Ex Parte Terry

Patent Trials and Appeals BoardJan 17, 2019

13516660 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/516,660 08/27/2012 Richard Terry 158673 7590 01/22/2019 ED/Rutan & Tucker, LLP 611 ANTON BL VD SUITE 1400 COST A MESA, CA 92626 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 101674.0052P 8992 EXAMINER PATEL, SHEFALI DILIP ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 01/22/2019 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@rutan.com ip.docket@bd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD TERRY Appeal 2018-002 773 Application 13/516,660 1 Technology Center 3700 Before BENJAMIN D. M. WOOD, NATHAN A. ENGELS, and LEE L. STEPINA, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-16 and 18-20. Claim 17 is canceled and no other claims are pending. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The Appeal Brief identifies C. R. Bard, Inc. as the real party in interest. Appeal Br. 4. Appeal2018-002773 Application 13/516,660 ILLUSTRATIVE CLAIM Claim 1 is the sole independent claim on Appeal and is reproduced below as illustrative of the claimed subject matter: 1. A catheter assembly comprising: an elongate member having a proximal end and a distal endÂ· ' the distal end having at least one drainage opening; a fluid containing member arranged on the elongate member; and a container containing the elongate member and the fluid containing member, wherein the container is a fluid impermeable package, and wherein a fluid contained in the container is disposed in the fluid containing member so as not to wet the container when contacting the same. THE REJECTIONS Claims 1-16 and 18-20 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Claims 1-16 and 18-20 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Claims 1, 2, 4--7, 9-13, 16, and 18-20 stand rejected under 35 U.S.C. Â§ I02(b) as being anticipated by Murray et al. (US 7,380,658 B2; iss. June 3, 2008). Claims 3, 14, and 15 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Murray. Claim 8 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of the combined teachings of Murray and Nishtala et al. (US 2010/0198195 Al; publ. Aug. 5, 2010). 2 Appeal2018-002773 Application 13/516,660 ANALYSIS In relevant part, independent claim 1 recites "wherein a fluid contained in the container is disposed in the fluid containing member so as not to wet the container when contacting the same." The Examiner determines that this language renders independent claim 1 and dependent claims 2-16 and 18-20 indefinite because it is unclear what elements are referenced by the language "when contacting the same." Final Act. 6. Appellant's Appeal Brief does not address the Examiner's indefiniteness rejection. The Reply Brief, however, explains that Appellant submitted an amendment after the Final Office Action to replace the language "when contacting the same" with "when the fluid containing member contacts the container." Reply Br. 5. Appellant acknowledges, though, that the amendment was not entered. 2 The Reply Brief also suggests that, even without the amendment, the correct interpretation of the disputed limitation "in view of the specification and common sense is that the fluid containing member does not wet the container upon contact," Id. at 4. Appellant cites the following language from the Specification as support for that interpretation: "In embodiments, the outside diameter 20a can alternatively be made fluid impermeable so as to not ... wet the package 12 when contacting the same." Id. (quoting Spec. ,r 63). 2 Appellant argues that the Examiner's decision to deny entry of the amendment was "flawed." Reply Br. 5. However, denial of entry of an amendment is a petitionable matter and not one properly addressed by the Board. See 37 C.F.R. Â§ 1.181; 37 C.F.R. Â§ 1.127; see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002), and In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)). 3 Appeal2018-002773 Application 13/516,660 We disagree with Appellant. First, by failing to address the Examiner's indefiniteness rejection in the Appeal Brief, Appellant's arguments were waived. See Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008); Ex parte Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI 2010) (informative); 37 C.F.R. Â§Â§ 4I.37(c)(l)(iv), 4I.41(b)(2). Even if Appellant had not waived its arguments, we agree with the Examiner that claims 1-16 and 18-20 are indefinite. Reading the plain language of claim 1 in light of Appellant's Specification, the scope and meaning of the disputed language is unclear and is not amenable to interpretation without considerable speculation. The plain language of claim 1 is unclear and nothing in the Specification defines or otherwise limits the scope of claim 1 to a particular interpretation. Notably, Appellant advances an implicit interpretation in arguments intended to overcome the prior art that is different than the interpretation quoted above from the Reply Brief. Compare Appeal Br. 10-11 ( arguing Murray does not anticipate claim 1 because Murray discloses that fluid contacts and therefore wets the container), with Reply Br. 4 (interpreting the disputed limitation to mean "when the fluid containing member contacts the container"); see Ans. 3--4 ( contending that water vapor cannot "wet" a container for the purposes of claim 1 ); Reply Br. 7-9 ( arguing water vapor can "wet" a container for the purposes of claim 1 ). Accordingly, we affirm the Examiner's rejection of claims 1-16 and 18-20 as being indefinite, but, because the claims are indefinite and require considerable speculation as to scopes of the claims, we reverse proforma the Examiner's prior art rejections. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the Board were wrong in relying on what, at best, were 4 Appeal2018-002773 Application 13/516,660 speculative assumptions as to the meaning of the claims and in basing a prior-art rejection thereon). Appellant also failed to address the Examiner's rejection of claims 1-16 and 18-20 as failing to comply with the written description requirement. As the rejection is unrebutted, we summarily affirm the Examiner's written description rejection. DECISION We affirm the Examiner's rejections of claims 1-16 and 18-20 under 35 U.S.C. Â§ 112, first paragraph, andÂ§ 112, second paragraph. We reverse proforma the Examiner's rejections of claims 1-16 and 18-20 under 35 U.S.C. Â§ 102(a) andÂ§ 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5