Ex Parte 6699221 et al

Patent Trial and Appeal Board

Feb 13, 2013

95000565 (P.T.A.B. Feb. 13, 2013)

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.
95/000,565 08/12/2010 6699221 0006675.00277US1 2323
7590 02/13/2013
Francis C. Hand, Esq.
c/o CARELLA, BYRNE, BAIN, GILFILLAN et al.
6 Becker Farm Road
Roseland, NJ 07068
EXAMINER
CLARK, JEANNE MARIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/13/2013 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
____________

PATENT TRIAL AND APPEAL BOARD
____________

BECTON, DICKINSON AND COMPANY
Requester & Respondent

v.

MICHAEL J. VAILLANCOURT
Patent Owner & Appellant
____________

Appeal 2012-003151
Reexamination Control 95/000,565
Patent 6,699,221 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
On July 27, 2012, Patent Owner and Real Party in Interest of U.S. Patent
6,699,221 B2 (hereinafter, “the ‘221 patent”), Michael J. Vaillancourt (hereinafter
“Patent Owner”), requested rehearing under 37 C.F.R. § 41.79 of the Board’s
Decision of June 29, 2012, affirming the Examiner’s rejections of claims 1-37 in
an inter partes reexamination (hereinafter “Request”). Respondent and Third Party
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Requester also filed Comments in response to Patent Owner’s Request on August
27, 2012 in accordance with 37 C.F.R. § 41.79(c).
Patent Owner contends that the Decision misinterpreted the facts and law in its
interpretation of certain identified terms and, based on this misinterpretation, erred
in finding the claims anticipated by, or concluding that the claims are obvious over,
the prior art (Request 1-2; see also Request 17-30 (discussing the claim
interpretation with respect to each of the affirmed rejections)).
Claim 1 is reproduced below for convenience. (App. Br., Claim App’x 1.)
1. A bloodless catheter comprising
a first hub having a bore at a proximal end;
a cannula fixed in and extending from an opposite distal end of
said hub for invasive positioning in a blood vessel; and
a septum seal mounted in said bore of said hub in
circumferentially sealed relation to prevent a flow of fluid from said
cannula to said proximal end of said hub, said seal having a weakened
central section.
CLAIM INTERPRETATION
During reexamination, “claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language should be
read in light of the specification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Patent Owner’s Request argues that the Decision erred in its interpretation of
the following terms:
(a) “hub” as encompassing a structure having more than one piece (Request 9-
11);
(b) “bore” as encompassing a structure having a recess formed within a hollow
chamber or barrel (Request 11-13); and
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(c) “septum seal” as encompassing a structure of the valve member 55 of
Vaillancourt ‘766 (Request 13-16).
We are not persuaded that our interpretation of these terms was in error.
For each of the terms noted above, Patent Owner argues that the Decision
ignores the plain language of the claims (Request 9:18, 11:20-21, 13:20-22).
However, Patent Owner fails to disclose what aspect of the plain language would
alter the interpretation provided in the Decision. The claims use the terms “hub,”
“bore” and “septum seal” with no qualifying language to further structurally define
these features. That is, the claims do not expressly recite that a “hub” is limited
only to structures having a one-piece body, that a “bore” may not have recesses
therein, or that a “septum seal” be structurally limited to any particular shape.
Patent Owner argues that the inventor’s descriptions in the Specification and
drawings of the ‘221 patent constitute the broadest reasonable interpretation
consistent with the Specification and that “the Board Decision gives no credence to
the inventor’s description” (Request 10:8-10 and 13-15, 12:3-12, 14:1-10).
The Decision acknowledged the use of the terms in the Specification in
interpreting the claims (see e.g., Decision 8, 19, and 32). The ‘221 patent provided
no special meaning to the terms at issue, a point noted by Patent Owner in the
Request (Request 10 and 11). See In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) ("During reexamination, as with original examination,
the PTO must give claims their broadest reasonable construction consistent with
the specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.").
As aptly stated in In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997):
The appellants urge us to consult the specification and some of the
cited prior art . . . and interpret the disputed language more narrowly
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in view thereof. When read in light of this material, according to
applicants, the “true” meaning of the phrase emerges. We decline to
attempt to harmonize the applicants' interpretation with the application
and prior art. Such an approach puts the burden in the wrong place. It
is the applicants' burden to precisely define the invention, not the
PTO's . . . .
The problem in this case is that the appellants failed to make
their intended meaning explicitly clear. Even though the appellants
implore us to interpret the claims in light of the specification, the
specification fails to set forth the definition sought by the appellants.
While claims are sometimes construed more narrowly during patent
infringement litigation to do justice and equity between the parties, adopting the
broadest reasonable interpretation while the claims are undergoing reexamination
is not unfair to the applicant as the claims can be amended and so interpreting the
claims “serves the public interest by reducing the possibility that claims, finally
allowed, will be given broader scope than is justified,” In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir.1984); see also In re Prater, 415 F.2d 1393, 1395-96 (CCPA
1969). We are, therefore, vigilant about not importing extraneous limitations into
the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(“[A]lthough the specification often describes very specific embodiments of the
invention, we have repeatedly warned against confining the claims to those
embodiments.”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
For example, with respect to the term “bore,” Patent Owner argues that a
recess in a bore would preclude the movement of the septum seal as demonstrated
in Figures 3 and 4 of the ‘221 patent, and thus the Decision’s broader interpretation
of the term “bore” would be contrary to the disclosure (Request 12). We note that
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the claims are silent as to the septum seal being capable of sliding in any particular
manner, and we decline to read into the claims such a requirement.
Moreover, the Decision’s broadest reasonable interpretations are not
inconsistent with the Specification’s embodiments. An interpretation is
inconsistent with the Specification if the interpretation would exclude the specific
embodiments described therein. Here, the panel’s broader interpretation of the
terms “hub,” “bore,” and “septum seal” encompasses not only the exemplified
constructions described in the Specification but also other constructions that one of
ordinary skill in the art would consider to be encompassed by the unqualified
language of the claims. For example, with respect to the term “bore,” we disagree
with the Patent Owner’s assertion that the Decision’s interpretation “imposes a
limitation that is not apparent in the language of the claim at issue, i.e., that the
bore has a recess” (Request 12). To the contrary, the Decision’s interpretation
encompasses bores that have a recess and bores that do not have recesses because
the unqualified term “bore” is not reasonably limited to any particularly shaped
hollow structure. The written description of the ‘221 patent does not indicate that
bores should be construed more narrowly to exclude recesses.
Patent Owner argues that the Decision failed to consider the citations to
certain patents in the background section of the Specification, which Patent Owner
alleges are examples of how one of ordinary skill in the art would have understood
the terms at issue (10:3-5; 11:23-12:2, 14:11-15:7). With respect to the term
“septum seal,” Patent Owner further points to the use of terms in the inventor’s
other patents (Vaillancourt ‘891 an Vaillancourt ‘728), in which the term “septum”
described only a part of a valve structure (Request 15 and 26-27), and statements
made during prosecution of the ‘221 patent with regard to the Newgard reference
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(US 4,874,377) (Request 16-17) as evidence of misinterpretation of the term
“septum seal” as claimed.
While the Specification and prosecution history of the ‘221 patent may
include reference to patents in the art, Patent Owner did not argue in the
Specification, during reexamination prosecution, or during the appeal that the
terms used in these references constituted the full scope of the terms of the claims.
The Request for Rehearing is not a time to rely upon arguments and evidence that
could have been raised earlier. 37 C.F.R. § 41.79(b)(1) (2009) (“Arguments not
raised in the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.”). Patent Owner provided no
