Ex Parte 8261375 et al

Patent Trial and Appeal BoardAug 1, 2016

95002390 (P.T.A.B. Aug. 1, 2016)

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. 95/002,390 09/15/2012 8261375 REAU-31028 9710 7590 08/01/2016 BRIAN K. REAUX MANAGING MEMBER, REAUX MEDICAL INDUSTRIES, LLC 710 ROCK HILL DRIVE RED OAK, TX 75154 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 08/01/2016 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 ____________________ STRYKER CORPORATION Requester, Respondent v. BRIAN K. REAUX Patent Owner, Appellant ____________________ Appeal 2015-004774 Inter partes Reexamination Control 95/002,390 Patent US 8,261,375 B11 Technology Center 3900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING 1 Patent US 8,261,375 B1 (hereinafter “the ’375 patent”) issued September 11, 2012 to Reaux. Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 2 In the Request for Rehearing (hereinafter “Rehr’g Req.”), the Patent Owner requests reconsideration under 37 C.F.R. § 41.79 of our Decision mailed November 20, 2015 (hereinafter “Original Decision” or “Orig. Dec.”) affirming Rejections 4 and 8 of claims 1–12. The Patent Owner asserts that in the Original Decision, we misapprehended or overlooked various issues, and requests modification of the Original Decision. The Requester submits comments in opposition to the Request for Rehearing under 37 C.F.R. § 41.79. We grant the Request to the extent that we consider the Patent Owner’s arguments infra, but DENY the request to modify our Original Decision. Preliminarily, we note for the benefit of the Patent Owner that 37 C.F.R. § 41.79 pertaining to Request for Rehearing recites: (b)(1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to §41.77(b) are permitted. (37 C.F.R. § 41.79(b)). Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 3 In the Request for Rehearing, the Patent Owner seeks to: enter[] into evidence a swear-behind affidavit, or reduction to practice to prove that Appellant’s provisional application came prior to Klotz’ filing date, and provides sufficient “support” to one skilled in the art to understand the present method claims when the device is disclosed therein and is presently under prosecution as such. Appellant believes that there is good cause of entering this affidavit in that the prior attorney of record failed to provide such even when suggested by Examiner Dawson and later removed himself. (Rehr’g Req. 1; see also id. at 4). However, the Patent Owner does not establish how this new evidence is based on a recent decision of the Board or a Federal Court, or establish why such evidence was not previously presented to the Patent Office for consideration. While the Patent Owner faults its prior attorney, this is not a basis recognized in the pertinent rule for entering new evidence that could have been previously entered into evidence. The Patent Owner also argues that, in affirming Rejections 4 and 8, the Board misapprehended Vargas and Wilson because the devices disclosed therein include structures into which fluids may be lodged and transferred so as to make them non-sterile (Rehr’g Req. 1). However, the Patent Owner fails to recognize that Vargas is relied upon for teaching the ordered process of laminating the lens and lens protector together, and then cutting the laminated layers to form the eye shield, the Original Decision noting the teaching in Vargas that: multilayered composite window may be manufactured “by any of the methods generally known in the art to fabricate laminated polymer film and the like. . . . The cutting of the preselected pattern or shape of the temporary window can be after the Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 4 lamination step, concurrent therewith or in part prior to laminating, as again generally known in the art.” (Orig. Dec. 5–6, quoting Vargas, col. 3, ll. 59–68; see also id. at 9 (quoting the rejection applying disclosure of Vargas as well as the finding that the claimed method is one of only a finite number)). The Patent Owner also fails to recognize that Wilson is relied upon for demonstrating that: a person of ordinary skill in the art would consider both the medical field (the field of [Klotz]) and the automotive windshield field (the field of [Vargas]) when addressing the issue of providing laminated, peel-away eye shields in the medical environment. (Orig. Dec. 6, quoting Request 134–135). Thus, Vargas and Wilson were secondary references relied upon for specific disclosure of manufacturing laminated lens and lens protector, and the fact that a person of ordinary skill would consider laminates from not only the medical environment, but also in the automotive windshield field. Correspondingly, the Patent Owner’s arguments are misdirected. The Patent Owner also asserts that the Board erred in claiming “that the operating room (OR) is sterile and thus imply the eye shield must be sterile,” that this “jump in logic” is based on hindsight, and demonstrates “a lack of understanding of the present invention.” (Rehr’g Req. 2; see also id. at 3 (arguing that the references do not point out any issues pertaining to sterilization of the eye shield)). According to the Patent Owner, once the surgical hood and its eye shield are hit by fluids, it is no longer sterile (id.). Firstly, we note that even the Patent Owner’s hood would be no longer sterile once hit by bodily fluids in the operating room. We Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 5 understand the claimed invention to be directed toward a sterilized hood suitable for use in an operating room, which allows enhanced visibility