Ex Parte O et al

Patent Trial and Appeal Board

Apr 18, 2013

12004657 (P.T.A.B. Apr. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/004,657 12/21/2007 Nicole Sams O'Brien 64123812US01 2462
23556 7590 04/18/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
THOMAS, JR, BRADLEY G
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
04/18/2013 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 NICOLE SAMS O’BRIEN,
DONALD JAY McMICHAEL, and JOHN KENNETH BACON
__________

Appeal 2011-011880
Application 12/004,657
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for covering a medical device. The Examiner has rejected the
claims as anticipated or obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Claims 1-20 are pending and on appeal (App. Br. 2). Claims 1 and 4
are illustrative and read as follows:
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1. An apparatus for covering an intracorporeal medical device having
a top surface[,] a first side surface, a second side surface, a bottom surface, a
tether, a central opening, and a shaft, the apparatus comprising:
an anchoring body having a top surface, a first side surface, and a
second side surface, the anchoring body adapted to be in frictional
communication with a top surface, a first side surface, and a second side
surface of an intracorporeal medical device to cover the top surface, the first
side surface, and the second side surface of the intracorporeal medical
device and, upon covering the medical device, to have substantially the same
shape as the medical device, wherein the anchoring body defines an opening
for insertion of a tether into a central opening of the intracorporeal medical
device;
a hinged cover connected to the anchoring body by a connector, the
hinged cover being adapted to be in communication with and surround the
tether so that the tether and the central opening are not exposed to the
outside environment after insertion of the tether into the central opening of
the medical device.
4. The apparatus of claim 1, wherein the apparatus comprises at least
one image with which the patient has favorable psychological associations,
the image being adapted to encourage a patient to use the intracorporeal
medical device and reduce fear regarding the use of the intracorporeal
medical device.
Claims 1-3 and 7-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Stern et al. (US 5,549,657, Aug. 27, 1996) (Ans. 3).
Claims 4-6 and 12-15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Stern in view of Palermo (US Des. 368,526, Apr. 2, 1996)
(Ans. 5).
Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as obvious over
Stern in view of Palermo and Gobel (US 2008/0121553 A1, May 29, 2008)
(Ans. 7).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Stern in view of Palermo, Gobel, and Sullivan (US 6,586,651 B2, Jul. 1,
2003) (Ans. 9).
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I
The Examiner finds:
Stern et al. discloses an apparatus (cover 18, Fig.1) for covering
an intracorporeal medical device (valve assembly 14, Fig1), the
apparatus comprising: an anchoring body (body portion 50,
Fig.1) having a top surface, a first side surface, and a second
side surface, the anchoring body adapted to be in frictional
communication with a top surface, a first side surface, and a
second side surface of an intracorporeal medical device to cover
the top surface, the first side surface, and the second side
surface of the intracorporeal medical device (Figs.3 and 4) and,
upon covering the medical device, to have substantially the
same shape as the medical device (Fig.5), wherein the
anchoring body defines an opening (Fig.1) capable of insertion
of a tether into a central opening of the intracorporeal medical
device; a hinged cover (cap 52, Fig.1) connected to the
anchoring body by a connector (strip 54, Fig.1), the hinged
cover capable of being adapted to be in communication with
and surround the tether so that the tether and the central
opening are not exposed to the outside environment after
insertion of the tether into the central opening of the medical
device (Fig.4).
(Ans. 3-4.)
Principles of Law
“[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). “If the preamble adds no limitations to those in the body of the
claim, the preamble is not itself a claim limitation and is irrelevant to proper
construction of the claim.” IMS Technology, Inc. v. Haas Automation, Inc.,
206 F.3d 1422, 1434 (Fed. Cir. 2000).
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Analysis
Claim 1 is directed to an “apparatus for covering an intracorporeal
medical device having” various features, including a tether. The body of
claim 1 recites that an “anchoring body defines an opening for insertion of a
tether into a central opening of the intracorporeal medical device” and a
hinged cover is “adapted to be in communication with and surround the
tether so that the tether . . . [is] not exposed to the outside environment after
insertion of the tether into the central opening of the medical device.”
However, the apparatus of claim 1 does not itself require a tether.
Therefore, we agree with the Examiner that it was proper to interpret claim 1
to include an apparatus for covering a medical device that is capable of
having a tether inserted into its central opening such that the tether would
not be exposed to the outside environment (Ans. 3-4). In view of this claim
interpretation, we conclude that the Examiner has set forth a prima facie case
of anticipation.
Appellants argue, however, that Stern “cannot anticipate the present
invention at least because the cover (18) disclosed by Stern et al. cannot
simultaneously be two different things; namely (i) a component of a medical
device; and (ii) a separate cover for the medical device of which it is a
component” (App. Br. 9). However, the Examiner is not relying on cover 18
to be part of the medical device, instead indicating that the medical device is
“represented by the valve assembly 14, the clamp 16 and the gastronomy
feeding tube 10” (Ans. 9). In addition, although cover 18 may enhance
Stern’s device, Appellants’ arguments do not persuade us that the valve
assembly 14, the clamp 16, and the feeding tube 10 cannot together be
considered an intracorporeal medical device. The difference between the
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covering apparatus of claim 1 and Stern does not reside in the covering
apparatus being claimed, but rather exists in the unclaimed medical device to
which the covering apparatus of claim 1 is being attached. The difference
between Stern’s cover and the cover of claim 1 is a difference in function,
not a difference in structure.
Appellants also argue that “the cover (18) of Stern et al. cannot by
itself function as both the ‘tether’ feature of the underlying medical device
and as an ‘apparatus for covering an intracorporeal medical device having
. . . a tether . . .’ as recited in claim 1” (App. Br. 10). However, we do not
agree that the Examiner is relying on Stern to teach a tether (Ans. 10). On
the contrary, the Examiner finds that “cover 18 is capable of covering a
medical device as well as a tether feature of the underlying medical device”
(id.).
In addition, Appellants argue that Stern fails to teach an apparatus
“having an anchoring body that is adapted, upon covering a medical device,
to have substantially the same shape as the medical device” (App. Br. 13).
The Examiner finds:
The cover 18 is shown in figure 1 to be a rounded rectangular
shape. The rounded rectangular shaped cover is placed over the
assembled valve (14) and clamp (16) as seen in figures 4 and 5.
Figure 5 discloses the cover portion 50 placed on the valve and
clamp assembly of the device and being substantially the same
rounded rectangular shape as the device in which it is covering.
(Ans. 10.) We conclude that the Examiner has the better position.
Conclusion
The evidence supports the Examiner’s conclusion that Stern
anticipates claim 1. We therefore affirm the anticipation rejection of
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claim 1. Claims 2, 3, and 7-11 are not separately argued and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

