Ex Parte Bonadio et al

Patent Trial and Appeal Board

Mar 22, 2013

10600812 (P.T.A.B. Mar. 22, 2013)

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.
10/600,812 06/20/2003 Frank Bonadio 08203-0030.01000 7588
108449 7590 03/22/2013
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW
Suite 450
Washington, DC 20037
EXAMINER
BIANCO, PATRICIA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
03/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte FRANK BONADIO and ALAN REID
__________

Appeal 2010-011789
Application 10/600,812
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge BONILLA.
Opinion Concurring filed by Administrative Patent Judge ADAMS.
BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
surgical device that provides sealed access through an incision in a patient.
The Examiner has rejected the claims for failing to comply with the written
description requirement, as anticipated, and under 35 U.S.C. § 102(g) over a
lost count in a previous patent interference. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The Specification describes an “apparatus for use in surgery
comprising a sleeve having an entry opening at an outer end thereof and an
exit opening at an inner end thereof to access a patient‟s body,” where the
apparatus also comprises exit and entry sealing means “to create a controlled
environment within the sleeve” (Spec. 2, ll. 5 -13).
Claims 73-85, 87-100, 106, and 107 are on appeal. Independent
claims 106 and 107 are representative and read as follows (emphasis added):
106. A surgical device providing sealed access through an incision in
a patient, the device comprising:
a distal ring insertable through the incision to engage internal
body tissue;
a tubular diaphragm having a distal end, a proximal end, and
an incision engaging portion,
the distal end of the tubular diaphragm being coupled to the
distal ring,
the incision engaging portion configured to engage the incision,
and
the proximal end of the tubular diaphragm located proximal the
distal ring and outside the incision; and
an entry seal assembly located proximal the tubular diaphragm,
the entry seal assembly configured to maintain a controlled
pressurized environment inside the surgical device such that the
engagement of the incision engaging portion of the diaphragm with
the incision and engagement of the distal ring to the internal body
tissue increases with an increase in pressure within the controlled
pressurized environment.

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107. A surgical device providing sealed access through an
incision in a patient, the device comprising:
a distal ring insertable through the incision to engage internal
body tissue;
a tubular diaphragm having a distal end, a proximal end, an
internal portion, and an incision engaging portion opposite the internal
portion,
the distal end of the tubular diaphragm being coupled to the
distal ring and the proximal end of the tubular diaphragm located
proximal the distal ring and outside the incision; and
an entry seal assembly located proximal the tubular diaphragm
and configured to maintain a controlled pressurized environment
inside the surgical device,
the engagement of the distal ring to the internal body tissue
providing a seal such that the incision engaging portion of the tubular
diaphragm is not subject to the controlled pressurized environment,
while the internal portion of the tubular diaphragm is subject to the
controlled pressurized environment.
The claims stand rejected as follows:
I. Claims 73-85, 87-100, 106, and 107 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement;
II. Claims 73-85, 87-100, 106, and 107 under 35 U.S.C. § 102(e) as
anticipated by Leahy et al. (U.S. Patent No. 5,640,977, issued Jun. 24,
1997); and
III. Claims 73-85, 87-100, 106, and 107 under 35 U.S.C. § 102(g) over
the sole lost count of Patent Interference No. 104,195.
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I.
Findings of Fact (FFs)
1. The Specification discloses the following embodiment in amended
Figure 9:

