Paul GavarisDownload PDFPatent Trials and Appeals BoardDec 30, 20202020005952 (P.T.A.B. Dec. 30, 2020) Copy Citation 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. 15/536,466 06/15/2017 Paul Gavaris O07B-018USNAT 3735 28156 7590 12/30/2020 COSUD INTELLECTUAL PROPERTY SOLUTIONS, P.C. 714 COLORADO AVENUE BRIDGEPORT, CT 06605-1601 EXAMINER WENG, KAI H ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 12/30/2020 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): COSIPS@OPTIMUM.NET PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL GAVARIS ____________ Appeal 2020-005952 Application 15/536,466 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 9–18 and 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references the Specification (“Spec,” filed June 15, 2017), Amendment (“Amend.,” filed Nov. 25, 2019), Final Office Action (“Final Act.,” mailed Dec. 20, 2019), Appeal Brief (“Appeal Br.,” filed May 7, 2020), Answer (“Ans.,” mailed June 12, 2020), and Reply Brief (“Reply Br.,” filed Aug. 12, 2020). Appellant identifies the inventor, Dr. Paul Gavaris, as the real party in interest. Appeal Br. 1. Appeal 2020-005952 Application 15/536,466 2 CLAIMED INVENTION Claim 9, reproduced below, is the sole independent claim on appeal, and is representative of the claimed subject matter: 9. A kit for use in treating dry eye syndrome, comprising: a container; and a plurality of independently and individually deployable unitary rigid plugs of predetermined fixed shape and dimensions, said plugs being disposed in said container, each of said plugs having a cross-section configured to accommodate insertion and implantation of the respective plug in an ocular canaliculus of a human patient, at least a first one of said plugs having a first length, at least a second one of said plugs having a second length a first fraction of said first length, at least a third one of said plugs having a third length a second fraction of said first length, said second fraction being different from said first fraction. REJECTIONS Claim 12 is rejected under 35 U.S.C. § 112(b) as indefinite. Claims 9–15, 18, and 232 are rejected under 35 U.S.C. § 103 as unpatentable over Arcenio (US 2009/0240335 A1, pub. Sept. 24, 2009). Claims 16 and 17 are rejected under 35 U.S.C. § 103 over Arcenio and Becker (US 2006/0276738 A1, pub. Dec. 7, 2006). ANALYSIS Indefiniteness Appellant does not present any argument for the rejection of claim 12 under 35 U.S.C. § 112(b) as indefinite. See Appeal Br. 9 (“Appellant will 2 Although claim 23 is inadvertently omitted from the rejection heading at page 4 of the Final Office Action, its rejection is set forth at page 7. Appeal 2020-005952 Application 15/536,466 3 amend claim 12 to correct the lack of antecedent basis noted by the Examiner after an indication by the Board as to the allowability of the claimed invention over the cited prior art reference.”). Therefore, Appellant has waived any argument of error, and we summarily sustain this rejection. See MPEP § 1205.02, Rev. 10.2019 (June 2020) (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it”); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, [37 C.F.R.] section 1.192(c)(7) imposes no burden on the Board to consider the merits of that ground of rejection on the basis of a representative claim. Rather, the Board may treat any argument with respect to that ground of rejection as waived.”). Obviousness Independent Claim 9 and Dependent Claims 14–18 We are unpersuaded by Appellant’s argument that the Examiner erred in rejecting claim 9 under 35 U.S.C. § 103, because Arcenio does not teach “unitary rigid plugs of predetermined fixed shape and dimensions,” as recited in claim 9. Appeal Br. 6–7. In particular, Appellant argues that because Arcenio’s device is “expandable,” it “cannot be a unitary rigid unit.” Id. at 7. Appellant further argues that one of ordinary skill in the art “would not modify Arcenio’s expandable elements to make them independently and individually deployable unitary rigid plugs of predetermined fixed shape and dimensions, as set forth in claim 9.” Id. During prosecution, Appellant amended the Specification to include the description “[p]lugs 84 are independently and individually deployable Appeal 2020-005952 Application 15/536,466 4 unitary rigid units of predetermined fixed shape and dimensions” (Amend. 