II
In rejecting claim 4, inter alia, the Examiner relies on Stern as
discussed above (Ans. 5). However, the Examiner acknowledges that Stern
“does not disclose wherein the apparatus comprises at least one image with
which the patient has favorable psychological associations, the image being
adapted to encourage a patient to use the intracorporeal medical device and
reduce fear regarding the use of the intracorporeal medical device” (id.).
The Examiner relies on Palermo for teaching an adhesive bandage
comprising “at least one image (Fig.1)” (id.). The Examiner concludes:
It would have been obvious to one skilled in the art at the time
the invention was made to modify Stern et al.’s device to
include at least one image with which the patient has favorable
psychological associations, the image being adapted to
encourage a patient to use the intracorporeal medical device and
reduce fear regarding the use of the intracorporeal medical
device; . . . as taught and suggested by Palmero [sic], for the
purpose of providing a feature of the medical device that the
patient would find pleasant or appealing.
(Id. at 5-6.)
Analysis
Appellants traverse this rejection for the reasons discussed above in
context of the anticipation rejection (App. Br. 16-17). However, we are not
persuaded by these arguments for the reasons discussed above.
Appellants also argue:
[T]he combination of Stern et al. with Palermo would render
the prior art invention being modified unsuitable for its
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intended purpose. In particular, the device of Stern et al. has a
valve assembly covered by a valve cap which must be accessed
to connect a feeding tube. Placing an adhesive bandage over
the valve cap is redundant and generates an additional and
unnecessary step each time access to the valve assembly is
desired. Moreover, the use of an adhesive bandage over the
medical device creates potential complications from unsuitable
build-up of adhesive from the bandage.
(App. Br. 18.) However, the Examiner states that it is not his “intention to
place the bandage onto the cover of Stern et al. but to place an ornamental
design that could be of various designs onto the cover of the medical device
to improve the physical and psychological environment of the patient”
(Ans. 11). We agree with the Examiner’s position.
Conclusion
The evidence supports the Examiner’s conclusion that Stern and
Palermo suggest the apparatus of claim 4. We therefore affirm the
obviousness rejection of claim 4. Claims 5, 6, and 12-15 are not separately
argued and therefore fall with claim 4. 37 C.F.R. § 41.37(c)(1)(vii).

III
In rejecting claims 16-20, the Examiner relies on Stern and Palermo as
discussed above (Ans. 7-9). The Examiner additionally relies on Gobel
and/or Sullivan for teaching features of these dependent claims (id.).
Appellants argue that Gobel and Sullivan fail to overcome the deficiencies
of Stern and Palermo (App. Br. 18-19). However, we are not persuaded by
these arguments for the reasons discussed above. We therefore affirm the
obviousness rejections of claims 16-20.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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