(See Amendment After Final dated Aug. 21, 2009, p. 10 and replacement
drawing sheet.) Figure 9 depicts a cross-section of an apparatus (60)
comprising a sleeve (2) with an entry seal assembly located near entry (4)
and an exit sealing means comprising a first ring (61) attached to the sleeve
(2), a flexible diaphragm (62) and a distal ring (63) that is inserted through
an incision in the body tissue (30).
2. Regarding Figure 9, the Specification states:
Referring to FIG. 9 there is illustrated, a further apparatus
according to the invention for use in surgery and indicated generally
by the reference, numeral 60. In this case, the exit sealing means,
comprises a sealing diaphragm having a first ring 61 attached to the
sleeve 2 and a flexible diaphragm 62 extending from the ring 61 and
terminating in an inner or distal ring 63 which is inserted through the
incision to engage with the body tissue 30 as illustrated. The sealing
diaphragm seals the exit 5 of the sleeve 2 to the incision in the
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patient‟s body to create a controlled pressurized environment in the
sleeve 2, the controlled pressurised environment being represented by
arrows in FIG. 9.
(Spec 9, l. 27 – 10, l. 4 (see Amendment After Final dated Aug. 21, 2009, p.
3) (amending Specification).)
Principles of Law
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner meets that
initial burden, the burden of coming forward with evidence or argument
shifts to the applicant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
After the applicant submits such evidence or argument, the PTO then
determines patentability “on the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of argument.” Oetiker,
977 F.2d at 1445. If the Examiner fails to establish a prima facie case of
unpatentability in the first instance, however, the rejection is improper and
must be reversed. Id.; Rijckaert, 9 F.3d at 1532.
Written description support can be either express or inherent, and is
determined from the disclosure considered as a whole. Reiffin v. Microsoft
Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). “In order for a disclosure to be
inherent, however, the missing descriptive matter must necessarily be
present in the … specification such that one skilled in the art would
recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159
(Fed. Cir. 1998).
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Analysis
The Examiner states that claims 106 and 107 fail to comply with the
written description requirement because certain elements in the claims do
not have support in the originally filed disclosure (Ans. 4). In particular, the
Examiner points to elements at the end of the claims that begin with “such
that the incision engaging portion of the tubular diaphragm ….” (id.) In this
regard, claim 106 recites that the entry seal assembly is configured “such
that the engagement of the incision engaging portion of the diaphragm with
the incision and engagement of the distal ring to the internal body tissue
increases with an increase in pressure within the controlled pressurized
environment.” Claim 107 recites that the engagement of the distal ring to
body tissues provides a seal “such that the incision engaging portion of the
tubular diaphragm is not subject to the controlled pressurized environment,
while the internal portion of the tubular diaphragm is subject to the
controlled pressurized environment.”
Appellants argue that the Specification at page 9, line 27 – page 10,
line 4, and Figure 9, provides written description support for both elements
(App. Br. 12-16; FF 1-2). In particular, Appellants argue that a person
skilled in the art would have considered these elements “to be supported, at
least implicitly or inherently, if not expressly, by the originally-filed
application” (id. at 14, 16). In other words, Appellants argue that even if the
Specification does not expressly disclose the language of the “such that”
clauses in claims 106 and 107, one skilled in the art would have recognized
that the apparatus shown in Figure 9 of the Specification, as expressly
described, inherently possessed these features.
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The Examiner “disagrees that these eleven lines & Figure 9 can be
interpreted to provide support” for the “such that” clauses in the claims
(Ans. 4, 12). After stating that “[t]here is a controlled pressure environment
disclosed in the sleeve (2) (emphasis added that is within the sleeve – see
line 4, page 10),” the Examiner states that each element “is well outside this
disclosure of the original specification” (id. at 12-13).
We find that the Specification does not expressly disclose the “such
that” element of either claim 106 or 107. The issue of whether the
Specification discloses an apparatus that inherently exhibits these features is
a closer call. Because the Examiner fails to address the issue of inherent
disclosure, however, we conclude that the Examiner fails to present a prima
facie case of lack of written description regarding claims 106 and 107. The
Examiner fails to address Appellants‟ position that the apparatus, as
disclosed in Figure 9 and described in the Specification regarding Figure 9
(FF 1-2), inherently possesses the “such that” elements recited in these
claims. In addition, the Examiner does not raise a written description issue
regarding any other element recited in claim 106 or 107, or any pending
dependent claims.
II.
Additional Findings of Fact
3. Leahy describes a surgical apparatus suitable for hand-assisted
minimally invasive surgery (Leahy, col. 1, ll. 34-37).
4. Figure 19 in Leahy shows an embodiment (arrows added):
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Figure 19 depicts a cross section of the distal end of a surgical apparatus
having entry and exit openings (id. at col. 3, ll. 6-9; col. 1, ll. 58-61). The
apparatus comprises sleeve (102) that includes a wound protector (261) (id.
at col. 7, ll. 12-14). Two arrows point to adhesive located between the
sleeve and an “[i]ncise drape D” (id. at col. 6, ll. 51-52, col. 7, l. 20) on top
of the patient tissue.
5. As taught in Leahy regarding the embodiment shown in Figure 19:
Protector 261 includes a tubular member 262 terminating at
opposite ends with an inner ring 263 insertable through the
incision, and an outer ring 264 peripherally connected to exit
opening 105 in sleeve 102. Protector 261 is of the same type
material as sleeve 102. Following incision, but before using the
apparatus, ring 263 is inserted through the incision, and flange
111 adhesively attached to a drape D.
(Id. at ll. 14-21.)
6. Leahy also teaches that “[a]dditionally, or alternatively, an adhesive-
backed flange may be placed around the exit opening of the sleeve, and in
some cases adhesive may be applied to the patient around the area of the
incision where the sealing flange is to be attached” (id. at ll. 35-40).

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Analysis
The Examiner rejects the pending claims as anticipated by Leahy
(Ans. 5, 7-8). The Examiner notes that during a previous interview,
Appellants admitted that “[i]n comparison to the Leahy patent, the only
difference between Figure 9 of the present invention and Figure 19 of the
Leahy patent is that the Leahy patent includes an adhesive whereas Figure 9
of the present application does not illustrate an adhesive” (id. at 5; see also
id. at 6).
The Examiner further states that “the scope of the patented claims of
Leahy are so broad they also cover a surgical device and method of
providing sealed access through an incision without the use of an
adhesive,” while only certain dependent claims in Leahy require an adhesive
(id. at 6-7). In addition, the Examiner finds that in Leahy the “adhesive
attachment of a drape to the coupler & to the body of the patient are not
required by the invention but are merely an option for the surgeon or
surgical team to have” (id. at 9, see also id. at 13-15). Along the same lines,
the Examiner points to teaching in Leahy, relevant to Figure 19, that states
that “[a]dditionally, or alternatively, an adhesive-backed flange may be
placed around the exit opening of the sleeve, and in some cases adhesive
may be applied to the patient around the area of the incision where the
sealing flange is to be attached” (id. at 9; FF 6). In other words, according to
the Examiner, Leahy discloses, via Figure 19 and teachings relating to that
embodiment (FF 4-6), the device recited in the pending claims.
Regarding both claims 106 and 107, Appellants refer to Figures 3 and
4 in Leahy when arguing that this reference fails to teach the “such that”
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elements recited in these claims (App. Br. 17-21, 26-30). Appellants suggest
that an adhesive in Leahy‟s device prevents the device from having the
“such that” elements. For example, regarding claim 106, Appellants argue
that “adhesive couplings, like those in Leahy, fail to utilize the insufflation
pressure to assist in coupling the device to the patient,” and “adhesive
couplings work against the insufflation pressure by tending to separate or
detach at increased pressures” (id. at 20). Regarding claim 107, Appellants
discuss Figure 3 in Leahy and argue that “[a]s long as flange 26 is adhered to
the top of abdominal wall L, pressure in chamber C will not urge tube 13
and ring 14 relative to wound W and abdominal wall L,” and “[s]ince both
the wound engaging portion of tube 13 and the internal portion of tube 13
are on the first side of the boundary (below flange 26 in FIG. 3), they are
both subject to the pressure associated with the pressurized gas in cavity A”
(id. at 27). Notably, however, Appellants do not address Figure 19 in Leahy,
and its similarity to Figure 9 in the Specification, as discussed by the
Examiner (see, e.g., Ans. 5-6).
Appellants also argue that Leahy is not prior art under 35 U.S.C.
§ 102(e), stating that “Appellant‟s claims are entitled to the priority date of
at least Irish Patent Application No. 930649, filed September 6, 1993 („the
„649 application), under 35 U.S.C. § 119(d)” (id. at 23, 30). When
discussing a previously decided interference between Appellants and Leahy
regarding a parent application to Appellants‟ current application (a
continuation) and the Leahy patent at issue here, Appellants argue that “In re
Deckler, 977 F.2d 1449 (Fed. Cir. 1992), does not support the withholding
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of the priority date of the „649 application from Appellant” (id. at 25, 32-