persuasive evidence on appeal that the noted claim terms deserve a more narrow
meaning or that the references identified in the Specification or prosecution history
limit how a skilled artisan would understand these terms. Moreover, it is not
evident from reading the ‘221 patent that the patents cited in the specification, e.g.,
at col. 1, ll, 36-45, that the inventors intended to rely upon the cited patents to
define and limit the structures recited in the claims at issue.
Moreover, we are not persuaded that the prior art patents teachings are
evidence that one of ordinary skill in the art would have understood the term
“septum seal” to have a more narrow meaning than the interpretation provided in
the Decision. The prior art used the term “septum” and not “septum seal.”
Accordingly, the prior art has only limited weight as to the scope and meaning of
the distinct term “septum seal” of the ‘221 patent’s claims. For that reason, Patent
Owner has not shown that the prior art’s use of the term “septum” is inconsistent
with the Decision’s interpretation of the term “septum seal.”
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Further, Patent Owner has not sufficiently explained why the statements
made regarding the Newgard patent during prosecution of the ‘221 patent
“precludes the septum seal from being read as the valve member 55 of Vaillancourt
‘766 (i.e. as supported circumferentially at one end and extended into space at
another end[)]” (Request 17). According to Patent Owner’s description, the
arguments were directed to the fact that Newgard’s seal was not in
“circumferentially sealed relation” because “there is a circumferential gap between
obturator member 48 [the alleged seal in the Newgard patent] and the wall of the
bore 42 of the hub 38” (id. at 16-17). Yet, unlike the Newgard seal, the valve
member 55 of Figure 3 of Vaillancourt ‘766 has one end in a friction fit with the
bore of the hub and, thus, is in a “circumferentially sealed relation” as claimed (see
Vaillancourt ‘766, Figure 3; Decision 33-34).
Patent Owner further contends that it is erroneous to resort to a dictionary
definition, which Patent Owner deems “extrinsic evidence,” when intrinsic
evidence can resolve an ambiguity of a disputed claim (Request 11) (citing
Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
Our focus is properly directed to how one of ordinary skill in the art would
have understood the unqualified terms “hub,” “bore,” and “septum seal.”
Accordingly, our resort to a dictionary definition as evidence of what a skilled
artisan would have understood is proper. “Because dictionaries, and especially
technical dictionaries, endeavor to collect the accepted meanings of terms used in
various fields of science and technology, those resources have been properly
recognized as among the many tools that can assist the court in determining the
meaning of particular terminology to those of skill in the art of the invention.”
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Patent Owner
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provided no persuasive evidence in its Appeal Brief as to how the skilled artisan
would have understood the terms at issue and the Specification provides no express
definition. Accordingly, the panel’s reliance on dictionary definitions to determine
the broadest reasonably interpretation to the skilled artisan is appropriate.
We cannot agree that the Decision’s interpretation of the terms “hub,”
“bore,” and “septum seal” was unreasonably broad, and we do not alter the
Decision’s interpretation. Accordingly, we need not address Patent Owner’s
arguments of patentability based on a more narrow interpretation. However, we
address Patent Owner’s additional arguments directed to specific claims and
rejections below.
With respect to claim 10, Patent Owner contends that Figures 2 and 3 of
Luther illustrate that “the front end of the plug [35b] slides relative to the surface
of the septum [33]” which precludes the plug 35b from being “mounted on the
septum [33]” (Request 20 and 23). According to Patent Owner, if mounted, “a
relative movement between the plug and septum would be resisted and/or the
movement of the plug would cause a tearing of the septum” (id.). With respect to
claim 20, Patent Owner likewise contends that the Decision failed to apprehend
that opener 120 of Van Heugten would not deform the membrane 110 if it were
mounted thereon (Request 23-24).
The arguments made in the Appeal Brief with respect to claim 10 are not
directed to any movement implied by Figures 2 and 3 of Luther (see App. Br. 17-
