Ex Parte Vaillancourt et al

Patent Trial and Appeal BoardJun 13, 2017

13709589 (P.T.A.B. Jun. 13, 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. 13/709,589 12/10/2012 Michael J. Vaillancourt 733900.93 9051 27162 7590 06/14/2017 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER TREYGER, ILYA Y ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 06/14/2017 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 MICHAEL J. VAILLANCOURT and MARSHALL KERR ____________ Appeal 2015-007558 Application 13/709,589 Technology Center 3700 ____________ Before LINDA E. HORNER, LYNNE H. BROWNE, and GORDON D. KINDER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael J. Vaillancourt and Marshall Kerr (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated October 21, 2014 [hereinafter “Final Act.”], rejecting claims 1‒10 and 12‒19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION of claims 1‒10 and 12‒19 pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2015-007558 Application 13/709,589 2 CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to a “pinch clip for closing medical tubing” and “more particularly . . . a pinch clip for closing a tubing extending from a vacuum bottle for pleural effusion.” Spec. 1. Claims 1, 7, and 12 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. A pinch clip comprising a base having a first upstanding abutment thereon and a first finger-gripping surface at one end thereof; a wall extending from said base and having an aperture for passage of a tubing therethrough longitudinally of said base; a tab extending from said wall and forming a second finger gripping surface opposite and spaced from said first finger- gripping surface; a flange extending from said wall on a side opposite said tab, said flange having a recess therein; a leg extending from said base in cantilevered manner and being resiliently movable relative to said base to move between an open position and a closed position, said leg having an aperture for passage of a tubing therethrough longitudinally of said base and a second abutment thereon facing said first abutment for clamping a tubing passing through said aperture therebetween in said closed position; and a lip extending from said leg and being disposed in said recess of said flange in said closed position of said leg and spaced from said flange in said open position of said leg. Appeal Brief, Claims Appendix 1 (February 19, 2015) [hereinafter “Br.”]. Appeal 2015-007558 Application 13/709,589 3 EVIDENCE The Examiner relied upon the following evidence in the Final Office Action: Utterberg US 6,089,527 July 18, 2000 Zerfas US 7,234,677 B2 June 26, 2007 Traversaz US 8,328,763 B2 Dec. 11, 2012 CN ’979 CN 201806979 U Apr. 27, 2011 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1‒6 and 12‒17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Traversaz and Utterberg. 2. Claims 7‒10 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over CN ’979, Traversaz, and Utterberg.1 3. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Traversaz, Utterberg, and Zerfas. ANALYSIS In each ground of rejection, the Examiner finds that the clamp of Traversaz discloses finger surface F (as marked in annotated Figure 2d of Traversaz) and finger surface 115. Final Act. 5‒6, 10, 12. The Examiner finds that Traversaz does not expressly disclose the finger surfaces are 1 The Final Office Action erroneously includes canceled claim 11 in this ground of rejection. Compare Final Act. 2 with id. at 9. The Final Office Action also erroneously includes amended claim 18 in this ground of rejection, despite the amendment of claim 18 to depend indirectly from claim 1. Id. at 9. Appeal 2015-007558 Application 13/709,589 4 gripping surfaces. Id. at 7, 11. The Examiner relies on Utterberg to teach a clamp having surfaces intended to be held by fingers that are gripping surfaces. Id. (citing Utterberg, Fig. 2, element 38). The Examiner stated that it would have been obvious to make both finger surfaces of the clamp of Traversaz in the form of gripping surfaces, as taught by Utterberg, “in order to improve fixation [of] the device by fingers by employing the structure of the type known in the art.” Id. at 8, 11. Appellants have demonstrated error in the Examiner’s rejection because the reason articulated by the Examiner for the proposed modification of the finger surfaces identified by the Examiner to make them gripping