Ex Parte RaspalloDownload PDFPatent Trial and Appeal BoardJan 28, 201612362906 (P.T.A.B. Jan. 28, 2016) Copy Citation 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. 2 Appeal2013-005134 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 3 Appeal2013-005134 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 4 Appeal2013-005134 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 5 Appeal2013-005134 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, 6 Appeal2013-005134 Application 12/362,906 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 7 Copy with citationCopy as parenthetical citation