Ex Parte Trivisani

Patent Trial and Appeal Board

Mar 31, 2017

13117192 (P.T.A.B. Mar. 31, 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.
13/117,192 05/27/2011 DEAN TRIVISANI 1662 DT 03 UTL 7101
75207 7590
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
DORNBUSCH, DIANNE
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/31/2017 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 DEAN TRIVISANI
Appeal 2014-008469
Application 13/117,192
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dean Trivisani (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject under 35 U.S.C. § 112, first paragraph, claims
3, 18, and 19 for lack of written description; and to reject under 35 U.S.C. §
103(a): (1) claims 1, 2, 5, 16, and 17 as unpatentable over Small (US
2003/0069589 Al; pub. Apr. 10, 2003) and Nates (US 5,423,831; iss. June
13, 1995); and (2) claims 1—3, 5—8, 11, and 13—18 as unpatentable over
Ciecwisz (US 5,440,295; iss. Aug. 8, 1995), Small, and Nates. Appellant
presents additional evidence in the Declaration of Kathy Virgil-Belding
(hereinafter the “Belding Declaration”) filed under 37 C.F.R. § 1.132 on
Appeal 2014-008469
Application 13/117,192
May 28, 2013. Claims 4, 9, 10, and 12 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “vascular clamps.” Spec. 1:12,
Figs. 1, 3.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A vascular clamp comprising: a clamp top, a clamp
bottom, a locking mechanism, a top jaw, a top jaw riser, a bottom
jaw, a bottom jaw riser, a top grip, a bottom grip, teeth and a
hinge, wherein said top grip and said bottom grip are each 5.3
mm to 9.4 mm in length and 5.3 [mm] to 9.4 [mm] in width, and
the overall clamp length is 60-65 mm, and the teeth located on
the top jaw and the bottom jaw and measure 30-31 mm in length.
ANALYSIS
Written Description
Claims 3 and 18
The Examiner determines that “[cjlaims 3 and 18 recite that the first
and second pins are substantially the same length, the original disclosure
does not state that the pins are the same length; hence this is being
considered as new matter.” Final Act. 3.
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the Specification, but the disclosure as
originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The drawings in an application can be relied upon to
show that an inventor was in possession of the claimed invention as of the
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Application 13/117,192
filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64, (Fed.
Cir. 1991) (“[Drawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.”).
In this case, we agree with Appellant that “[figures 3, 4, and 10 of the
original application clearly disclose the pins [520] of substantially same
[equal] length.”1 See Br. 12; In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)
(“things patent drawings show clearly are not to be disregarded.”).
Accordingly, we do not sustain the Examiner’s rejection of claims 3
and 18 for lack of written description.
Claim 192
The Examiner determines that “[c]laim 19, recites a flat bar which has
substantially the same height as the [teeth] however this is not found in the
original disclosure; hence it is being considered new matter.” Final Act. 3;
see also Ans. 2.
Appellant contends that “[i]n Figure 1 the flat bar is shown to be
substantially of same height as the teeth.” Br. 13. We disagree. In this
regard, the Examiner correctly “[notes] that the bar is not labeled or
mentioned in the original disclosure with respect to the claimed invention.”
Final Act. 3. Appellant’s disclosure does not provide any detail as to “a flat
bar separating the rows of teeth,” let alone height dimensions of teeth 400
relative to a flat bar, and thus does not provide support for Appellant to
contend that the height dimensions of the teeth and flat bar(s) as depicted in
1 Claim 18 recites, “said first and said second pin being equal in length.” Br.
23, Claims App.
2 Appellant cites to claim 18 instead of claim 19. See Br. 13-14. We consider
this a typographical error.
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any one of Figures 1, 3, 4, or 10 support the claim recitation of “teeth having
substantially [the] same height as the flat bars.” See Br. 13; see also id. at
14, 23, Claims App. As such, we find that Appellant’s original disclosure
and figures fail to provide adequate descriptive support for the claimed teeth
having “substantially [the] same height” as the flat bars.