surfaces is not based on rational underpinnings. In particular, as pointed out by Appellants, “the clamp 10 of Traversaz is mounted in a pump” and when so located, “the surface F is seated in place so that access by a finger is not possible” and “a pivoting lever 21 . . . is employed to open the clamp 10 when in place in a pump.” Br. 10, 14; see also Traversaz, col. 5, ll. 20‒38 (describing use of clamp 10 in a pump and use of a pivoting lever 21 to open and close the clamp). We agree with the Appellants that “there would be no need to ‘improve fixation [of] the device by fingers by employing the [gripping surface] structure [of Utterberg]’” in the pump and clamp of Traversaz because the clamp is not actuated by hand and the surfaces identified by the Examiner as finger surfaces are not accessible to a user for opening and closing when in use in the pump of Traversaz. Br. 10. For these reasons, we do not sustain the rejections of claims 1‒10 and 12‒19 under 35 U.S.C. § 103. Appeal 2015-007558 Application 13/709,589 5 NEW GROUNDS OF REJECTION We enter the following new grounds of rejection of the claims based on the prior art of record: 1. Claims 1‒6 and 15‒19 are rejected under 35 U.S.C. § 102(b) as anticipated by Zerfas. 2. Claims 7‒10 are rejected under 35 U.S.C. § 103(a) as unpatentable over CN ’979 and Zerfas. 3. Claims 12‒14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Zerfas. An annotated version of Figure 2 of Zerfas, showing generally where claim elements are found in the pinch clamp 20, are reproduced below: Figure 2 shows a perspective view of an embodiment of a pinch clamp in the open position. Zerfas, col. 2, ll. 39‒40. Appeal 2015-007558 Application 13/709,589 6 Rejection of claims 1‒6 and 15‒19 under 35 U.S.C. § 102(b) as anticipated by Zerfas As set forth infra and as shown in the annotated Figure 2 supra, Zerfas discloses a pinch clip 20 having each and every element called for in claims 1‒6 and 15‒19. Claim 1 As noted in annotated Figure 2 supra, Zerfas discloses a pinch clip (pinch clamp 20) as claimed. In particular, pinch clip (20) includes a base (support leg member 22) having a first upstanding abutment (leg pinch portion 43) thereon and first finger-gripping surface (ridges 64) at one end thereof. Pinch clip (20) includes a wall (upwardly extending anchor portion 46) extending from base (22) and having an aperture (opening 54) for passage of a tubing (44) therethrough longitudinally of base (22). Pinch clip (20) further includes a tab (finger-actuated tabular member 58 extending from distal end portion 50 of anchor portion 46) extending from the wall (46) and forming a second finger gripping surface (ridges 64) opposite and spaced from said first-finger gripping surface (ridges 64 on finger actuated tabular members 58 that extends from support leg member 22). Pinch clip (20) further includes a flange (anchoring flange 52) extending from the wall 46 on a side opposite the tab (upper tabular member 58). The flange (52) has a downwardly angled lower surface that creates a recess at the point at which the lower surface of the flange (52) meets wall (46). Pinch clip (20) also includes a leg (coupling leg member 24) extending from base (22) in a cantilevered manner and being resilient movable relative to base (22) Appeal 2015-007558 Application 13/709,589 7 between an open position (Figure 4) and a closed position (Figure 3). Leg (24) has an aperture (opening 36) for passage of a tubing (44) therethrough longitudinally of base (22) and a second abutment (leg pinch portion 42) thereon facing first abutment (43) for clamping tubing (44) passing through aperture (36) therebetween in said closed position (Figure 5). Pinch clip (20) also includes a lip (anchor flange engaging portion 35) extending from leg (24) and being disposed in the recess of flange (52) in the closed position of leg (24) (Figure 3), and spaced from flange (52) in the open position of leg (24) (Figure 4).2 Claim 2 Zerfas discloses that pinch clip 20 is made of a one-piece unitary body of plastic material. Zerfas, col. 4, l. 23 (“The entire clamp 20 is typically one contiguous structure . . . .”). Claim 3 The first abutment (43) of pinch clip (20) is transverse to base (22) and second abutment (42) is parallel to first abutment (43). Zerfas, Fig. 3; see also id. at col. 3, ll. 41‒44 “[W]hen the pinch portions are fully engaged (See FIG. 5), the pinch portions are substantially aligned, but slightly offset (See FIG. 5) or aligned with one another (not shown).” ). 