Ex Parte O et alDownload PDFPatent Trial and Appeal BoardApr 18, 201312004657 (P.T.A.B. Apr. 18, 2013) Copy Citation 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: Appeal 2011-011880 Application 12/004,657 2 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). Appeal 2011-011880 Application 12/004,657 3 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). Appeal 2011-011880 Application 12/004,657 4 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 Appeal 2011-011880 Application 12/004,657 5 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 Appeal 2011-011880 Application 12/004,657 6 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 Appeal 2011-011880 Application 12/004,657 7 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. Appeal 2011-011880 Application 12/004,657 8 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 dm Copy with citationCopy as parenthetical citation