Ex Parte Vaillancourt

Patent Trial and Appeal Board

Oct 9, 2018

13535060 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/535,060 06/27/2012 Michael J. Vaillancourt
27162 7590 10/09/2018
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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.
733900.84 2272
EXAMINER
ABOUELELA, MAY A
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
10/09/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. VAILLANCOURT
Appeal2017-010150
Application 13/535,060 1
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4, 8-11, and
20 (Ans. 1; see App. Br. 2). 2 Examiner entered rejections under 35 U.S.C.
§ 102(b). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the real party in interest (App. Br. 2).
2 Pending claims 21-31 stand withdrawn from consideration (Ans. l; see
App. Br. 2). We recognize Appellant's contentions relating to withdrawn
claims 21-26 and 29-31 (see App. Br. 10-13). We note, however, that
Appellant's contentions relate to a petitionable rather than appealable issue
(see Ans. 7-8). Therefore, we have not included any of withdrawn claims
21-31 in our deliberations.
Appeal2017-010150
Application 13/535,060
STATEMENT OF THE CASE
Appellant's disclosure "relates to a safety shield for a needle
assembly" (Spec. 1: 1-2). Claims 1, 8, 9, and 20 are representative and
reproduced below:
1. A safety shield comprising a one piece body having a hollow
stem disposed on a longitudinal axis and having a passage
extending therethrough and a disc-shaped collar extending
radially outwardly from one end of said hollow stem and
circumferentially about said passage, said hollow stem having
at least three longitudinal slits extending from a distal end
towards said collar.
(App. Br. 3 14.)
(Id.)
(Id.)
(Id.)
8. In combination, a needle assembly including a hub having a
longitudinal passage therein and a hollow needle extending
longitudinally from said hub in communication with said
passage; and a safety shield having a hollow stem of circular
shape disposed in said passage of said hub and a disc-shaped
collar extending radially outwardly from one end of said hollow
stem.
9. The combination as set forth in claim 8 wherein said safety
shield is slidably mounted in said hub of said needle assembly.
20. The combination as set forth in claim 8 wherein said collar
of said safety shield extends radially outwardly of said hub of
said needle assembly.
3 The claims Appendix of Appellant's Brief is not paginated. Therefore, we
refer to page numbers of the Claims Appendix as if it were numbered
consecutively following the last page of Appellant's Brief.
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Application 13/535,060
The claims stand rejected as follows:
Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Geszler. 4
Claims 8-11 and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Rowe. 5
The rejection over Geszler:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Geszler teaches Appellant's claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Geszler "relates generally to a device for protecting the distal lead of
an implantable medical device from damage during shipment and, more
particularly, to such a device which protects both the distal electrode against
abrasion and the like and the fixation tines against distortion" ( Geszler 1 : 4--
8).
FF 2. Geszler' s Figure 1 is reproduced below:
FIG. 1 28
~ .. - --------
\ x~- ~; /· 46
'\·./...... _.,....
2 -\/ .,-'1
y >:,, / ~ ·"
'"\ : ~'~-c,. '• 30
42
Geszler's "FIG. 1 is a perspective view of a protective device embodying
[Geszler's] ... invention" (Geszler4: 10-11).
4 Geszler, US 5,738,220, issued Apr. 14, 1998.
5 Rowe et al., US 5,342,315, issued Aug. 30, 1994.
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Application 13/535,060
FF 3. Geszler's Figure 2 is reproduced below:
30c;\-
·3Qb
Geszler's "FIG. 2 is a cross-section view of the protective device of the
invention taken generally along line 2-2 in Fig. [1]" (Geszler 4: 12-13).
FF 4. Geszler's "protective device 20 includes a first guard, or cap,
member 28 ... and a second guard member, or shield, 30" (Geszler 4: 40-43
( emphasis omitted)).
FF 5. Geszler's "cap member 28 extends between a nose end 32 having a
chamber 34 therein ... and a tail end 36 distant from the nose end."
FF 6. Geszler's "shield 30 is integral with the cap member and defines a
cavity 38" (Geszler 4: 45-50 ( emphasis omitted)).