2 Zerfas further discloses “an alternative embodiment [that] includes a plurality of anchoring flanges 53 located at the distal end portion 50 of the anchor portion 46.” Zerfas, Fig. 10, col. 5, ll. 5‒7. Appeal 2015-007558 Application 13/709,589 8 Claim 4 The first abutment (43) has a rounded surface (45) facing said second abutment (42) and said second abutment (42) has a rounded surface (45) facing said first abutment (43). Zerfas, col. 3, ll. 47‒50 (“Preferably, each pinch portion is generally triangularly shaped with a round point 45 to avoid any potential damage to the tubing from repeated use of the pinch clamp.”). Claim 5 Zerfas shows the lip (35) disposed above the plane of flange (52) and spaced from flange (52) in an open position of leg (24). Zerfas, Fig. 4. Claim 6 Lip (35) extends outwardly from leg (24) in a direction transverse to flange (52) in a closed position of leg (24). Zerfas, Fig. 3. In particular, lip (35) extends substantially parallel to base (22) in the closed position of leg (24), while flange (52) extends downwardly at an angle to lip (35), such that lip (35) extends across flange (52). Claim 15 Wall (46) extends perpendicularly from base (22) between said abutment (43) and said first finger-gripping surface (ridges 64 on the bottom side of lower finger-actuated tabular member 58). Zerfas, Fig. 2; Zerfas, col. 3, l. 67 ‒ col. 4, l. 4 (anchor portion 46 extends upwardly from the surface of support leg member 22 at about 90 degrees). Claim 16 Tab (58) extends perpendicularly from wall (46). Zerfas, Fig. 3. Squeezing of said first finger-gripping surface (64) and said second finger- Appeal 2015-007558 Application 13/709,589 9 gripping surface (64) towards each other causes said wall (46) to bend in a direction away from said leg (24). Zerfas, col. 4, ll. 32‒33 (“[T]he tabular members 58, when actuated toward one another, cause the anchor portion 46 to bend.”); see also id. at Fig. 4. Claim 17 Wall (46) extends perpendicularly from said base (22) and said tab (upper finger-actuated tabular member 58) extends perpendicularly from said wall (46) in parallel to said base (22). Zerfas, Figs. 2 and 3; id. at col. 3, l. 67 ‒ col. 4, l. 4 (disclosing that anchor portion 46 extends upwardly from surface of leg 22 at about 90 degrees). Claim 18 Wall (46) extends perpendicularly from base (22) between said abutment (43) and said first finger-gripping surface (ridges 64 on the bottom side of lower finger-actuated tabular member 58). Zerfas, Fig. 2; Zerfas, col. 3, l. 67 ‒ col. 4, l. 4 (anchor portion 46 extends upwardly from the surface of support leg member 22 at about 90 degrees). Claim 19 First finger-gripping surface (64) is on an underside of the end of base (22) and second finger-gripping surface (64) is on an upper side of tab (58). Zerfas, Fig. 5. Squeezing of said finger-gripping surfaces (64) toward each other causes said wall (46) to bend in a direction away from said leg (24). Zerfas, col. 4, ll. 32‒33 (“[T]he tabular members 58, when actuated toward one another, cause the anchor portion 46 to bend.”); see also id. at Fig. 4 (showing wall 46 bending in a direction away from leg 22). Appeal 2015-007558 Application 13/709,589 10 Rejection of claims 7‒10 under 35 U.S.C. § 103(a) as unpatentable over CN ’979 and Zerfas Claim 7 CN ’979 discloses a vacuum bottle having an indicator (vacuum indicator 2) for indicating the existence of a vacuum within said bottle, an inlet port (A), and a rubber tube (connecting tube joint 3) extending from inlet port (A). CN ’979, Figs. 1, 2, Abstract. CN ’979 also discloses tubing (connecting tube 5) secured to said rubber tube (3) for effusion of liquids into said bottle. Id. at Fig. 1, Abstract, paras. 