
ANALYSIS
Rejections I and III - Premised on anticipation by Bernard
of all independent claims
Appellant presents the same substantive arguments for the claims
subject to these rejections. See Appeal Br. 5-8, 11-12. In particular,
Appellant's arguments hinge on the contention that Bernard "does not
describe or suggest a laryngoscope blade" as claimed, but instead discloses
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Application 12/362,906
only a splint for surgery. Id. at 5. This contention is insufficient to
contradict the Examiner's findings regarding Bernard's structure and,
consequently, Appellant's arguments based thereon are unpersuasive.
The Examiner found that Bernard discloses a device that is "capable
of being used as a laryngoscope" that includes the structural details recited
in the claims. Ans. 5-6 (including annotated Figs. 1 and 3 of Bernard).
Although we appreciate Appellant's point that the intended use of Bernard's
device is different from that of Appellant's device, claims directed to an
apparatus-as here-must be distinguished from the prior art in terms of
structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990) ("apparatus claims cover what a device is,
not what a device does"); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (the
manner in which a device is to be used is not germane to the issue of
patentability of the device itself).
In this regard, Appellant contends that "it is not clear how Bernard's
sprint [sic] could be used as a laryngoscope," but does not direct us to any
structure that would be imparted by the intended use of insertion into a
patient's oral cavity, and that would be absent from Bernard's device as
identified by the Examiner, sufficient to structurally distinguish therefrom.
Appeal Br. 6. Thus, we are not apprised of error in the Examiner's reasoned
determination that the identified structure of Bernard's device "is capable of
being inserted into an oral cavity of a patient and is capable of being used as
a laryngoscope blade." Ans. 11.
Appellant also asserts that several claim terms have been arbitrarily
denied patentable weight. See Appeal Br. 6-8. In response to these
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Application 12/362,906
assertions, the Examiner offers additional clarification regarding the
identified structural elements of Bernard and how the recited claim terms are
met by such structure. See Ans. 11-13. The Examiner's explanations of the
findings are reasonable, and the clarifications are not further contested by
Appellant, such that these assertions do not apprise us of error.
After careful consideration of the record before us, Appellant's
arguments do not apprise us of error in the Examiner's factual findings that
Bernard discloses structure as recited in the claims, which are supported by a
preponderance of the evidence. Accordingly, we sustain Rejections I and III
for the reasons set forth in the Examiner's Answer and in light of the
thorough responses to Appellant's arguments. See Ans. 5---6, 11-13.
Rejections II, IV, and V - Premised on anticipation by Bicek
of all independent claims
Appellant also presents the same substantive arguments for the claims
subject to these rejections. See Appeal Br. 8-11, 12-14. In particular, and
similar to the analysis discussed above, Appellant's arguments hinge on the
contention that Bicek "does not describe or suggest a laryngoscope blade" as
claimed, but instead discloses only a vaginal speculum. Id. at 8, 9. As
above, this contention is insufficient to contradict the Examiner's findings
regarding Bicek's structure and, consequently, Appellant's arguments based
thereon are unpersuasive.
The Examiner found that Bicek discloses a device that is "capable of
being used as a laryngoscope" that includes the structural details recited in
the claims. Ans. 6-8 (citing Bicek, Figs. 1-3). As above, although we
appreciate Appellant's point that the intended use of Bicek's device is
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Application 12/362,906
different from that of Appellant's device, our reviewing court has made clear
that apparatus claims must be distinguished from the prior art in terms of
structure rather than function. Consequently, Appellant must identify a
structural distinction over the cited art to apprise us of reversible error.
Appellant has not done so here.
Apart from noting that Bicek does not explicitly describe that its
device could be used as a laryngoscope, Appellant neither directs us to
structure of Bicek that would prevent its use as a laryngoscope nor identifies
any structure that would be necessitated by a laryngoscope, as opposed to a
speculum, that would be missing from Bicek' s device as identified by the
Examiner. See Appeal Br. 9--10. Thus, we are not apprised of error in the
Examiner's reasoned determination that the identified structure of Bicek's
device "is capable of being inserted into an oral cavity of a patient and is
capable of being used as a laryngoscope blade." Ans. 14.
Appellant also asserts-as above-that several claim terms have been
arbitrarily denied patentable weight. See Appeal Br. 9--11. In response to
these assertions, the Examiner offers additional clarification regarding the
identified structural elements of Bicek and how the recited claim terms are
met by such structure. See Ans. 14--16. The Examiner's explanations of the
findings are reasonable, and the clarifications are not further contested by
Appellant, such that these assertions do not apprise us of error.
After careful consideration of the record before us, Appellant's
arguments do not apprise us of error in the Examiner's factual findings that
Bicek discloses structure as recited in the claims, which are supported by a
preponderance of the evidence. Accordingly, we sustain Rejections II, IV,
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and V for the reasons set forth in the Examiner's Answer and in light of the
thorough responses to Appellant's arguments. See Ans. 6-8, 14--16.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5, 8, 9,
11-15, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by Bernard.
We AFFIRM the Examiner's decision rejecting claims 1-5, 8, 11-15,
18, 24, and 25 under 35 U.S.C. § 102(b) as anticipated by Bicek.
We AFFIRM the Examiner's decision rejecting claims 4, 6, 10, 14,
and 16 under 35 U.S.C. § 103(a) as being unpatentable over Bernard.
We AFFIRM the Examiner's decision rejecting claims 1---6, 8, 10-16,
18, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Bicek.
We AFFIRM the Examiner's decision rejecting claims 7 and 17 under
35 U.S.C. § 103(a) as being unpatentable over Bicek and Chen.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
rvb
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