Ex Parte Journey et al

Patent Trial and Appeal Board

Jan 31, 2019

13351836 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/351,836 01/17/2012
23517 7590 02/04/2019
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA A VENUE, N.W.
WASHINGTON, DC 20004
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michelle Journey
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.
RPN-019/7306112001 9023
EXAMINER
TON, MARTIN TRUYEN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
kcatalano@morganlewis.com
patents@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE JOURNEY, SEAN CAFFEY,
MARK RUMA YUN, and JOHN HUCULAK
Appeal 2018-003175
Application 13/351,836
Technology Center 3700
Before JENNIFER D. BAHR, DANIELS. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michelle Journey et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision, set forth in the Non-Final Action dated March
30, 2017 (hereinafter "Non-Final Action" or "Non-Final Act."), rejecting
claims 1-3, 6-15, and 18-27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2018-003175
Application 13/351,836
THE CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Appeal Br. 13, 15-16 (Claims
App.). Claim 1, reproduced below with limitations pertinent to this appeal
italicized for emphasis, is illustrative of the claimed subject matter.
1. An instrument facilitating surgical implantation of an
implantable device having two opposed surface portions at least
one of which has a curved surface contour, the instrument
compnsmg:
first and second forceps arms each having first and
second ends, the arms being joined at the first ends thereof and
arranged to oppose but permit resisted compression of the arms
toward each other into a closed position from an open position,
wherein compression of the arms toward each other into the
closed position forces the second ends of the arms toward each
other;
a first-arm head member, having a first length defined by
a distal end and a proximal end thereof, located at the second
end of the first arm; and
a second-arm head member, having a second length
defined by a distal end and a proximal end thereof, located at
the second end of the second arm,
wherein:
(i) the head members are flared outwardly so as to be
angled away from each other along the entire first and second
lengths thereof at least in the open position relative to an axis
running between and coplanar with the arms,
(ii) each of the head members defines an interior
surface, the interior surfaces being opposed to each other and
differently shaped to releasably engage the implantable device
without damage thereto upon compression of the arms into the
closed position,
(iii) the interior surface of at least one of the head
members has a curved portion complementary to the curved
surface contour of the implantable device whereby closure of
the arms causes the head members to opposedly engage the
surface contour of the implantable device to prevent release
thereof from the instrument in the closed position, and
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Application 13/351,836
(iv) the differently shaped interior surfaces mate with
different surface contours of the implantable device.
Appeal Br. 13 (Claims App.). Claim 18 also contains the italicized
language. Id. at 16.
REJECTIONS
I. Claims 1, 7-10, and 19-22 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Beckman (US 2008/0200923 Al, published
Aug. 21, 2008) and Noniewicz (US 6,708,587 Bl, issued Mar. 23,
2004).
II. Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, Noniewicz, and McDonald
(US 6,248,123 B 1, issued June 19, 2001 ).
III. Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Beckman, Noniewicz, and Conston (US 2006/0149194 Al,
published July 6, 2006).
IV. Claims 11 and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, Noniewicz, and Tiedemann
(US 2003/0233119 Al, published Dec. 18, 2003). 1
V. Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, N oniewicz, Tiedemann, and Lee
(US 2010/0331770 Al, published Dec. 30, 2010).
1 The Examiner cites Conston in the statement of the rejection, but relies on
Tiedemann (and not on Conston) in the detailed explanation of the rejection.
See Non-Final Act. 9-10.
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Application 13/351,836
VI. Claims 18 and 23-25 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, Noniewicz, and Avery (US 6,251,090
Bl, issued June 26, 2001).
VII. Claims 15 and 26 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, Noniewicz, and Nesbitt
(US 7,160,297 B2, issued Jan. 9, 2007).
VIII. Claims 15 and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Beckman, Noniewicz, and Green (US 5,387,196,
issued Feb. 7, 1995).
