15290665 - (D) (P.T.A.B. Jul. 15, 2020)

Michael Vaillancourt et al.

Patent Trials and Appeals BoardJul 15, 2020

15290665 - (D) (P.T.A.B. Jul. 15, 2020)

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. 15/290,665 10/11/2016 Michael J. Vaillancourt 733900.125 1608 27162 7590 07/15/2020 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER JOHANAS, JACQUELINE T ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 07/15/2020 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, MARSHALL KERR, GREGORY J. DWYER, JEICOL HERRERA, and MICHAEL J. PFEFFERKORN __________ Appeal 2019-006580 Application 15/290,665 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 8–10. Claims 5–7 are withdrawn from consideration and claims 2–4 are allowed. Final Act. 1 (Office Action 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as “VLV Associates, Inc.” and “the co-inventor, Michael J. Vaillancourt.” Appeal Br. 1. Appeal 2019-006580 Application 15/290,665 2 Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter “relates to a wound protector.” Spec. 1. Claims 1 and 9 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A wound protector comprising a collapsible distal ring; an annularly collapsible proximal ring, said proximal ring being circumferentially collapsible from an extended state wherein the diameter of said proximal ring is larger than the diameter of said distal ring to a collapsed state wherein the diameter of said proximal ring is of the same size as the diameter of said distal ring; and a flexible sleeve extending between said proximal ring and said distal ring to form a frusto-conical shape with the proximal ring in said extended state and to collapse with said proximal ring in said collapsed state. REFERENCES Pribanic US 2012/0157786 A1 June 21, 2012 Albrecht et al. US 2012/0289785 A1 Nov. 15, 2012 Koehler et al. US 2014/0316210 A1 Oct. 23, 2014 THE REJECTIONS ON APPEAL Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Albrecht. Final Act. 3. Appeal 2019-006580 Application 15/290,665 3 Claims 1, 8, and 9 are rejected under 35 U.S.C. § 102(a)(2) anticipated by Koehler. Final Act. 3.2 Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Koehler and Pribanic. Final Act. 5. ANALYSIS The rejection of claim 1 as anticipated by Albrecht The Examiner finds that Albrecht discloses a wound protector disclosing a collapsible distal ring (inner ring 288) and an annularly collapsible proximal ring (outer ring 252), with this proximal ring (252) “being fully capable of” circumferentially collapsing from an extended state wherein the diameter of the proximal ring is larger than the diameter of the distal ring (288) to a collapsed state wherein the diameter of the proximal ring is of the same size as the diameter of said distal ring, as claimed. Final Act. 3 (referencing Albrecht ¶¶ 90, 91, Fig. 31). The Examiner also finds that Albrecht teaches a flexible sleeve (elongate tube segments 286) extending between the distal and proximal rings that expands and collapses with these rings. Final Act. 3 (referencing Albrecht ¶ 90). In summation, the Examiner finds that flexible sleeve 286 extending between rings 252, 288, respectively, “form[s] a frusto-conical shape” “if the proximal ring [252] is expanded to a larger diameter than the distal ring [288].” Final Act. 3 (referencing Albrecht ¶¶ 86–91, Fig. 31). 2 The Examiner clarifies in the Answer that “all the limitations of claim 1 [were included] within the body of the rejection of claim 8 because claim 8 is, in effect, the combination of elements of claim 1.” Ans. 9–10; see also Final Act. 3–4. Appeal 2019-006580 Application 15/290,665 4 Appellant contends that “the tube segments 286 of Albrecht illustrated in Fig. 31 are not a ‘sleeve’ as the term is regarded by Applicants.” Appeal Br. 7; see also Reply Br. 2–4. Appellant supports this argument by referencing pages 2, 3, and 5 of Appellant’s Specification. Appeal Br. 6–7. The Examiner responds that “none of these excerpts or any other part of the specification provides a special definition of the term sleeve that would preclude an interpretation of the term ‘sleeve’ under broadest reasonable interpretation.” Ans. 5. The Examiner states, “[u]nder broadest reasonable interpretation, a sleeve is being considered as a tubular piece or part (see definitions found on merriam-webster.com and dictionary.com).” Ans. 6; see also Reply Br. 4 (replicating the definition of “sleeve” from both dictionaries).3 