Ex Parte Ren et al

Patent Trial and Appeal Board

Sep 24, 2018

14481206 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/481,206 09/09/2014
27939 7590 09/24/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Xingquan Ren
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.
BPMDL0094XR (11108U) 8550
EXAMINER
HAWN,PATRICKD
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
09/24/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte XINGQUAN REN, WESLEY GRAY HARDIN, and
MAGDA ZAVALA
Appeal2018-000686
Application 14/481,206
Technology Center 3600
Before CHARLES N. GREENHUT, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a non-final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appeal Brief identifies Medline Industries, Incorporated as the real
party in interest. App. Br. 2.
Appeal2018-000686
Application 14/481,206
CLAIMED SUBJECT MATTER
The claims are directed to a surgical instrument organizer and method
for using a surgical instrument organizer. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A surgical instrument organizer, comprising:
an elongated body; and
a flexible strip coupled to the elongated body;
the flexible strip bendable to retain the elongated body in
a contoured configuration defined by one or more bends of the
flexible strip;
the flexible strip extending beyond at least one edge of the
elongated body.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stevens
Eldridge
Chernosky
Almo
LaRocco
Mathis
Jones
us 4,149,635
us 4,944,311
us 5,097,963
US 6,308,875 Bl
US 7,269,855 B2
US 2006/0067855 Al
US 2011/0240577 Al
REJECTIONS
Apr. 17, 1979
July 31, 1990
Mar. 24, 1992
Oct. 30, 2001
Sept. 18, 2007
Mar. 30, 2006
Oct. 6, 2011
Claims 1-3, 5-9, 11, and 13 are rejected under 35 U.S.C. § I02(a)(l)
as being anticipated by LaRocco.
Claims 1 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Eldridge and Almo.
Claims 2 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Eldridge, Almo, and Chernosky.
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Application 14/481,206
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over
Eldridge, Almo, and Mathis.
Claims 3-10 are rejected under 35 U.S.C. § 103 as being unpatentable
over Eldridge, Almo, Chernosky, and Stevens.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Eldridge, Almo, Chernosky, Stevens, and Mathis.
Claims 15-18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Eldridge, Stevens, and Jones.
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Eldridge, Stevens, Jones, and Chernosky.
OPINION
Claims 1-3, 5-9, 11 and 13: Anticipation on LaRocco
Appellants argue independent claim 1 distinguishes from LaRocco
because:
A device with spring memory cannot be bent to retain
another object in a contoured configuration defined by one or
more bends of the device. This is true because the "spring
memory" causes the object to return to its default state defined
by the memory. In LaRocco's case, this means that the ends
return, due to the spring nature of the material, to their circular,
end-toward biased state, as defined by the memory effect.
App. Br. 15 ( emphases omitted); see also Reply Br. 9. However, the
Examiner is correct in that " [ A Jppellant[ s '] arguments in this matter appear
to be directed toward limitations which are not claimed in or required by
claim 1." Ans. 4. There is no dispute that LaRocco's attachment member
16 is reasonably regarded as the recited "flexible strip" and that LaRocco's
body 12 having front 18 and rear 20 portions is reasonably regarded as the
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Application 14/481,206
recited "elongated body." Non-Final Act. 2. There is also no dispute that
attachment member 16 is "bendable" or that it has a spring bias. Attachment
member 16 is bendable in two ways: First, it may be bent against its spring
bias to open up and allow for insertion or removal of the wearer's neck. Col.
5, 11. 47--48. Second, it may be bent under the influence of its spring bias to
securely engage the wearer's neck after insertion, or to return to its folded
configuration after removal. Id . .
During the first type of bending the body, at sleeve 32, is retained in a
contoured configuration about the wearer's neck, albeit under the influence
of some external force from the wearer's neck to overcome the spring bias.
Non-Final Act. 2 (citing LaRocco col. 4, 1. 63---col. 5, 1. 10); Ans. 5 (" ...
someone with a large neck forcing the ends apart.") Appellants do not
address this type of bending against the spring bias or explain what language
of the claim precludes the influence of external forces to achieve the recited
retention in the contoured configuration.
Appellants' arguments focus on the bending that occurs "for storage."
App. Br. 15. Although the Examiner does not disagree with Appellants (see
Ans. 5) that storage involves compression, this is not clear based on the cited
portion of LaRocco. The storage bending shown may be due to the spring
bias, and more particularly bending that occurs due to the spring bias in the
absence of any external forces. Nowhere does LaRocco mention
compression during the storage steps. In any case, once bent to the storage
position, whether that is the default uncompressed and unexpanded state, or
a compressed state, the body 12 at sleeve 3 2 is still retained in a "contoured
configuration." In fact, no matter how the attachment member 16 is bent,
the sleeve 32 will always take on that shape, which is defined by the bends
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Application 14/481,206
in the attachment member 16. Thus, even under Appellants' example of
bending under the spring bias uninfluenced by external forces, Appellants do