To the extent that Appellant is contending that a skilled artisan would
know from the clamp closed position of Figure 2 of the subject invention
that teeth 400 must necessarily be substantially the same height as the flat
bar separating the rows of teeth 400, Appellant has not provided any
persuasive reasoning or evidence to support this contention. See Br. 13. To
the contrary, Appellant acknowledges that “[i]n order to be closed as shown
[in Figure 2], the bar has to be of same height or lower.” Id. (emphasis
added).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 19 for lack of written description.
Drawing Objection
The Examiner also objected to Appellant’s drawings under 37 C.F.R.
1.83(a) on the grounds that “[t]he drawings must show every feature of the
invention specified in the claims.” Final Act. 2. According to the Examiner,
“the flat bar with substantially the same height as the teeth must be shown or
the feature(s) canceled from the claim(s). No new matter should be
entered.” Id. Ordinarily, an objection is reviewable by petition under 37
C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal
Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. See MPEP § 608.04(c)
(providing that “where the alleged new matter is introduced into or affects
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Application 13/117,192
the claims, thus necessitating their rejection on this ground, the question
becomes an appealable one, and should not be considered on petition even
though that new matter has been introduced into the specification also”). To
the extent that the objection to the drawings in the Final Rejection turns on
the same issues as the rejection under 35 U.S.C. § 112, first paragraph, our
decision with respect to the rejection is dispositive as to the corresponding
objection.
Obviousness over Small and Nates
Claims 1, 2, 5, 16, and 17
Appellant does not offer arguments in favor of dependent claims 2, 5,
16, and 17 separate from those presented for claim 1. See Br. 14—17. We
select claim 1 as the representative claim, and claims 2, 5, 16, and 17 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that “Small discloses the claimed invention
except for overall length of the clamp is 60-65 mm and that the teeth
measuring 30-31 mm in length.” See Ans. 3; see also Final Act. 4—7. The
Examiner finds that “Nates discloses a clamp with an overall length of about
55mm.” Ans. 4 (citing Nates, 3:41); see also Final Act. 5. The Examiner
notes that “Nates has an overall length which is a few mm off from the
claimed length.” The Examiner further cites to column 3 lines 45 to 50 of
Nates for disclosing “that the invention is not limited to the precise
constructional details described and illustrated in the drawings and that the
dimensions of the parts may be varied as desired.” Ans. 4. Additionally, the
Examiner notes that in Appellant’s disclosure “the overall length ranges
from 5-100 mm and preferably from 30-65 mm which is a wide range where
it is not established with factual evidence how unexpected results would
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occur.” Ans. 4—5 (citing paragraph 62 of the published application); see also
Final Act. 6; Spec. 15:13—15. The Examiner concludes that “the claimed
measurements would result from routine experimentation” and because
Appellant “failed to show a comparison with the closest art to show that it
would have been unexpected results, it appears that routine experimentation
would have achieved the desired length to provide the right amount of
torque.” See Ans. 4; see also Final Act. 5. The Examiner further concludes
that it would have been obvious “to have the clamp of Small have an overall
length of 60-65 mm [in view of Nates], since it has been held that where the
general conditions of a claim are disclosed in the prior art, discovering the
optimum or workable ranges involves only routine skill in the art.” See Ans.
5; see also Final Act. 6.
With regard to the overall length of the teeth, the Examiner notes that
in Appellant’s disclosure “the overall teeth length ranges from 5-100 mm
which is a wide range where it is not established with factual evidence how
unexpected results would occur; hence routine experimentation would have
achieved the desired length to provide the desired gripping surface area.”
Ans. 5 (citing paragraph 63 of the published application); see also Final Act.
7; Spec. 15:21—16:1. The Examiner further concludes that it would have
been obvious “to have the clamp of Small have an overall teeth length of 30-
31 mm, since it has been held that where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” See Ans. 5; see also Final Act. 7.
Appellant contends that “both Small and Nantes [sic] fail to teach the
overall clamp length being 60-65 mm and the teeth measuring 30-31 mm in
length, and these measures do not result from routine experimentation.” Br.
