Ex Parte FieldDownload PDFPatent Trial and Appeal BoardMar 29, 201713064382 (P.T.A.B. Mar. 29, 2017) Copy Citation 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. 13/064,382 03/22/2011 Stephen James Field 44313-0002002 1169 26161 7590 03/31/2017 FISH & RICHARDSON P.C. (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER MENDOZA, MICHAEL G ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN JAMES FIELD1 Appeal 2015-007566 Application 13/064,382 Technology Center 3700 Before DONALD E. ADAMS, ERIC B. GRIMES, and RICHARD M. LEBOVITZ, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a medical device, which have been rejected as anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. STATEMENT OF THE CASE Claims 19-30 and 32^42 are on appeal. Claims 19, 33, 34, 36, and 37 are the only independent claims and read as follows (emphasis added): 1 Appellant identifies the Real Party in Interest as Smiths Group PLC. (Appeal Br. 3.) Appeal 2015-007566 Application 13/064,382 19. A medico-surgical device having a shaft consisting of a plastics material including gas bubbles in said plastics material through the major part of the thickness of the shaft in at least a part of the shaft, wherein said gas bubbles are selected to increase the visibility of the device under ultrasound imaging, and wherein the visibility of the device under ultrasound imaging is increased solely by the presence of said gas bubbles in said shaft. 33. A medico-surgical device having a tubular shaft with an outer surface and a bore defined by an inner surface of the shaft, said shaft consisting of a plastics material including gas bubbles in said plastics material extending through the major part of the thickness of the shaft from said outer surface to said inner surface in at least a part of the shaft, wherein said gas bubbles are selected to increase the visibility of the device under ultrasound imaging substantially solely by reflection of ultrasound energy at the interface with the gas in the bubbles. 34. An embryo replacement catheter comprising a hub and a shaft, wherein said shaft consists of a wall extruded of a transparent plastics material incorporating gas bubbles within its thickness, said shaft having a bore extending therethrough, wherein the density and size of said bubbles is selected to increase visibility of the catheter under ultrasound imaging whilst enabling an embryo within the catheter to be viewed by the eye. 36. A method of making a medico-surgical device having a shaft consisting of a wall of a plastics material containing a chemical foaming agent such as to form gas bubbles through a major part of the thickness of the wall sufficient to increase the visibility of said device under ultrasound observation. 37. A medico-surgical device visible under ultrasound imaging in the shape of an elongate hollow shaft consisting of an extruded transparent plastics material having only gas bubbles incorporated therein, the density and size of the bubbles selected to enhance the visibility of the device under the ultrasound imaging. 2 Appeal 2015-007566 Application 13/064,382 The claims stand rejected as follows: Claims 19-28 and 33 under 35 U.S.C. § 102(b) as anticipated by Bosley2 (Final Act.3 4); Claims 29 and 30 under 35 U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a) as obvious based on, Bosley (Final Act. 5); Claims 32, 34, 35, and 37^42 under 35 U.S.C. § 103 as obvious based on Bosley and Sheridan4 (Final Act. 6); and Claim 36 under 35 U.S.C. § 103(a) as obvious based on Bosley and Kobayashi5 (Final Act. 6). I All of the claims on appeal are directed to a device having a shaft “consisting of’ or that “consists of’ a wall of a plastics material and gas bubbles. “[Cjlosed transition phrases such as ‘consisting of are understood to exclude any elements, steps, or ingredients not specified in the claim.” AFGIndus., Inc. v. CardinalIG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001). Thus, the claimed devices are limited to those that contain only a plastics material and gas bubbles in the wall of their shaft. The Examiner has rejected claims 1—28 and 33 as anticipated by Bosley. The Examiner finds that Bosley discloses all of the limitations of the claimed device, including “a shaft consisting of plastics material. . . 2 Bosley, US 5,289,831, issued March 1, 1994 3 Office Action mailed Sept. 15, 2014. 4 Sheridan et al., US 3,605,750, issued Sept. 20, 1971. 5 Kobayashi et al., US 5,646,194, issued July 8, 1997. 