Ex Parte Marten et al

Patent Trial and Appeal Board

Aug 30, 2016

12234031 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/234,031 09/19/2008
20999 7590 09/01/2016
FROMMER LAWRENCE & HAUG
745 FIFTH A VENUE- IOTH FL.
NEW YORK, NY 10151
FIRST NAMED INVENTOR
Lewis H. Marten
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.
930027-2025.1 3220
EXAMINER
DOUGLAS, STEVEN 0
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
prosecutiondocketing@flhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEWIS H. MARTEN and DENNIS CREEDON
Appeal2014-006794
Application 12/234,031 1
Technology Center 3700
Before PHILIP J. HOFFMANN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 19--32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b ).
1 According to the Appellants, the real party in interest is E. Benson Hood
Laboratories. Appeal Br. 2.
Appeal2014-006794
Application 12/234,031
ILLUSTRATIVE CLAIM
19. A nasal splint comprising an oblong-shaped base, the
oblong base comprising
a first curved end, a second curved end, and a middle
region therebetween wherein middle region comprises a first
edge and a second edge,
a first surface, and a second surface,
one or more holes through the first and second surfaces,
and
a protective coating that covers one or more portions of
the first surface, second surface, or both the first and second
surfaces, of the splint,
wherein a cross-sectional area of the oblong base is
greater at the site of the one or more holes than at other sites of
the oblong base.
CITED REFERENCES
The Examiner relies upon the following references:
Doyle us 3,935,859 Feb.3, 1976
Eliachar us 5,350,396 Sept. 27, 1994
Nelson et al. US 7,441,559 B2 Oct. 28, 2008
(hereinafter "Nelson")
Kotler US 8,092,478 B2 Jan. 10,2012
REJECTIONS
I. Claims 19--22, and 24--32 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Doyle, Nelson, and Eliachar.
II. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Doyle, Nelson, Eliachar, and Kotler.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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Application 12/234,031
ANALYSIS
Independent claim 19 recites a "nasal splint comprising an oblong-
shaped base," "wherein a cross-sectional area of the oblong base is greater at
the site of the one or more holes than at other sites of the oblong base."
The issue on appeal is whether this claim limitation is taught by
Eliachar, which discloses a grommet proximate an aperture through the base
of a nasal splint. See Appeal Br. 5---6.
However, we determine that in view of the Specification, the meaning
of claim 19' s "cross-sectional area" limitation could not be understood with
reasonable certainty by a person of ordinary skill in the art. Neither claim 19
nor the Specification explains how the extent of the "site" might be
determined or how the "cross-sectional area" thereof might be measured.
Indeed, the Specification does not refer to the "cross-sectional area" of the
"base," but rather refers simply to its "cross-section" which may be
increased proximate one or more holes therethrough:
The nasal splint 260 may further comprise a hole 269
near the first curved end 262, near the second curved end 263,
or a combination thereof. The holes 269 are for purposes of
suturing. The edge of the hole may be level with first surface
265 and/or the second surface 266, or the edge of the hole may
comprise a lip. Also, the base 261 at the site of the holes may
have a greater cross-section than other sites of the base 261.
The holes 269 provide a secure feature that will allow the
physician to pass a suture through, without tearing the silicone
device. The suture aids in holding the splint in position.
Spec., p. 21, 11. 13-19 (emphasis added).
Contrary to the language of claim 19, both the Appellants and the
Examiner appear to understand the claimed "cross-sectional area" (a two-
dimensional quantity) as synonymous with thickness (a one-dimensional
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Application 12/234,031
quantity). For example, the Examiner refers to the Eliachar reference as
teaching the claim limitation at issue, through its disclosure of a grommet
that purportedly provides "reinforced areas of greater cross-sectional area or
thickness of the associated base." Final Action 3 (emphasis added).
Similarly, the Appellants contend that the identified limitation of claim 19
should be construed "in the natural way": "That is, the cannula has a base
with holes in it and that base is thicker around the hole." Reply Br. 2-3
(emphasis added).
The Appellants' arguments and the Examiner's position cannot be
understood fully, in view of the uncertain meaning of claim 19' s "cross-
sectional area" limitation. Although both the Examiner and the Appellants
appear to equate the claimed "cross-sectional area" with thickness, thickness
generally refers to a single dimension, while area generally refers to two
dimensions, and, thus, it is unclear which dimension or dimensions of the
prior art would be compared to the claim language in order to determine
whether the prior art teaches the limitation at issue. While it appears that the
Examiner fails to establish by a preponderance of the evidence that Eliachar
discloses a base with a thickness greater at the site of a hole than at other
sites of the oblong base, we are unable to determine whether such a feature
is being claimed.
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a
rejection of the claims as obvious (under 35 U.S.C. § 103) must be reversed
as impermissibly involving speculative assumptions as to the meaning of the
claims. In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). "If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
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Application 12/234,031
matter does not become obvious -the claim becomes indefinite." In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Therefore, the rejection under 35 U.S.C. § 103(a) of claim 19 is
reversed, proforma. Pursuant to 37 C.F.R. § 41.50(b), claim 19 is hereby
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite,
because the precise meaning of the limitation introduced in claim 19 cannot
be determined.
Because the same indefiniteness issue affects dependent claims 20-
32, the rejection of these claims is also reversed, proforma, and they are
subject to the new ground of rejection set forth herein.
DECISION
We REVERSE the Examiner's decision rejecting claims 19-32 under
35 U.S.C. § 103(a),proforma.
We ENTER A NEW GROUND OF REJECTION for claims 19-32
under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
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Application 12/234,031
proceeding will be remanded to the Examiner;
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record.
REVERSED, 37 C.F.R. § 41.50(b)
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