Ex Parte Andino et al

Patent Trials and Appeals Board

Apr 22, 2019

13500853 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/500,853 07/13/2012 Rafael V. Andino
158673 7590 04/24/2019
ED/Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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.
101900.0085P 9301
EXAMINER
HALL, DEANNA K
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
patents@rutan.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAFAEL V. ANDINO and CHRISTOPHER J. BROOKS
Appeal2017-005933
Application 13/500,853
Technology Center 3700
Before JENNIFER D. BAHR, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rafael V. Andino and Christopher J. Brooks ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-8,
10-24, and 26-30, which are all the pending claims. Appeal Br. 5. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
According to Appellants, the real party in interest is V enetec
International, Inc. Appeal Br. 5.
Appeal2017-005933
Application 13/500,853
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates generally to techniques,
systems, and devices for stabilizing a catheter or catheter extension set or
other medical article on a patient." Spec. ,r 2. Claims 1, 15, and 21 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. A stabilization system comprising:
an anchor pad having a surface, at least a portion of the
surface being covered by an adhesive for attachment to a
patient's skin;
a retainer supported by the anchor pad and configured to
receive at least a portion of a medical article;
wherein the retainer includes a strap movable between an
open and closed position; and
a dressing secured to the anchor pad so as to move
between an open position and a closed position.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Boyd us 3,834,380 Sept. 10, 1974
Khan us 5,686,096 Nov. 11, 1997
Ryan us 5,810,835 Sept. 22, 1998
Bierman us 5,827,230 Oct. 27, 1998
Fleischer US 6,273,873 Bl Aug. 14, 2001
Godfrey US 2010/0100049 Al Apr. 22, 2010
Fink US 8,419,689 B2 Apr. 16, 2013
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Appeal2017-005933
Application 13/500,853
REJECTIONS
The following rejections are before us for review:
I. Claim 19 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2-3.
II. Claims 1-6 and 8 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Fink. Id. at 3--4.
III. Claims 7, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fink and Godfrey. Id. at 5.
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fink and Fleischer. Id. at 6.
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fink, Godfrey, and Bierman. Id. at 6-7.
VI. Claims 15, 16, and 28-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Godfrey and Khan. Id.
at 7-8.
VII. Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Godfrey, Khan, and Bierman. Id. at 8-9.
VIII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Godfrey, Khan, and Ryan. Id. at 9-10.
IX. Claims 21-23, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Godfrey and Boyd. Id.
at 10-11.
X. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Godfrey, Boyd, and Khan. Id. at 11.
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Appeal2017-005933
Application 13/500,853
ANALYSIS
Rejection I-Indefiniteness
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e)).
Claim 19, which depends ultimately from independent claim 15,
recites that the stabilization system further includes "a base disposed
between the connector fitting and the anchor pad, wherein one or more of
the ribs are connected to a portion of the base that is aligned with the
connector fitting, and wherein the one or more of the ribs and the base are
connected along a transverse axis." Appeal Br., Claims App. (emphasis
added). The Examiner determines that the language in claim 19 is not
definite because the limitation "is not defined explicitly in the specification
or implicitly through its usage," and, thus, "one of ordinary skill in the art
would not be able to ascertain the scope of the claim." Final Act. 2-3; see
also Ans. 6 ( clarifying that the emphasized terms are the cause of the alleged
confusion).
Appellants argue that the Examiner does not explain what about the
claim terms would be confusing, and provide portions of the disclosure that
depict and describe a connection between the ribs and the base ( as being
both "aligned with" the connector fitting and "connected along a transverse
axis"). Appeal Br. 12-14 (citing Spec. ,r,r 27, 66, 69; Fig. 3); see also Reply
Br. 10-11 (discussing same points). We agree with Appellants.
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Appeal2017-005933
Application 13/500,853
Although we appreciate the Examiner's position that the phrase
"aligned with" may be broad, and that the ribs and the base are depicted as
being connected along both a transverse axis and a longitudinal axis (see
Ans. 6), we note that it is well established that breadth of a claim is not to be
equated with indefiniteness (see In re Miller, 441 F.2d 689,693 (CCPA
1971) ). The Examiner does not sufficiently explain why the identified claim
language, when read in light of the Specification, would be unclear to one of
ordinary skill in the art.
Accordingly, we do not sustain the rejection of claim 19 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Rejections 11-X- Cited Prior Art
All the claims recite "an anchor pad" for attachment to a patient's
