Ex Parte Tucker et al

Patent Trial and Appeal Board

Oct 24, 2017

11626043 (P.T.A.B. Oct. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/626,043 01/23/2007 Carl Estcourt Tucker 408.00110101 9489
26813 7590 10/26/2017
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
ptodocketing @ mrgs .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL ESTCOURT TUCKER, TROY A. BAKER,
GRAHAM PETER WILSON, PATRICK GERRARD LINNANE,
IAN STEWART TABRON, WAYNE LEE BONNEFIN, STEFAN LOOK,
and THOMAS BERGENS
Appeal 2016-001330
Application 11/626,043
Technology Center 3700
Before THOMAS F. SMEGAL, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Carl Estcourt Tucker et al. (Appellants)1 seek our review under
35 U.S.C. § 134 of the Examiner’s rejections2 under 35 U.S.C. § 103(a) of
claims 1, 2, 4—11, 14—18, and 22—26 as unpatentable over Biondo (US
2006/0258964 Al, pub. Nov. 16, 2006) and Rousso (US 2008/0039752 Al,
pub. Feb. 14, 2008); of claim 12 as unpatentable over Biondo, Rousso, and
1 According to Appellants, the real party in interest is Swelling Solutions,
Inc. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated October 20, 2014 (“Final Act.”).
Appeal 2016-001330
Application 11/626,043
Davidson (US 6,041,243, iss. Mar. 21, 2000)3; and of claims 19-21, 27, and
28 as unpatentable over Biondo, Rousso, and Carkner (US 2008/0188782
Al, pub. Aug. 7, 2008).4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 2, and 19 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A control unit for a medical device, wherein the
medical device comprises a compression device for a limb,
wherein the compression device comprises a sleeve with one or
more inflatable cells, wherein the compression device comprises
a fluid transfer connector fixedly positioned on the sleeve of the
compression device, the control unit configured to be received at
a position on the sleeve of the compression device comprising:
a pump,
a conduit, and
control apparatus to control the flow of fluid from the
pump through the conduit, wherein the conduit comprises a rigid
internal passage located within the control unit which terminates
in a connector configured to engage the fluid transfer connector
fixedly positioned on the sleeve of the compression device as the
control unit is being received on the sleeve of the compression
device.
3 We correct the inadvertent inclusion of claim 14 in this rejection as it is
already rejected over Biondo and Rousso.
4 Claims 3 and 13 have been canceled. Final Act. 2
2
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Application 11/626,043
ANALYSIS
Obviousness of Claims 1, 2, 4—11, 14—18, and 22—26 over Biondo and
Rousso; of Claim 12 over Biondo, Rousso, and Davidson; and of Claims 19—
21, 27, and 28 over Biondo, Rousso, and Carkner5
Claims 1, 4—11, and 22—28
We select claim 1 as the representative claim for this group, and the
remaining claims in this group stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). Regarding claim 1, the Examiner relies on Biondo for
teaching a control unit for a medical device having a compression sleeve and
a fluid transfer connector “fixedly positioned on the sleeve (52) of the
compression device (36).” Final Act. 3 (citing Biondo, Fig. 1). More
specifically, the Examiner reasons that in Biondo,
[cjonduit 54 (the combination of the tubes 58 and coupler 60)
can be interpreted as a fluid transfer connector because it
transfers fluid and connects to the control unit .... Therefore
the fluid transfer connector 54 is fixedly positioned on the sleeve
via its fixedly attached tubes 58.
Ans. 13 (citing Biondo, 140,11. 1—20; 1 52,11. 1—14).
Appellants do not dispute that Biondo discloses a medical device
having a compression sleeve (1052) and a control unit (1034) with a conduit
(1038) that terminates in a coupler (1012). See Appeal Br. 12 (citing
Biondo, Fig. 11). However, Appellants reason that the compressive sleeve
of Biondo “includes a flexible and movable conduit (e.g., 54, 1054) having a
proximal end extending into the compression sleeve (e.g., 52, 1052) and a
5 Appellants argue claims 1, 2, 4—12, and 14—28 as if all the claims were
rejected as obvious over Biondo and Rousso, alone. See Appeal Br. 9-20;
Reply Br. 2—7.
3
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Application 11/626,043
distal end terminating in a distal end coupler (e.g., 60, 1016). . . . that is
configured to engage coupler (e.g., 1012) as shown, e.g., in Figure 11.” Id.
From the foregoing, Appellants contend that the distal end coupler of
Biondo “is not fixedly positioned on the compression sleeve (e.g., 52,
1052),” as it “is movable to any position as allowed by the length of the
flexible and movable conduit (e.g., 54, 1054).” Id. More specifically,
Appellants argue that
as shown and described in the pending application, it is the fluid
transfer connector (e.g., fluid transfer connector 18) that is fixedly
positioned on the sleeve (e.g., sleeve 2) of the compression device and
which itself engages the connector of the control unit (e.g., a
connector 16 of the control unit); and not a proximal end of some
flexible and movable tubing or conduit terminating in a distal end
coupler as described in Biondo.
Reply Br. 5.
Appellants’ contention is unavailing as it is not commensurate with
the scope of these claims, none of which is limited to “a fluid transfer
connector with the distal end fixedly positioned on the sleeve of a
compression device.” See Appeal Br. 22, 24, and 25, Claims App. Further,
Appellants’ appear to be impliedly arguing that the claim requires the entire
fluid transfer connector to be fixedly positioned on the sleeve of a
compression device, however the claim is not so limited. As we are
instructed by our reviewing court, “limitations are not to be read into the
claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) {citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)); see
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Rather, we agree with
the Examiner that Biondo’s fluid transfer connector is “fixedly positioned on
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Application 11/626,043
the sleeve of the compression device,” as recited in claim 1, because Biondo
shows tubes 58 are connected to sleeve 52. See Biondo Fig. 1.
For the forgoing reason, we discern no error in the Examiner’s
findings and sustain the Examiner’s rejections of claims 1, 4—11, and 22—28.
Claims 2, 12, and 14—21
Appellants dispute the rejections of independent claims 2 and 19, and
dependent claims 12, 14—18, 20, and 21, alleging that each of the claims
“describes a control unit that includes a connector (e.g., connector 16 that
terminates a rigid internal passage of conduit in the control unit 10) for
connection to a fluid transfer connector (e.g., fluid transfer connector 18)
fixedly positioned on the sleeve of a compression device. ” Appeal Br. 10.
(emphasis added). However, Appellants’ contention is unavailing as it is not
commensurate with the scope of these claims, none of which is limited to “a
fluid transfer connector fixedly positioned on the sleeve of the compression
device.”6 See Appeal Br. 22, 24, and 25, Claims App. As we are instructed
by our reviewing court, “limitations are not to be read into the claims from
the [Specification.” Van Geuns, 988 F.2d at 1184.
For the foregoing reasons, we discern no error in the Examiner’s
findings and sustain the Examiner’s rejections of claims 2, 12, and 14—21.
DECISION
We AFFIRM the Examiner’s rejections of claims 1, 2, 4—12, and 14—
28.
6 Throughout the Appeal Brief and Reply Brief, Appellants incorrectly argue
as if independent claims 2 and 19 recite this limitation, which they do not.
5
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Application 11/626,043
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
6