Ex Parte Schnell et al

Patent Trial and Appeal Board

Dec 14, 2018

11993663 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/993,663 08/11/2010 Andrea Schnell
23643 7590 12/18/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
UNITED ST A TES OF AMERICA
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.
52759-217697 8912
EXAMINER
MEDWAY,SCOTTJ
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA SCHNELL, BERND WITTNER,
CLAUDIA HILDWEIN, RUTH DIETRICH,
REINHOLD DEPPISCH, DORIS DEPPISCH, and
WERNER BECK
Appeal2018-004207
Application 11/993,663
Technology Center 3700
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LISA M. GUIJT, 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 rejection of claims
28, 32-36, 38, and 44--49. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is Gambro Lundia AB. App. Br. 2.
2 The Advisory Action of October 18, 2017 indicated that the proposed
amendment cancelling claims 40-43, overcoming the § 112 rejection, would
be entered for purposes of appeal.
Appeal2018-004207
Application 11/993,663
CLAIMED SUBJECT MATTER
The claims are directed to an implantable access device. Claim 28,
reproduced below, is illustrative of the claimed subject matter:
28. An implantable vascular access device comprising a shape
memory base structure having openings, a substructure having
openings, the substructure thereby being suitable for cell
adhesion, cell engraftment and proliferation for use in
transferring fluid into/out of a human or animal body, the shape
memory base structure and the substructure permitting three-
dimensional fixation and integration of cells on and within the
access device, the shape memory base structure and the
substructure together comprising a generally conical body
having the shape memory base structure as a base of the
generally conical body and adapted to receive a needle and a
positioning end forming an apex of the generally conical body
and adapted to position the end of said needle.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Klein
Lazarus
Lambrecht
Van Antwerp
us 4,488,877
us 5,693,088
us 5,741,228
US 6,368,274 Bl
REJECTIONS
Dec. 18, 1984
Dec. 2, 1997
Apr. 21, 1998
Apr. 9, 2002
Claims 28, 32, 33, 35, 36, and 44--49 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Lambrecht and Klein.
Claim 34 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Lambrecht, Klein, and Lazarus.
Claim 38 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Lambrecht, Klein, and Van Antwerp.
2
Appeal2018-004207
Application 11/993,663
OPINION
The entirety of this appeal turns on the reasonableness of the
Examiner's interpretation of the structure illustrated in Figure 6 of
Lambrecht (reproduced with annotations at Ans. 4) as falling within the
meaning of the recited term, "a generally conical body." The differences
between the structure illustrated in Figure 6 of Lambrecht and an ordinary
cone are that Lambrecht's structure lacks a circular base and apex coming to
a point and straight revolved lines between the two. There is also a channel
14 cut out of the structure. 3 Of course, the term "generally" allows for some
deviation from an ordinary cone shape, particularly if, as we must presume,
Appellants intended the claim to cover their own preferred embodiment. See,
e.g., Fig. 3. Giving consideration to the structure disclosed by Appellants, it
would seem that imperfections in the linearity of the cone sides would not
serve to exclude it from the ambit of "generally conical." Although
Appellants do not illustrate any similar structure in their own disclosure, the
same could likely be said of the cutout channel 14 because it makes up only
a small fraction of the overall volume of the structure and would not appear
to affect anyone's recognition of Lambrecht's structure as conical or not.
The main issue of concern lies in the fact that the device 1 O' illustrated in
Figure 6 in Lambrecht is, if otherwise cone-shaped, essentially only half of a
cone that has been sliced along a plane running between a diameter of the
cone's base and its apex. The Examiner does not provide any factual
evidence to support the assertion that one skilled in the art would regard a
structure resembling, at most, half of a cone, as "generally conical" in light
of Appellants' Specification. The Examiner also does not make of record
3 See, e.g., https://en.wikipedia.org/wiki/Cone last accessed Dec. 6, 2018.
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Appeal2018-004207
Application 11/993,663
any express claim construction analysis that closely examines the
Specification, or any other sources, to demonstrate the appropriate metes and
bounds implicated by the recitation of the term "generally" in this particular
context serves to make "generally conical body" encompass the device 1 O'
of Lambrecht illustrated in Figure 6. In light of these shortcomings, and the
fact that no other references are relied upon by the Examiner to overcome
them, we conclude that the Examiner has not carried the burden of
establishing unpatentability on the grounds before us for review. See. e.g., In
re Warner, 379 F.2d 1011, 1016 (CCPA 1967) ("[T]he precise language of
35 U.S.C. § 102 that '(a) person shall be entitled to a patent unless,'
concerning novelty and unobviousness, clearly places a burden of proof on
the Patent Office").
DECISION
The Examiner's rejections are reversed.
REVERSED
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