3) and amended claim 9 to recite that the plurality of plugs were “independently and individually deployable unitary rigid plugs of predetermined fixed shape and dimensions” (id. at 6). Appellant indicated that Figures 1 and 9 of the drawings provide the bases for these amendment. Id. at 10. Appellant argues that the phrase “unitary rigid plugs of predetermined fixed shape and dimensions,” which was added both to claim 9 and the written description by amendment, precludes the claimed plug from being an expandable plug. Appeal Br. 6–7. Yet, contrary to Appellant’s argument, the Specification describes the plugs as “made from a hydrophilic material that thickens sufficiently to block the drainage of tears but also dissipates within 5–6 months’ time.” Spec. 2:7–9; see also id. at 12:25–26 (describing the canalicular plugs as comprising “hydrophilic and biodegradable materials known in the medical industry”). Here, we agree with the Examiner that one of ordinary skill in the art would understand the claimed “unitary rigid plugs of predetermined fixed shape and dimensions” to include plugs that expand under a broad, but reasonable, interpretation of the limitation in light of the Specification. See Ans. 7–8. In the Reply Brief, Appellant argues that the “predetermined fixed shape and dimensions set forth in claim 9 must pertain to the plugs as they exist in the container of the kit, prior to access by the user.” Reply Br. 5. Appellant contends that “expansion clearly means a change in shape or conformation so as to amount to an increase in intrinsic size.” Id. Yet, even accepting Appellant’s interpretation, Arcenio’s expandable device expands in situ, not in the container. See Arcenio ¶¶ 7, 10, 40 (defining an Appeal 2020-005952 Application 15/536,466 5 “expandable device” as a “device that is emplaced within a body part or between adjacent body parts and expanded in at least one direction”). Accordingly, Arcenio’s plugs would have a predetermined fixed shape and dimensions while in the container under a broad, but reasonable, interpretation. The Reply Brief includes arguments presented for the first time that are not responsive to new findings or reasoning raised in the Examiner’s Answer. For example, Appellant argues for the first time that the portions of Arcenio cited by the Examiner in the Final Office Action are non-enabling, and that assertions made therein would not have “cognizable weight” of one of ordinary skill in the art. Reply Br. 1–4; see also id. at 3–4 (“One of ordinary skill in the art would disregard the suggestions of Arcenio Paragraphs 0047, 0062, and 0093 as to separate segments, as being non- usable.”). As an initial matter, Appellant’s argument is not persuasive at least because it is not based on any objective evidence, but rather constitutes attorney argument. Moreover, any argument not presented in the Appeal Brief that is not responsive to an argument raised in the Examiner’s Answer will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”); see also 37 C.F.R. § 41.41(b)(2). Here, Appellant has not shown good cause as to why this new argument could not have been presented in the Appeal Brief. Accordingly, we decline to consider these arguments. Appeal 2020-005952 Application 15/536,466 6 In view of the foregoing, we sustain the Examiner’s rejection of independent claim 9 and the rejections of dependent claims 14–18, which are not argued separately, under 35 U.S.C. § 103. Dependent Claims 10–13 and 23 Claim 10 depends from claim 9 and further recites that the cylindrical body member is “provided along a cylindrical external surface with at least one projection unitary with said body member and extending outwardly.” The Examiner acknowledges that the embodiment of Arcenio relied upon by the Examiner to reject independent claim 9 does not teach this limitation. Final Act. 5. However, the Examiner finds that projections 4a–4i, described at paragraph 118 and Figure 20 of Arcenio with reference to another embodiment, discloses this limitation. Id. Arcenio describes with reference to Figure 20 positioning segments 4a–4i with wire 8 and then disengaging the segments from wire 8. Arcenio ¶ 118, Fig. 20. For example, wire 8 is hooked onto a proximal end of the expandable device and then disengaged from the expandable device by an operator manipulating the proximal end of the wire. Id. ¶ 118. The Examiner takes the position that wire 8 teaches the claimed “cylindrical body” being “provided along a cylindrical external surface” and segments 4a–4i teach the claim “at least one projection.” Final Act. 5. However, because Arcenio’s wire 8 is disengaged from segments 4a–4i, segments 4a– 4i are not “unitary” with wire 8, as required by claim 10. Therefore, we also do not sustain the Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103 and claims 11–13 and 23, which depend therefrom. Appeal 2020-005952 Application 15/536,466 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12 112(b) Indefiniteness 12 9–15, 18, 23 103 Arcenio 9, 14, 15, 18 10–13, 23 16, 17 103 Arcenio, Becker 16, 17 Overall Outcome 9, 12, 14– 18 10, 11, 13, 23 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)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation