11277571 (B.P.A.I. Jul. 24, 2012)

Ex Parte Calvert

Board of Patent Appeals and InterferencesJul 24, 2012

11277571 (B.P.A.I. Jul. 24, 2012)

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. 11/277,571 03/27/2006 Deborah Calvert 148/427US 4999 19148 7590 07/24/2012 Shumaker, Loop & Kendrick, LLP 128 South Tryon Street Suite 1800 Charlotte, NC 28202-5013 EXAMINER HAND, MELANIE JO ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 07/24/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DEBORAH CALVERT ____________ Appeal 2011-008233 Application 11/277,571 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 7, 9-21, 24, and 25 (App. Br. 4; Reply Br. 4; Ans. 2). 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Pending claims 22 and 23 stand withdrawn from consideration (App. Br. 4; Reply Br. 4; Ans. 2). Appeal 2010-008233 Application 11/277,571 2 STATEMENT OF THE CASE 2 The claims are directed to a device for maintaining a stoma in a patient’s body (claims 1, 7, 9-20, 24, and 25) and a method of maintaining a stoma in a patient’s body employing a stoma device according to claim 1 (claim 21). Claim 1 is representative and is reproduced in the Claims Appendix of Appellant’s Brief. Claims 1, 7, 9-15, 24, and 25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Prager. 3 Claims 16, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Prager and Quinn. 4 Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Prager and Abuto. 5 We reverse. Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Prager teaches Appellant’s claimed invention? 2 Examiner objected to Appellant’s Specification as failing to provide proper antecedent basis for the phrase “diametrical thinning” (Fin. Rej. 3). However, as Examiner points out, this objection is a petitionable matter not properly before this panel for review (Ans. 10). Manual of Patent Examining Procedure § 2163.06 (Rev. 6, September 2007). 3 Prager, US 4,351,322, issued September 28, 1982. 4 Quinn et al., US 4,981,471, issued January 1, 1991. 5 Abuto et al., US 5,804,021, issued September 8, 1998. Appeal 2010-008233 Application 11/277,571 3 FACTUAL FINDINGS (FF) FF 1. Prager teaches “[a] stoma control device and method” (Prager, Abstract; Ans. 4). FF 2. For clarity, Prager’s FIG. 4 is reproduced below: “FIG. 4 is a cross-sectional view from the side of a plug according to . . . [Prager’s] invention . . . illustrating the balloon, plug body with flange and the passageway and valve for inflating and deflating the balloon with a syringe” (Prager, col. 3, ll. 35-39). FF 3. The plug 6 of Prager’s stoma closure device 1 comprises an outer flange 9, a valve 10, a balloon 7 with outwardly tapered surface 8, and an air passage or tubing 11 between the balloon and valve 10 (Prager, col. 5, ll. 11- 37; Ans. 4). FF 4. Examiner finds that Prager’s plug “compris[es] a side wall defining a chamber, i.e. air passage 11, wherein the chamber is an open chamber open only to an aperture defined in the side wall and an opening defined through the first end such that a flow path for fluid and air is provided into the chamber but not through the stoma device” (Ans. 2). FF 5. Examiner finds that Prager’s “valve 10 at the first end of the device is a nipple valve which is a normally closed valve that would not allow air to Appeal 2010-008233 Application 11/277,571 4 pass out of the chamber and therefore fluid and air will flow into the chamber but not through the device” (id.). ANALYSIS The device of Appellant’s independent claim 1 comprises a side wall that defines a chamber wherein the chamber is open to only one of: (a) an aperture defined in the side wall; or (b) an opening defined through the first end (see Claim 1). The device of Appellant’s independent claim 24 requires the chamber to be open to only an aperture defined in the side wall (see Claim 24). Prager’s plug comprises an opening in the side wall (FF 2-3). Therefore, the issue distills down to whether valve 10 of Prager’s plug can reasonably be interpreted to not define an opening through the first end? We recognize Examiner’s reasoning that [T]he opening in the first end [of Prager’s plug] contains valve 10 and valve 10 is a type of valve that is opened by fluid pressure therethrough and thus is a normally closed valve. The size of the aperture is such that, in combination with the retrograde flow it would effect through the valve, would not be enough to open the valve, thus the first end remains closed such that air and certain stoma exudates can flow in through the aperture, but cannot exit through the first end in a retrograde flow with respect to the valve. (Ans. 11.) Examiner, however, fails to identify an evidentiary basis on this record to support this reasoning. Examiner also fails to provide an evidentiary basis on this record to support “[E]xaminer’s position that Prager is clearly disclosing that the opening 10 at the first end is so small that only a very small stream of air is permitted to pass therethrough to inflate the balloon and is in no way a flow path for fluid from the stoma” (Ans. 7). Appeal 2010-008233 Application 11/277,571 5 Notwithstanding Examiner’s unsupported reasoning, Examiner does make clear on this record that Prager’s valve 10 does reasonably define an opening through the first end of Prager’s plug. Accordingly, since there is no dispute that there is an opening in the sidewall of Prager’s plug, Prager fails to teach a device comprising a side wall that defines a chamber wherein the chamber is open to only: (I) an aperture defined in the side wall as required by Appellant’s claim 24; or (II) one of: (a) an aperture defined in the side wall; or (b) an opening defined through the first end as required by Appellant’s claim 1 (see App. Br. 10-12; Reply Br. 13). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Prager teaches Appellant’s claimed invention. The rejection of claims 1, 7, 9-15, 24, and 25 under 35 U.S.C. § 102(b) as being anticipated by Prager is reversed. Obviousness: ISSUE Does Examiner’s reliance on Quinn or Abuto make up for the foregoing deficiencies in Prager? FACTUAL FINDINGS (FF) FF 6. Prager is relied upon as set forth above (FF 1-5; see generally Ans. 8-10). FF 7. Examiner finds that Prager fails to suggest “the step of adhering the device to the skin” and relies on Quinn to suggest “that it is known in the art to secure a cannula or other pathway to the exterior of an ostomy by either sutures or adhesive tape” (Ans. 8-9). Appeal 2010-008233 Application 11/277,571 6 FF 8. Examiner finds that Prager fails to suggest “an adhesive dressing arranged to stretch in a radial dressing [sic, direction] relative to the stem” or “a dressing having a plurality of slits” and relies on Abuto to make up for these specific deficiencies in Prager (Ans. 9-10). ANALYSIS Examiner failed to establish that Quinn or Abuto make up for the deficiencies in Prager discussed above. “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). CONCLUSION OF LAW Examiner’s reliance on Quinn or Abuto fails to make up for the foregoing deficiencies in Prager. The rejection of claims 16, 17, and 21 under 35 U.S.C. § 103(a) as unpatentable over the combination of Prager and Quinn is reversed. The rejection of claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over the combination of Prager and Abuto is reversed. REVERSED alw