Hence, Appellant’s contention that “[t]he Examiner provides no evidence of an interpretation of the term ‘sleeve’ under the broadest reasonable interpretation” (Reply Br. 3) is not correct. A review of the recited passages in Appellant’s Specification show Appellant’s usage of the term “sleeve,” but in a manner consistent with its ordinary and customary meaning as expressed by the Examiner and acknowledged by Appellant above. See also Ans. 5. Appellant additionally understands that the term “sleeve” is defined as “a tubular part (such as a hollow axle or a bushing) designed to fit over another part.” Reply Br. 4 (specifically referencing one of the “merriam-webster.com” definitions). 3 Addressing a different matter, Appellant states, “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Reply Br. 6 (referencing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). Appeal 2019-006580 Application 15/290,665 5 However, Appellant contends that “‘a tubular piece’ does not read on [Albrecht’s] ‘a plurality of tube segments.’” Appeal Br. 7; see also Reply Br. 3, 4. It appears that Appellant is taking issue with Albrecht’s multi-piece construction and not with the fact that Albrecht’s segments 286 form a tube. To be clear, Albrecht’s tube segments 286 shown in Figure 31 form a tubular part that extends between outer ring 252 and inner ring 288, much like Appellant’s flexible sleeve 13 extends between annularly collapsible proximal ring 11 and distal ring 12 shown in Appellant’s Figure 1. The Examiner further explains, “[t]here is no requirement by the claim or under [a] broadest reasonable interpretation that a sleeve [is] a monolithic or single-piece structure.” Ans. 6. We agree with the Examiner’s assessment on this issue, and do not find the Examiner erred in correlating Albrecht’s tube segments 286 to Appellant’s recited “sleeve.” Appellant also contends that “the curved tube segments 286 of Albrecht illustrated in Fig. 31 do not form ‘a frusto-conical shape with the proximal ring in said extended state’ as required by claim 1. Instead, as illustrated, the spaced apart curved tube segments 286 form a cylindrical pattern.” Appeal Br. 8; see also Reply Br. 4–5. To be clear, claim 1 recites “an annularly collapsible proximal ring, said proximal ring being circumferentially collapsible from an extended state wherein the diameter of said proximal ring is larger than the diameter of said distal ring to a collapsed state wherein the diameter of said proximal ring is of the same size as the diameter of said distal ring.” Claims App. Thus, it is when the diameter of Albrecht’s proximal ring 252 is bigger than the diameter of Albrecht’s distal ring 288 that the sleeve forms the recited Appeal 2019-006580 Application 15/290,665 6 frusto-conical shape. Further, as Appellant points out, “[t]o anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently.” Appeal Br. 3 (referencing Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987)). It is the requirement that, in an anticipation rejection, “every limitation,” either “expressly or inherently,” must be disclosed that we investigate. Albrecht clearly discloses the two rings forming a frusto-conical shape with the distal (inner) ring 288 being larger in diameter than that of the proximal (outer) ring 252 (see Albrecht ¶ 91). But, nowhere does Albrecht expressly disclose the opposite, i.e., forming “a frusto-conical shape with the proximal [outer] ring in said extended state” as claimed. See also Reply Br. 5. At most, Albrecht discloses the two rings forming a columnar shape. See Albrecht ¶ 91, Fig. 31. Although we agree with the Examiner that, based on the flexible nature of both the proximal (outer) ring 252 and sleeve 286, Albrecht’s ring 252 is “fully capable of” being expanded/collapsed as recited (see Final Act. 3, Ans. 8, 9), such is not expressly disclosed in Albrecht. As to whether this limitation is “inherently” disclosed in Albrecht, we have been instructed that an inherent disclosure requires that the prior-art reference “necessarily include the unstated limitation.” Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006). On the point of “necessarily,” we have been instructed that “probabilities or possibilities” are not enough to find that the prior art inherently discloses something not explicitly present. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Thus, while, indeed, Albrecht’s ring 252 appears to be “fully capable of” being distorted as claimed (see Albrecht ¶¶ 86, 89, 91) we are not persuaded Appeal 2019-006580 Application 15/290,665 7 that the Examiner’s “capable of” premise rises to the level of inherent anticipation, as required to affirm the Examiner’s rejection. Thus, as indicated above, Albrecht does not expressly disclose the wound protector as specifically claimed, nor is it certain that Albrecht’s wound protector would necessarily or inherently have the claimed frusto-conical limitations. As such, the rejection of claim 1, as anticipated by Albrecht, is not sustained. However, it is abundantly clear that the circumference of Albrecht’s outer (252) and inner (288) rings can vary. See Albrecht ¶¶ 86, 91 (“with both the outer ring 252 and the inner ring 288 retracted to their smallest respective diameters”). Albrecht further teaches that rings 252 and 288 are independently adjustable and that they may both have the same diameter. See Albrecht ¶ 91. Thus, it is readily apparent to one skilled in the art that one ring is fully capable of being adjusted, without further modification, to a diameter greater than that of the other, as well as to a diameter the same as the other. Hence, in view of Albrecht’s teachings, Albrecht at least suggests subject matter falling within the limitation “annularly collapsible proximal ring [252] being circumferentially collapsible from an extended state where the diameter of said proximal ring is larger than the diameter of said distal ring [288] to a collapsed state wherein the diameter of said proximal ring is of the same size as the diameter of said distal ring.” Consequently, and pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 1 under 35 U.S.C. § 103 as unpatentable over Albrecht in view of Albrecht’s teachings of full and independent adjustability of rings 252 and 288 so that they may be deployed to retract an incision in a body wall. See Albrecht Abstract. We designate this rejection as a new ground of rejection to afford Appellant a full and fair opportunity Appeal 2019-006580 Application 15/290,665 8 to react to the thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had [a] fair opportunity to react to the thrust of the rejection.”). The rejection of claims 1, 8, and 9 as anticipated by Koehler Claims 1 and 8: The Examiner finds that Koehler discloses a wound protector having all limitations of claim 8. See Final Act. 3–4. Appellant contends that “since parent claim 1 has not been rejected as being anticipated by Koehler, the rejection of claim 8 as being anticipated by Koehler is not warranted.” Appeal Br. 8. No other argument is presented by Appellant in Appellant’s Appeal Brief. See Appeal Br. 8. The Examiner responds that the “Examiner has rejected [] claim 8 . . . and has included all the limitations of claim 1 within the body of the rejection of claim 8 because claim 8 is, in effect, the combination of the elements of claim 1 and claim 8.” Ans. 9–10. Because the Examiner has included the limitations of parent claim 1 when rejecting claim 8 as being anticipated by Koehler, Appellant is not persuasive of Examiner error on this point. Our reviewing court has observed that “[a] broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)). The same holds true in the anticipation context. Appeal 2019-006580 Application 15/290,665 9 In the Reply Brief, Appellant contends that Koehler does not disclose all the limitations of claim 1 because there is no disclosure that Koehler’s linkage structure 160 can be collapsed to the same diameter as that of the retention ring 30a. Reply Br. 5. We note, however, that this argument was not raised in the Appeal Brief, and does not appear to be responsive to any argument raised in the Examiner’s Answer. As stated in 37 C.F.R. § 41.41(b)(2): Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. (Emphasis added). Accordingly, we need not consider this untimely argument in the present appeal. Nonetheless, even if this argument had been timely made, it is unpersuasive for the reasons discussed below with respect to claim 9. See also Koehler ¶¶ 32, 34, 35, 76, 77 (discussing an expandable and collapsible retention ring that may form a cylindrical or frusto-conical shape). Thus, the rejection of claims 1 and 8, as anticipated by Koehler, is sustained. Claim 9: The Examiner finds that Koehler discloses a wound protector having all the limitations of claim 9. See Final Act. 3–4 (citing Koehler ¶¶ 84; Figs. 1, 8A, 10). Claim 9 recites limitations similar to claim 