Ex Parte Stephens et al

Patent Trial and Appeal Board

Sep 22, 2017

13832294 (P.T.A.B. Sep. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/832,294 03/15/2013 John Stephens 049962.90264 2588
33941 7590 09/26/2017
Foy RnthsrliilH T T P
EXAMINER
Blue Bell
997 Lenox Drive
DARB, HAMZA A.
Building 3 ART UNIT PAPER NUMBER
Lawrenceville, JNJ U«()4«-2311 3763
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN STEPHENS, KEVIN E. SANFORD,
JEFFREY S. BENNETT, BURTON W. THOMAS,
W. SHAUN WALL, and CHRISTIAN K. PETERSON
Appeal 2016-000603
Application 13/832,294
Technology Center 3700
Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000603
Application 13/832,294
STATEMENT OF THE CASE
Appellants, John Stephens et al.,1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision, as set forth in the Final Office Action dated
October 23, 2014 (“Final Act.”), rejecting claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a valve for a dilator and a sheath assembly.
Spec. 1 (Title). Claims 1, 14, and 18 are the independent claims on appeal.
Claim 1, reproduced below with disputed limitations italicized for emphasis,
is illustrative of the claimed subject matter:
1. A valve for sealing the hub of a sheath assembly, the valve
comprising a substantially solid valve body having a thickness
extending between a proximal surface and distal surface, wherein
a bisecting slot extends across the proximal surface of the valve
body and terminates at a depth less than the thickness of the valve
body such that a portion of the valve body distally of the slot
defines a bridge extending between opposed halves of the valve
body such that the distal surface of the valve body is substantially
continuous.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Nardeo US 2009/0143739 Al June 4,2009
Christensen US 2010/0101069 Al Apr. 29,2010
Fisher US 2010/0241083 Al Sept. 23,2010
1 Appellants identify Medical Components, Inc. as the real party in
interest. Appeal Brief, dated May 26, 2015 (“Appeal Br.”), at 2.
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Appeal 2016-000603
Application 13/832,294
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—20 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 1—7 and 14—17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Fisher.
3. Claims 8—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fisher and Christensen.
4. Claims 11—13 and 18—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fisher and Nardeo.
Appellants seek our review of these rejections.
DISCUSSION
Rejection 1: The Rejection of Claims 1—20
as Failing to Comply With the Written Description Requirement
The Examiner finds that claims 1—20 fail to comply with the written
description requirement because the limitation of “a substantially solid valve
body” is not disclosed or supported in the Specification. Final Act. 3.
Appellants and the Examiner propose two different definitions for a
“substantially solid valve body.” Appellants present the following definition
for “solid” from the Merriam-Webster online dictionary:
1. a: being without an internal cavity
b (1): printed with minimum space between lines
(2): joined without a hyphen
c: not interrupted by a break or opening
2 : having, involving, or dealing with three dimensions or with
solids
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Appeal 2016-000603
Application 13/832,294
Appeal Br. 4. Appellants contend the definition of “solid” is “being without
an internal cavity.” See, e.g., id. at 6. The Examiner contends the definition
of “substantially solid” is “a three dimensional firm shape.” Final Act. 14.
The Specification does not use the term “solid” or “substantially solid.” The
Specification, however, does disclose that Figure 12 illustrates valve body
82. Spec. 1 64. According to Appellants, Figures 11 and 12 “illustrate
cross-sectional views through the body 82 and it is clear that the body is
substantially without internal cavities between the proximal and distal
surfaces 86, 94.” Appeal Br. 4 (emphasis added).
The Examiner disagrees with Appellants’ proposed definition of
substantially solid valve body. The Examiner’s annotated Figure 12 of the
subject application is illustrated below:
cavity
Annotated of Fig, 1 of this Application
In the Examiner’s annotated Figure 12, which illustrates a cross-sectional
view through valve body 82, the Examiner correctly determines that conical
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Application 13/832,294
portion 89 is an internal cavity (labelled “cavity”).2 * * 5Thus, Appellants’
proposed definition of “substantially solid valve body” as a valve body that
is “substantially without internal cavities” is not supported by Figure 12 or
other portions of the Specification. However, the Examiner’s proposed
definition of “substantially solid valve body” as “a valve being ‘firm or
hard’ or ‘having, involving, or dealing with three dimensions” is consistent
with valve body 82 in Figure 12 of the Specification. Ans. 4; see also Final
Act. 14. Because the Examiner’s definition of “substantially solid valve
body” is supported by the Specification, the rejection of claims 1—20 as