18 and 20). As noted in the Decision, and thus not overlooked or misapprehended,
Patent Owner’s arguments regarding the rejection based on Luther were directed to
a membrane opener 120 and a membrane 110, which do not appear in Luther
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(Decision 21; App. Br. 20). We decline to address arguments made for the first
time upon rehearing. 37 C.F.R. § 41.79(b)(1).
Moreover, also as noted in the Decision:
Further, Patent Owner has directed us to no evidence in support
of the contention that the plug 35b or opener 120 would not function
if “mounted,” or supported, by the respective seals of Luther and Van
Heugten. Attorney arguments do not take the place of evidence in the
record. Pearson, 494 F.2d at 1405.
(Decision 26.) Accordingly, the Decision considered Patent Owner’s arguments
and found them not persuasive for lack of evidence in support thereof.
Patent Owner further argues that Van Heugten fails to disclose valve
member 110 in circumferentially sealed relation to the bore (Request 22-23).
As stated in the Decision:
Regarding the septum seal being in circumferentially sealed
relation to the bore, Patent Owner merely asserts that these claim
features are not taught by Van Heugten (id.). A general allegation that
the art does not teach the claim limitations is no more than merely
pointing out the claim limitations. See 37 C.F.R. § 41.67(c)(1)(vii). In
any event, such statements do not address the Examiner’s specific
findings and support therefore (see ACP 12, citing Van Heugten, col.
1, ll. 4-27, col. 2, ll. 45-50, col. 3, l. 59-col. 4, l. 49, and Figures 2, 3,
and 4a-4c) articulated in the rejections or explain why the Examiner’s
findings are not supported by the evidence.
(Decision 23.) The arguments made in the Request address the merits of the
Examiner’s findings for the first time upon rehearing, which is not appropriate. 37
C.F.R. § 41.79(b)(1).
With respect to claim 4, Patent Owner further contends that “[t]he fact that
the valve member 55 of Vaillancourt ‘766 collapses axially precludes an
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interpretation that the valve member 55 is slidably mounted in the bore of the hub
10” (Request 28).
Upon Rehearing, Patent Owner must “must state with particularity the points
believed to have been misapprehended or overlooked in rendering the Board's
opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1).
The Decision states that:
Patent Owner’s arguments focus on the fact that the various
portions of valve member 55, i.e., support end 56, valve end 31, and
the thin-walled section 54, individually cannot meet the requirements
of claim 4. However, Patent Owner fails to address the fact that the
Examiner finds the mounting and axial movement of valve member
55, as a whole, meets the requirements of the claim 4. Accordingly,
we are unconvinced that the Examiner’s position, which is based on
sufficient rational underpinnings, is improper.
(Decision 35.) Patent Owner directs us to no points that the Decision
misapprehended or overlooked. Patent Owner has not shown the reasoning
provided in the Decision to be untenable.
Finally, with respect to claim 7, Patent Owner contends that “the Examiner
cannot reasonably find that claim 7 reads on the valve member when the luer
adaptor 40 is inserted into the hub 10, as illustrated in Fig. 2, when the valve
member 55/30 is axially collapsed onto tube 20” (Request 29).
Again, Patent Owner has not identified the points believed to have been
misapprehended or overlooked in the Decision. 37 C.F.R. § 41.79(b)(1). The
Decision states that:
The Examiner reasonably finds that the claim 7 reads on the
valve member when the luer adaptor 40 is inserted into hub 10, as
illustrated in Figure 2, when valve member 55/30 is axially collapsed
onto, and thus supported by, tube 20. We see no reason to read the
requirements of claim 7 to exist only when no luer adaptor is present,
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and Patent Owner has provided no evidence or reasoning for us to do
so.
(Decision 36). Patent Owner has not shown the reasoning provided in the Decision
to be untenable.
Based on the foregoing, we have granted Patent Owner’s request to the
extent that we have reconsidered our decision, but we deny Patent Owner’s request
to alter our decision to affirm the Examiner’s rejection.
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).

DENIED

Patent Owner:
Francis C. Hand, Esq.
c/o CARELLA, BYRNE, BAIN, GILFILLAN et al.
6 Becker Farm Road
Roseland, NJ 07068

Third Party Requester:

David L. Cavanaugh, Esq.
WILMERHALE/DC
1875 Pennsylvania Ave., NW
Washington, DC 20006