Ex Parte Hull

Patent Trial and Appeal Board

Dec 21, 2018

13922640 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/922,640 06/20/2013
31554 7590 12/26/2018
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
576 Broad Hollow Road
MELVILLE, NY 11747
Les Hull
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.
2132-14 8853
EXAMINER
WIBLIN, MATTHEW
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
docket@cdfslaw.com
bpuchaczewska@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LES HULL
Appeal2018-001616
Application 13/922,640
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
According to Appellant, the invention "relates to pneumatic actuator
assemblies for controlling the flow of the components through and from the
1 According to Appellant, the real party in interest is "Confluent Surgical
Inc." Appeal Br. 1.
Appeal2018-001616
Application 13/922,640
applicator assembly." Spec. ,r 2. Claims 1 and 10 are the independent
claims on appeal. Below, we reproduce claim 1 as illustrative of the
appealed claims.
1. An actuator assembly comprising:
a housing configured for operable engagement by a user;
a trigger assembly operably supported on the housing;
a gas cartridge releasably secured to the housing;
a valve housing mounted within the housing for
controlling the flow of pressurized gas through the housing; and
a cylinder actuator defining an inlet chamber and an outlet
chamber, the cylindrical actuator including a piston selectively
extendable therefrom configured for depressing a plunger, the
piston including a head assembly having an inlet surface
disposed within the inlet chamber of the cylinder actuator
defining a first area, and an outlet surface disposed within the
outlet chamber of the cylinder actuator defining a second area,
wherein the first area is equal to the second area.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-3, 5-7, 9, and 10 under 35 U.S.C. § I03(a) as
unpatentable over Hodosh et al. (US 3,768,472, iss. Oct. 30,
1973) ("Hodosh") and Larkin (US 5,542,336, iss. Aug. 6,
1996);
II. Claim 4 under 35 U.S.C. § I03(a) as unpatentable over Hodosh,
Larkin, and Hart (US 2005/0132877 Al, pub. June 23, 2005);
and
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Application 13/922,640
III. Claim 8 under 35 U.S.C. § I03(a) as unpatentable over Hodosh,
Larkin, and McKinnon et al. (US 5,383,851, iss. Jan. 24, 1995)
("McKinnon").
ANALYSIS
Reiection I
Regarding the Examiner's obviousness rejection of independent
claim 1, Appellant argues that the rejection is in error (Appeal Br. 3-8)
because the Examiner improperly relies on Larkin to disclose a piston
including a head assembly having an inlet surface disposed within an inlet
chamber of a cylinder actuator defining a first area, and an outlet surface
disposed within an outlet chamber of the cylinder actuator defining a second
area, where the first area is equal to the second area, as claimed (Answer 2-
5; Final Action 7). Based on our review of the record, the Examiner does
not support adequately that Larkin discloses the claimed inlet surface first
area equal to the outlet surface second area. Thus, for the reasons discussed
in detail below, we do not sustain claim 1 's rejection.
Appellant and the Examiner agree that Larkin's sole figure may not be
relied upon to disclose that the surface areas of piston 28's faces are equal to
each another, such that Larkin teaches the claimed equal areas. Appeal
Br. 5; see also Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d
951, 956 (Fed. Cir. 2000) ("[I]t is well established that patent drawings do
not define the precise proportions of the elements and may not be relied on
to show particular sizes if the specification is completely silent on the
issue."); see also Answer 2 ("[A]ppellant states that drawings cannot be
committed to as drawn to scale. The [E]xaminer agrees.").
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Application 13/922,640
Further, we agree with Appellant (Appeal Br. 3-8) that none of the
portions of Larkin cited by the Examiner either expressly or inherently
discloses that the surface areas of the faces of piston 28 are equal to each
other (Answer 2-5). For example, even if we agree with the Examiner that
one of ordinary skill . . . understands that when a cylinder
actuator has a piston dividing the cylinder into two chambers,
and the surfaces of the piston facing each chamber are equal, that
applying an equal pressure upon the surfaces of the piston facing
each chamber results in the piston NOT moving
(Answer 3) (citation omitted), it is not clear that any of the portions of
Larkin referenced by the Examiner discloses applying equal pressure in both
cylinder chambers so that the piston remains stationary. For example, the
Examiner cites Larkin, column 1, lines 42--49. Id. This portion of Larkin
discloses the following:
When both chambers are connected to the pressurized fluid
source, the fluid pressures in the chambers are balanced and the
position of the piston is fixed to forcibly hold the member at a
desired position. To move the member in either of two directions
to a desired new position, the appropriate one of the chambers is
vented until the member is driven to the new position and then is
reconnected to the pressurized fluid source.
Larkin col. 1, 11. 42--49. Here, Larkin does not expressly state that the
pressures within both chambers are equal; only that the pressures are
"balanced." Further, it is not clear that "balanc[ing]" pressures within two
chambers, such that the piston does not move, requires that the pressures
within the two chambers are equal ( such that the piston face surface areas
would be equal}--rather, this portion of Larkin is consistent with an
understanding that the pressures within the chambers are adjusted relative to
one another (such that the piston is not moving). We note, for example, that
in the arrangement shown in Appellant's Figure 1, the surface areas of inlet
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Application 13/922,640
surface 28a and outlet surface 28b are not equal, but the pressures within the
chambers are balanced-and are, in fact, described as being "equalized"-
such that piston 26 is not moving. Figure 1; Spec. ,r 24.
By way of further example, the Examiner cites from column 3, line 55
to column 4, line 24, of Larkin, as "explicitly describ[ing] the function of the
device." Answer 4; see also id. at 3-5. Based on our review, it is not clear
from this portion of Larkin, however, that equal pressures are being applied
in both chambers of cylinder 26 (such that piston 28 is stationary). It is true
that Larkin states that when "the hydraulic fluid pressure in actuator
chamber 32 exceeds the hydraulic fluid pressure in actuator
chamber 30 ... [,] piston 28 is propelled leftward," and that when "[t]he fluid
pressure in actuator chamber 3 0 ... exceeds the fluid pressure in actuator
chamber 32 ... [,] piston 28 is propelled rightward." Larkin col. 4, 11. 10-14,
20-24 (bold omitted). In accordance with the above discussion, these
portions of Larkin arguably imply that the surface areas of the faces of
piston 28 are equal. Nonetheless, as Appellant points out (Appeal Br. 7;
Reply Br. 2---63), Larkin directly thereafter discusses that "piston 28 remains
essentially stationary" when "the mean effective pressures in the actuator
chambers 30 and 32 are equalized, i.e., balanced" (Larkin col. 4, 11. 24--28)
(bold omitted) ( emphasis added). Thus, based on our review of Larkin as a
whole, it is unclear whether piston 28 is stationary when pressures within the
chambers are equal ( from which we may find that the surface areas of both
faces of piston 28 are the same), or when pressures within the chambers are
balanced relative to one another without necessarily being equal.
Therefore, based on the foregoing, the Examiner does not support
adequately the finding that Larkin discloses the claimed inlet surface first
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Application 13/922,640
area equal to the outlet surface second area. Consequently, we do not
sustain claim 1 's rejection. We also do not sustain the Examiner's obvious
rejection of independent claim 10 that recites a similar recitation, or the
rejection of claims 2, 3, 5-7, and 9 that depend from claim 1, for the same
reasons we do not sustain claim 1 's rejection.
Reiections II and III
The Examiner does not demonstrate that either Hart or McKinnon
remedies the above deficiency in claim 1 's rejection. Thus, we do not
sustain the Examiner's obviousness rejections of claims 4 and 8 that depend
from claim 1.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1-10.
REVERSED
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