Ex Parte Pahuja et al

Patent Trial and Appeal Board

Jun 30, 2017

13480524 (P.T.A.B. Jun. 30, 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.
13/480,524 05/25/2012 Deepak Pahuja Aerolib-1201 9125
36787 7590
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
07/05/2017 EXAMINER
KREMER, MATTHEW
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
patents @ BLKLawGroup.com
cbelleci @ BLKLawGroup .com
blynn @ BLKLawGroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEPAK PAHUJA and RYAN SCOTT BOOKHAMER
Appeal 2016-002725
Application 13/480,5241
Technology Center 3700
Before ULRIKE W. JENKS, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an ear
curette, which have been rejected as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ invention is directed to a curette with specialized tip
configurations.
1 Appellants identify inventor Deepak Pahuja as the Real Party in Interest.
(Appeal Br. 3.)
Appeal 2016-002725
Application 13/480,524
Claims 1—3, 5, 8, 9, 13—15, 17, 21, 26, 28, 32, and 33 are on appeal.2
Claims 1 and 26 are representative and read as follows:
1. An ear curette comprising:
a central handle portion;
a first tip extending from one end of the handle portion
and including a base coupled to the handle and an array of at
least three projections extending from the base wherein a
proximal end of each projection extends from a common base
plane on a surface of the base, and wherein a shape of the array
conforms to a shape of at least a portion of a periphery of the
base; and
a second tip extending from an opposed end of the handle
portion and including a blade member having a first lateral
scraping edge on one edge of the blade member positioned
adjacent a concave surface of the blade member, and a second
lateral scraping edge on an opposed edge of the blade member.
(Appeal Br. 26.)
26. An ear curette comprising a handle portion and at least one
operative tip extending from one end of the handle portion and
including a sequence of spaced, visible measurement indicia on
the at least one tip, configured to provide an operator with a
visual indication of a depth of operation of the associated tip in
a patient's ear wherein the spaced, visible measurement indicia
includes at least one of i) evenly spaced unit gradation indicia
and evenly spaced subunit gradations between the unit
gradation indicia, ii) alpha-numerical indicia indicative of the
depth of operation of the associated tip in the patient’s ear, and
iii) a spectrum of colors that varies in accordance with the depth
of operation of the associated tip in the patient's ear.
(Id. at 28.)
2 Claims 11, 24, and 27 are also pending, but stand withdrawn from
consideration. (Id. at 5.)
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Application 13/480,524
The following grounds of rejection by the Examiner are before us on
review:
Claims 1,13, and 14 under 35 U.S.C. § 102(b) as anticipated over
Crocy.3
Claims 1—3 and 5 under 35 U.S.C. § 102(b) as anticipated by Olson.4
Claims 8, 9, 21, and 26 under 35 U.S.C. § 103 as unpatentable over
Crocy and Nakatani.5
Claims 8, 9, 26, 28, and 33 under 35 U.S.C. § 103 as unpatentable
over Olson and Nakatani.
Claims 14, 15, and 17 under 35 U.S.C. § 103 as unpatentable over
Olson and Crocy.
Claim 21 under 35 U.S.C. § 103 as unpatentable over Olson, Crocy,
and Nakatani.
Claim 32 under 35 U.S.C. § 103 as unpatentable over Olson,
Nakatani, and Crocy.
DISCUSSION
Anticipation by Crocy
The Examiner finds that Crocy teaches an ear curette as claimed in
independent claims 1 and 14. In particular, the Examiner contends that the
bulbous projection extending from handle 2 includes an array of projections
10 thereon and that at least three of the projections 10 extend from the base
of the bulbous projection. (Final Action 3.) The Examiner further contends
3 Crocy, FR 2,848,814, published June 25, 2004.
4 Olson, US 2005/0096678 Al, published May 5, 2005.
5 Nakatani et al., US 6,522,912 Bl, issued Feb. 18, 2003.
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Application 13/480,524
that the base of the bulbous projection is the lower portion of the bulbous
projection and that there are a variety of vertical and horizontal “common
base plane[s]” that exist along the bulbous surface from which a proximal
end of the at least three projections that form the array extends, where the
planes extend through the bulbous base. (Id. )
The Examiner further finds that Crocy includes a second tip extending
opposite the first bulbous projection that includes a blade member that has a
first lateral scraping edge 8 that is positioned adjacent a concave surface of
the blade member and a second lateral scraping edge on an opposed edge of
the blade member. (Id. at 3—4.)