33).
In relation to anticipation, we conclude that the Examiner establishes
a prima facie case. As noted above, Appellants rely on the “such that”
elements in claims 106 and 107 to distinguish their claims over teachings in
Leahy. The only written description disclosure that Appellants rely upon to
support these elements relate to Figure 9 in the Specification, as discussed
above (see also FF 1-2). As noted by the Examiner, the only substantive
difference between the apparatus depicted in Figure 9 as described in the
Specification and an apparatus described by Leahy in relation to the
embodiment shown in Figure 19 is the presence of an adhesive in Leahy‟s
apparatus (see FF 4 (designating the adhesive by two arrows); see also FF 6
(indicating that the drape is optional); Ans. 5 (regarding admissions by
Appellants)).
In their brief, Appellants do not dispute the point raised by the
Examiner that the adhesive depicted in Figure 19 of Leahy is optional. In
addition, even assuming it is not optional, Appellants do not establish with
evidence that Leahy‟s apparatus depicted in Figure 19, which looks nearly
identical to Appellants‟ apparatus depicted in Figure 9 of the Specification,
functions differently in terms of the elements relied upon by Appellants, i.e.,
the “such that” elements of claim 106 and 107.
More specifically, to the extent that the apparatus of the
Specification‟s Figure 9 inherently exhibits the features of claims 106 and
107 recited in the “such that” clauses (as argued by Appellants in relation to
written description support), Appellants do not persuade us that Leahy‟s
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Figure 19 apparatus, with or without an adhesive, does not also inherently
exhibit the same features. Appellants do not establish on the record before
us that the addition of an adhesive makes any difference in this regard.
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(stating that “arguments of counsel cannot take the place of evidence lacking
in the record”) (quoting Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA
1982).
Regarding Appellants‟ position that Leahy does not qualify as prior
art against the pending claims, Deckler is relevant. As stated by the Federal
Circuit in this case:
The Board‟s decision that the interference judgment bars
Deckler from obtaining a patent for claims that are patentably
indistinguishable from the claim on which Deckler lost the
interference constituted a permissible application of settled
principles of res judicata and collateral estoppel. Under those
principles, a judgment in an action precludes relitigation of
claims or issues that were or could have been raised in that
proceeding. Similarly, this court has applied interference
estoppel to bar the assertion of claims for inventions that are
patentably indistinct from those in an interference that the
applicant had lost.
In re Deckler, 977 F.2d at 1452 (citations omitted) (emphasis added).
Consistently, Board rules likewise state:
§41.127 Judgment. (a) Effect within Office –
(1) Estoppel. A judgment disposes of all issues that were, or by
motion could have properly been, raised and decided. A losing
party who could have properly moved for relief on an issue, but
did not so move, may not take action in the Office after the
judgment that is inconsistent with that party‟s failure to move,
except that a losing party shall not be estopped with respect to
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any contested subject matter for which that party was awarded a
favorable judgment.
37 C.F.R. § 41.127 (2012) (emphasis added).
1