lacking written description support is not sustained.
Rejections 2—4: The Prior Art Rejections of Claims 1—20
In response to Rejection 2, Appellants argue claims 1—7 and 14—17 as
a group. Appeal Br. 4—8. We select claim 1 as the representative claim, and
claims 2—7 and 14—17 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
In response to Rejection 3, Appellants do not present any arguments
directed to the patentability of dependent claims 8—10 over Fisher and
Christensen. We understand that Appellants rely on the same arguments
presented for independent claim 1, from which claims 8—10 depend. Appeal
Br. 4-8.
In response to Rejection 4, Appellants do not present any arguments
directed to the patentability of independent claim 18 or dependent claims
2 According to one dictionary, a plain meaning of “cavity” is “an
unfilled space within a mass; especially: a hollowed-out space.” The
Merriam-Webster Dictionary, https://www.merriam-
webster.com/dictionary/cavity, last visited September 16, 2017.
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Application 13/832,294
11—13, 19, and 20 over Fisher and Nardeo. We understand that Appellants
rely on the same arguments presented for independent claim 1, from which
claims 11—13 depend.3 Id.
With respect to claim 1, the Examiner finds that Fisher discloses all of
the limitations of claim 1 including a substantially solid valve body (i.e.,
valve body 150) and bisecting slot (i.e., slits 166). Final Act. 3.
Appellants argue that the Examiner’s rejection of claim 1 is erroneous
for several reasons. First, relying on their proposed definition of
“substantially solid valve body” discussed above in Rejection 1, Appellants
argue that Fisher does not disclose a substantially solid valve body having a
thickness extending between proximal and distal surfaces because Fisher’s
valve 150 has a large cavity 162. Appeal Br. 5 (citing Fisher 129, Figs. 4—
5). However, the Examiner correctly determines that Fisher’s valve 150 is a
three dimensional firm shape, and, thus, is a substantially solid valve body,
as recited in claim 1. Ans. 4; see also Final Act. 3, 14. Appellants’
argument is unpersuasive.
Second, Appellants argue that Fisher’s “valve 150 does not include a
proximal surface with a bisecting slot extending across the surface,” as
recited in claim 1. Appeal Br. 7. According to Appellants, Fisher discloses
that “large cavity 162 extends to the proximal end 164,” and “proximal end
164 does not define a proximal surface, but instead only includes the end of
the cylindrical side wall 160.” Id. (citing Fisher 129). Appellants contend
that Fisher discloses that “slits 166 of limited axial length are cut into side
3 Claims 19 and 20 depend from claim 18. Appeal Br. 11 (Claims
App.). We understand that Appellants rely on the same arguments for
claims 18—20 as those presented for independent claim 1.
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Application 13/832,294
wall 160 and in seating flange 168, to facilitate splitting of the valve.” Id.
(citing Fisher 129 (emphasis added)).
In response to Appellants’ argument, the Examiner, referring to
Figure 4 and paragraph 29 of Fisher, explains that Fisher discloses that
(1) “wall 160 extends to proximal end 164 and forms that proximal-facing
surface, the width of the wall,” and (2) Figure 4 “shows that slit 166 extends
across the proximal surface formed by wall 160 at proximal end 164 of the
valve body.” Ans. 5. Appellants’ argument does not identify error in the
Examiner’s findings.
Third, Appellants argue that Christensen and Nardeo do not overcome
the deficiencies of Fisher. Appeal Br. 7. For the reasons discussed above
with respect to Fisher, Appellants’ arguments regarding alleged deficiencies
in Fisher are unpersuasive.
Fourth, Appellants argue that “[cjlaims 2—20 each depend from claim
1 and are allowable for at least their dependence on allowable claim l”4 and
“[i]t is respectfully submitted that each of the dependent claims recites
additional limitations which in combination with the base claim further
distinguish over the cited prior art.” Appeal Br. 7—8. Appellants’ argument
that dependent claims 2—20 recite additional elements that support
patentability is not persuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (37 C.F.R. § 41.37 requires “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
4 We note that claims 2—13 depend from independent claim 1, claims
15—17 depend from independent claim 14, and claims 19 and 20 depend
from independent claim 18. Appeal Br. 9—11 (Claims App.).
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Application 13/832,294
Appellants do not identify any patentable distinctions for claims 2—20, and
fail to apprise us of error in the Examiner’s findings or reasoning.
For the reasons above, the rejection of claim 1 is sustained. Claims
2—20 fall with claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner’s rejection of claims 1—7 and 14—17 under 35 U.S.C.
§ 102(b) is AFFIRMED.
The Examiner’s rejections of claims 8—13 and 18—20 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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