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14 (emphasis omitted).
The following quotation from In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990), is applicable here:
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. [Citations omitted.] These cases have
consistently held that in such a situation, the
applicant must show that the particular range is
critical, generally by showing that the claimed
range achieves unexpected results relative to the
prior art range.
Moreover, as pointed out in In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996),
even though applicant’s modification results in
great improvement and utility over the prior art, it
may still not be patentable if the modification was
within the capabilities of one skilled in the art,
unless the claimed ranges “produce a new and
unexpected result which is different in kind and not
merely in degree from the results of the prior art.”
(quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955)).
In this case, regarding the “teeth measuring 30-31 mm in length,”
Appellant’s Specification states “[pjreferably the length of the teeth 400 is
from about 25 mm to about 75 mm long, more preferably between 30 mm to
about 65 mm long. In another preferred embodiment, the overall length of
the teeth 400 is about 31 mm long.” Spec. 15:22—16:2. Appellant has not
shown that the length of the teeth is critical or achieves any unexpected
results. See Final Act. 7, 19; see also Ans. 5. To the contrary, every
instance of disclosure in the Specification for a specific tooth length range is
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rendered insignificant by Appellant’s broader provisions for alternate tooth
length ranges. See Final Act. 7, 19; see also Ans. 5.
Further, Appellant’s contention is not responsive to the key aspects of
the Examiner’s proposed rejection. In this case, Appellant presents
arguments regarding the Ciecwisz reference not the Small and Nates
references (i.e., the rejection proposed by the Examiner). Br. 14—17: see
also Final Act. 4—8. As such, Appellant does not apprise us of why the
Examiner’s proposed modification of Small’s teeth to have an overall length
of 30—31 mm would “not result from routine experimentation.” See Br. 13—
17 see also Final Act. 4—8, 19; Ans. 5. Moreover, we note that “[a] change
in size is generally recognized as being within the level of ordinary skill in
the art.” See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir.
2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and In re Aller,
220 F.2d 454, 456 (CCPA 1955)).
Regarding the “overall clamp length being 60-65 mm,” Appellant’s
Specification states, “[t]he overall length of the clamp 100 may be between
from about 5 mm to about 100 mm long. Preferably the length of the clamp
is from about 25 mm to about 75 mm 15 long, more preferably between 30
mm to about 65 mm long.” Spec. 15:13—15. The Specification further states
“[i]n another preferred embodiment, the overall length of the clamp 100 is
about 61 mm long.” Id. at 15:15—16. Appellant has not shown that the
overall length of the clamp is critical or achieves any unexpected results.
See Final Act. 5—6, 19; see also Ans. 5. To the contrary, every instance of
disclosure in the Specification for a specific overall clamp length range is
rendered insignificant by Appellant’s broader provisions for alternate overall
clamp length ranges. See Final Act. 5—6, 19; see also Ans. 5. Further,
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Application 13/117,192
Appellant’s contention is not responsive to the key aspects of the Examiner’s
proposed rejection. In this case, Appellant presents arguments regarding the
Ciecwisz reference not the Small and Nates references (i.e., the rejection
proposed by the Examiner). Br. 14—173: see also Final Act. 4—8. As such,
Appellant does not apprise us of why the Examiner’s proposed modification
of Small’s clamp to have an overall length of 60-65 mm, in view of the
teachings of Nates, would “not result from routine experimentation.” See
Br. 13—17 see also Final Act. 4—8, 19; Ans. 5. Moreover, as noted above, a
change in size is generally recognized as being within the level of ordinary
skill in the art.
Appellant presents additional evidence via the Belding Declaration
regarding the overall length of the clamp being 60-65 mm. In this case, the
arguments presented in the Belding Declaration are in view of Ciecwisz,
which is not commensurate with the Examiner’s proposed rejection before
3 Appellant states, “Applicant had an interview with the Examiner on February
6, 2014, where the applicant demonstrated the unexpected difference in how
a clamp grasps a cord when the length of the clamp is 60-65 mm as in the
claimed invention vs. 55 mm as in all the other available clamps (including
what is taught in Nates).” Br. 14; see also id. at 16. Initially, we note that the
interview took place after prosecution of the subject application was closed.