In a previous interference, i.e., Interference No. 104,195, the Board
entered judgment on the issue of priority and derivation against the current
inventors in relation to a relevant parent application because the inventors
“failed to file a record or an opening brief” (App. Br, Exhibit F (awarding
judgment)). This interference involved the same Leahy patent at issue in
this case, as well as Appellants‟ parent application (Ser. No. 08/641,811) to
the current application (a continuation of the parent application) (id.).
During the interference, Leahy filed a preliminary motion attacking the right
of the current inventors to claim priority to the same Irish „649 application
and a second Irish application (Interference No. 104,195, Paper No. 6).
Thereafter, the Board redeclared the interference, designating Leahy the
senior party and according the current inventors the benefit of a PCT
application filed September 6, 1994, not the Irish application filing date of
September 6, 1993 (id. at Paper No. 24; see also App. Br. 23). Bonadio then
requested that the Board‟s decision denying Bonadio benefit of the Irish
applications “be reviewed at final hearing” (id. at Paper No. 29). Then, after
Bonadio failed to file appropriate papers, the Board issued a final judgment
against the inventors (id. at Paper No. 39).
As such, the judgment in the „195 interference (id.) “disposes of all
issues that were, or by motion could have properly been, raised and

1
We note that 37 C.F.R. § 1.658(c), in effect in 2001 when Interference
No. 104,195 concluded, contains similar relevant language.
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decided,” i.e., the exact issue that Appellants raise here regarding benefit and
priority of their application. 37 C.F.R. § 41.127. Appellants pursued benefit
of the Irish „649 application in a relevant parent application during the
interference, but the Board issued a decision regarding benefit and then
ultimately final judgment against Appellants. Appellants do not persuade us
that they are not estopped from taking action on the same issue of benefit
now.
Along the same lines, we also note that Appellants do not sufficiently
explain how the count at issue in the „195 interference (or subject matter
claimed in Leahy) reads on different subject matter than pending claims at
issue here.
2
At most, as noted above, Appellants suggest that the Leahy
patent and its claims, and presumably the count at issue in the „195

2
Count 1 in Interference No. 104,195 reads:
Apparatus for use in minimally invasive surgery through a
wound into an insufflated cavity, comprising:
an outer sleeve of gas-impermeable supple material having an
entry opening at a proximal end thereof and an exit opening at a distal
end thereof;
first sealing means adapted to seal the exit opening gastightly
around the wound in a patient; and
second sealing means adapted to seal the entry opening
gastightly around a surgeon‟s arm received therein and create thereby
a gastight chamber in said outer sleeve when a surgeon‟s arm is
operatively received in said sleeve;
whereby the sleeve cooperates with the first and second sealing
means to enable the surgery to be performed under insufflatable
conditions.
Leahy claims 1-31 and Bonadio then pending claims 5, 6, 8-10, 17, 32-61
corresponded to this count. (Interference No. 104,195, Paper No. 1, dated
August 31, 1998.)
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interference, fails to disclose or read on the “such that” elements recited in
claims 106 and 107. For the same reasons discussed above, however,
Appellants do not persuade us that Leahy‟s claimed apparatus do not
inherently exhibit these features, especially if Appellants‟ own apparatus as
disclosed and described in relation to Figure 9 in the Specification inherently
exhibits these features. As noted by the Examiner, not all Leahy claims
require an adhesive. In any event, Appellants do not point to sufficient
evidence to persuade us that including an adhesive makes a difference.
Thus, Appellants do not persuade us that the apparatus of pending claim 106
and 107 are patentably distinct from apparatus of the count at issue in the
„195 interference (id. at Paper No. 1, designating Leahy claims 1-31 as
corresponding to the count). Likewise, Appellants do not persuade us that
estoppel does not preclude them from obtaining the pending claims. In re
Deckler, 977 F.2d at 1452.
Thus, for the reasons discussed above, we conclude that the Examiner
establishes by a preponderance of the evidence that Leahy anticipates claims
106 and 107. Appellants do not argue claims 73-85 and 87-100 separately,
and therefore these dependent claims fall with the independent claims. 37
C.F.R. § 41.37(c)(1)(vii).
III.
Analysis
The Examiner rejects pending claims under 35 U.S.C. 102(g) over the
sole lost count of the „195 interference. Specifically, the Examiner states
that Appellants‟ pending claims correspond to the subject matter of the count
at issue in the „195 interference, “as to which a judgment adverse to the
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applicant has been rendered” (Ans. 9). The Examiner also cites to Deckler
when stating that a “losing party is barred on the merits from seeking a claim
that would have been anticipated or rendered obvious by the subject matter
of the lost count” (id.).
As an initial matter, we note that during an oral hearing in this case,
Appellants‟ counsel acknowledged that if Leahy anticipates or renders
obvious pending claims, interference estoppel also applies against
Appellants.
3
In other words, Appellants‟ arguments regarding the § 102(e)
and § 102(g) rejections stand or fall together based on the issue of whether
Leahy discloses, expressly or inherently, the “such that” elements of claims
106 and 107.
With this in mind, Appellants argue in their brief that claims 106 and
107 are not anticipated, or obvious over, the subject matter of the lost count
the „195 interference (App. Br. 34, 38). Again, Appellants assert that
Leahy‟s apparatus includes an adhesive that prevents the apparatus from
having the “such that” features of claims 106 and 107 (id. at 35, 38-39).
Appellants do not provide sufficient evidence, e.g., in the form of a
declaration, that an apparatus that satisfies the count of the interference, or
an apparatus encompassed by Leahy‟s claims 1-31 (corresponding to the
count), does not inherently exhibit these features, or that such an apparatus
necessarily includes an adhesive. Attorney argument here is insufficient to
persuade us otherwise (id. at 34-40). Estee Lauder, 129 F.3d at 595.
Thus, for the reasons discussed above, we conclude that the Examiner
establishes by a preponderance of the evidence that claims 106 and 107 are