not explain what language in the claim precludes the default or folded
configuration from being regarded as the recited "contoured configuration."
There is no language in the claim precluding "bendable" from being
bendable under the influence of a spring bias. There is also no language in
the claim precluding the purpose of bending "to retain" from being achieved
in either the default state, or a state under the influence of external forces
such as those applied by the wearer. Ans. 4--5. The fact that LaRocco
exhibits this functionality makes attachment member 16 reasonably regarded
as "bendable to retain" the bib "in a contoured configuration defined by one
or more bends of' the attachment member 16. Accordingly, as this is the
only issue argued, we agree that LaRocco anticipates claim 1. Appellants do
not present separate arguments for the dependent claims subject to this
rejection.
Claim 1: Obviousness on Eldridge and Alma
37 C.F.R. § 4I.37(c)(l)(iv) requires arguments that address the
Examiner's action. Although Almo does teach an embodiment (Fig. 10)
having stays 152 similar to the bendable members of Appellants ( 402) and
Eldridge (38, 30), this was not what Almo was cited by the Examiner to
demonstrate. Ans. 5. Almo was cited regarding the teaching of extending a
strip 46 beyond the edge of a holder 10 so that it may be used as a belt or
other attachment mechanism. Non-Final Act. 4. The Examiner's findings,
reasoning, and conclusions in this regard are uncontroverted. Appellants'
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Application 14/481,206
arguments presented on page 18 of the Appeal Brief addressing Almo 's
stays 152 are not germane to the rejection before us.
Appellants also argue that the Examiner's proposed modification
would render Eldridge's device inoperable because extending Eldridge's
strips 38 would encourage tearing. App. Br. 20. As the Examiner correctly
points out, Appellants' argument conflates sandwiching something with
fully embedding it. Ans. 6. Almo 's strip 46 remains sandwiched within
panel 14 and would have no utility if the extending of segments 52, 54,
which are for supporting the device on a user, caused tearing. See Almo col.
7, 1. 64---col. 8, 1. 22. We see no reason why the Examiner's proposed
modification to include this feature in Eldridge could not have been
implemented without tearing.
Accordingly, we sustain the Examiner's rejection of claim 1 as
unpatentable over Eldridge and Almo.
Claim 15: Obviousness on Eldridge, Stevens, and Jones
Appellants initially emphasize the express requirement for a particular
order of steps recited in claim 15. App. Br. 27. However, it does not appear
that the Examiner failed to appreciate this limitation (Non-Final Act. 8), and,
other than emphasizing the language of the claim, "after the rolling,"
Appellants offer no explanation as to precisely how this limitation serves to
distinguish from the applied prior art.
The Examiner's position concerning rolling is that Stevens teaches it
was known to roll surgical organizers and Jones teaches that it was known to
create bends in rolled items such as towels to hold surgical instruments. In
the Examiner's view, these references, taken together, essentially teach what
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is admitted as prior art (Application Figs. 2, 3), that it was known or at least
obvious to bend a rolled surgical organizer to retain surgical instruments.
Non-Final Act. 7-8; Ans. 9. The Examiner determined that the application
of this knowledge or technique to the surgical instrument retainer of
Eldridge would yield the claimed method.
Appellants argue that, "Eldridge's surgical drape is used as an
instrument organizer only in an unrolled configuration. The reference never
teaches rolling whatsoever." App. Br. 27. The Examiner correctly points
out that Eldridge shows in an alternate embodiment in Figure 10 a "bent or
non-planar orientation" or "folded over" configuration that reasonably
suggests "rolling." In any case, it is not critical that Eldridge depict rolling
because that is what Stevens and Jones are cited for.
Eldridge's suggestion of continued use with a portion of the drape in a
bent or non-planar orientation in both the embodiment depicted in Figure 6
using deformable strips 30 and the embodiment depicted in Figure 10
suggests that the Eldridge drape can also be rolled and continue to be used
for its intended purpose of holding surgical instruments, which includes
maintaining sterility. See App. Br. 27-28. Eldridge's process of holding
surgical instruments includes deforming or bending strips 30, 38 to position
the drape in a desired configuration. Eldridge col. 4, 11. 38-60. Eldridge
folds the drape to create pockets or change its size. Col. 2, 11. 19-33.
Rolling would also achieve at least the latter. We cannot agree with
Appellants that the fact that Stevens describes rolling a surgical instrument
organizer only for storage would lead one skilled in the art to think rolling
could only be used for that purpose. See App. Br. 27. Jones demonstrates
rolling has utility beyond storage. Jones Fig. 1.
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Accordingly, we sustain the Examiner's rejection of claim 15 as
unpatentable over Eldridge, Stevens, and Jones.
Remaining claims and rejections
Appellants predicate all arguments on those set forth with regard to
independent claims 1 and 15. App. Br. 10-11; Reply Br. 7-8. Arguments
pertaining to whether additional references cure the deficiencies argued with
respect to the independent claims are moot and not addressed herein.
DECISION
The Examiner's rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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