Ex Parte Kutluhan

Patent Trial and Appeal BoardOct 19, 2017

11720719 (P.T.A.B. Oct. 19, 2017)

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. 11/720,719 06/01/2007 Ahmet Kutluhan PHDLl 169-001 2097 26948 7590 VENJURIS, P.C. 1938 E. OSBORN RD PHOENIX, AZ 85016-7234 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 10/23/2017 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): docketing @ venj uris. com vclmdocket @ venj uris. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AHMET KUTLUHAN Appeal 2015-007710 Application 11/720,7191 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ahmet Kutluhan (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Dec. 30, 2013, hereafter “Final Act.”) rejecting claims 1, 2, 4, 6, 7, 13, and 15—28.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellant’s Appeal Brief (hereafter “Br.”), filed April 2, 2015, the inventor, Ahmet Kutluhan, is the real party in interest. Br. 2. 2 Claims 3, 5, 8—12, and 14 are canceled. Br. 18—19 (Claims App.). Appeal 2015-007710 Application 11/720,719 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s “invention relates to a mastoid antral ventilation tube that aerates and drains the middle ear by the route of mastoid antrum.” Spec. 1,11. 4—5. Claims 1,17, and 27 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A mastoid antral ventilation tube comprising: an external cannula having a tab section, a neck section, a bend section and a shaft section, and an inner cannula having a thin and narrow canal with a syringe-adapted tip which remains outside an external ear canal for drug administrations and a drainage canal wherein the drainage canal allows for drainage and aspiration of mastoid antrum and wherein the thin and narrow canal and the drainage canal are adjacent to one another. REJECTION I. The Examiner rejected claims 1, 2, 6, 7, 13, 15—18, 20- 24, and 27 under 35 U.S.C. § 102(b) as being anticipated by Baran (US 5,964,223, issued Oct. 12, 1999, hereafter “Baran ’223”). II. The Examiner rejected claims 4 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Baran ’223 and Baran (US 5,642,730, issued July 1, 1997, hereafter “Baran ’730”). 2 Appeal 2015-007710 Application 11/720,719 III. The Examiner rejected claims 25, 26, and 28 under 35 U.S.C. § 103(a) as being unpatentable over Baran ’223. ANALYSIS Rejection I The Examiner finds that Baran ’223 discloses a device including, inter alia, an external cannula 10 having tab, neck, bend, and shaft portions, and an inner cannula 20 having a thin and narrow canal 33 with a syringe adapted tip 35 and a drainage canal 34. Final Act. 5—6 (citing Baran ’223, Figs. 1, 2a; Appendix of Non-Final Action, dated June 6, 2013). Appellant argues that Baran ’223 fails to disclose that tip 35 of lumen 33 connects to a syringe or that it is adapted to fit a syringe. Br. 12. In response, the Examiner takes the position that Appellant’s argument “relates to the intended use of the device.” Examiner’s Answer 2 (dated June 2, 2015, hereafter “Ans.”). According to the Examiner, “tip 35 is capable of receiving a syringe because there is an opening” and “[i]f the prior art structure is capable of performing the intended use, then it meets the claim.” Id. at 3. Our reviewing court has stated that the claim term “adapted to” “is frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ... [a] 1 though the phrase can also mean ‘capable of or ‘suitable for.’” In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). In this case, the Examiner has not explained adequately how tip 35 of Baran ’223 is “made to,” “designed to,” or “configured to” receive or fit a syringe. Baran ’223 specifically discloses gas orifice 36 of pressurized gas 3 Appeal 2015-007710 Application 11/720,719 lumen 34 directing pressurized gas across liquid orifice 35 to nebulize liquid medication flowing through liquid lumen 33. Baran ’223, col. 6,1. 64—col. 7,1. 7, Fig. 2A. Merely because liquid orifice 35 constitutes an opening does not mean that it is adapted to receive or fit a syringe, specifically, as opposed to any other structure fitted to or received by an opening. As liquid orifice 35 in the device of Baran ’223 allows liquid medicine to exit and interact with pressurized gas from gas orifice 36 to nebulize the liquid medicine, it is not clear how liquid orifice 35 would be adapted to receive or fit a syringe, which may interfere with the nebulizing process of the liquid medicine. Although we appreciate that liquid orifice 35 of Baran ’223 is adapted to receive or fit a porous or sponge-like plug, that does not mean it is adapted to also receive or fit a syringe, as such a determination requires speculation on the Examiner’s part. See id., col. 7,11. 8—12. A plug that allows liquid medicine to flow through has a different structure than a syringe, and the Examiner has not explained adequately how liquid orifice 35 Baran ’223 is capable of or is configured to receive a syringe merely because it is capable of or is configured to receive a plug. Accordingly, we agree with Appellant that liquid orifice 35 of Baran ’223 does not constitute a “syringe-adapted-tip,” as called for by each of independent claims 1, 17, and 27. See Br. 12. In conclusion, for the foregoing reasons, we do not sustain the rejection of claims 1, 2, 6, 7, 13, 15—18, 20—24, and 27 under 35 U.S.C. § 102(b) as anticipated by Baran ’223. 4 Appeal 2015-007710 Application 11/720,719 Rejections II and III The Examiner’s modification of Baran ’223 and reliance on the disclosure of Baran ’730 does not remedy the deficiencies of Baran ’223 discussed supra. See Final Act. 7. Therefore, for the same reasons as discussed above, we also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 4 and 19 as unpatentable over Baran ’223 and Baran ’730 and of claims 25, 26, and 28 as unpatentable over Baran ’223. SUMMARY The Examiner’s decision to reject claims 1, 2, 4, 6, 7, 13, and 15—28 under 35 U.S.C. §§ 102 and 103 is reversed. REVERSED 5