13257298 (P.T.A.B. Oct. 23, 2018)

Ex Parte Tumminaro et al

Patent Trial and Appeal BoardOct 23, 2018

13257298 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/257,298 09/17/2011 151860 7590 10/25/2018 The Small Patent Law Group, LLC 225 S. Meramec Ave. Suite 725 St. Louis, MO 63105 FIRST NAMED INVENTOR Robert F. Tumminaro 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. 22659 (500-339US) 6806 EXAMINER FARRAR, LAUREN PENG ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 10/25/2018 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): docket@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT F. TUMMINARO, CHRISTINE A. FREDRICKS, and FRANK K. VILLARI Appeal2018-001620 Application 13/257,298 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 appeal from the Examiner's rejection of claims 1-18 and 20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Illinois Tool Works Inc. Appeal Br. 4. Appeal2018-001620 Application 13/257,298 According to Appellants, the invention relates "to one-way check valves used in medical fluid delivery systems." Spec ,r 2. Claims 1 and 12 are the independent claims on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. An IV check valve for IV set systems having a main fluid system and an auxiliary fluid system, said IV check valve compnsmg: a body including a housing and a cover placed on said housing, said housing having a cavity therein in flow communication with an inlet conduit member and an outlet conduit member, said inlet and said outlet conduit members each being configured for connecting to IV tubes, said cavity further defined by an inner wall having a sidewall and a floor extending from an outer uppermost edge of said housing to said inlet conduit member; a valve seat in said body; a diaphragm responsive to fluid flow through said body, said diaphragm being spaced from said valve seat along at least a portion thereof for fluid flow from said inlet conduit member to said outlet conduit member and being fluidly sealed against said valve seat for fluid flow from said outlet conduit member to said inlet conduit member, wherein said diaphragm has a circumferential edge extending between top and bottom surfaces with said top and bottom surfaces being curved, non-planar surfaces when fluid flows from said inlet conduit member to said outlet conduit member and when fluid flows from said outlet conduit member to said inlet conduit member; at least one recess that inwardly extends into and through at least one portion of an exposed surface of said sidewall and said floor, said at least one portion of said sidewall and said floor extending from an exit of said inlet conduit member to said diaphragm, said at least one recess configured to accumulate contaminant particles; and a screen disposed in said body between said inlet and said valve seat. 2 Appeal2018-001620 Application 13/257,298 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1-18 and 20 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written-description requirement; II. Claims 1, 2, 8, 11-14, and 18 under 35 U.S.C. Â§ I03(a) as unpatentable over Beecher (US 4,765,372, iss. Aug. 23, 1988) and Polidan et al. (US 6,105,609, iss. Aug. 22, 2000) ("Polidan"); 2 III. Claims 3-7, 15-17, and 20 under 35 U.S.C. Â§ I03(a) as unpatentable over Beecher, Polidan, Manske (US 4,141,379, iss. Feb. 27, 1979), and Lareau et al. (US 2009/0292252 Al, pub. Nov. 26, 2009) ("Lareau"); IV. Claim 9 under 35 U.S.C. Â§ I03(a) as unpatentable over Beecher, Polidan, Manske, and Tanaka et al. (US 2009/0209917 Al, pub. Aug. 20, 2009) ("Tanaka"); and V. Claim 10 under 35 U.S.C. Â§ I03(a) as unpatentable over Beecher, Polidan, Manske, and Rising (US 3,854,907, iss. Dec. 17, 1974). 2 Although page 2 of the Final Office Action does not indicate that the Examiner rejects claim 8 as obvious based on Beecher and Polidan, it is clear from page 4 of the Office Action that the Examiner rejects claim 8 based on Beecher and Polidan. Final Action 2, 4. Further, although page 2 of the Office Action indicates that the Examiner rejects claim 19, Appellants canceled claim 19. Id. at 2; Appeal Br., Claims App. 3 Appeal2018-001620 Application 13/257,298 ANALYSIS Rejection I The Examiner rejects claims 1-18 and 20 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written-description requirement. See, e.g., Final Action 2. Specifically, the Examiner determines the following: [ each of the claims includes] a recess that inwardly extends into and through at least one portion of an exposed surface of said sidewall and said floor. The term "through" implies that the recess would start on one side and extend out the other side of the floor/sidewall. However, it appears