Further, (1) the Examiner’s rejection is based on the combined teachings of
Small and Nates; (2) claim 1 is directed to a “vascular clamp” not an
“umbilical cord clamp”; and (3) claim 1 recites nothing regarding the “clamp
grasping an umbilical cord.” See Final Act. 4—8; see also Br. 14; id. at 21,
Claims App.; In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not
appearing in the claims cannot be relied upon for patentability). Moreover,
Appellant does not provide evidence—but rather only attorney argument—to
support the assertion. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
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us of the combined teachings of Small and Nates. Therefore, the arguments
presented in the Belding Declaration are moot.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Small and Nates. We further
sustain the rejection of claims 2, 5, 16, and 17, which fall with claim 1.
Obviousness over Ciecwisz, Small, and Nates
Claims 1—3, 5, 16, and 17
Appellant does not offer separate arguments in favor of dependent
claims 2, 3, 5, 16, and 17 separate from those presented for claim 1. See Br.
18—19. We select claim 1 as the representative claim, and claims 2, 3, 5, 16,
and 17 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that “Ciecwisz, Small, and Nantes [sic] fail to
teach the overall clamp length being 60-65 mm and the teeth measuring 30-
31 mm in length, and these measures do not result from routine
experimentation.” Br. 18 (emphasis omitted). According to Appellant,
“Small and Nantes [sic] fail to disclose the claimed dimensions. Cieswisz
disclosure does not cure this flaw. The discussion [regarding Small and
Nates] is incorporated herein to explain why the claimed dimensions are not
a result of routine experimentation.” Id.
The Examiner presents similar findings and conclusions as discussed
above regarding Small and Nates. See Final Act. 8—13. We find no
deficiencies in the Examiner’s rejection of claim 1 in view of Small and
Nates. As such, Appellant’s argument is not persuasive.
Appellant presents additional evidence via the Belding Declaration
regarding the overall length of the clamp being 60-65 mm. In this case, the
arguments presented in the Belding Declaration are in view of Ciecwisz,
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which is not commensurate with the Examiner’s proposed rejection before
us of the combined teachings of Ciecwisz, Small, and Nates. Therefore, the
arguments presented in the Belding Declaration are moot.
Additionally, we note that claim 1 is directed to a “vascular clamp”
not an “umbilical cord clamp.” See Br. 21, Claims App.; see also note 3
supra. The evidence presented in the Belding reference is directed to an
“umbilical cord clamp” device. See Belding Declaration, 2—\\ see also Br.
15—16. Moreover, the supposed advantages of “the elongation of [a] few
millimeters [having] multiple effects on the functionality of the clamps” are
not recited in the claims. See Br. 15—16; see also id. at 21—22, Claims App.;
note 3 supra; In re Self, 671 F.2d at 1348.
Appellant further contends that
Cieswisz does not disclose for the width and length of the
bottom and top grip being 5.3 -9.4 mm and the width of 5.3 -9.4
mm. Small discloses a thumb wing with a preferred length of
0.75 to 3 cm (para 0032) and at least about 1.5 times the width
of the arm, preferably at least 2-3 times the arm width (para
0032). Notably, the thumb wings of Small are located in middle
of the arm length, not on top of the locking system as it does in
Cieswisz. Therefore, it would not have been obvious to adapt
the length and width of the grips of Small and transfer them
directly to Cieswisz. Thus the invention is not obvious over
Cieswicz in view of Small. Adding Nates does not change this.
Br. 18-19.
At the outset, to the extent that Appellant is arguing the references
must be capable of bodily incorporation in order to combine their teachings,
the test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of a primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the
combined teachings of the references would have suggested to those of
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ordinary skill in the art.” Id. (citations omitted); see also Ans. 9.