We disagree with the Examiner’s factual finding concerning Crocy’s
projections and the claimed extension of the proximal end of the projections
that make up the array. As Appellants point out, there are not at least three
projections of Crocy whose proximal ends extend from a common base
plane on a surface of the base. (Appeal Br. 11—12; Reply Br. 1—3.) Because
we disagree with the Examiner’s findings concerning this end of the ear
curette, we need not and do not address the arguments concerning the
opposing end of the ear curette.
The Examiner contends that claims 1 and 14 do not require that the
surface of the base from which the projections extend is flat since the term
“flat” is not found in the claim language. (Ans. 14.) The Examiner also
contends that because the projections of Crocy are conical in shape, the
thicker base portion of the projection can be considered to extend from the
common base plane while the tip of the projection would lie within the
plane. (Ans. 16.) We disagree with the Examiner on both points.
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Application 13/480,524
As Appellants explain, a plane is a flat surface. (Reply Br. 12.)
Claims 1 and 14 require that the projections of the array “extend[] from a
common base plane on a surface of the base.” Thus, regardless of the fact
that the term “flat” does not literally appear in the claim, it is an element of
that claim stemming from the fact that the extension must be “from a
common base plane on a surface of the base.” (Claim 1 (emphasis added);
see also Claim 14.)
The proximal ends of the projections of Crocy extend from a bulbous
surface, i.e., a surface whose cross section is circular or elliptical depending
on which direction the bulbous projection is viewed from. (See E on
annotated figure to which the Examiner refers in the Final Action and
reproduced below,
While the base of Crocy can be considered the entire surface on which
the projections emanate from, because of the curvature of that bulbous base,
there is not a common plane (i.e., common flat surface), from which the
projections 10 of Crocy extend. Moreover, while arbitrary planes can be
Annotated FIG. 2 of Crocy
)•
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Application 13/480,524
assumed that project through the bulbous projection of Crocy, as the
Examiner has done (indicated in the annotated figure 2, reproduced above,
(annotations A—D being the arbitrary planes)), and there are a number of
projections which could lie on such a hypothetical plane emanating through
the bulbous base, those projections cannot be said to “extend[] from [a]
common base plane on a surface of the base.” (See Reply Br. 3.) Because
of the curvature of the surface of the base, there is no plane on a surface of
the base that contains three projections.
Due to the curvature of the surface of the base, the plane that
emanates from each of the projections on the surface of the base is the plane
that emanates from the tangent of the circle at the point on the circle from
which the particular projection emanates. Those planes are not the same as
planes A-D noted in the Examiner’s annotated figure of Crocy. And,
regardless of the fact that the base is thicker than the tip, there is still not an
“array of at least three projections extending from the base wherein a
proximal end of each projection extends from a common base plane on a
surface of the base” as required by claims 1 and 14.
In light of the foregoing, we reverse the Examiner’s rejection of
claims 1,13, and 14 as being anticipated by Crocy.
Anticipation by Olson
The Examiner finds that Olson teaches an ear curette as claimed
pointing to annotated figures of Olson depicted below. (Final Action 5—6;
Ans. 21-22.)
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Application 13/480,524
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Annotated FIGS. 2-3 of Olson
The Examiner contends that the array of at least three projections
required by claim 1 are denoted by B, C, and D in the Examiner’s annotated
Figure 3. (Final Action 5—6.) According to the Examiner, these projections
extend from the base, referred to as E in the annotated figure, and that the
projections extend from the common base plane denoted as A in the
annotated figure. (Id.) The Examiner notes that “the term ‘projection’ is a
broad term that does not connote a particular shape” and that “[t]he fact that
element C is an arch and elements D and B are partial domes do not make
them any less projections.” (Ans. 21.) Moreover, according to the
Examiner, “[wjhile it is true that elements B, C, and D, are joined to each
other in regions (1), (2), (3), and (4) in the above FIG. 7 of the Examiner’s
Answer, this does not preclude the elements B, C, and D from being distinct
projections.” (Ans. 22.)
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Application 13/480,524
The Examiner further finds that Olson includes a second tip with a
blade member (ribs 87) as depicted in Figure 10 of Olson depicted below.
(Final Action 5—6.)
(Olson Fig. 10.)
As with the anticipation rejection over Crocy, we disagree with the
Examiner’s factual finding concerning Olson’s projections and the claimed
extension of the proximal end of the projections that make up the array. As
explained above, claim 1 requires each of the proximal ends of the
projections of the array to extend from a common base plane. Such is not
the case in Olson. As the Appellants point out, the curette of Olson is spoon
shaped. (Appeal Br. 17; Reply Br. 8.) Thus, similar to Crocy, the plane
from which the Examiner’s asserted “projections” on Olson’s spoon shaped
structure extend are tangential to the curvature of the spoon. (See Olson Fig.
5 annotated below to exhibit the planes.)
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Application 13/480,524
Thus, there are not at least three projections of Olson whose proximal
ends extend from a common base plane on a surface of the base. Because
we disagree with the Examiner’s findings concerning this end of the ear
curette, we need not and do not address the arguments concerning the
opposing end of the ear curette.
In light of the foregoing, we reverse the Examiner’s rejection of
claims 1—3 and 5 as being anticipated by Olson.
Obviousness Rejections of Claims 8, 9, and 21 over Crocy and Nakatani
Dependent claims 8 and 21 add the requirement for “a sequence of
spaced, visible measurement indicia on at least on tip, configure to provide
an operator with a visual indication of a depth of operation of the associated
tip in a patient’s ear.” The Examiner notes that Crocy “does not teach or
suggest a sequence of spaced, visible measurement indicia on at least one
tip, configured to provide an operator with a visual indication of the depth of
operation of the associated tip in a patient’s ear.” (Final Action 7—8.) The
Examiner relies on Nakatani for providing measurement indicia on an
instrument that is inserted into the ear which permit the depth of the
insertion of the instrument to be controlled from the outside. {Id. at 8.)
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Application 13/480,524
The Examiner does not rely upon Nakatani to cure the deficiencies of
Crocy with respect to claims 1 and 14 discussed above. For the same
reasons discussed with respect to anticipation by Crocy (above), we reverse
the Examiner’s rejection of claims 8, 9, and 21 as being obvious over Crocy
and Nakatani.
Obviousness Rejections of Claims 8, 9, and 33 over Olson and Nakatani
Claims 8, 9, and 33 depend from claim 1. As with Crocy, the
Examiner notes that Olson “does not teach or suggest a sequence of spaced,
visible measurement indicia on at least one tip, configured to provide an
operator with a visual indication of the depth of operation of the associated
tip in a patient’s ear.” (Final Action 9.) The Examiner relies on Nakatani
for providing measurement indicia on an instrument that is inserted into the
ear, which indicia permit the depth of the insertion of the instrument to be
controlled from the outside. (Id. at 10.)
The Examiner does not rely upon Nakatani to cure the deficiencies of
Olson with respect to claim 1 discussed above. For the same reasons
discussed above with respect to anticipation by Olson, we reverse the
Examiner’s rejection of claims 8, 9, and 33 as being obvious over Olson and
Nakatani.
Obviousness Rejection of Claims 14, 15, and 17 over Olson and Crocy
The Examiner contends that the combination of Olson and Crocy
renders obvious the claimed blade member as recited in claim 14. The
Examiner does not rely upon Crocy to cure the deficiencies of Olson with
respect to the recitation of “an array of projections extending from the base
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Application 13/480,524
wherein a proximal end of each projection extends from a common base
plane on a surface of the base” required by claim 14, which we noted above
with respect to claim 1 is a claim element not taught by Olson (or Crocy).
For the reasons discussed previously concerning the failure of the references
to teach the projection extension from a common base plane, therefore, we
reverse the Examiner’s rejection of claims 14, 15, and 17 as being obvious
over Olson and Crocy.
Obviousness Rejection of Claim 21 over Olson, Crocy, and Nakatani
The Examiner notes that Olson “does not teach or suggest a sequence
of spaced, visible measurement indicia on at least one tip, configured to
provide an operator with a visual indication of the depth of operation of the
associated tip in a patient’s ear.” (Final Action 13.) The Examiner relies on
Nakatani for providing measurement indicia on an instrument that is inserted
into the ear which permit the depth of the insertion of the instrument to be
controlled from the outside. {Id. at 13—14.)
The Examiner does not rely upon Nakatani to cure the deficiencies of
Olson with respect to claim 14 discussed above. Therefore, we reverse the
Examiner’s rejection of claim 21 as being obvious over Olson, Crocy, and
Nakatani.
Obviousness Rejections of Claim 26 over Crocy and Nakatani or Olson and
Nakatani
Unlike claims 1 and 14, claim 26 does not require an array of
projections on one tip of the curette, much less a limitation as to the
extension of the projections. Rather, claim 26 requires that the curette
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Application 13/480,524
include a handle portion and at least one operative tip extending from one
end of the handle portion where that operative tip includes “a sequence of
spaced, visible measurement indicia.” (Claim 26.) The indicia can be
“evenly spaced unit gradation indicia and evenly spaced subunit gradations
between the unit gradation indicia.” (Id.)
The Examiner finds that both Crocy and Olson teach an ear curette
that includes a handle and at least one operative tip that extends from the
handle. (Final Action 9 (referring to Figs 1—4 of Crocy); Final Action 10
(referring to Figs. 1—3 of Olson).) The Examiner finds that Nakatani teaches
measurement indicia on an instrument that is put into the ear hole “[where
the] indicia permits the depth of insertion of an instrument in the ear hole to
be controlled from the outside (col. 52, lines 45—64 of Nakatani).” (Final
Action 8; Final Action (referring to Fig. 20).) The Examiner finds that
one of ordinary skill in the art would look to the teachings of
any medical instrument inserted in the ear, such as Nakatani, to
determine a method or means of controlling the depth of
insertion so as to prevent damage to the inner components of
the ear or prevent uncomfortable or inadequate penetration by
the practitioner.
(Ans. 26.) The Examiner further finds that
[bjecause medical devices inserted in the ear are known to have
visual indications of depth to prevent damaging, undesired, or
inadequate penetration in the ear, it would have been obvious to
one of ordinary skill in the art at the time of invention to
include such indications on the curette of Crocy or Olson so as
to obtain these benefits.
(Id. at 26-27.)
We agree with the Examiner’s findings of fact and conclusion of
obviousness with regard to the ear curette device recited by claim 26.
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Application 13/480,524
Appellants contend that one of ordinary skill in the art of ear curettes
“would not look to the teachings of ear temperature measurement devices
and operational depth devices thereon” because the purpose of the depth
markings on ear temperature measurement is to obtain a “proper operational
depth for obtaining a reading” where “[t]here is no such pre-set operational
depth in the field of ear curettes.” (Appeal Br. 19-20; Reply Br. 11—12.)
Also, Appellants assert that Examiner’s reason to combine the depth gauge
markings of Nakatani with the Olson or Crocy, i.e., “to prevent the alleged
damaging penetration into the ear,” is not an intention stated in Nakatani and
if one considers the references as a whole, they would be considered non-
analogous art. (Appeal Br. 11; Reply Br. 12.)
We do not find these arguments persuasive. “Two criteria have
evolved for determining whether prior art is analogous: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992). Furthermore, as the Examiner pointed out (Ans. 26), Nakatani
specifically states that the scales drawn on the probe 72 allow for “the depth
of insertion ... to be controlled from the outside.” (Nakatani 52:52—62.)
Whether the stated purpose in Nakatani is to assure the device is at a proper
operational depth, as the Examiner noted, in the field of ear curettes and
medical instruments generally inserted into the ear, one of ordinary skill in
the art would be concerned about preventing damage to the inner
components of the ear. (Ans. 26.) Indeed, Olson teaches that it was known
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Application 13/480,524
in the art to provide “a depth stopper which limits the depth of insertion” of
an ear curette. (Olson 14.)
Even if one did not consider the field of endeavor of Appellants’
invention to be medical devices inserted into the ear, which both an ear
curette as described in Olson and Crocy are and Nakatani’s ear thermometer
is, the measurement gauge of Nakatani is reasonably pertinent to the
particular problem with which Appellants’ were concerned by the provision
of measurement indicia on the ear curette. In particular, Appellants disclose
in their Specification that:
There is no current system for health care professionals in a
cerumen removal for easily objectively quantifying the depth
within the ear of the impacted cerumen being removed. Without
such system the health care professionals will merely estimate
the depth within the ear of the impacted cerumen being removed
resulting in non-objective and non-verifiable documentation.
(Spec. 132.) And that
[i]t is an object of the present invention to minimize the
drawbacks of the existing ear curettes and to provide a simple,
cost effective, efficient and safe ear curette that can be utilized
for both types of cerumen and which provide a depth
measurement system for objective measurement by the users.
