Ex Parte Palmer

Patent Trial and Appeal Board

Oct 30, 2018

15130337 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/130,337 04/15/2016 Timothy Palmer
23403 7590 11/01/2018
SHERRILL LAW OFFICES
4756 BANNING A VE
SUITE 212
WHITE BEAR LAKE, MN 55110-3205
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.
CUREM012USPT01 8916
EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
michaels@sherrilllaw.com
izag@sherrilllaw.com
docketing@sherrilllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY PALMER
Appeal 2018-000711
Application 15/130,337
Technology Center 3700
Before JENNIFER D. BAHR, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.
1 Cure Medical, LLC is the Appellant and is listed on page 2 of the Appeal
Brief as the real party in interest.
Appeal 2018-000711
Application 15/130,337
CLAIMED SUBJECT MATTER
The claims are directed to a packaged ready-to-use intermittent
urinary catheter. Spec. ,r 2. Claim 1, reproduced below with emphasis
added, is illustrative of the claimed subject matter:
1. An efficiently and hermetically packaged intermittent
urinary catheter, consisting essentially of
an intermittent urinary catheter having a longitudinal axial
length with a first portion terminating at an insertion end and a
second portion longitudinally opposed to the first portion
terminating at a fixture end, and a top view profile, the catheter
hermetically packaged between laminated first and second layers
of film hermetically sealing the catheter within a lubricant
containing retention chamber having a top view profile
conforming to the top view profile of the catheter, wherein the
lubricant is positioned and arranged within the retention chamber
for lubricating contact with only the first portion of the packaged
catheter.
Appeal Br. (Claims App. 1 ).
REFERENCES RELIED ON BY THE EXAMINER
Israels son
Terry
US 6,848,574 Bl
US 9,033,149 B2
Feb. 1,2005
May 19, 2015
THE REJECTIONS ON APPEAL
(I) Claims 1-15 are rejected under 35 U.S.C. § 112(b) as indefinite.
(II) Claims 1, 2, and 7-9 are rejected under 35 U.S.C. § I02(b) as
anticipated by Terry.
(III) Claims 16 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Terry.
(IV) Claims 1, 2, 7-9, 16, and 17 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Terry.
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(V) Claims 4, 5, 10-15, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Terry.
(VI) Claims 3, 6, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Terry and Israelsson.
OPINION
Rejection (I); Claims 1-15, Indefiniteness
The Examiner determined that the term "efficiently" in claim 1
renders claims 1-15 indefinite because it is a relative term that is not defined
by the claims or Specification. Final Act. 2.
Appellant argues "the claim term 'efficiently' is used in accordance
with its common ordinary dictionary meaning of productive without waste,
which meaning is further detailed in the application as a packaged catheter
with properly constrained lubricant achieved using only first and second
layers of film." Appeal Br. 7-8 (citing Webster's Ninth New Collegiate
Dictionary (1991) and Spec. ,r,r 3, 4, 11 ).
The Examiner responds by characterizing the term "efficiently" as
subjective and finds that the Specification lacks a standard for determining
whether a catheter has been packaged efficiently. Ans. 10.
A claim is properly rejected as indefinite under 35 U.S.C. § 112(b) if,
after applying the broadest reasonable interpretation in light of the
specification the scope of a claim is not clear because the claim "contains
words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307,
1310 (Fed Cir. 2014). "Because claims delineate the patentee's right to
exclude, the patent statute requires that the scope of the claims be
sufficiently definite to inform the public of the bounds of the protected
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Application 15/130,337
invention, i.e., what subject matter is covered by the exclusive rights of the
patent." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249
(Fed. Cir. 2008).
We agree with the Examiner that claims 1-15 are indefinite because a
person of ordinary skill in the art would not be put on notice as to the metes
and bounds of the claims. We agree that the term "efficiently ... packaged"
in claims 1-15 is a subjective term-what may be efficient to one skilled
artisan may not be efficient to another skilled artisan, and Appellant's
Specification does not define this term. For example, paragraph 3 of the
Specification, cited by Appellant in traversing Rejection (I), merely states
that a need exists for an efficiently packaged intermittent urinary catheter.
The other paragraphs cited by Appellant in support of claims 1-15
summarize the features recited in claim 1 and explain that "[t]he invention is
an efficiently packaged, ready to use intermittent urinary catheter" without
shedding any light on what it means to be "efficiently packaged." Spec. ,r,r
4, 11. Accordingly, we sustain the rejection of claims 1-15 as indefinite.
Rejection (11); Claims 1, 2, and 7-9 as Anticipated by Terry
The Examiner finds that Terry teaches all of the elements required by
claim 1, including a retention chamber (in the form of sleeve 20). Final Act.
4. The Examiner acknowledges that claim 1 uses the transition "consisting
essentially of' and explains how the Examiner interprets this phrase. Id. at 3
("For the purposes of searching for and applying prior art, absent a clear
indication in the specification or claims of what the basic and novel
characteristics actually are, 'consisting essentially of will be construed as
equivalent to 'comprising."').
Appellant contends that Terry fails to disclose that package 12
includes only first and second layers of a film sealing the catheter within a
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Application 15/130,337
lubricant retention chamber. Appeal Br. 9-10. In other words, Appellant
contends that Terry fails to anticipate claim 1 because Terry's package 12
uses more than two layers of film; it also includes absorptive sleeve 20. Id.
In response, the Examiner points to column 11, lines 6-16 of Terry
describing sleeve 20 as a coating, a co-extrusion, or a lamination on package
12 and determines that "the disclosed invention of Terry does not require an
additional sleeve." Ans. 10-11 ( emphasis added).
In reply, Appellant asserts that the deficiency discussed in the Appeal
Brief exists in Terry regardless of whether sleeve 20 is a separate part of the