skin, some type of securing structure for securing a medical article to the
anchor pad ( a "retainer" with a strap in independent claim 1, a "connector
fitting" with a spin nut in independent claim 15, and a "tube clip" with a spin
nut in independent claim 21 ), and "a dressing secured to the anchor pad so
as to move between an open position and a closed position." Appeal Br.,
Claims App. ( emphasis added).
In rejecting the claims, the Examiner relies on either Fink (for
Rejections II-V) or Godfrey (for Rejections VI-X) for disclosing a dressing
that is "secured to the anchor pad so as to move between an open position
and a closed position," as recited in the claims. See Final Act. 3-11. In all
of the prior art rejections, the findings relied on from Fink and Godfrey are
premised on the following interpretation of the claimed dressing, as
expressly stated by the Examiner: "When the dressing is over the medical
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Appeal2017-005933
Application 13/500,853
article and retainer the configuration is closed[,] and when the dressing is not
applied to the medical article and retainer the configuration is open." Id.
at 4, 7, 10 (emphasis added). In other words, under the Examiner's
interpretation, the claims encompass an arrangement wherein the dressing
may be separate from (not secured to) the anchor pad, at least in the open
configuration.
However, we agree with Appellants that such a claim interpretation is
unreasonably broad, as it is contrary to the plain language of the claims.
See Appeal Br. 15-16, 18, 21-22, 25; see also Reply Br. 4--9 ( discussing
same points). In particular, we agree with Appellants that the claim
language quoted above "does indeed require a dressing secured to an anchor
pad in both the open and closed configuration." Appeal Br. 16 ( emphasis
added). In other words, although the dressing moves relative to the anchor
pad, between the open position and the closed position, the dressing
nevertheless remains secured to the anchor pad during such movement.
In short, we agree with Appellants that the Examiner errs in applying
an unreasonably broad claim construction. Because of this erroneous claim
construction, the Examiner has not established factual findings, or provided
any explanatory analysis, as to how either Fink or Godfrey discloses or
suggests "a dressing secured to the anchor pad so as to move between an
open position and a closed position," as required by the claims. 2
2 We note that some of the cited art appears to teach a covering that is
secured to a pad so as to move between an open position and a closed
position, such as by folding over. For example, Fleischer depicts fixation
device 10 with pad elements 20, 22, 24 and cover/connecting foil 12, 14 that
is secured to the pad elements to be folded thereover. See, e.g., Fleischer,
Figs. la-le. Somewhat similarly, Boyd depicts a device with clamping
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Application 13/500,853
The Examiner relies on Bierman, Khan, Ryan, and Boyd for teaching
additional claimed features, but not to cure the above-noted deficiency in the
Examiner's findings based upon the improper claim construction. In
rejecting dependent claim 10 (Rejection IV), the Examiner finds that
Fleischer "teaches a catheter fixation device 24 with a dressing 12 secured to
the anchor pad 14 along a flexible coupling 17 ," and determines that it
would have been obvious to modify Fink's device "with the flexible
coupling connecting the anchor pad and the dressing as taught by Fleischer
for greater ease of use of the device being connected components." Final
Act. 6. However, the Examiner does not adequately explain how Fleischer's
flexible coupling teaching would be applied to Fink's system to secure the
dressing ( cover member 32) to the anchor pad (base member 20), which
includes securement arms 24, 26 designed to be folded over base member 20
to secure a hub portion of catheter 5 thereto ( as illustrated in Figures 4 and 5
of Fink), in order to cure the above-noted deficiency. See supra note 2.
tube 20 secured to tape 21 and to latching flap 22 (which includes pad 23) to
be folded over the clamping tube. See, e.g., Boyd, Figs. 4--5.
However, it is not the province of the Board, during appellate review,
to pass judgement on the ultimate issue of patentability of claims in the first
instance. Instead, we limit our review to the decision of the Examiner as
presented in the appealed rejection of record, in light of the arguments made,
to evaluate whether Appellants persuasively apprise the Board of error.
Because the Board is a review body, rather than a place of initial
examination, we decline to speculate as what the Examiner may conclude
under a proper claim construction as discussed herein; rather, we leave it to
the Examiner to determine the appropriateness of any course of action
should there be further prosecution of this application. See Ex Parte Frye,
94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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Application 13/500,853
Accordingly, based on the error in claim construction that pervades
the prior art rejections, we do not sustain them.
DECISION
We REVERSE the Examiner's rejections of claims 1-8, 10-24, and
26-30.
REVERSED
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