Ex Parte Tarlian

Patent Trial and Appeal Board

Sep 28, 2018

13712768 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/712,768 12/12/2012 Henry S. Tarlian JR.
30764 7590 10/02/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
650 Town Center Drive, 4th Floor
Costa Mesa, CA 92626
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.
33NK-172477 2577
EXAMINER
ANNIS, KHALED
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
DOCKETING@SHEPPARDMULLIN.COM
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HENRY S. TARLIAN JR.
Appeal2017-000775
Application 13/712,768
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Henry S. Tarlian, Jr. ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-23, which are all the
pending claims. See Appeal Br. 1. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2017-000775
Application 13/712,768
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "broadly relates to a glove for use
during surgery, and more particularly to surgeries involving medical devices
coated with a moisture activated hydrophilic coating." Spec. ,r 1. Claims 1
and 13 are independent. Claim 1, reproduced below with emphasis added, is
illustrative of the subject matter on appeal.
1. A moisture dispensing system, comprising:
a sterile surgical glove;
a fluid reservoir containing a sterile fluid comprising
sterile water or saline and [being] attached to a dorsal aspect of
the surgical glove when worn by a wearer; and
an absorbent pad configured for attachment to a palmar
aspect of a digit of said surgical glove when worn by a wearer,
wherein said absorbent pad is in fluid communication with said
fluid reservoir.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lefkowitz
Nowak
us 3,883,897
us 4,003,865
REJECTION
May 20, 1975
Jan. 18, 1977
The following rejection is before us for review: Claims 1-23 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lefkowitz and
Nowak. Final Act. 3---6.
2
Appeal2017-000775
Application 13/712,768
ANALYSIS
All the claims recite, in relevant part, a moisture dispensing system
that includes a "surgical glove" to which an absorbent pad in communication
with a fluid reservoir containing "a sterile fluid comprising sterile water or
saline" is attached to a digit thereof for wetting a medical device during
surgery. See Appeal Br., Claims App. In rejecting the claims, the Examiner
takes the position that Lefkowitz's painting glove 11 may be considered a
"surgical glove" because it is "capable to be a surgical glove when worn by
a medical personnel such as a [surgeon]," simply because it has some of the
same structural elements as the recited surgical glove, such as dorsal and
palmar portions to encircle a wearer's hand, and digits to encircle a wearer's
fingers (in other words, it is a glove). Final Act. 3 ( citing Lefkowitz, Fig. 3);
see id. at 3--4.
Appellant persuasively asserts that the rejection is deficient because
Lefkowitz does not teach or suggest that its painting glove 11 is, or could be
considered, a "surgical glove," as the term would be understood by one of
ordinary skill in the art. See Appeal Br. 8-9. Although the Examiner is
obliged to apply the broadest reasonable interpretation to claim terms during
prosecution, such an interpretation must remain reasonable in light of the
Specification, and consistent with the interpretation that one of ordinary skill
in the art would reach. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); MPEP § 2111.01. We are not convinced that one of
ordinary skill in the art would consider Lefkowitz's painting glove 11, which
"may be made of a porous napped mohair, wool, nylon material or the like
as is used conventionally in making paint rollers" (Lefkowitz, col. 1,
11. 41--43), to be a surgical glove (within any meaningful sense of the term).
3
Appeal2017-000775
Application 13/712,768
Here, the Examiner's position regarding some hypothetical surgical
capability of Lefkowitz's painting glove 11 is not supported by a
preponderance of the evidence (indeed, the logical conclusion of such a
position would be that any glove could be considered a surgical glove if
worn by a surgeon). 1 Such a claim interpretation, which misconstrues the
constraint of the recited adjective "surgical" (not every glove is a surgical
glove), and effectively reads out this limitation from the claim, is
unreasonable. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions that render phrases in
claims superfluous).
Given a properly reasonable construction of the recited "surgical
glove," we agree with Appellant that the Examiner has not established a
finding supported by a preponderance of the evidence of any disclosure in
Lefkowitz of such a "surgical glove," as relied on in the rejection. We note
that Nowak is relied on for disclosing a process of forming a sterilized paint,
but not to cure the deficiency of Lefkowitz identified above. 2 See Final
Act. 4.
This position improperly stretches the interpretation from the broadest
reasonable to the broadest possible. Indeed, under such a position it is hard
to imagine any glove that would not be somehow possible for use in surgery
or virtually any other application. Such a stretched possibility is insufficient.
2 Further, we share Appellant's concerns regarding the applicability of
Nowak's formulation of a sterilized paint to the present claims. See Appeal
Br. 9. Although this is arguably a "sterile fluid," though one formed by
adding a formaldehyde (see Final Act. 4 (citing Nowak, col. 6, 11. 55--65)),
there is no indication in Nowak that such a fluid would be suitable for
surgery, let alone that it would "compris[ e] sterile water or saline," as recited
in the claims (see Appeal Br. 9).
4
Appeal2017-000775
Application 13/712,768
Accordingly, in light of these shortcomings, we do not sustain the
rejection.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-23 under
35 U.S.C. § 103(a) as being unpatentable over Lefkowitz and Nowak.
REVERSED
5