Ex Parte Worley

Patent Trial and Appeal Board

Nov 29, 2016

13353398 (P.T.A.B. Nov. 29, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/353,398 01/19/2012 Brian D. Worley 007364-00030 1765
28827 7590 12/01/2016
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
DESANTO, MATTHEW F
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN D. WORLEY
Appeal 2015-000585
Application 13/353,398
Technology Center 3600
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, and 8—14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-000585
Application 13/353,398
CLAIMED SUBJECT MATTER
The claims are directed to a catheter guiding flexible connector.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. For coupling the inlet end of a tracheotomy tube inner cannula
to an outlet port of an in-line catheter, a connector comprising:
an elongated, flexible, accordion-like tubular body;
means on a catheter entry end of said tubular body for
serially coupling said body in pneumatic communication with
the catheter outlet port;
means on a catheter exit end of said tubular body for
serially coupling said body in pneumatic communication with
the inlet end of the tracheotomy tube inner cannula; and
means on said body-to-cannula coupling means for
guiding a downstream tip of the catheter into the inlet end of the
inner cannula in response to pushing the catheter at a location
upstream of the catheter outlet port.
REJECTION
Claims 1,2, and 8—141 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Radford (US 3,991,762).
OPINION
The claims are argued as a group, for which we select claim 1 as
representative. 37 C.F.R. § 41.37(c)(iv). The Examiner correctly identifies
the disputed limitation, “means ... for guiding a downstream tip of the
catheter into the inlet end of the inner cannula,” as being a means-plus-
function limitation in accordance with 35 U.S.C. § 112, paragraph six. Final
Act. 2A claim employing means-plus-function language is construed to
1 We understand the Examiner’s omission of claims 13 and 14 from this
statement of the rejection to be a typographical error.
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Appeal 2015-000585
Application 13/353,398
cover, inter alia, the corresponding structure in the Specification.
Appellant’s arguments pointing out the differences between the purpose of
Radford’s projection 51 and the purpose of Appellant’s taper 49 (App. Br.
8—11) are of little probative value so long as their structures are the same.
The Examiner takes a reasonable approach to determining the so-
called “corresponding structure” for purposes of the means-plus-fimction
analysis: As claim 2 expressly defines the specific structure of the guiding
means, removing the limitation from the realm of § 112, sixth paragraph
(MPEP § 2181(1)), and dependent claims must further limit the subject
matter of the claim from which they depend (§ 112, fourth paragraph), the
Examiner reasonably concluded that by disclosing subject matter falling
within the express limitations of claim 2, Radford must also anticipate claim
1. Final Act. 2; Ans. 3^4. The Examiner’s finding that Radford discloses
the structure of claim 2 is uncontroverted. We agree with the Examiner that
Radford must therefore disclose the structure of the “means for guiding”
recited in claim 1.
Appellant’s arguments focus on the functional portion of the guiding
means recitation. Appellant contends that with a particular tracheotomy
device end (for example, E as Appellant added to Radford’s Figure 4 as
modified at page 10 of the Appeal Brief) and with a catheter exhibiting a
particular amount of flexibility, Radford’s projection 51 would not be able to
perform the recited guiding function due to “hang up” at the tracheotomy
cannula opening. Although the Examiner disputes this, asserting that Figure
4 of Radford illustrates that the rigidity of the components is sufficient to
perform the guiding function, this is not a dispositive issue because, as the
Examiner also points out, the claim is not directed to the combination of the
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Appeal 2015-000585
Application 13/353,398
connector with any particular catheter or any particular tracheotomy device.
Although the catheter and tracheotomy devices are used to define the
claimed subject matter, i.e., the connector itself, the claim does not define
any specific structure of the catheter and tracheotomy devices that must
interact in any particular way with the claimed connector. Thus Appellant’s
argument, “[i]f Radford’s catheter is not flexible enough for [the illustrated
bowing] to occur, then Radford's catheter is not the problem catheter
illustrated in Appellant’s Figures 1 and 2,” is not commensurate with the
scope of the claim, which does not specify any particular catheter flexibility.
Reply Br. 4; See, e.g., Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline,
PLC, 349 F. 3d 1373 (Fed. Cir. 2003) (Discussing an example of a claim
that defines the claimed subject matter based on open-ended class of
unclaimed subject matter). Similarly, as the claim also does not require any
particular interaction of the claimed connector with any particular
tracheotomy device cannula, the presence or absence of Radford’s X
connector 19, or the particular structure of the tracheotomy device to which
Radford intends to couple, is inapposite. See Reply Br. 4—5; Ans. 3^4.
DECISION
The Examiner’s rejection is affirmed.
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
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