Ex Parte Hammond et al

Patent Trial and Appeal Board

Aug 31, 2016

13221630 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/221,630 08/30/2011 Alisha M. Hammond
34284 7590 09/02/2016
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.
101672.0144P 3876
EXAMINER
KOO, BENJAMIN K
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISHA M. HAMMOND, MATTHEW W. BOWN,
JEREMY C. HORTON, and SPENCER R. THOMAS
Appeal2014-009179
Application 13/221,6301
Technology Center 3700
Before NEALE. ABRAMS, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alisha M. Hammond et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner's final rejection of claims 1-5 and 22-24
under 35 U.S.C. § 102(b) as anticipated by Beal (US 2009/0105652 Al, pub.
Apr. 23, 2009); of claims 25 and 27 under 35 U.S.C. § 103(a) as
unpatentable over Beal; and of claims 28-30 under 35 U.S.C. § 103(a) as
unpatentable over Beal and Burbank (US 6,193,684 Bl, iss. Feb. 27, 2001).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is C. R. Bard, Inc.
Appeal Br. 3.
2 Claims 6-21 have been canceled and claims 26 and 31 are withdrawn. Id.
Appeal2014-009179
Application 13/221,630
CLAIMED SUBJECT MATTER
Claims 1 and 22 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter.
1. A tunneler, comprising:
an elongate tunneler member including a handle on a
proximal end and a tapered distal end; and
a sheath member defining an elongate lumen inside
which the tunneler member is received, the tunneler member
configured to define a tunnel through subcutaneous tissue, the
tunneler member being removable from the sheath lumen after
defining the tunnel, the sheath configured to remain within the
tunnel so that a catheter can be inserted through the sheath
within the tunnel.
ANALYSIS
Anticipation of Claims 1-5 and 22-24 by Beal
The Examiner finds that Beal anticipates claims 1-5 and 22-24 by
disclosing a tunneler comprising "an elongate tunneler member (30) ... and
a sheath member (20)," \vith
the tunneler member being capable of being configured to define
a tunnel through subcutaneous tissue, the tunneler member being
removable from the sheath lumen after defining the tunnel, the
sheath being configured to remain within the tunnel so that a
catheter can be inserted through the sheath within the tunnel
(inherent in the normal use of the device as is known in the art)
[as recited by claim 1].
Final Act. 3. The Examiner also explains that "no structural limitations to
distinguish over the Beal have been claimed." Id. at 6.
Group 1: Claims 1-5 and 24
Appellants argue claims 1-5 and 24 as a group. Appeal Br. 8-10. We
select claim 1 as the representative claim for this group, and the remaining
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Application 13/221,630
claims stand or fall with claim 1. See 37 C.F.R. 41.37(c) (l)(iv). Appellants
present separate arguments under a separate heading for dependent claims
22 and 23 (Appeal Br. 10-12; Reply Br. 6), which we address infra.
Appellants first contend that "Beal does not teach or suggest that 'the
tunneler member [is] configured to define a tunnel through subcutaneous
tissue' as required," because "dilator 30 of Beal is not 'a tunneler' and
would never [be] used to create a tunnel." Appeal Br. 8 (1st alteration in
original); see also Reply Br. 4--5.
However, it is well established that "[a]n intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates."
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Thus, reciting "configured to define a tunnel
through subcutaneous tissue" does no more than define a possible use of the
tunneler. Such a statement of use or purpose does not make a claim to a
known structure patentable. See In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (stating that the applicant's contention that the claimed structure
will be used in a way not taught by the prior art reference does not have
patentable weight if the structure is already known).
We agree with the Examiner that "a recitation of the intended use of
the claimed invention must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish the
claimed invention from the prior art," and that"[ Appellants'] claim only
requires an elongate 'tunneler' member with a handle on a proximal end and
a tapered distal end, which has been met by the dilator 30 of Beal." Ans. 2.
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Application 13/221,630
Appellants also contend that "one of ordinary skill in the art would not
use the dilator of Beal to create a subcutaneous tunnel ... because the dilator
30 of Beal includes a guidewire lumen or 'bore extending between its
proximal end 30A and distal end 30B' that would core the tissue and cause
undue trauma to the patient," Appeal Br. 8. However, we agree with the
Examiner that "[Appellants'] claims does not exclude the existence of a
guidewire bore or use of a guidewire." Ans. 2. The presence of additional
structures in the prior art does not undermine a rejection where the claim
uses "comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d
1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which
is well understood in patent law to mean 'including but not limited to."'
(quoting CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed.
Cir. 2007) ).
Appellants continue by contending that "[ o ]ne of ordinary skill in the
art would not want to unnecessarily harm the patient by cutting away
(coring) a long section of tissue while tunneling." Appeal Br. 8. However,
the Examiner explains that "the dilator of Beal is certainly capable of
creating a 'tunnel' in tissue, as much as any implement having a tapered end