FF 7. Geszler's
shield 30 includes a conical shield member 30a [] extending
radially outwardly from the outer peripheral surface 39 of the
cap member 28 intermediate the nose end 32 and the tail end 36
and away from the nose end with increasing distance away from
the outer peripheral surface 39 to an outermost rim 30b.
(Geszler 4: 51-57 ( emphasis omitted).)
FF 8. Geszler further discloses that "fingers 40 are located at
circumferentially spaced locations about the longitudinal axis of the
protective device 20 at the tail end 36," wherein
[ e Jach of the fingers is generally parallel with the longitudinal
axis of the protective device 20, extends in a direction away
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Application 13/535,060
from the nose end 32 to an extremity 42 [], and increases in
width with increasing distance away from the extremity 42, as
defined by opposed lateral cam edges 44, 46.
(Geszler 5: 4--12.)
ANALYSIS
Examiner finds that Geszler anticipates Appellant's claims 1 and 4
(Final Act. 3).
Appellant's claim 1 requires, inter alia, "a one piece body having a
hollow stem ... and a disc-shaped collar extending radially outwardly from
one end of said hollow stem" (see App. Br. 14 (emphasis added)). To
address this requirement of Appellant's claimed invention, Examiner finds
that Geslzer's device comprises "a hollow stem ... formed by fingers 40"
and that "a disc-shaped collar ... extend[ s] radially outwardly from one end
of [the] hollow stem" (Final Act. 3). We are not persuaded.
Notwithstanding Examiner's assertion to the contrary, Geszler's
shield extends radially outward from a region of Geszler's device that is
intermediate to the tail end 3 6, from which the fingers 40 extend, and the
nose end 32 (FF 7). For the foregoing reasons, we are not persuaded by
Examiner's assertion that "[ s ]ince cap member 28, shield 30 and fingers 40
are all integrated as one structure, it can be fairly interpreted that shield 30 is
outwardly extending from fingers 40 at end tail 36 of cap member 28" (Ans.
3; see Ans. 2 (Geszler's "fingers 40 extend[] distally from tail end 36"); cf
FF 1-8). Therefore, we agree with Appellant's contention that "shield 30 of
Geszler does not extend from [] fingers 40" (App. Br. 6 ( emphasis omitted);
see Reply Br. 1-3; FF 7-8). Thus, Examiner failed to establish that Geszler
teaches a device comprising "a one piece body having a hollow stem ... and
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Appeal2017-010150
Application 13/535,060
a disc-shaped collar extending radially outwardly from one end of said
hollow stem," as is required by Appellant's claim 1 (see App. Br. 14).
Because the hallmark of anticipation is prior invention, the
prior art reference- in order to anticipate under 35 U.S.C.
§ 102 - must not only disclose all elements of the claim within
the four comers of the document, but must also disclose those
elements "arranged as in the claim." Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Appellant's claim 4, 6 which is not reproduced in the Claims Appendix
of Appellant's Brief, depends from Appellant's claim 1 and, therefore,
suffers from the same deficiency discussed above.
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that Geszler teaches Appellant's claimed invention. The
rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as anticipated by
Geszler is reversed.
The rejection over Rowe:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Rowe teaches Appellant's claimed invention?
6 Appellant's claim 4 is reproduced below:
4. A safety shield as set forth in claim 1 wherein collar has a
conical proximal surface.
(See Appellant's January 3, 2017 Response After Final 2.)
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Application 13/535,060
FACTUAL FINDINGS (FF)
FF 9. Rowe "relates to surgical instruments; and more particularly, the
invention relates to surgical trocar assembly devices for providing
communication into an anatomical cavity" (Rowe 1: 5-8).
FF 10. Rowe's Figure 1 is reproduced below:
FIG.I
18
Rowe's "FIG. 1 is a perspective view of a trocar assembly device [10] of the
type that includes a seal/protector assembly [60] constructed in accordance
with" Rowe's disclosure, "with an obturator [14] partially extended into the
trocar tube [12]" (Rowe 3: 33-36 (emphasis omitted); see id. at 7: 4--11).