3 Appeal 2015-007566 Application 13/064,382 including gas bubbles (Bosley discloses hollow microspheres, because the microspheres 127 are hollow they fit within the definition of a ‘bubble’. Bosley further states that gas alone can be used as an alternative to the microspheres in col. 8, lines 23-32).” (Final Act. 4.) The Examiner also finds that the gas bubbles “increase the visibility of the shaft under ultrasound imaging, and wherein the visibility of the shaft under ultrasound imaging is increased solely b[y] the presence of sai[d] gas bubbles in the shaft (col. 7, lines 46-52).” {Id. at 4—5.) Appellant argues that “the interpretation by the examiner that a hollow microsphere is the same as a gas bubble is misplaced insofar as a hollow microsphere must have a wall that is made of a hard material, which in turn makes the glass microsphere a thing that is made of a hard material.” (Appeal Br. 15.) We agree with Appellant that Bosley’s disclosure does not support the Examiner’s finding that its device has a wall that consists of a plastics material and gas bubbles. Bosley discloses a medical device (e.g., a catheter) that is visible under ultrasound imaging and has a shaft “with discrete sound reflective particles 127 embedded in the matrix material. Preferably, matrix material 125 is a plastic.” (Bosley 7:39-52.) “Particles 127 are preferably made of a hard material” and “glass microspheres are very suitable.” {Id. at 7:61—65.) “[A] partially spherical surface may be provided on the outside and/or the inside of particles 127, as for example a particle with a hollow spherical space therein.” {Id. at 8:5—8.) Bosley states that “[additionally, liquids, gases, gels, micro- encapsulants, and/or coacervates suspended in the matrix may alternatively 4 Appeal 2015-007566 Application 13/064,382 be used either alone or in combination, so long as they form a composite with ultrasonically reflective particles in the matrix.” {Id. at 8:23—27.) Thus, Bosley discloses that including solid or hollow particles in the wall of its device increases its visibility under ultrasound observation, and that gases can be included in the matrix “so long as they form a composite with ultrasonically reflective particles in the matrix.” {Id. at 8:26—27.) Bosley does not disclose including gas bubbles, by themselves, in the plastic wall of its device. As Appellant argues (Appeal Br. 15), hollow particles are not gas bubbles; they are particles with gas inside them. Thus, Bosley does not disclose the limitation of the independent claims requiring a shaft “consisting of’ or that “consists of’ a wall of a plastics material and gas bubbles. Bosley therefore does not anticipate the rejected claims. II The Examiner has rejected dependent claims 29 and 30 as anticipated by, or alternatively as obvious based on, Bosley. The Examiner has also rejected claims 32, 34, 35, and 36-42 as obvious based on Bosley and either Sheridan or Kobayashi. Each of these rejections, however, is based on the Examiner’s finding that Bosley discloses a device or method meeting all of the limitations of the independent claims. {See Final Act. 6—7.) For the reasons discussed above, the evidence does not support that finding. The Examiner has not pointed to evidence or provided sound reasoning to support a conclusion that the disputed limitation would have been obvious based on any of the cited references. We therefore reverse the remaining rejections. 5 Appeal 2015-007566 Application 13/064,382 III Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new ground of rejection: Claim 36 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claim 36 is directed to a “method of making a medico-surgical device,” but does not recite any active steps. See Kaneka Corp. v. Xiamen Kingdomway Group Co., 790 F.3d 1298, 1305 (Fed. Cir. 2015) (“A process is defined as ‘an act, or a series of acts.’ Gottschalk v. Benson, 409 U.S. 63, 70, 93 S. Ct. 253, 34 L.Ed.2d 273 (1972); In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002) (‘[A] process . . . consists of a series of acts or steps. ... I consists of doing something, and therefore has to be carried out or performed.’).”). Because claim 36 is directed to a process but does not set out what step(s) that process includes, it “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). See also Ex parte Erlich, 3 USPQ2d 1011, 1017 (BPAI 1987) (“[A] method claim should at least recite a positive, active step(s) so that the claim will ‘set out and circumscribe a particular area with a reasonable degree of precision and particularity,’ In re Moore, and make it clear what subject matter these claims encompass, In re Hammack, as well as making clear the subject matter from which others would be excluded, In re Hammack, supra. Without reciting any active, positive steps, claims 6 and 7 fail to achieve these purposes.”). 6 Appeal 2015-007566 Application 13/064,382 SUMMARY We reverse all of the rejections on appeal. We enter a new ground of rejection of claim 36. TIME PERIOD FOR RESPONSE 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, the 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 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. 7 Appeal 2015-007566 Application 13/064,382 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation