Ex Parte Pahuja et alDownload PDFPatent Trial and Appeal BoardJun 30, 201713480524 (P.T.A.B. Jun. 30, 2017) Copy Citation 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.) 2 Appeal 2016-002725 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. 3 Appeal 2016-002725 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. 4 Appeal 2016-002725 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 )• 5 Appeal 2016-002725 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.) 6 Appeal 2016-002725 Application 13/480,524 14 3S £4. Iw ¥ $ 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.) 7 Appeal 2016-002725 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.) 8 Appeal 2016-002725 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.) 9 Appeal 2016-002725 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 10 Appeal 2016-002725 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 11 Appeal 2016-002725 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. 12 Appeal 2016-002725 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 13 Appeal 2016-002725 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). 14 Appeal 2016-002725 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 15 Appeal 2016-002725 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. 16 Appeal 2016-002725 Application 13/480,524 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. 17 Appeal 2016-002725 Application 13/480,524 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 18 Copy with citationCopy as parenthetical citation