Ex Parte Astilla et al

Patent Trial and Appeal BoardSep 11, 2018

14150161 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/150,161 01/08/2014 24239 7590 09/13/2018 MOORE & VAN ALLEN PLLC P.O. BOX 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 FIRST NAMED INVENTOR Michael Joseph Astilla 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. 036247-000003 1747 EXAMINER SNOW, BRUCE EDWARD ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 09/13/2018 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): iplaw@mvalaw.com usptomail@mvalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte Pando Innovations 1 Appeal2017-008231 Application 14/150, 161 Technology Center 3700 Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims to a styloid intramedullary fixation device. 2 The Examiner's rejections of claims 1-23 for obviousness-type double patenting and under 35 U.S.C. Â§Â§ 102(b) and 103(a) are appealed. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The listed inventors are Michael Joseph Astilla and Laura Brewer Riedel. See Declaration Under 37 C.F.R. Â§ 1.63 (Jan. 8, 2014). 2 We herein refer to the Specification of Jan. 8, 2014 ("Spec."); Final Office Action Dec. 15, 2015 ("Final Action"); Appeal Brief of Aug. 15, 2016 ("Appeal Br."); and Examiner's Answer of Oct. 21, 2016 ("Answer"). No Reply Brief was submitted. Appeal2017-008231 Application 14/150, 161 STATEMENT OF THE CASE Independent claim 1, reproduced below, is representative: 1. An apparatus for post amputation maintenance of a residuum having a posterior portion, the apparatus comprising: an elongated shell having a longitudinal axis extending from a proximal end to a distal end and defining a hollow interior closed at the distal end, the shell having an opening into the interior extending from the proximal end and adapted to receive the posterior portion of the residuum into the interior of the shell, and the shell having a longitudinal slit having a circular aperture at each end and extending substantially parallel to the longitudinal axis. Appeal Br. 6 (Claims Appendix). The following rejections are on appeal: Claims 1-23 stand rejected on the ground of non-statutory double patenting over claims 1--4 of U.S. Patent 8,679,193. Final Action 5. Claims 1-7, 11-17, and 20-22 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Einarsson. 3 Id. at 5-6. Claims 18, 19, and 23 are rejected under 35 U.S.C. Â§ 103(a) over Einarsson. Id. at 8. DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference." In re Skvorecz, 580 3 US 7,867,286 B2 (issued Jan. 11, 2011) ("Einarsson"). 2 Appeal2017-008231 Application 14/150, 161 F.3d 1262, 1266 (Fed. Cir. 2009). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[O]bviousness requires a suggestion of all limitations in a claim." CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). When determining whether a claim is obvious, an Examiner must make "a searching comparison of the claimed invention - including all its limitations -with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995. "[D]ependent claims are nonobvious [or not anticipated] if the independent claims from which they depend are nonobvious [ or not anticipated]." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). ANTICIPATION AND OBVIOUSNESS The Examiner determined Einarsson expressly discloses the subject matter of claims 1-7, 11-17, and 20-22 and teaches and suggests the subject matter of the claims 18, 19, and 23. Final Action 6-8 and Answer 2-7 (collectively citing Einarsson 3:53-58, 3:63, Figs. 1-3). Of note, the Examiner identified Einarsson's feature 30 as the claimed "longitudinal slit having a circular aperture at each end and extending substantially parallel to the longitudinal axis." See Final Action 7; see also Answer 7. Exemplary of the Examiner's position on this claim element, the Examiner annotated Einarsson's Figure 3 by adding two lines, one dashed and illustrating the longitudinal axis of the respective shell and one solid and showing the 3 Appeal2017-008231 Application 14/150, 161 extension of what the Examiner identifies as a slit. We reproduce this annotated version of Einarsson's Figure 3 below: Annotated Figure 3 shows a shell 12 for a prosthesis system that has a ventilation feature 30, which is defined by a plurality of slots in a pattern. Einarsson 4:40-42. As noted above, the Examiner has drawn a dashed line down the length of the shell to indicate its longitudinal axis and a solid line intersecting the lower-most ventilation feature slot to indicate its extension relative to the longitudinal axis. The two drawn lines intersect at an approximately 30Â° angle. 4 Appeal2017-008231 Application 14/150, 161 Appellant argues Einarsson's slots/slits are not substantially parallel to the shell's longitudinal axis. Appeal Br. 4. We agree. None of the slots/slits 30 of Einarsson are close to being parallel to the shell's longitudinal axis, as illustrated by the Examiner's annotations in the figure above. Therefore, we find the Examiner has not established a prima facie case for anticipation or obviousness. DOUBLE PATENTING The Examiner has determined that the rejected claims constitute unpatentable variants over claims 1--4 of U.S. Patent 8,679,193. Final Action 5. Appellant presents no argument in rebuttal, but states "Applicant agrees that the current claims are broader than the claims in the cited U.S. Patent No. 8,679,193. Applicant will continue to pursue said claims and will take any action the examiner deems necessary once the current claims are allowed, including a terminal disclaimer." Appeal Br. 3. Therefore, we affirm this rejection. SUMMARY The non-statutory obviousness-type double patenting rejection is affirmed. The anticipation and the obviousness rejections are each reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 )(iv). AFFIRMED 5