In response to Appellant’s argument, the Examiner correctly points
out that “the Small reference is merely being used to show that it is well
known in the art to have a thumb grip that is 5.3-9.4 mm in length and
width.” Ans. 9; see also id. at 8. In other words, the Examiner is merely
proposing to modify the thumb grip of Cieswisz to be 5.3—9.4 mm in length
and width, in view of the teachings of Small. The Examiner concludes that
“it would be obvious to modify the [thumb] grip of Cieswisz to have this
size [i.e., to be 5.3—9.4 mm in length and width] [in] order to have a surface
area that would be big enough for the operator to hold the device with ease.”
Ans. 9; see also id. at 8. The Examiner’s findings and conclusions are
supported by the record and based on rational underpinnings. See Final Act.
10-11; see also Ans. 8—9. Appellant does not provide persuasive evidence
or argument apprising us of error in the Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as unpatentable over Cieswisz, Small, and Nates. We
further sustain the rejection of claims 2, 3, 5, 16, and 17, which fall with
claim l.4
4 Claim 19 depends from claim 1. See Br. 23, Claims App. Appellant
contends that none of Cieswisz, Small, or Nates disclose “the teeth having
substantially the same height as the flat bars is essentially [sic] to properly
clamp umbilical vascular tissue.” Br. 20 (emphasis omitted). At the outset,
we note that claim 19 does not recite anything regarding the teeth and the flat
bar having substantially the same height “to properly clamp umbilical
vascular tissue.” See Br. 23, Claims App; see also In re Self, 671 F.2dat 1348.
Further in response to Appellant’s argument, the Examiner correctly notes that
“[t]he limitations [Appellant] is referring to [are] found in claim 19 and not
claim 18.” Ans. 13. The Examiner further correctly notes that “[a]s seen in
the final office action, claim 19 was not rejected [as unpatentable over
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Claims (5-8, 11, and 13—15
Appellant does not offer arguments in favor of dependent claims 7, 8,
11, and 13—15 separate from those presented for claim 6. See Br. 19. We
select claim 6 as the representative claim, and claims 7, 8, 11, and 13—15
stand or fall with claim 6. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant presents arguments for claim 6 similar to those presented
above for claim 1. See Br. 19. As discussed above, these arguments are not
persuasive.
Accordingly, for reasons similar to those discussed above for claim 1,
we likewise sustain the Examiner’s rejection of claim 6 as unpatentable over
Cieswisz, Small, and Nates. We further sustain the rejection of claims 7, 8,
11, and 13—15, which fall with claim 6.
Claim 18
Appellant contends that “none of the cited art [Cieswisz, Small, or
Nates] discloses the pins to be of substantially same length.” Br. 20.
In response to Appellant’s argument, the Examiner points out that
“Ciecwisz does disclose that [sic] said first and second pin being equal
length.” Ans. 12; see also id. (the Examiner’s annotated versions of Figure
3 of Ciecwisz); Final Act. 9-10. Appellant does not apprise us of Examiner
error.
Ciecwisz, Small, and Nates]” but was just rejected under 35 U.S.C. § 112,
first paragraph, “as failing to comply with the written description
requirement.” See id. (emphasis added); see also Final Act. 3^4. As discussed
above, we agree with the Examiner that claim 19 lacks written description.
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Appellant further presents arguments for claim 18 similar to those
presented above for claims 1 and 6. See Br. 19-20. As discussed above,
these arguments are not persuasive.
Accordingly, for reasons similar to those discussed above for claims 1
and 6, we likewise sustain the Examiner’s rejection of claim 18 as
unpatentable over Cieswisz, Small, and Nates.
DECISION
We REVERSE the decision of the Examiner to reject claims 3 and 18
for lack of written description.
We AFFIRM the decision of the Examiner to reject claim 19 for lack
of written description.
We AFFIRM the decision of the Examiner to reject claims 1, 2, 5, 16,
and 17 as unpatentable over Small and Nates.
We AFFIRM the decision of the Examiner to reject claims 1—3, 5—8,
11, and 13—18 as unpatentable over Cieswisz, Small, and Nates.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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