would be able to create a 'tunnel,"' concluding that "[Appellants have] not
excluded coring and that even if coring exists, that the dilator would still
create a 'tunnel."' Ans. 2. We agree.
Appellants also dispute the Examiner's comments regarding Beal's
disclosure of dilator radius, needle gauge, and tunnel length. See Appeal Br.
9-10; see also Reply Br. 5---6. However, as we are instructed by our
reviewing court, "limitations are not to be read into the claims from the
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Application 13/221,630
[S]pecification." Jn re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing Jn re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
For the reasons set forth above, we discern no error in the Examiner's
findings and agree that Beal anticipates claim 1, and claims 2-5 and 24,
which fall with claim 1.
Group 2: Claims 22 and 23
Appellants argue that claims 22 and 23 "are not anticipated by Beal at
least because Beal does not teach or suggest the step of 'creating the tunnel
by a tunneler, the tunneler including a tunneler member removably received
within a sheath' as required [by claim 22]." Appeal Br. 10; see also Reply
Br. 6. However, we agree with the Examiner that "the dilator of Beal
enlarges a previously defined incision ([0023])," so that "this positively
recited method is equivalent to the method claimed by [Appellants that]
requires 'creating the tunnel by a tunneler,"' since "the dilator [of Beal]
would inherently form a 'tunnel' once inserted as it enlarges the previously
made incision." Ans. 3. The Examiner also explains that "[Appellants have]
not excluded coring [from claim 22] and that even if coring exists, that the
dilator would still create a 'tunnel."' Id.
For the foregoing reasons, we discern no error in the Examiner's
findings and agree that Beal anticipates claims 22 and 23.
Obviousness of Claims 25 and 27 over Beal
In rejecting dependent claims 25 and 27 over Beal, the Examiner finds
that "Beal shows [Appellants'] splittable sheath ([0024]) to enable removal
of the sheath from around the catheter," explaining that "[t]he use of
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Application 13/221,630
splittable sheaths is known in the art and such a limitation would also be
considered an obvious duplication of known elements." Final Act. 4--5.
While contending that "the Examiner must provide more rationale and
support for the rejection than the conclusory statements it has provided,"
Appellants' Brief fails to contain any specific arguments in response to the
Examiner's rejection. See Appeal Br. 12; see Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential); see also 37 C.F.R. § 41.37(c)(l)(iv)
(2012) ("The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant."); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (holding that "the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art").
Accordingly, we are constrained to sustain the Examiner's rejection of
dependent claims 25 and 27 over Beal.
Obviousness of claims 28-30 over Beal and Burbank
Claims 28 and 29
In rejecting dependent claims 28 and 29 over Beal and Burbank, the
Examiner looks to Burbank for additionally showing "a subcutaneous pocket
in which an access port (100) is disposed for subsequent subcutaneous
tunneling," reasoning that
[i]t would have been obvious ... to have used the port of
Burbank with the Beal device since subcutaneous access ports
are known in the art to be used in conjunction with catheter
inserters to provide a location where repeated insertions may be
safely and conveniently accomplished to either insert or remove
fluids from the body.
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Final Act. 5 (citing Burbank, col. 6, 11. 40-43 ).
After paraphrasing the limitations of claim 28, Appellants advance the
same arguments for claims 28 and 29 that we found unpersuasive regarding
claim 22. Appeal Br. 13. However, Appellants fail to respond to the
Examiner's rejection over Beal and Burbank. Lacking any argument
directed to the Examiner's rejection before us, we summarily sustain the
Examiner's rejection of dependent claims 28 and 29 as being unpatentable
over Beal and Burbank for the same reasons stated above in sustaining the
rejection of claim 22 as anticipated by Beal. 3
Claim 30
Claim 30 depends from claim 28. In rejecting dependent claim 30
over Beal and Burbank, the Examiner additionally finds that "once the
procedure [of claim 28] has been completed and the pertinent fluids have
been transferred, it would be obvious to remove the catheter from the patient
to prevent infection." Final Act. 5. Furthermore, the Examiner explains that
"no catheter is intended to remain inserted permanently and thus the removal
of the catheter, especially for the sake of preventing infection or
contamination over extended use, would be obvious to a skilled artisan."
Ans. 4.
Appellants paraphrase the limitations of claim 30, while again failing
to respond to the Examiner's rejection of claim 30 over Beal and Burbank.4
Lacking any argument directed to the Examiner's rejection before us, we
3 In an appeal under 35 U.S.C. § 134(a), it is the Examiner's final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
4 See note 3.
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Application 13/221,630
also summarily sustain the Examiner's rejection of dependent claim 30 as
being unpatentable over Beal and Burbank for the same reasons stated above
in sustaining the rejection of claim 22 as anticipated by Beal.
DECISION
We AFFIRM the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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