Ex Parte Barak et al

Patent Trial and Appeal BoardNov 26, 2012

11303790 (P.T.A.B. Nov. 26, 2012)

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. 11/303,790 12/16/2005 Jakob Barak MCS.4873CIPCON2 8035 55740 7590 11/27/2012 Gesmer Updegrove LLP 40 Broad Street BOSTON, MA 02109 EXAMINER MATTER, KRISTEN CLARETTE ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 11/27/2012 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 JAKOB BARAK, YOAV NAVEH, and SHARON EHRLICH ____________________ Appeal 2010-010746 Application 11/303,790 Technology Center 3700 ____________________ Before: LINDA E. HORNER, SCOTT E. KAMHOLZ, and MITCHELL G. WEATHERLY, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010746 Application 11/303,790 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 1-52. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to “systems for applying compressive pressures against a patient’s limb.” Spec. 1, para. [0002]. Claim 43, reproduced below, is illustrative of the claimed subject matter: 43. A sleeve for applying pressure to a body limb having a primary axis, comprising: an inflatable cell including compartmental bonds to form at least two intra-cell compartments; said intra-cell compartments being confluent to allow for confluent airflow between adjacent intra-cell compartments within said inflatable cell, adjacent intra-cell compartments being spatially fixed relative to each other, such that upon inflation of said inflatable cell, said inflatable cell becomes circumferentially constricted; said compartmental bonds, during inflation, being drawn towards the center point of said intra-cell compartments to decrease a distance therebetween, so as to provide for circumferential constriction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ericson Wright Rosenberg US 3,424,151 US 5,172,689 US 5,713,954 Jan. 28, 1969 Dec. 22, 1992 Feb. 3, 1998 Appeal 2010-010746 Application 11/303,790 3 REJECTIONS The Examiner made the following rejections: Claims 1, 5, 6, 13, and 39-52 are rejected under 35 U.S.C. § 102(b) as being anticipated by Ericson. Ans. 4. Claims 2, 7, 14-20, 24-26, 37, and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ericson and Rosenberg. Ans. 5. Claims 3, 4, and 8-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ericson and Wright. Ans. 7. Claims 21-23 and 27-36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ericson, Rosenberg, and Wright. Ans. 8. Appellants seek our review of only the first two rejections listed above. App. Br. 12. Appellants indicate that the claims rejected in the second two rejections listed above, all of which claims are dependent, “stand and fall with the patentability” of the independent claims. Id. at 85. ANALYSIS In response to the Examiner’s finding that Ericson anticipates claims 1, 5, 6, 13, and 39-52 (Ans. 4) and, when combined with Rosenberg, renders unpatentable claims 2, 7, 14-20, 24-26, 37, and 38 (Ans. 5), Appellants present essentially the same argument for every independent claim: that Ericson does not disclose the claim limitation “said compartmental bonds, during inflation, being drawn towards the center point of said intra-cell compartments to decrease a distance therebetween, so as to provide for circumferential constriction.”1 In particular, Appellants argue that Ericson’s 1 Claim 41, unlike all other independent claims, recites “said compartmental bonds, during inflation, being drawn towards each other to decrease a Appeal 2010-010746 Application 11/303,790 4 figures show that outer wall 22 straightens when the sleeve is inflated, and that seals 26 and 28 must therefore move apart from one another. App. Br. 14-17; Reply Br. 3-6. Appellants also argue that Ericson “provides no guidance as to the direction of movement of the compartmental bonds (50, 52, 54)” and that “if Ericson teaches that the compartmental bonds (50, 52, and 54) are drawn together, the compartmental bonds (50, 52, and 54) would be drawn away from the center point of the compartment during inflation,” which is contrary to the claim limitation at issue. App. Br. 17-20; Reply Br. 6-9. In response, the Examiner notes that Figures 10 and 12 of Ericson show that “the bonds are in fact drawn towards each other in order to provide compression to the limb.” Ans. 9. The Examiner notes Ericson’s disclosure at column 3, line 33 that Ericson’s device is for compressing a limb, and so the bonds must necessarily move closer together to have this effect. Ans. 10. The Examiner also explains that Rosenberg, although not cited in the anticipation rejections for this teaching, plainly demonstrates that: an inflatable cell having N number of intra-cell compartments, each intra-cell compartment having a radius r would have a center point circumference of Nr when the cell is deflated and a center point circumference of 2Nr when the cell is inflated, and that the compartmental bonds would be drawn towards each other to decrease a distance there between and towards the center point of the intra-cell compartments to decrease a distance therebetween so as to provide for circumferential constriction (i.e., and therefore compress an organ). distance therebetween.” Appellants’ argument concerning claim 41 is substantially similar to that given for all other independent claims. App. Br. 33-38; Reply Br. 23-29. Appeal 2010-010746 Application 11/303,790 5 Ans. 11 (referring to Rosenberg Figs. 1A, 1B, and 3B, and col. 4, l. 66 to col. 5, l. 42). Appellants’ arguments do not apprise us of error in the rejection. They are premised on a narrow consideration of precise dimensions in Ericson’s figures, without reference to Ericson’s disclosure or to the other evidence of record. The Examiner’s analysis and discussion of Ericson and Rosenberg, which we adopt as our own, establish that the compartmental bonds of a device having the presently claimed structure would necessarily be drawn toward each other, or towards a center point of the compartments, to decrease a distance therebetween. Considering the full record before us, we find that a preponderance of the evidence supports the Examiner’s findings. Although Appellants purport to argue claims separately, they make no arguments for separate patentability of any claim. We therefore affirm the rejection of each claim for reasons similar to those given above. DECISION For the above reasons, the Examiner’s decision to reject claims 1-52 is AFFIRMED. 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 Appeal 2010-010746 Application 11/303,790 6 hh