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Application 13/535,060
FF 11. Figure 2 is reproduced below:
FIG.2
Rowe's "FIG. 2 is an enlarged elevational view, partially in cross-section, of
the trocar assembly device [10] shown in [Rowe's] FIG. 1, with the
obturator [14] fully extended into the trocar tube [12] and a portion of the
obturator removed, showing a preferred embodiment of a seal/protector
assembly [60] constructed in accordance with" Rowe's disclosure (Rowe 3:
37--42 (emphasis omitted); see id. at 7: 4--11).
FF 12. Rowe discloses that
guide/retainer member 42 is formed with distally extending
mounting pins 80 that extend through the openings 78 and are
preferably secured to the protector members in a suitable
manner such as by sonic welding or the like. The openings 78
may alternatively be elongated in a radial direction, and the pins
80 not secured thereto, so as to permit limited distal movement
of the protector members within the housing. This allows for a
floating movement in the distal direction as an instrument is
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Application 13/535,060
inserted to provide more protector material at the opening in the
seal member when it is fully elongated.
(Rowe 8: 48-59 ( emphasis omitted).)
FF 13. Figure 11 is reproduced below:
FIG. 11 278
Rowe's "FIG. 11 is a top plan view of an outer protector member [264] used
in another alternative embodiment of a seal/protector assembly constructed
in accordance with" Rowe's disclosure (Rowe 3: 65-68 ( emphasis omitted);
see id. at 9: 38-54).
FF 14. Rowe's
protector members include an annular collar portion 266 and
four generally pie-shaped leaf portions 268 formed integrally
with the collar portion so as to form living hinge portions 272
about which the leaf portions are able to pivot distally and
proximally. Each leaf portion occupies approximately one-
fourth of the area defined within the collar portion.
(Id. at 9: 47-54 ( emphasis omitted).)
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FF 15. Rowe's Figure 13 is reproduced below:
FIG. 13 278
/
274
Rowe's "FIG. 13 is a cross-sectional view taken along line 13-13 in FIG.
11" (Rowe 4: 4--5 ( emphasis omitted)).
FF 16. Rowe's Figure 15 is reproduced below:
/'
!
!
i
I
Rowe's "FIG. 15 is an exploded perspective view of the seal/protector
assembly embodiment that includes an outer protector member [264] as
shown in FIG. 11 and an inner protector member [262]" (Rowe 4: 8-11
( emphasis omitted); see id. at 9: 42--44 ("The seal/protector assembly
includes an inner protector member 262 and an outer protector member
264") ( emphasis omitted)).
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ANALYSIS
Examiner finds that Rowe anticipates Appellant's claims 8-11 and 20
(Final Act. 4--5).
Claim 8:
Appellant contends that "Examiner has presented no evidence that the
trocar assembly device 10 of Fig. 1 of Rowe would be considered by one
skilled in the art to be a 'needle assembly' as Appellant regards a needle
assembly" and that Rowe's "trocar tube 12 ... is not a needle" (App. Br. 7-
8 (emphasis omitted); see Reply Br. 4). We are not persuaded.
Appellant discloses that a "needle assembly," within the scope of
Appellant's claimed invention, "includes a hub having a longitudinal
passage and a hollow needle that extends longitudinally from the hub in
communication with the passage. In addition, as is usual, the needle
assembly also includes a trocar stylet having a hub and a stylet extending
from hub through the hollow needle" (Spec. 2: 12-15).
As Examiner explains, Rowe's "trocar 12 used along with obturator
14 [] is used to be inserted into body cavities ... , where obturator 14 has a
sharp point or cutting edge at its distal end ... , so it can be fairly interpreted
that device 10 of Rowe[] ... is a needle assembly," within the scope of
Appellant's claimed invention (Ans. 3 (citing Rowe 1: 15-31, 7: 10-18, 7:
22-25, and Fig. 1); cf Spec. 2: 12-15). In addition, Examiner explains that
Rowe teaches a "trocar 12[, i.e. a sharp-pointed instrument,] used ... [for]
insert[ion] into body cavities ... , so it can be fairly interpreted that trocar 12
taught by Rowe[] ... is a needle" (Ans. 4 (citation and emphasis omitted)).
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Application 13/535,060
For the foregoing reasons, we find no error in Examiner's finding that
Rowe teaches a needle assembly within the scope of Appellant's claimed
invention.