packaging or is a coating on an interior of the packaging. Reply Br. 2.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is "consistent with the specification."
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (quoting In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Appellant's Specification states, "[t]he invention is an efficiently
packaged, ready to use intermittent urinary catheter. The packaged catheter
includes, and except for appropriate labeling and marking preferably only
includes, (i) an intermittent urinary catheter, (ii) packaging formed from first
and second layers of film, and (iii) a lubricant." Spec. ,r 4 ( emphasis added).
Similarly, paragraph 11 of the Specification states,
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[r]eferring to Figures 1-3, the packaged catheter 10 includes, and
in a preferred embodiment only includes the functional
components of, (i) an intermittent urinary catheter 20 equipped
with a fixture 30 at one end, (ii) packaging 40 formed from first
41 and second 42 layers of film, and (iii) a lubricant 50.
Consistent with the Specification, the broadest reasonable interpretation of
claim 1 excludes structure such as sleeve 20 of Terry, even when such
structure is merely a coating or co-extrusion as disclosed in column 11, lines
6-16 of Terry. Specifically, we agree with Appellant that Terry fails to
anticipate the subject matter of claim 1 because package 12 includes more
than first and second layers of film. Therefore, we do not sustain Rejection
(II).
Rejection (111); Claims 16 and 17 as Unpatentable over Terry
Independent claim 16 uses the closed transition "consisting of' and
requires a catheter hermetically packaged between laminated first and
second layers of film. Appeal Br. (Claims App. 4).
The Examiner determines that
[t]he "consisting of' language precludes any additional structure
not found in the claims, but found in Terry to distinguish the
claimed structure from being anticipated under 102(a)(l).
However, it has been held that omission of an element and its
function in a combination where the remaining elements perform
the same function as before involves only routine skill in the art.
Final Act. 6 (citing In re Karlson, 311 F.2d 581 (CCPA 1963)). Applying
this principle, the Examiner determines that the subject matter of claims 16
and 17 would have been obvious over the disclosure in Terry despite Terry's
use of structure beyond what is claimed. Final Act. 7.
Appellant argues that (i) the Examiner's rationale is based on the
application of a "mechanical" rule, and (ii) there is no teaching in Terry that
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it may function with less structure than it currently has without a loss of
efficiency.
In response, the Examiner asserts the fact that Terry discloses
additional structure that is not included in claims 16 and 1 7 is irrelevant.
Ans. 11.
We do not agree with the Examiner's application of In re Karlson in
the rejection of claims 16 and 17. Although Karlson provides some support
for the principle that, under certain circumstances, the omission of an
element involves only routine skill in the art, our reviewing court has held
that this is not a mechanical rule, and that the language in Karlson was not
intended to short circuit the determination of obviousness mandated by 3 5
U.S.C. § 103. See In re Wright, 343 F.2d 761, 769-70 (CCPA 1965); see
also In re Ochiai, 71 F.3d 1565, 1570 (Fed. Cir. 1995) (the use of per se
rules is improper in applying the test for obviousness under 35 U.S.C. § 103
since such rules are inconsistent with the fact-specific analysis of claims and
prior art mandated by section 103). In any event, in Karlson, the proposed
modification did not result in any change of function of the remaining
elements. In re Karlson, 311 F.2d at 584. In contrast, it is not apparent that
the Examiner's proposed modification to the structure of Terry to eliminate
some components would not alter the function of the remaining components.
This is because the Examiner does not explain adequately what structure in
Terry the proposed modification removes. See Final Act. 6-7; see also Ans.
6-7, 11-12. Rather, in proposing to eliminate structure from the package in
Terry, the Examiner merely refers to "any additional structure." See Final
Act. 6; see also Ans. 6-7. On page 9 of the Final Office Action, the
Examiner explains that sleeve 20 of Terry would be removed and that this
modification would be "workable." The Examiner poses a hypothetical
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example, stating "I can see a car with tires, and remove the tires to render a
workable car, just not a car that works as well. Is that obvious? If I am
willing to deal with the consequences, yes." Id. Thus, under the Examiner's
proposed modification, either the remaining structure in Terry undertakes
new functions (holding lubricant as sleeve 20 did before the modification) or
the function performed by sleeve 20 is not performed at all. In either case,
the principle articulated in Karlson does not apply. Accordingly, we do not
sustain Rejection (III).
Rejection (IV); Claims 1, 2, 7-9, 16, and 17 as Unpatentable over Terry
The Examiner provides an alternative rejection addressing the
possibility that Terry does not disclose first and second layers of film in
Figure 3, which is relied on in Rejection (II). However, Rejection (IV)
suffers from the same deficiency discussed above regarding Rejection (II).
See Final Act. 4, 7. Accordingly, we do not sustain Rejection (IV).
Rejections (V) and (VI); Claims 3-6, 10---15, and 18-22
Rejections (V) and (VI) suffer from the same deficiencies discussed
above regarding the rejections of respective independent claims 1 and 17.
See Final Act. 7-9. Accordingly, for the same reasons, we do not sustain
Rejections (V) and (VI).
DECISION
(I) The rejection of claims 1-15 as indefinite is affirmed.
(II) The rejection of claims 1, 2, and 7-9 as anticipated by Terry is
reversed.
(III) The rejection of claims 16 and 17 as unpatentable over Terry is
reversed.
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(IV) The rejection of claims 1, 2, 7-9, 16, and 17 as unpatentable
over Terry is reversed.
(V) The rejection of claims 4, 5, 10-15, 21, and 22 as unpatentable
over Terry is reversed.
(VI) The rejection of claims 3, 6, and 18-20 as unpatentable over
Terry and Israelsson is reversed.
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-IN-PART
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