1, namely, (a) “a collapsible distal ring;” (b) “an annularly collapsible proximal ring” that collapses from an extended state to a collapsed state “of the same size as the diameter of said distal ring;” and, (c) “a flexible sleeve extending between” Appeal 2019-006580 Application 15/290,665 10 the two rings “to form a frusto-conical shape with the proximal ring in said extended state.” Claims Appendix. Appellant contends that “[t]he expanding linkage structure 160 of Koehler does not collapse annularly and the Examiner has presented no evidence that the structure 160 is annularly collapsible.” Appeal Br. 9; see also Reply Br. 5 (“[t]here is no disclosure in Koehler that the linkage structure 160 can be collapsed to the same diameter as the retention ring 30a”). The Examiner clarifies that the radial movement of the ring from a larger diameter (shown in Fig. 11, [0055] Koehler) to a smaller diameter (shown in Fig. 10, [0054] Koehler) constitutes collapsing annularly as it is a ring shape with a larger diameter which collapses or shrinks to a ring shape with a smaller diameter. Ans. 10. As noted above, Koehler, when addressing the expandable and collapsible nature of the device, states that when fully assembled, it “is preferably substantially cylindrical or frusto-conical.” Koehler ¶ 77; see also id. at 32, 34, 35, 76. We also note that “things patent drawings show clearly are [not] to be disregarded” (emphasis in original). In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). On this point, Figures 10 and 11 of Koehler clearly show a change in the inner diameter of expanding linkage structure 160 (see also Figure 8A which depicts the recited frusto-conical shape). Thus, Appellant’s contentions that the Examiner “presented no evidence that the structure 160 is annularly collapsible” (Appeal Br. 9) or that “the linkage structure 160 can be collapsed to the same diameter as the retention ring 30a” (Reply Br. 5) are not persuasive. Focusing on Koehler’s drawings, Appellant states, “[a]s evidenced by Figs. 9, 10 and 11, the expanding linkage structure 160 of Koehler has a Appeal 2019-006580 Application 15/290,665 11 constant outside diameter.” Appeal Br. 9. However, even if true, Appellant is disregarding the clear depiction of a change in the size of the ring’s inner diameter, to which Koehler’s membrane (sleeve) 34 is attached. See Koehler ¶ 59, Fig. 1. The Examiner further states, “[i]t is noted that Appellant’s claim does not require the ‘outside’ diameter of the ring to be larger/same size. Rather, any diameter of the ring, including an inner di[a]meter could read on the claimed diameter.” Ans. 11. Lastly, Appellant contends that “the expanding linkage structure 160 of Koehler cannot be collapsed to have an outer diameter smaller than the diameter of the retention ring 30a as required by claim 9.” Appeal Br. 9; see also Reply Br. 6. As above, the Examiner responds that “the claim does not require that the proximal ring collapse to an outer diameter smaller than the diameter of the distal ring.” Ans. 14; In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Further, the Examiner points out that paragraph 84 of Koehler “describes that the proximal ring diameter (Dtop) is greater or equal to the distal ring diameter (Dbottom)” and that this frusto-conical shape is clearly shown in Koehler’s Figure 8A. Ans. 14. In short, none of Appellant’s contentions apprise us of Examiner error. Accordingly, the rejection of claim 9, as being anticipated by Koehler, is sustained. The rejection of claim 10 as obvious over Koehler and Pribanic Appellant states that “[c]laim 10 depends from claim 9 and stands or falls with claim 9.” Appeal Br. 10. Because we find no deficiencies in the Appeal 2019-006580 Application 15/290,665 12 Examiner’s rejection of independent claim 9 as being anticipated by Koehler, we likewise sustain the Examiner’s rejection of claim 10 as being obvious over Koehler and Pribanic. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1 102(a)(1) Albrecht 1 1 1, 8, 9 102(a)(2) Koehler 1, 8, 9 10 103 Koehler, Pribanic 10 Overall Outcome4 1, 8–10 1 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously 4 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” Appeal 2019-006580 Application 15/290,665 13 of Record is made which, in the opinion of the Examiner, overcomes the new ground of rejection designated in the decision. Should the Examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b)