Ex Parte Walther et al

Patent Trial and Appeal BoardJan 24, 2017

13339788 (P.T.A.B. Jan. 24, 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. 13/339,788 12/29/2011 Linda M. Walther 9262-101014-US 3495 19407 7590 01/25/2017 Fitch, Even, Tabin & Flannery, LLP 120 South La Salle Street, Suite 1600 Chicago, IL 60603-3406 EXAMINER MORRIS, TAYLOR L ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 01/25/2017 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 LINDA M. WALTHER, ISHWOR P. ADHIKARI, and ETHAN S. ABERNATHEY Appeal 2015-003220 Application 13/339,788 Technology Center 3600 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1, 3—9, and 11—14. App. Br. 3. Claims 2 and 10 are canceled. Final Act. 2; see also Appellants’ Amendment B filed, October 29, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to vertical support poles and more particularly to intravenous poles.” Spec. 11. Claims 1 and Appeal 2015-003220 Application 13/339,788 9 are independent claims. Claim 1 is illustrative of the claims on appeal and is reproduced below: 1. An apparatus comprising a jigsaw-puzzle piece configured to comprise a vertical support intravenous pole base that interlocks with at least one other jigsaw-puzzle piece base that is associated with another vertical support intravenous pole. REFERENCES RELIED ON BY THE EXAMINER Roepke et al. US 2004/0011941 A1 Jan. 22, 2004 (“Roepke”) Simmons, Jr. US 7,833,077 B1 Nov. 16,2010 (“Simmons”) THE REJECTIONS ON APPEAL Claims 1,3,4, 6—9, and 11—13 are rejected under 35 U.S.C. § 102(b) as anticipated by Simmons. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Simmons and Roepke. ANALYSIS The rejection of claims 1, 3, 4, 6—9, and 11—13 as anticipated by Simmons Both independent claims are directed to an apparatus “configured to comprise” (claim 1) a vertical support intravenous pole base, or “configured to receive” (claim 9) a bottom portion of a vertical support intravenous pole. The Examiner equates the two “configured to” limitations (Ans. 3) and Appellants argue these “configured to” limitations together. App. Br. 10. 2 Appeal 2015-003220 Application 13/339,788 The parties initially dispute whether the limitation “a vertical support intravenous pole” is positively recited or whether such language is only indicative of the intended use of the apparatus. See Ans. 3, 6; see also App. Br. 9—10. However, the resolution of this matter is not dispositive. See infra. Nevertheless, we agree with the Examiner that an intravenous pole is not positively claimed. Ans. 3, 6. Instead, both independent claims are interpreted as pertaining to an apparatus that is “configured to” support such a pole, not that the pole itself is positively recited.1 However, regarding the common limitation of “configured to” found in each of the claims, Appellants contend, “this expression denotes an actual state of configuration” and one “that fundamentally ties the stated function/use to the physical characteristics of’ the base. App. Br. 10. The Examiner agrees with the need for a “structural difference” but then states, “[i]f the prior art structure is capable of performing the intended use, then it meets the claim.”2 Ans. 6. We note the Examiner’s use of “capable of’ instead of “configured to.” Our reviewing court has held that “configured to” can have a meaning narrower than “capable of’ based on the way the term is used. See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Here, Appellants’ Specification denotes “an actual state of configuration” (see Spec. Tflf 20, 21 and hole 102 depicted in 1 In short, Appellants’ argument that “claim 1 requires a ‘vertical support intravenous pole base’” is not a recitation of an intravenous pole. App. Br. 10. Likewise, Appellants’ argument that “claim 9 specifies a ‘base configured to receive a bottom portion of a vertical support intravenous pole’” is also not a recitation to an intravenous pole. App. Br. 10. 2 The Examiner further states that all that is required of the reference “is a pole structure that is capable of being used in [an] intravenous procedure” and that “any vertical pole will read on the claim.” Ans. 6—7. 3 Appeal 2015-003220 Application 13/339,788 the drawings) and as such, we do not correlate “configured to” with the broader “capable of’ as undertaken by the Examiner. Reply Br. 2—3. We are further instructed by our reviewing court, “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). In the present matter, the claims define a base of a kind uniquely adapted to support a vertical support intravenous pole, which base is not found in Simmons.3 In short, the Examiner does not indicate where, expressly or inherently, Simmons discloses an apparatus “configured to” provide support to an intravenous pole.4 Accordingly, and based on the record presented, we reverse the Examiner’s rejection of claims 1,3,4, 6—9, and 11—13 as being anticipated by Simmons. The rejection of claims 5 and 14 as being unpatentable over Simmons and Roepke Regarding the rejection of dependent claims 5 and 14 involving the additional teachings of Roepke, the Examiner does not rely on Roepke in any way that would cure the deficiency of Simmons. Final Act. 6—8. We 3 Appellants’ state, “our claims are limited to a vertical support intravenous pole base and not merely to any base for any pole.” Reply Br. 4. 4 In the event the Examiner is raising an inherency argument based on speculation of the properties of the base (see Reply Br. 2—4), Appellants point out that in this situation, the reference must disclose prior art that must necessarily include the unstated limitation, and that inherency may not be established by probabilities or possibilities. Reply Br. 3. In short, Appellants state that under such an inherency argument, “it simply isn’t sufficient that Simmons’ block might be able to ‘support the weight or pressure of a vertical support intravenous pole.’” Reply Br. 4. 4 Appeal 2015-003220 Application 13/339,788 therefore do not sustain the Examiner’s rejection of dependent claims 5 and 14 as being obvious over Simmons and Roepke. DECISION The Examiner’s rejections of claims 1, 3—9, and 11—14 are reversed. REVERSED 5