2‒3. CN ’979 discloses two clamps, a joint clamp 4 and a tube clamp 4A. Id. at Fig. 1, Abstract. CN ’979 discloses that “the open end of the connecting tube joint [3] is rotatably connected with one end of the connecting tube [5] in a sealing way; the connecting tube joint [3] is provided with the joint clamp [4]; the connecting tube [5] is provided with the tube clamp [4A] for adjusting drainage flow.” Id. at Abstract. Thus, CN ’979 discloses a vacuum bottle substantially as claimed having two clamps, but does not describe the specific construction of these clamps (4, 4A). Zerfas discloses an improved ergonomic pinch clip (pinch clamp 20) suitable for use with medical tubing. Zerfas, col. 1, ll. 13‒23, 65‒66. In particular, pinch clip (20) includes a base (support leg member 22) having a first finger-gripping surface (ridges 64) at one end thereof. Pinch clip (20) includes a wall (upwardly extending anchor portion 46) extending from base (22) and having an aperture (opening 54) for passage of a tubing (44) therethrough longitudinally of base (22). Pinch clip (20) further includes a Appeal 2015-007558 Application 13/709,589 11 tab (finger-actuated tabular member 58 extending from distal end portion 50 of anchor portion 46) extending from the wall (46) and forming a second finger gripping surface (ridges 64) opposite and spaced from said first-finger gripping surface (ridges 64 on finger actuated tabular members 58 that extends from support leg member 22). Pinch clip (20) further includes a flange (anchoring flange 52) extending from the wall (46). The flange (52) has a downwardly angled lower surface that creates a recess at the point at which the lower surface of the flange (52) meets wall (46). Pinch clip (20) also includes a resiliently biased leg (coupling leg member 24) extending from base (22) for moving from an open position (Figure 4) spaced from said tubing (44) and said flange (52) to a closed position (Figure 3) abutting and closing said tubing (44) to a flow of liquid therethrough (Figure 5). Pinch clip (20) also includes a lip (anchor flange engaging portion 35) extending from leg (24) for disposition in the recess of flange (52) in the closed position of leg (24) (Figure 3). It would have been obvious to one having ordinary skill in the art at the time of Appellants’ invention to employ the improved ergonomic pinch clip 20 of Zerfas in place of clamp (4) to clamp rubber tube (3) and/or in the place of clamp (4A) to clamp connecting tube (5) in CN ’979 because Zerfas teaches that its pinch clip 20 is suitable for use in medical applications and the use of the improved pinch clip 20 of Zerfas in place of the clamps 4, 4A of CN ’979 is simply the predictable use of a prior art element (Zerfas’s pinch clip 20) according to its established function. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve Appeal 2015-007558 Application 13/709,589 12 one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Claim 8 Zerfas’s lip (35) extends outwardly of said leg (24) in a direction transverse to said flange (52) in said closed position of said leg (24). Zerfas, Fig. 3. In particular, lip (35) extends substantially parallel to base (22) in the closed position of leg (24), while flange (52) extends downwardly at an angle to lip (35), such that lip (35) extends across flange (52). Claim 9 Zerfas’s leg 24 has an aperture (opening 36) for passage of tubing 44 therethrough longitudinally of base 22. For the reasons discussed supra in the analysis of claim 7, it would have been obvious to use this same aperture for passage of the rubber tube (connecting tube joint 3) and tubing (connecting tube 5) of CN ’979 longitudinally therethrough. Claim 10 Zerfas’s leg 24 has an abutment (leg pinch portion 42) transverse to tubing 44 for abutting and closing tubing 44 to a flow of liquid in a closed position (Figure 5). For the reasons discussed supra in the analysis of claim 7, it would have been obvious to use the pinch clip 20 of Zerfas to clamp rubber tube (connecting tube joint 3) and/or tubing (connecting tube 5) of CN ’979. Appeal 2015-007558 Application 13/709,589 13 Rejection of claims 12‒14 under 35 U.S.C. § 103(a) as unpatentable over Zerfas Claim 12 As noted in annotated Figure 2 supra, Zerfas discloses a pinch clip (pinch clamp 20) as claimed. In particular, pinch clip (20) includes a base (support leg member 22) having a first upstanding abutment (leg pinch portion 43) thereon and first finger-gripping surface (ridges 64) at one end thereof. Pinch clip (20) includes a wall (upwardly extending anchor portion 46) extending from base (22) between said abutment (43) and said finger- gripping surface (64). Wall (46) has an aperture (opening 54) for passage of a tubing (44) therethrough longitudinally of base (22). Wall (46) is also resiliently flexible relative to said base (22). Zerfas, Fig. 4; id. at col. 4, ll. 32‒33 (“[T]he tabular members 58, when actuated toward one another, cause the anchor portion 46 to bend”). Pinch clip (20) further includes a tab (finger-actuated tabular member 58 extending from distal end portion 50 of anchor portion 46) extending from the wall (46) and forming a second finger gripping surface (ridges 64) opposite and spaced from said first-finger gripping surface (ridges 64 on finger actuated tabular members 58 that extends from support leg member 22). Pinch clip (20) further includes a flange (anchoring flange 52) extending from the wall 46 on a side opposite the tab (upper tabular member 58). The flange (52) has a downwardly angled lower surface that creates a recess at the point at which the lower surface of the flange (52) meets wall (46). Pinch clip (20) also includes a leg (coupling leg member 24) extending from base (22) in a cantilevered Appeal 2015-007558 Application 13/709,589 14 manner and being resilient movable relative to base (22) between an open position (Figure 4) and a closed position (Figure 3). Leg (24) has an aperture (opening 36) for passage of a tubing (44) therethrough longitudinally of base (22) and a second abutment (leg pinch portion 42) thereon facing first abutment (43) for clamping tubing (44) passing through aperture (36) therebetween in said closed position (Figure 5). Pinch clip (20) also includes a lip (anchor flange engaging portion 35) extending from leg (24) and being disposed in the recess of flange (52) in the closed position of leg (24) (Figure 3), and spaced from flange (52) in the open position of leg (24) (Figure 4). Zerfas does not explicitly disclose that the wall (46) has a thickness less than the thickness of base (22). Zerfas discloses, however, an improved ergonomic pinch clip (20) having an anchor portion 46 (i.e., the wall) that bends when the tabular members 58 are actuated toward one another. Zerfas, col. 1, ll. 65‒66, col. 4, ll. 32‒33. In order to make an ergonomic pinch clip 20, one would want the anchor portion 46 to bend easily when the tabular members 58 are actuated so that a user can easily use the pinch clip and quickly and safely release the clip from the tubing. Zerfas, col. 1, ll. 50‒ 61. It would have been simply a matter of common sense for a person having ordinary skill in the art to make the anchor portion 46 less thick than base 22 so that anchor portion 46 bends easily and actuation of the tabular members 58 toward one another is easy for the user in keeping with the goal of Zerfas of providing an ergonomic pinch clip 20. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (“[T]he analysis need not seek out precise teachings Appeal 2015-007558 Application 13/709,589 15 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.”). Further, the relative thicknesses of the wall and base are a mere matter of design choice and do not result in a device that operates differently from the device of Zerfas. See Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984) (affirming a district court determination of obviousness because “the dimensional limitations of claim 1 failed to particularly point out a feature of an air bar which performed any differently from prior art bars”). As such, the relative thicknesses of the wall and base, as called for in claim 12, would have been obvious to one having ordinary skill in the art at the time of Appellants’ invention. Claim 13 Zerfas’s first finger-gripping surface (ridges 64 on the bottom of tabular member 58 that extends from base 22) and said tab (upper tabular member 58) are movable toward each other to effect bending of said wall (46) in a direction away from said leg (24). Zerfas, Fig. 4; id. at col. 4, ll. 32‒33 (“[T]he tabular members 58, when actuated toward one another, cause the anchor portion 46 to bend.”) Claim 14 Zerfas’s wall (46) is perpendicular to said base (22) and said first finger-gripping surface (64). Zerfas, Fig. 2; id. at col. 3, l. 67 ‒ col. 4, l. 4 (anchor portion 46 extends upwardly from surface of leg 22 at about 90 degrees). Appeal 2015-007558 Application 13/709,589 16 DECISION The rejections of claims 1‒10 and 12‒19 under 35 U.S.C. § 103(a) are reversed. We enter NEW GROUNDS OF REJECTION of claims 1‒6 and 15‒19 under 35 U.S.C. § 102(b) as anticipated by Zerfas, claims 7‒10 under 35 U.S.C. § 103(a) as unpatentable over CN ’979 and Zerfas, and claims 12‒ 14 under 35 U.S.C. § 103(a) as unpatentable over Zerfas. Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2015-007558 Application 13/709,589 17 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)