Ex Parte Tupper

Patent Trial and Appeal Board

Sep 17, 2012

12308565 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/308,565 12/18/2008 Stephen Mark Tupper 0119/0086 7495
21395 7590 09/17/2012
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
09/17/2012 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 STEPHEN MARK TUPPER
__________

Appeal 2011-011280
Application 12/308,565
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
tracheostomy dilator. The Examiner has rejected the claims as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The Specification discloses tracheostomy dilators “comprising a
curved, tapered patient end region…, a handle region towards the rear end of
the dilator opposite the patient end region and a passage for receiving a
Appeal 2011-011280
Application 12/308,565

2
guide member extending within the dilator from its patient end” (Spec. 1).
Figures 1 and 2 of the Specification are shown below:

Figure 1 shows “a side elevation view of the dilator showing a guidewire
[30] extending along the dilator” and Figure 2 shows “a plan view of the
dilator without the guidewire” (id. at 2). The Specification discloses that the
dilator includes a passage that opens axially at the patient end; the “other end
of the passage 10 opens on a side of the dilator through a side opening 12”
(id. at 3).
Claims 1-6 are on appeal. Claims 1 and 6, the only independent
claims, are representative and read as follows:
1. A tracheostomy dilator comprising a patient end region that is
curved to one side and tapers to a reduced diameter at its patient end, the
patient end region being adapted for insertion through a tracheostomy to
expand the tracheostomy, a handle region towards a rear end of the dilator
opposite the patient end region, and a passage for receiving a guide member
extending within the dilator from its patient end such that the dilator can be
slid forwardly through the tracheostomy along the guide member,
characterized in that the passage opens on a side of the dilator through an
opening forwardly of its rear end.

Appeal 2011-011280
Application 12/308,565

3
6. An assembly of a dilator having a guide member, characterized in
that one end of the guide member projects from a patient end of the dilator,
and that a part of the guide member emerging from an opening of a passage
of the dilator extends rearwardly along the outside of a handle region.

Issue
The Examiner has rejected claims 1-6 under 35 U.S.C. § 102(b) as
anticipated as by Sauer.1 The Examiner finds that Sauer discloses “a
tracheostomy dilator … comprising a curved, patient end region that is
curved to one side and tapers to a reduced diameter at its patient end …
[which is] adapted for insertion through a tracheostomy” (Answer 3-4). The
Examiner finds that Sauer’s dilator has “a handle region (12) … opposite the
patient end region, and a passage (90) for receiving a guide member (w),”
that extends within the dilator from the patient end and opens on a side of
the dilator through an opening (72) (id. at 4).
Appellant contends that Sauer does not disclose a tracheostomy
dilator with “a patient end region that is curved to one side and tapers to a
reduced diameter at its patient end,” as required by claim 1 (Appeal Br. 11).
Appellant also contends that Sauer does not disclose a dilator assembly in
which “a part of the guide member emerging from an opening of a passage
of the dilator extends rearwardly along the outside of a handle region,” as
required by claim 6 (id. at 13-14).
The issues presented are: Does the evidence of record support the
Examiner’s findings that Sauer discloses the tracheostomy dilator of claim 1
and the assembly of a dilator having a guide member of claim 6?

1 Sauer et al., US 5,690,669, Nov. 25, 1997
Appeal 2011-011280
Application 12/308,565

4
Findings of Fact
1. Sauer discloses an apparatus for expanding body tissue that
incorporates an inflatable member and can be used in performing a
tracheostomy (Sauer, col. 1, ll. 6-11).
2. Figure 4 of Sauer is shown below:

Figure 4 shows “a side plan view in partial cross-section of the apparatus …
in an unactuated position” (id. at col. 3, ll. 15-16).
3. Sauer discloses that the apparatus includes a handle unit (12) and
an elongated member (14), as well as an “arcuate guide channel 72” and an
aperture that both accommodate a guide wire (w) (id. at col. 4, ll. 6-8; col. 5,
ll. 17-21).
4. Sauer discloses that “[h]andle unit 12 further includes … nose hub
26” (id. at col. 4, ll. 19-20).
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Appeal 2011-011280
Application 12/308,565

6
prevent it from being positioned alongside nose hub 26 instead. Nose hub
26 is part of the handle of Sauer’s device (FF 4); thus, Sauer’s device
reasonably appears capable of having the configuration recited in claim 6.
Appellant argues that Sauer
does not disclose a handle region of a dilator that has an
opening of a passage where a part of the guide member
emerging from the opening would extend rearwardly along the
outside of a handle region. Rather, … Sauer discloses that his
guide wire “w” has a portion that extends from the guide
channel 72 at the distal end of the nose hub 26.
(Appeal Br. 13-14.)
This argument is not persuasive, because claim 6 does not require any
particular location or configuration for the guide member opening. In any
event, Sauer describes arcuate passage 72 as part of the distal portion of the
nose hub (Sauer, col. 5, ll. 14-18), which is part of the handle (FF 4).
Claim 1
Claim 1 is directed to a tracheostomy dilator comprising, among other
things, a patient end region that is curved to one side and tapers to a reduced
diameter at its patient end. The Examiner annotated Sauer’s Figure 8 to
illustrate his interpretation Sauer’s device:

Appeal 2011-011280
Application 12/308,565

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The annotated Figure 8 indicates that curved distal end of the inflated
cylindrical balloon corresponds to a patient end region that is tapered and
curved to one side (Answer 5; see also Sauer, col. 3, ll. 31-32).
Appellant argues that “the dilator is recited in Claim 1 to comprise ‘a
patient end region that is curved to one side and tapers to a reduced diameter
at its patient end’. There is nothing in the Sauer device that comes close to
the quoted recitation.” (Appeal Br. 11.)
We agree with Appellant that the Examiner has not shown that
Sauer’s device is reasonably interpreted as including a “patient end region
that is curved to one side and tapers to a reduced diameter at its patient end.”
Claim 1 requires that the “patient end region” of the dilator – that is,
the end region – curves to one side and is tapered to a reduced diameter, not
merely that some portion of the end region has a side that is curved and a
portion that has a smaller diameter. Sauer’s Figure 8 shows that end region
of its device – which includes the entire cylindrical balloon 94 – actually has
a larger diameter than the immediately proximal portion of the device, and
therefore does not “taper[ ] to a reduced diameter,” as required by claim 1
(FF 5). Nor does Sauer’s Figure 8 show the end portion curved to one side,
as also required by claim 1.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2-5 as anticipated by Sauer.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Sauer
discloses the assembly of a dilator having a guide member of claim 6, but
Appeal 2011-011280
Application 12/308,565

8
does not support the Examiner’s finding that Sauer discloses the
tracheostomy dilator of claim 1.
SUMMARY
We affirm the rejection of claim 6, but reverse the rejection of claims
1-5.
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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