that the recess described in the specification (244 and 260, 262, 264) does not extend through the sidewall or floor. Therefore, . . . the claim[ s] . . . [are] not supported in the specification. Id. Based on our review of the record, we do not agree with the Examiner that the claim recitation requires "that the recess would start on one side and extend out the other side of the floor/sidewall." Id. Instead, we agree with Appellants that the claims do not recite a "recess that inwardly extends into and through at least a portion of said sidewall and said floor." Instead, [independent] claim 1 recites, in part, "at least one recess that inwardly extends into and through at least a portion of an exposed surface of said sidewall and said floor." Similarly, [independent] claim 12 recites, in part, "contaminant particle capturing structure that inwardly extends into and through an exposed portion of said valve seat[.]" . . . The present [ a ]pplication provides clear written description support for a feature that "starts on one side" of an exposed surface or portion of a floor/sidewall, and extends through that particular exposed surface/portion. Appeal Br. 10-11. Further, we agree with Appellants that the identified claim recitations are supported by at least paragraphs 36 and 43 of the 4 Appeal2018-001620 Application 13/257,298 Specification (id. at 10-13), and that "Figures 2, 6, and 8, for example, clearly show[] [recesses] that inwardly extend into and through exposed portions of the valve seat, which includes a floor and sidewalls" (id. at 11 ). Thus, based on the foregoing, we do not sustain the written-description rejection of claims 1-18 and 20. Rejection II Appellants argue that the Examiner's rejection of independent claim 1 is in error because, contrary to the Examiner's findings (see, e.g., Answer 3), Polidan does not disclose "at least one recess that inwardly extends into and through at least one portion of an exposed surface of said sidewall and said floor, said at least one portion of said sidewall and said floor extending from an exit of said inlet conduit member to said diaphragm," as claimed (Appeal Br. 15-18; id. at Claims App. (Claim 1)). More specifically, Appellants argue that rather than disclosing recesses that inwardly extend into and through a portion of an exposed surface of a sidewall and a floor, Polidan instead discloses "ribs 66 [that] outwardly extend" away from a floor. See, e.g., id. at 15 ( emphasis omitted). In response, the Examiner finds that Polidan discloses the argued recitation because, in Polidan, the valve floor, as claimed, is defined by top ends of ribs 66, and the claimed recesses are "formed between [ribs] 66[, and the recesses] extend through the valve floor." Answer 3. Based on our review of the record, for the below reasons, the Examiner does not support adequately that Polidan discloses the claimed recesses. Polidan consistently identifies elements 66 as "ribs." See, e.g., Polidan col. 2, 11. 61-63. These ribs appear to extend from a floor of check valve cap 48. See, e.g., id. at Fig. 2. A relevant dictionary definition of rib 5 Appeal2018-001620 Application 13/257,298 is "an elongated ridge," and relevant dictionary definitions of "ridge" are "an elevated body part or structure," and "a raised strip." From https://www.merriam-webster.com/dictionary/rib, https://www.merriam- webster.com/dictionary/ridge, last accessed Oct. 17, 2018. Thus, based on the above, we agree with Appellants that Polidan's ribs 66 extend from a floor, and, therefore, ribs 66 are the opposite of the structure being claimed-i.e., a recess in a floor. Appeal Br. 16. As a result, we find that the Examiner does not support adequately that Polidan's ribs 66 disclose the floor as claimed, and does not support adequately that spaces between ribs 66 disclose the claimed one or more recesses. Based on the foregoing, we do not sustain the Examiner's obviousness rejection of independent claim 1. We also do not sustain the Examiner's rejection of independent claim 12 that includes a similar recitation, and which the Examiner rejects for similar reason, as claim 1. Further, we do not sustain the Examiner's rejection of claims 2-11, 13-18, and 20 that depend from, and are rejected with, the independent claims. Rejections 111-V The Examiner does not rely on any other reference to remedy the above-discussed deficiency in the rejection of independent claims 1 and 12. Therefore, we do not sustain any of the rejections of claims 3-7, 9, 10, 15- 17, and 20 that depend from claims 1 and 12. 6 Appeal2018-001620 Application 13/257,298 DECISION We REVERSE the Examiner's rejections of claims 1-18 and 20 under 35 U.S.C. Â§ 103(a). REVERSED 7