Ex Parte Schuman et al

Patent Trial and Appeal Board

Feb 26, 2019

14341052 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/341,052 07/25/2014
23556 7590 02/28/2019
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Kyle John Schuman
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.
64951954US02 4564
EXAMINER
COX, THADDEUS B
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
Kimberlyclark. docketing@kcc.com
Tisha.Sutherland@kcc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE JOHN SCHUMAN, STEVEN CHARLES SCHAPEL,
AMANDA R. AL TAN, MICHAEL ANDREW MALONEY,
SEAN MICHAEL MALONEY, and YOGESH KUMAR CHAUHAN
Appeal2018-005210
Application 14/341,052
Technology Center 3700
Before MICHAEL J. FITZPATRICK, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Kimberly-Clark Worldwide, Inc. ("Appellant") 1 appeals under 35
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 5, 7,
14, 15, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the applicant as provided in 3 7 C.F .R. § 1.46 and is identified
as the real party in interest. Appeal Br. 1.
Appeal2018-005210
Application 14/341,052
STATEMENT OF THE CASE
The Specification
Appellant's claimed invention relates to a vaginal insert for treating
urinary incontinence. Spec. 6:6-7. The vaginal insert is deployable via an
applicator that has a housing and plunger. See id. Figs. 10-13. The vaginal
insert has a compressed configuration (Fig. 7) when it is stored in the
housing and an expanded configuration (Fig. 2) when it is deployed in the
body. Despite that the vaginal insert is compressed within the housing, the
Specification states that it can "self-expel from the applicator prematurely,"
for example, during shipment. Id. at 2:25-28.
Appellant's claimed vaginal insert includes migration reduction
features to reduce the possibility of self-expulsion. See, e.g., id. at 24:23-25.
Figure 19A is reproduced below.
Figure 19 A, reproduced above, shows vaginal insert 12 with four anchoring
elements 26 and four supporting arms 28 all of which extend from a
centrally-located node. Id. at 8:7-15. The supporting arms have migration
reduction features 70 located on applicator facing surfaces 80 and migration
reduction features 100 located on non-applicator facing surfaces 102. Id. at
36:29-37:3.
2
Appeal2018-005210
Application 14/341,052
The Rejected Claims
Claims 1, 5, 7, 14, 15, and 19 are pending and rejected. Final Act. 1.
Claim 1 is representative and reproduced below with some paragraphing
added.
1. A stored vaginal insert comprising:
a. an applicator for storing the vaginal insert, the
applicator comprising a housing and a plunger;
b. the vaginal insert stored within the housing of the
applicator and comprising an anchoring element, a supporting
element comprising a first supporting arm and a second
supporting arm, a node between the anchoring element and the
supporting element,
a first migration reduction feature located on the first
supporting arm and positioned in a spaced apart relationship
from the node of the vaginal insert and a support tip of the first
supporting arm wherein the first migration reduction feature is
located on an applicator facing surface of the first supporting
arm of the supporting element,
a second migration reduction feature located on the
second supporting arm and positioned in a spaced apart
relationship from the node of the vaginal insert and a support
tip of the second supporting arm wherein the second migration
reduction feature is located on a non-applicator facing surface
of the second supporting arm of the supporting element, and
an inwardly compressed configuration wherein each of
the first migration reduction feature and the second migration
reduction feature increase friction between the vaginal insert
and an inner surface of the housing of the applicator and further
wherein the vaginal insert transitions to a radially expanded
configuration when deployed from the applicator.
Corrected Claims App. (filed Jan. 31, 2018).
3
Appeal2018-005210
Application 14/341,052
The Appealed Rejection
The following rejection is before us for review: claims 1, 5, 7, 14, 15,
and 19 under 35 U.S.C. § I03(a) as obvious over Ziv2 and Kramer. 3 Final
Act. 3.
DISCUSSION
The Examiner found that Ziv discloses the entire subject matter of
claim 1 except for the first and second migration reduction features. Final
Act. 4. The Examiner's finding is confirmed by comparing Appellant's
Figure 19A, which claim 1 encompasses (see Appeal Br. 2), with Ziv
Figure IA.
Appellant's Figure 19A was reproduced above, and Ziv Figure IA is
reproduced immediately below.
FIG, 1A
Ziv Figure IA, reproduced above, shows a vaginal insert virtually identical
to that of Appellant's Figure 19A, except that Ziv's insert does not include
any structures corresponding to Appellant's migration reduction features.
2 US 2012/0271098 Al, published Oct. 25, 2012 ("Ziv").
3 US 2002/0120243 Al, published Aug. 29, 2002 ("Kraemer").
4
Appeal2018-005210
Application 14/341,052
The Examiner found that Kraemer disclose a vaginal insert for
treating urinary incontinence that comprises "comprising migration
reduction features 64/80 located around the circumference of the outer
surface of the device." Final Act. 4 (citing Kraemer i-fi-f67, 68, 73, 74, 78,
and 89--92, Figs. 2-3).
Kramer Figure 3a is reproduced below.
Fig. 3a
Kramer Figure 3a, reproduced above, shows an intravaginal device.
Kramer i-f85. Kramer describes the device as follows:
Arranged on the cylindrical main region 14 of the intravaginal
device 10 is a second, outer functional layer 44, which is at least
partially perforated. This second, outer functional layer 44 is
located only in the region of the main body 14 of the intravaginal
device 10, has perforations 64 and merely serves for setting the
friction coefficient in the desired range, in order to ensure a
reliable, permanent positioning of the intravaginal device 10 in
the body cavity while retaining pleasant and simple handling.
Id. i-f86.
The Examiner concluded that it would have been obvious to "to
modify the supporting arms of Ziv with the migration reduction features
5
Appeal2018-005210
Application 14/341,052
taught by Kraemer in order to increase friction and rigidity to ensure reliable
positioning of the device while retaining pleasant and simple handling."
Final Act. 4--5.
Claim 1 recites that "the first migration reduction feature is located on
an applicator facing surface of the first supporting arm," whereas "the
second migration reduction feature is located on a non-applicator facing
surface of the second supporting arm." (Emphasis added). Independent
claim 14, the sole other independent claim, similarly recites "the first
migration reduction feature and the second migration reduction feature are
each located on an applicator facing surface," whereas "the third migration
reduction feature and the fourth migration reduction feature are each located
on a non-applicator facing surface." (Emphasis added).
Appellant argues that "Kraemer fails to teach or suggest a migration
reduction feature located on a non-applicator facing surface of a vaginal
insert" and that "a combination of Ziv and Kraemer would result in a device
having perforations and grooves on only the applicator facing surface of the
supporting arms of the device of Ziv." Appeal Br. 7-8.
Appellant's argument is persuasive. The perforations and grooves on
the Kraemer vaginal insert exist only on the outer surface, i.e., the surface
corresponding to the recited "applicator facing surface." Although the
Examiner provided a reason why a person of ordinary skill in the art would
have incorporated Kraemer's perforations and/or grooves onto the outer,
applicator facing surfaces of Ziv's supporting arms, the Examiner failed to
provide a reason why the skilled person would have also incorporated them
onto the inner, non-applicator facing surfaces of Ziv's supporting arms.
6
Appeal2018-005210
Application 14/341,052
For the foregoing reasons, we reverse the rejection of independent
claims 1 and 14 as obvious over Ziv and Kramer. For the same reasons, we
likewise reverse the rejection of dependent claims 5, 7, 15, and 19. See In re
Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.").
DECISION
The Examiner's rejection of claims 1, 5, 7, 14, 15, and 19 is reversed.
REVERSED
7