Ex Parte Vinas

Patent Trial and Appeal BoardMay 28, 2013

11523219 (P.T.A.B. May. 28, 2013)

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. 11/523,219 09/18/2006 Luis A. Vinas VINP:101US 5952 24041 7590 05/29/2013 SIMPSON & SIMPSON, PLLC 5555 MAIN STREET WILLIAMSVILLE, NY 14221-5406 EXAMINER IWAMAYE, ANDREW MICHAEL ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 05/29/2013 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 LUIS A. VINAS ____________________ Appeal 2011-003433 Application 11/523,219 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and ADAM V. FLOYD, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003433 Application 11/523,219 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3, 4, 6, 12-16, 18-22, and 25-27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED INVENTION The claims are directed to reusable breast cover and nipple prosthesis. Spec. para. [0001], [0009]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A temporary, reusable, external covering for a human breast comprising: a device having a width of about 3-9 cm, said device having an outer surface and an inner surface, said device gradually increasing in height from less than 1 to about 2 mm at the edge of said device to about 2 mm to about 1 cm at the center of said device; wherein said edge is about 0.38 mm in thickness; wherein said inner surface forms a generally concave arch extending from said perimeter toward said center of said device; and, wherein said covering is fabricated from a self-adhering silicone material enabling said covering to removably adhere to said human breast. Appeal 2011-003433 Application 11/523,219 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wilkins Davis US 4,778,465 US 5,171,321 Oct. 18, 1988 Dec. 15, 1992 Lauren Reynolds US 2003/0014108 A1 US 2004/0010311 A1 Jan. 16, 2003 Jan. 15, 2004 REJECTIONS The Examiner made the following rejections. Claims 1, 3, 4, 6, 12-16, 18-22, and 25-27 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Lauren, Davis, and Wilkins. Claims 10 and 23 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Lauren, Davis, Wilkins, and Reynolds. ANALYSIS Obviousness over Lauren, Davis, and Wilkins The Examiner finds that all of the limitations of claim 1 are disclosed in the combination of Lauren and Davis with the exception of the limitations pertaining to height. Ans. 4-5. The Examiner relies upon Wilkins for theses finding disclosure of a gradual “increasing in height from less than 1 to about 2 mm at the edge” and “about 2 mm to about 1 cm at the center,” as well as an edge of “about 0.38 mm in thickness.” Ans. 5. The Examiner finds that using the dimensions disclosed in Wilkins with the prosthesis of Lauren and Davis would have been obvious to ensure the resultant device conform to the curvature of a typical breast. Ans. 5-6. Addressing claim 1, the Examiner relies on Lauren for the width of 3-9 cm, Davis for the concave inner surface and self-adhering silicone and Wilkins for the edge Appeal 2011-003433 Application 11/523,219 4 thickness of about 0.38mm. See Ans. 4-5. The Appellant first argues that Wilkins, an internal nipple prosthesis, does not give any indication as to what material is used to fabricate the disclosed internal implant. It is well known in the art that silicone is not suitable as an internal implant as it will cause granulations or capsules to form under the skin. In addition, silicone will contract the tissue around the implant and cause scar tissue to form thereby losing the desired shape. App. Br. 5. It appears that the Appellants are not considering the combination of references proposed by the Examiner. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.1986). As stated above, the Examiner does not rely on Wilkins for silicone material or internal positioning of the prosthesis. Rather, the Examiner relies on Wilkins, not Lauren or Davis, for of the edge thickness of the prosthesis. As Appellant’s arguments do not address the rejection articulated by the Examiner, the Appellant’s arguments are not persuasive. The Appellant then argues “[t]here is no teaching or suggestion in either Lauren or Davis that would suggest to a person of ordinary skill in the art that a silicone prosthesis with such a thin edge would be strong and durable enough to be used and reused as an external prosthesis.” App. Br. 6. This argument is not persuasive as the Appellant introduces no evidence that the proposed combination would not be strong and durable enough to be used and reused as an external prosthesis. Appeal 2011-003433 Application 11/523,219 5 Next, the Appellant contends that “the references supply no teaching or suggestion that a silicone prosthesis, designed to be reused externally and thus exposed to hazards that could not harm an implanted internal prosthesis, could include such a thin edge despite the existence of the problem of a visible demarcation line.” App. Br. 6. Appellants’ argument appears to be holding the Examiner to a teaching, suggestion, or motivation (TSM) standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The proper inquiry is whether the Examiner has articulated adequate reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have been led to combine Lauren, Davis and Wilkins. In this case, the Examiner found “that would have been obvious to construct an implant with the claimed dimensions, as taught by Wilkins, in order to ensure that the device closely conforms to the approximate curvature of a typical breast.” Ans. 5. The Appellant’s arguments do not identify error in the Examiner’s articulated reasoning, but rather, focus on characteristics of Wilkins that are unrelated to the edge thickness of the prostheses. As such, the Appellant’s arguments are not persuasive. Finally, in the Reply Brief, it appears that Appellant is arguing that Davis “teaches away” from Wilkins because internal prostheses “'have become increasingly disfavored as a result of mounting evidence suggesting that they pose health risks such as preventing accurate tumor detection or adversely affecting the autoimmune system.'” Reply Br. 4 citing Davis, col. 1, ll. 22-26. While Davis may discredit the internal use of nipple prostheses, it does not discredit the Wilkin’s teaching of prostheses with an edge thickness of .38 mm. As the Examiner relies on Wilkins solely for the Appeal 2011-003433 Application 11/523,219 6 teaching of edge thickness of .38mm, we are not persuaded that Davis “teaches away” from Wilkins. For the above reasons, we sustain the rejection of claim 1, or the rejection of claims 3, 4, 6, 12-16, 18-22, and 25- 27 which depend therefrom and are not separately argued. Obviousness over Lauren, Davis, Wilkins and Reynolds Addressing claims 10 and 23, Appellants rely on the arguments presented above with respect to Lauren, Davis, and Wilkins to counter the obviousness rejection over Lauren, Davis, Wilkins, and Reynolds. App. Br. 7-8. As there is no deficiency in the rejection to Lauren, Davis, and Wilkins, we sustain the Examiner’s rejection of claims 10 and 23 as obvious over Lauren, Davis, Wilkins and Reynolds. DECISION For the above reasons, the Examiner’s rejections of claims 1, 3, 4, 6, 12-16, 18-22, and 25-27 are 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)(1)(iv). AFFIRMED Klh