through its eye shield by providing multiple peel-away layers, not a hood that would remain sterile after it being hit by bodily fluids. Secondly, as to the asserted error, the basis of the Original Decision is our agreement with the Examiner that “any combination involving a surgical hood assembly would be required to be sterile,” and that sterilization techniques were admitted to be well-known in the Specification of the ‘375 patent (Orig. Dec. 11, quoting RAN 11–12). In this regard, we also agreed with the Requester that: [i]t was obvious and common sense that equipment used during surgery would have to be sterilized in order to be suitable for use in the operating room. (Ex. 14, Thomas Declaration, ¶¶ 33– 35.) (Orig. Dec. 11, quoting Resp. Br. 14). In other words, as to sterilization, the rejections are based on the conclusion that it would have been obvious to sterilize the surgical hood assembly resulting from the combination of the prior art proposed, so that it can be used in an operating room (e.g., as suggested by Klotz, col. 1, ll. 12– 13) by subjecting it to sterilization techniques, which the Patent Owner admitted were well-known. The Patent Owner further requests that the Declaration of Mr. Gil be considered and “given it’s [sic] full weight” because he was the manufacturer of the commercialized product described in Klotz ’691 (Rehr’g Req. 3). The Original Decision makes clear that the Declaration of Mr. Gil was considered and explains the basis for giving it the weight that the Board Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 6 did (Orig. Dec. 9–10). Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion.”). The Patent Owner also asserts that the issued ’375 patent enjoys a presumption of validity, and in the present reexamination, there is no substantial new question of patentability because almost every reference cited by the Requester had been considered during the original prosecution that resulted in the issuance of the ’375 patent (Rehr’g Req. 3; see also id. at 5). In addition to the fact that these arguments were not presented in the Appeal Brief, and thus, are improperly presented in the Request for Rehearing, we also observe that in reexaminations, there is no presumption of validity. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Moreover, inter partes reexamination is “not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office,” and the Director’s determination whether a reasonable likelihood that the requester would prevail2 is non-appealable. 35 U.S.C. § 312(a), (c). 2 The Patent Owner mistakenly directs its arguments to existence of “a substantial new question of patentability,” but the applicable standard for evaluating requests for inter partes reexaminations filed on or after September 16, 2011, but before September 16, 2012, is whether the request shows a reasonable likelihood that the requester would prevail with respect to at least one claim challenged. 35 U.S.C. § 312(a). The Request for Inter Partes Reexamination in the present appeal was filed September 15, 2015. Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 7 The Patent Owner sets forth additional arguments based on the Requester’s sterilization method, patenting of a similar invention, and alleged commercial implementation thereof (Rehr’g Req. 3–4). However, in addition to having generally addressed this line of argument (Orig. Dec. 13– 14), these arguments do not impact the appealed rejections of the claims, which are based on the prior art of record. The Patent Owner also argues that the commercial implementation of Diaz sews the shield to the shroud/hood, and such sewing destroys the sterile barrier because “the sewing needle holes provide openings through which bacteria may pass.” (Rehr’g Req. 5, referring to the Oral Hearing). However, this argument is new and was not timely presented in the Patent Owner’s brief. 37 C.F.R. § 41.79. Moreover, the pertinence of this line of argument is unclear considering that the claimed invention does not recite the manner in which the eye shield must be secured to the surgical hood. The Patent Owner further asserts that the Board overlooked the fact that claim 11 of a “parent patent is still valid and is narrower than the claim 1 of the PO ‘375” patent (Rehr’g Req. 5, emphasis added), but notwithstanding the fact that this argument is also new, this fact is irrelevant to the present appeal which involves a different patent, and, according to the Patent Owner, claim 11 of the parent patent is narrower in scope. Finally, the Patent Owner again asserts copying by Racing Optics (Rehr’g Req. 5). This argument has already been addressed and found unpersuasive (Orig. Dec. 13.). Although not entirely clear, to any extent that the Request for Rehearing relies on new evidence and/or new arguments, we again note that new arguments and new evidence are not permitted unless an Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 8 exception as provided in 37 C.F.R. § 41.79(b) is applicable, which is not the case here. DECISION While we have considered the Original Decision in light of the Request for Rehearing, and have elaborated on certain aspects of it, we decline to modify the Original Decision in any respect. DENIED Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2015-004774 Reexamination Control 95/002,390 Patent US 8,261,375 B1 9 Third Party Requester: ROBERT A. SURRETTE MCANDREWS, HELD & MALLOY, LTD. 500 W. MADISON STREET, 34TH FLOOR CHICAGO, IL 60661 Patent Owner: BRIAN K. REAUX MANAGING MEMBER REAUX MEDICAL INDUSTRIES, LLC 710 ROCK HILL DRIVE RED OAK, TX 75154