Appellant asserts that
Rowe describes and illustrates each protector member
262, 264 to have an annular collar portion 266 and four
generally pie-shaped leaf portions 268 ....
As illustrated in Figs. 13 and 14 of Rowe, the leaf
portions 268 are of stepped cross-sectional shape with an upper
conical portion, a horizontal intermediate portion and a lower
conical portion about an opening 274.
(App. Br. 9 (citing Rowe 9: 48-50) (emphasis omitted); see Reply Br. 5.)
Based on this assertion Appellant contends that "a person of ordinary skill in
the art would not read the protector members 262, 264 of Rowe as being a
hollow stem of circular shape as regarded by [Appellant]" (id. (emphasis
omitted)). We are not persuaded. As Examiner explains, Rowe teaches that
the "four pie leaf[] portions 268 form[] a circular opening 274" (Ans. 4; see
FF 13-16).
For the foregoing reasons, we find no error in Examiner's finding that
Rowe anticipates a safety shield within the scope of Appellant's claimed
invention.
Claim 9:
Examiner finds that Rowe's "safety shield is slidably mounted in [the]
hub of [the] needle assembly" (Final Act. 4). We agree. Rowe teaches
slidably mounting a safety shield to a hub, wherein openings 78, through
which mounting pins 80 extend, may be elongated in a radial direction and
that pins 80 are not secured thereto, to permit limited distal movement of the
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Application 13/535,060
protector members within the housing "allow[ing] for a floating movement
in the distal direction as an instrument is inserted" (see FF 12).
We recognize Appellant's contention that "Rowe describes []
protector members ... having limited distal movement within the housing"
(App. Br. 9 ( emphasis omitted); see FF 12). Appellant, however, fails to
identify a disclosure in their Specification or requirement in claim 9 that
excludes the amount of sliding of the safety shield in the hub as taught by
Rowe (see FF 12). Therefore, we are not persuaded by Appellant's
contention that "there is no disclosure in Rowe that the protector members
262 and 264 of Rowe are slidably mounted in the handle 16 of the trocar
assembly 10" (App. Br. 9 (emphasis omitted); see Reply Br. 6-7).
Claim 20:
Examiner finds that "[u]nder the broadest reasonable interpretation the
[term] ... 'outwardly' in [Appellant's] claim 20 may be interpreted as
extending over the surface of the hub and not necessarily having dimensions
to be extending totally outside of the hub" (Final Act. 6). In the alternative,
Examiner asserts that "[ u ]nder the broadest reasonable interpretation the
[term] ... 'outwardly' in [Appellant's] claim 20 may be interpreted as
extending outwardly from the hub towards a longitudinal axis and doesn't
necessarily mean[] extending outwardly across the proximal opening of the
hub" (Ans. 6). Therefore, Examiner finds that Rowe anticipates the
requirements of Appellant's claim 20 by teaching a "seal/protector [that] ...
extend[s] on the surface of a chamber in [Rowe's hub or] handle 16" (Final
Act. 6). We are not persuaded.
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Application 13/535,060
Appellant's claim 20 requires that the collar of the safety shield, set
forth in Appellant's claim 8, extends radially outwardly of the hub of the
needle assembly (App. Br. 14 (emphasis added)). As Appellant explains,
"collar 66 does not extend 'radially outwardly['] ... [from Rowe's] handle
16" (App. Br. 1 O; see also Reply Br. 7 ("the terms 'towards a longitudinal
axis' is[, in contrast to Examiner's assertion,] understood as extending
inwardly not outwardly"); see e.g., FF 10-11).
CONCLUSION
The preponderance of evidence on this record supports Examiner's
finding that Rowe teaches Appellant's claimed invention with respect to
Appellant's claims 8 and 9. The rejection of claims 8 and 9 under 35 U.S.C.
§ 102(b) as anticipated by Rowe is affirmed. Claims 10 and 11 are not
separately argued and fall with claim 9.
The preponderance of evidence on this record fails to support
Examiner's finding that Rowe teaches Appellant's claimed invention with
respect to Appellant's claim 20. The rejection of claim 20 under 35 U.S.C.
§ 102(b) as anticipated by Rowe is reversed.
TIME PERIOD FOR RESPONSE
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-IN-PART
14