DISCUSSION
Independent claims 1 and 18 both recite that "the head members are
flared outwardly so as to be angled away from each other along the entire
first and second lengths thereof at least in the open position relative to an
axis running between and coplanar with the arms." Appeal Br. 13, 15-16
(Claims App.). We understand this limitation to mean that the head
members are flared outwardly and angled away from each other along each
of their entire lengths, from the proximal end to the distal end thereof, along
the axial, or length, direction, at least with the arms in the open position,
such that they form an outwardly flared opening between the head members
to receive a device to be gripped there between. Although at least one of the
head members has a curved surface, which may even curve toward the other
head member along a direction normal to the axial or length direction, such
as the curved lateral ends of head member 11 Oa and 11 Ob depicted in
Appellants' Figures 1 and 2, for example, the head members flare outwardly
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Application 13/351,836
and are angled away from each other along the axial or length direction
along the entire lengths thereof.
The Examiner finds that Beckman's head members ( distal ends 206,
212 of arms 202, 208) are not "flared outwardly so as to be angled away
from each other along the entire first and second lengths thereof at least in
the open position relative to an axis running between the coplanar arms."
Non-Final Act. 4. As shown in Figures 11 and 12 of Beckman, first side jaw
214 and second side jaw 218 ofBeckman's head members curve, or are
angled, inwardly toward each other along the axial or length direction.
In order to make up for this deficiency in Beckman, the Examiner
determines it would have been obvious to modify Beckman's head members
to "be pivotably attached to the arms," as taught by Noniewicz, "to allow for
[the] head members to be placed into a flush abutment against different
implants for a firmer hold." Id. at 4--5 (citing Noniewicz, Fig. 2; 5:32--46).
According to the Examiner, this modification would "mak[ e] the head
members [of Beckman] capable of being flared outwardly so as to be angled
away from each other along the entire first and second lengths thereof at
least in the open position relative to an axis running between and coplanar
with the arms," as recited in claims 1 and 18. Id. at 5.
Appellants argue, and we agree, that it would not have been obvious
to modify Beckman's side jaws to be pivotably attached to the arms, as
proposed by the Examiner, because this would impair the ability of
Beckman's jaws to securely hold the opthalmic shunt. Appeal Br. 9-10.
As illustrated in Beckman's Figures 12 and 13, Beckman's side jaws
214 and 218 and upper prong 216 are specifically designed to grip shunt
222, comprising body 220 and head 224, and insert it through an incision, as
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Application 13/351,836
described in paragraphs 85 and 86, "similar to inserting a button into a
button hole." Modifying Beckman's head members ( distal ends 206, 212) so
as to attach them pivotably to arms 202 and 208 would result in a less secure
hold, not a firmer hold, on the shunt, and would make the insertion process
more difficult.
Further, as Appellants point out, even if Beckman's head members
(distal ends 206,212) were modified so as to attach them pivotably to arms
202 and 208, as proposed by the Examiner, they would still be curved
inwardly, toward one another at side jaws 214 and 218, and, thus, would not
be "flared outwardly so as to be angled away from each other along the
entire first and second lengths thereof at least in the open position relative to
an axis running between and coplanar with the arms," as recited in claims 1
and 18. See Reply Br. 3.
The Examiner cites additional references (McDonald, Conston,
Tiedemann, Lee, Avery, Nesbitt, and Green) in addressing additional
limitations of claims 2, 3, 6, 11-15, and 23-27. See Non-Final Act. 7-17.
However, the Examiner's application of these references does not make up
for the aforementioned deficiency in the combination of Beckman and
Noniewicz. See id.
For the above reasons, the Examiner fails to establish that the subject
matter of claims 1 and 18, or their dependent claims 2, 3, 6-15, and 19-27,
would have been obvious. Accordingly, we do not sustain any of the
rejections of these claims before us in this appeal.
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DECISION
The Examiner's decision rejecting claims 1-3, 6-15, and 18-27 is
reversed.
REVERSED
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