(Spec. 133.) Thus, according to Appellants’ Specification the “sequence of
spaced, visible measurement indicia on each tip, [are] configured to provide
an operator with a visual indication of the depth of operation of the
associated tip in a patient’s ear.” {Id. 137 (emphasis added).)
In light of the foregoing, we find Nakatani is analogous art regardless
of the fact that Nakatani’s “proper operational depth [is] for obtaining a
reading” (Reply Br. 11).
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Application 13/480,524
Consequently, we agree with the Examiner that it would have been
obvious to adapt the teaching of using scales that assist in controlling the
depth of insertion of a device into the ear from the outside of Nakatani to the
ear curette of Olson or Crocy. The obviousness “analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Moreover, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. There is no contention
that the result of providing markings such as those taught in Nakatani that
are used to control the depth of insertion of a probe into the ear and placing
those markings onto the device of Crocy or Olson provides the predictable
result of measuring depth into the ear canal.
Appellants’ argument that it is the attachment to the main body that is
provided with the depth gauge and that the claims, which include the
measurement indicia on the tip itself and thus “teaches away from a separate
attachable probe as taught in the non-analogous ear thermometer” (Appeal
Br. 20 (emphasis added); Reply Br. 12) is equally unpersuasive. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In reKubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Such is not
the case simply because the measurement indicia are positioned on an
attachment to the main body of the Nakatani ear thermometer. That is
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Application 13/480,524
because Nakatani teaches to provide the measurement indicia as a part of the
instrument that is to be inserted into the ear, and, thus, the portion of the ear
thermometer that is to be positioned in the ear can have the depth of
insertion controlled from the outside through the use of the measurement
indicia. Thus, regardless of the detachability of this portion of Nakatani’s
instrument, it is equivalent to the tip of the ear curette that Olson and Crocy
teach are to be inserted into the ear, and one of ordinary skill in the art would
not be discouraged from following the path set out in Nakatani, of including
measurement indicia on the tip of an instrument to be inserted into the ear.
For the foregoing reasons, we affirm the Examiner’s rejection of
claim 26 as being obvious over Crocy and Nakatani or Olson and Nakatani.
Obviousness Rejection of Claim 28 over Olson and Nakatani
Claim 28 depends from claim 26. The Examiner contends that Olson
teaches a ring member (E in the annotated Figure 2 provided above) that
extends along a plane and that an array of projections extend from the ring
member substantially perpendicular to the plane of the ring member. We
disagree with the Examiner’s findings of fact.
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As can be seen in the above annotated Figure 5 of Olson (which is a
longitudinal cross sectional view of Figure 2), the projections on the back
side surface 30 are on an opposing side of the ring member 22 of the spoon
shaped tip of Olson. Those projections do not extend from the ring member
“substantially perpendicular to the plane of the ring member.” Thus, we
reverse the Examiner’s rejection of claim 28 as being obvious over Olson
and Nakatani.
Obviousness Rejection of Claim 32 over Olson, Nakatani, and Crocy
Claim 32 depends from claim 28. In light of our reversal of the
Examiner’s rejection of claim 28 as being obvious over Olson and Nakatani,
we also reverse the Examiner’s rejection of claim 32 as being obvious over
Olson, Nakatani, and Crocy.
SUMMARY
We reverse the rejection of claims 1, 13, and 14 under 35 U.S.C.
§ 102(b) as anticipated over Crocy.
We reverse the rejection of claims 1—3 and 5 under 35 U.S.C. § 102(b)
as anticipated by Olson.
We reverse the rejection of claims 8, 9, and 21 under 35 U.S.C. § 103
as unpatentable over Crocy and Nakatani.
We affirm the rejection of claim 26 under 35 U.S.C. § 103 as
unpatentable over Crocy and Nakatani.
We reverse the rejection of claims 8, 9, 28, and 33 under U.S.C. § 103
as unpatentable over Olson and Nakatani.
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We affirm the rejection of claim 26 under 35 U.S.C. § 103 as
unpatentable over Olson and Nakatani.
We reverse the rejection of claims 14, 15, and 17 under 35 U.S.C.
§ 103 as unpatentable over Olson and Crocy.
We reverse the rejection of claim 21 under 35 U.S.C. § 103 as
unpatentable over Olson, Crocy, and Nakatani.
We reverse the rejection of claim 32 under 35 U.S.C. § 103 as
unpatentable over Olson, Nakatani and Crocy.
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-IN-PART
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