Ex Parte Shao et al

Patent Trial and Appeal Board

Oct 4, 2017

13229195 (P.T.A.B. Oct. 4, 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.
13/229,195 09/09/2011 Weiru Shao ASSL 10.01 9085
26812 7590 10/06/2017
HAYES SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
TSULLIVAN@HAYES-SOLOWAY.COM
dbrancheau@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEIRU SHAO and ERIK PIASIO
Appeal 2015-005132
Application 13/229,1951
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Weiru Shao and Erik Piasio (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-20. Final
Office Action (September 12, 2014) (hereinafter “Final Act.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify American Surgical Sponges, LLC as the real party in
interest. Appeal Brief 6 (November 24, 2014) (“Appeal Br.”).
Appeal 2015-005132
Application 13/229,195
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a medical tool
deflection and resistant medical sponge.” Spec. 1,1. 10. Claims 1, 9, and 18
are independent. Claim 1 is illustrative of the subject matter on appeal and
is reproduced below.
1. A medical sponge comprising:
a first layer constructed from a biocompatible absorption
material;
a second layer positioned abutting the first layer, the
second layer constructed from a non-toxic, biocompatible
deflection material; and
a bonding element connected to the first layer and the
second layer, wherein the bonding element adheres the first layer
and the second layer together.
Appeal Br. 24 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Kliger
Abels
Gertzman et al.
(“Gertzman”)
Cercone et al.
(“Cercone”)
Shapiro
US 3,911,922
US 4,114,601
US 5,460,621
US 5,466,231
US 7,297,834 B1
REJECTIONS
Oct. 14, 1975
Sept. 19, 1978
Oct. 24, 1995
Nov. 14, 1995
Nov. 20, 2007
The Final Office Action includes the following rejections:
1. Claims 1, 7-12, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gertzman and Cercone.
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Application 13/229,195
2. Claims 2, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gertzman, Cercone, and Kliger.
3. Claims 3-5, 14, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gertzman, Cercone, and Abels.
4. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gertzman, Cercone, and Shapiro.
ANALYSIS
First Ground of Rejection
Claims 1 and 7
Appellants contend that the rejection of claim 1 should be reversed
because the Examiner erred in finding that Cercone discloses a deflection
material. Appeal Br. 16-18. In particular, Appellants argue that Cercone is
directed to preventing adhesion between the sponge and the tissue it contacts
and does not teach deflecting medical instruments with the sponge. Id. at
17. There does not appear to be any dispute that Cercone does not explicitly
teach the ability of its laminated sponge to deflect medical instruments.
However, the Examiner finds that Cercone teaches providing a medical
sponge with a second layer constructed from a deflection material, viz,
PTFE.2 See Final Act. 4. Thus, the Examiner finds that the deflection
capabilities are an inherent characteristic of Cercone’s laminated sponge.
Ans. 11 (finding that because Cercone and Appellants’ Specification both
disclose PTFE, the material will provide the same functional capabilities).
2 The Examiner states that “[djeflection material is interpreted to be a
material that can deflect medical instruments and not be punctured.” Final
Act. 4. Appellants do not dispute the Examiner’s interpretation.
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Application 13/229,195
The express and inherent disclosures of a prior art reference may be
relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103. In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.”). “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708-09
(Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986)
(finding it insufficient for an appellant to merely assert that the prior art does
not inherently possess the characteristic relied on and challenge the PTO to
prove the contrary by experiment or otherwise. “The PTO is not equipped to
perform such tasks.”). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (quoting Cont’l Can Co. v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991)).
The Examiner’s finding rests on a sound basis. First, as noted by the
Examiner (Final Act. 4), Appellants’ Specification discloses PTFE as a
suitable material for the claimed deflection material (Spec. 7:6-8). Further,
Appellants’ Specification does not describe a particular thickness of the
deflection material layer to enable it to deflect surgical instruments. Rather,
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Application 13/229,195
the Specification describes that “[t]his PTFE material may be substantially
dense, yet have a low friction exterior, such that when a drill bit or scalpel
inadvertently touches the second layer 30 of the medical sponge 10, the drill
bit or scalpel is unable to penetrate through the second layer 30.” Spec. 7:8—
11; see also id. at 8:9-11 (describing that the PTFE layer “may prevent [a
scalpel or other sharp object] from catching on the absorption materials of
the first layer 20”). Thus, the ability of the PTFE layer to serve as a
deflection material appears to emanate from the inherent characteristics of
PTFE, viz, the low friction nature of the material, and not from a particular
thickness of the second layer.
Second, as noted by the Examiner, the claims do not specify the
thickness of the deflection material, and Cercone discloses a range of
thicknesses of adequate strength to prevent tearing. Ans. 12 (citing Cercone,
col. 5,11. 41—46). Cercone teaches the laminated film is “thick enough to
facilitate ease of handling and adequate strength (to prevent tearing) while
being thin enough, generally in the range of 0.0005 to 0.0030 inches in
thickness, to not substantially affect the bulk properties of the sponge in the
composite laminated product.” Cercone, col. 5,11. 41^46. Because
Appellants’ Specification describes only that the layer of deflection material
is made of PTFE, and does not describe any minimum thickness of the layer
to enable it to provide such deflection properties, we find that the
Examiner’s determination that Cercone’s lamination film is inherently
capable of serving as a deflecting material is based on sound reasoning.
Thus, we find that the Examiner set forth adequate evidence of
inherency to shift the burden to Appellants to prove that Cercone’s material
is not a “deflection material” as recited in claim 1. In other words,
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Appellants have the burden to show that the laminated PTFE film layer
