Ex Parte Traboulsi et al

Patent Trial and Appeal Board

Jul 20, 2018

13631717 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/631,717 09/28/2012
21832 7590 07/24/2018
MCCARTER & ENGLISH, LLP
CITYPLACEI
185 ASYLUM STREET
HARTFORD, CT 06103
FIRST NAMED INVENTOR
Maeghan E. Traboulsi
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.
97343.00147 3878
EXAMINER
GILLMAN, AMELIE R
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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):
hartforddocketing@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAEGHAN E. TRABOULSI and THOMAS A. JOHNSON
Appeal2016-007399 1
Application 13/631,7172
Technology Center 3700
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-3 and 5-54. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 27,
2016), the Reply Brief ("Reply Br.," filed July 26, 2016), the Examiner's
Answer ("Ans.," mailed May 26, 2016), and the Final Office Action ("Final
Act.," mailed June 25, 2015). The record includes a transcript of the oral
hearing held July 10, 2018.
2 According to Appellants, the real party in interest is Beekley Medical
Corporation. Appeal Br. 1.
3 Claim 4 has been cancelled. See Appeal Br. 15.
Appeal 2016-007399
Application 13/631,717
BACKGROUND
According to Appellants, "the present invention relates to marking
grids, and more particularly, to marking grids placed on a patient's skin
having the capability to transmit a marking medium through the marking
grid and onto the underlying skin." Spec. ,r 1.
CLAIMS
Claims 1, 29, and 42 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. An image guided biopsy grid markable with a marking
medium for marking the grid and a subject's skin underlying the
grid with the marking medium to identify a needle entry target,
the grid comprising:
a flexible substrate defining a first side, a second side
opposite the first side, and a plurality of substrate pores
extending between the first and second sides that allow marking
medium applied to the first side of the substrate to flow through
to the second side of the substrate;
a plurality of at least partially radiopaque grid lines spaced
relative to each other on the first side of the flexible substrate,
wherein the flexible substrate extends substantially throughout
spaces between the grid lines, and wherein the grid lines allow
marking medium applied to a grid line to flow at least one of (i)
through or (ii) around the grid line and to the substrate or skin;
and
an adhesive-containing adhesive layer on the second side
of the substrate having adhesive on at least portions of the second
side of the substrate directly underlying the grid lines and the
spaces between the grid lines, wherein the adhesive layer is
configured and adapted to enable the substrate to be
conformingly and removably attached to the skin substantially
without gapping therebetween, and to allow marking medium
flowing through the substrate to flow through the adhesive layer
and onto the skin to mark the skin and identify the needle entry
target.
2
Appeal 2016-007399
Application 13/631,717
Appeal Br. 14.
REJECTION
The Examiner rejects claims 1-3 and 5-54 under 35 U.S.C. § 103(a)
as unpatentable over Krupnick4 in view of Piferi 5 and Lindquist. 6
DISCUSSION
As discussed below, we are persuaded of reversible error in the
rejection by Appellants' argument that Lindquist does not describe an
adhesive as claimed and that the Examiner has not established that the use of
an adhesive as claimed would have been obvious.
With respect to claim 1, for example, the Examiner finds that
Krupnick discloses a skin biopsy marking grid with adhesive for attaching
the device to a patient's skin as claimed except that Krupnick does not
disclose that the adhesive layer includes adhesive configured as claimed
such that the device is removably attached to the skin without gapping and
allows for marking medium to flow therethrough to identify a needle entry
target. Final Act. 4--5. The Examiner relies on Piferi as disclosing a similar
device in which an adhesive is used to on the entire surface of the device for
attachment to the skin. Id. However, the Examiner acknowledges that Piferi
also does not disclose the material properties of the adhesive as required by
the claim. Id. at 5. The Examiner relies on Lindquist as disclosing a device
with an adhesive having the material properties required by the claim, and
the Examiner concludes that it would have been obvious to use an adhesive
4 Krupnick, US 5,052,035, iss. Sept. 24, 1991.
5 Piferi et al., US 8,195,272 B2, iss. June 5, 2012.
6 Lindquist et al., US 3,665,918, iss. May 30, 1972.
3
Appeal 2016-007399
Application 13/631,717
as taught by Lundquist in the combined device of Krupnick and Piferi "as
such a modification amounts to nothing more than choosing from a finite
number of adhesive materials known in the art, which has previously been
held unpatentable." Id.
Appellants argue, inter alia, that Lindquist does not describe an
adhesive that would necessarily allow a marking medium to flow through
the adhesive to the skin of a patient. Appeal Br. 8. Conversely, in support
of the conclusion that Lindquist discloses an adhesive as claimed, the
Examiner relies primarily on the fact that Lindquish discloses an adhesive
that is porous, which would be capable of allowing marking medium to flow
therethrough. See Final Act. 5; see also Ans. 3--4. Because the adhesive is
porous, the Examiner indicates that it is capable of allowing marking to flow
through it. Ans. 4.
Even if we were to agree with the Examiner that a porous adhesive is
capable of allowing some marking medium to flow through it, we are not
persuaded that the mere capability of such is enough to establish that the use
of an adhesive layer as claimed would have been obvious. In particular,
claim 1 requires that the adhesive layer is "configured and adapted ... to
allow the marking medium to flowing through the substrate to flow through
the adhesive layer and onto the skin to mark the skin and identify the needle
entry target." Thus, the claims require more than an adhesive that is capable
of allowing some marking medium to flow through it, and require a specific
adhesive layer that is designed to allow marking medium to flow through it
such that a needle entry target can be accurately marked on the skin. See
Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed.
Cir. 2012) (noting that claim language "configured to" is construed more
4
Appeal 2016-007399
Application 13/631,717
narrowly than "capable of' and holding that where claim language including
the phrase "adapted to" is to be construed consisted with "configured to"
language it requires that the structure must be "designed or configured to
accomplish the specified objective, not simply that [it] can be made to serve
that purpose.") Thus, to the extent the Examiner simply relies on
Lindquist's adhesive as being capable of allowing flow of marking medium,
the Examiner has not set forth a sufficient showing that the adhesive, when
applied to the device of Krupnick and Piferi, would result in an adhesive
layer with the configuration claimed.
The Examiner also asserts that the flexible polyurethane foam web in
Lindquist "appears to be ... identical to the adhesive of Appellant[s']
claimed invention." Ans. 4. However, as explained by Appellants, the
Examiner appears to be referring to the substrate on which the adhesive is
applied and not the actual adhesive used in either Lindquist's device or
Appellants' device. See Reply Br. 7-8.
Based on the foregoing, we find error in the Examiner's finding that
Lindquist discloses an adhesive as claimed. Further, we note that the
Examiner does not provide a reason why one of ordinary skill in the art
would provide an adhesive on the combined device of Krupnick and Piferi
with the configuration claimed. Rather, the Examiner asserts only that it
would have been obvious to try Lindquist's adhesive because the
modification amounts to no more than choosing among a finite number of
adhesive known in the art. Although that may be true, the Examiner has not
established that the resulting device would include an adhesive layer
configured as claimed.
5
Appeal 2016-007399
Application 13/631,717
Because we find reversible error in the rejection based on the
Examiner's findings with respect Lindquist, we do not sustain the rejection
of claim 1. The Examiner relies on the same findings with respect to each of
the other claims, and thus, we also do not sustain the rejection of claims 2, 3,
and 5-54 for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 1-3 and 5-54.
REVERSED
6