3
An oral hearing was held on March 12, 2013.
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unpatentable under 35 U.S.C. § 102(g) over the count in the „195
interference, to which a judgment adverse to Appellants has been rendered.
Appellants do not argue claims 73-85 and 87-100 separately, and therefore
these dependent claims fall with the independent claims.
SUMMARY
We reverse the rejection of claims 73-85, 87-100, 106, and 107 under
35 U.S.C. §112, first paragraph, as failing to comply with the written
description requirement. We affirm, however, the rejections of the same
claims under 35 U.S.C. § 102(e) as anticipated by Leahy, and under 35
U.S.C. § 102(g) over the sole lost count of Patent Interference No. 104,195.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

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ADAMS, Administrative Patent Judge, concurring.
I agree with Majority‟s decision to reverse the written description
rejection.
While I agree with Majority‟s decision to affirm the rejections under
35 U.S.C. § 102(e) and § 102(g), my rationale differs from that of the
Majority. I find no difference between the apparatus set forth in Appellants‟
claims 106 and 107 and the apparatus illustrated and described by Leahy,
regardless of whether or not Appellants‟ illustrated an adhesive layer in
Figure 9 of their Specification (see Leahy, Figure 19 and column 7, lines 10-
21; Cf. Appellants‟ Figure 9 (see Replacement Drawing Sheet, filed
September 21, 2009). The comprising language of Appellants‟ independent
claims 106 and 107 fails to exclude a flange adhesively attached to a drape,
as taught by Leahy (see id. at ll. 20-21). Therefore, I am not persuaded by
Appellants‟ contention that “[a]s long as [the] flange … is adhered to the top
of [the] abdominal wall” Leahy‟s apparatus will not function as intended by
Appellants‟ claimed invention (App. Br. 20 and 27). To be clear, Leahy‟s
flange is adhesively attached to a drape, not the abdominal wall of the
patient, and there is no persuasive evidence or argument on this record to
support a finding that adhesively attaching the flange to a drape will cause
Leahy‟s apparatus to perform differently than Appellants.
For the foregoing reasons, Appellants failed to establish a difference
between their claimed invention and the invention encompassed by Leahy‟s
claims, which were the subject matter of Interference No. 104,195 (the „195
Interference) (see, e.g., Leahy, col. 7, l. 55 - col. 8, l. 3 (Claim 1)). In this
regard, I recognize Appellants‟ reliance on “Curtis Mfg. Co., Inc. v. Plasti-
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Clip Corp., 933 F. Supp. 94, 103 (D.N.H. 1995)” (App. Br. 26). However,
in contrast to the preliminary motion relied upon in Curtis, the evidence on
this record relates to a final judgment entered against Appellants “on the
issue of priority/derivation,” which is, as Appellants‟ recognize, “a „final
judgment‟ as that term is construed for res judicata or collateral estoppel
purposes” (see the „195 Interference, Judgment under 37 C.F.R. §§ 1.652
and 1.656(i), entered August 15, 2001; App. Br. 26). Therefore, I am not
persuaded by Appellants‟ contention that Leahy is not available as prior art
on this record (App. Br. 23).
The remainder of Appellants‟ contentions related to the rejection
under 35 U.S.C. § 102(e) fail to support a contrary finding.
For the foregoing reasons, I am not persuaded by Appellants‟
contentions relating to the rejection under 35 U.S.C. § 102(g).