disclosed in Cercone does not necessarily or inherently possess the
characteristic of being capable of deflecting a medical tool. Spec. 7:6-7.
Appellants have not met this burden.
Appellants argue that “[w]hile Cercone discloses the use of PTFE . . .
there is no teaching of this material being capable of deflecting medical
instruments under the conditions specified by Cercone.” Appeal Br. 17.
Appellants assert that Cercone’s “film is 0.0015 inches thick, which fails to
disclose a deflective layer to one having ordinary skill in the art.” Id.
Appellants further assert that “one having ordinary skill in the art would
identify [Cercone’s film with holes 24] as decreasing any deflection
capabilities of the film.” Id. at 18. Appellants’ assertions regarding one
having ordinary skill in the art are not supported by any evidence, such as a
declaration of one in the art. In re Pearson, 494 F.2d 1399, 1404 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence”).
As such, Appellants have not demonstrated error in the Examiner’s finding
that Cercone discloses a “deflection material.”
Appellants further argue that the Examiner’s “motivation to combine
is faulty since neither reference discloses a deflection material or deflecting
an instrument.” Appeal Br. 19. The Examiner, however, did not base the
proposed modification of the sponge of Gertzman with the laminating film
layer of Cercone on the ability of the modified sponge to deflect surgical
instruments. Rather, the motivation to combine came from the teaching in
Cercone that its laminating film layer prevents tearing and Gertzman’s goal
of preventing damage to tissues and organs. Final Act. 4 (Examiner
proposing to modify the sponge of Gertzman to add the deflection material
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Application 13/229,195
of Cercone for the benefit that “it provides adequate strength properties to
prevent tearing of medical sponges thereby preventing damage to tissues and
organs caused by contact therewith during surgery which are objects of
Gertzman.”). Thus, Appellants’ argument does not address the Examiner’s
stated reason to combine. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) (holding that patent examiners are not foreclosed to look only to
the problem the patentee was trying to solve in determining a reason to
combine the elements in the manner claimed).
For these reasons, Appellants have failed to demonstrate error in the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Gertzman and Cercone. Appellants rely on the same arguments
presented for claim 1 in support of the patentability of dependent claim 7.
Appeal Br. 19. Accordingly, we sustain the rejection of claims 1 and 7.
Claim 8
Appellants contend that the basis for the Examiner’s rejection of
dependent claim 8 is unclear because “[the] passage [relied on by the
Examiner] does not explicitly indicate whether layer 20 is fibrous.” Appeal
Br. 19-20 (Appellants arguing that “[i]t is not clear whether the Examiner is
taking Notice that all PTFE is always non-fibrous”).3 The Examiner clearly
stated in the Final Office Action that Cercone “discloses a PTFE film” and
“[f]ilms are not fibrous.” Final Act. 12. Appellants do not contest the
Examiner’s statement that “[f]ilms are not fibrous.” We find the basis for
3 Claim 8 depends from claim 1 and recites “wherein the deflection material
of the second layer comprises a non-fibrous material.” Appeal Br. 25
(Claims Appendix).
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Application 13/229,195
the Examiner’s rejection is clear and supported by a preponderance of the
evidence. As such, we sustain the rejection of dependent claim 8.
Claims 9-12 and 15-17
Appellants argue claims 9-12 and 15-17 as a group. Appeal Br. 21.
We select claim 9 as representative of the group, and claims 10-12 and 15-
17 stand or fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv).
Independent method claim 9 recites the step of “deflecting a surgical
tool[4] with the second layer” where the second layer is “constructed from a
deflection material.” Appeal Br. 25 (Claims Appendix). Similar to the
arguments raised in support of claim 1, Appellants argue the rejection of
claim 9 should not be sustained because “PTFE does not by definition
deflect surgical tools” and “deflecting surgical tools is not an inherent
quality of PTFE.” Id. at 20-21. For the same reasons set forth above, we
find no error in the Examiner’s finding that the laminated PTFE film of
Cercone is a deflection material and is inherently capable of deflecting
surgical tools. Further, because Gertzman’s sponge is intended to be used to
protect organs and tissue during surgical procedures (see Gertzman, col. 5,
11. 46^49), the method of use of Gertzman’s sponge would not need to be
modified to meet the claimed steps. In other words, Gertzman’s sponge, as
modified to include the laminated film of Cercone, would inherently deflect
surgical tools in the normal use of the sponges, as disclosed in Gertzman.
See Ans. 13 (“During normal operation/surgery, the combination as cited
4 Appellants’ Specification describes medical or surgical tools as “including
a drill, often known as a burr or dissecting tool, a scalpel, lancet, knife,
medical blade, sickle knife, fine-tip suction, sharp pick and other surgical
instruments or object[s].” Spec. 5:9-11.
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will deflect surgical tools and protect the organs.”). Accordingly, we sustain
the rejection of claims 9-12 and 15-17.
Claim 18
Similar to the arguments raised in support of dependent claim 8,
Appellants argue that the rejection of claim 18 should not be sustained
because “Cercone is . . . silent relative to whether layer 20 is fibrous.”
Appeal Br. 21. We find this argument does not demonstrate error in the
rejection of claim 18 for the same reasons discussed above with respect to
claim 8. Accordingly, we sustain the rejection of claim 18.
Remaining Grounds of Rejection
Appellants assert that the remaining grounds of rejection should not
be sustained because neither Kliger, nor Abels, nor Shapiro cures the
asserted deficiencies in Gertzman and Cercone. Appeal Br. 22-23. Because
we found no deficiencies as to the rejection of independent claims 1, 9, and
18 based on Gertzman and Cercone, we likewise affirm the rejections under
35 U.S.C. § 103(a) of claims 2-6, 13, 14, 19, and 20 as unpatentable over
Gertzman, Cercone, and one of Kliger, Abels, and Shapiro.
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DECISION
The decision of the Examiner rejecting claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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