Ex Parte Deitch et al

Patent Trial and Appeal Board

Aug 14, 2018

13945928 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/945,928 07/19/2013
69289 7590
COLOPLAST A/S
Attention: Corporate Patents
Holtedam 1
DK-3050 Humlebaek,
DENMARK
08/16/2018
FIRST NAMED INVENTOR
Sarah J Deitch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013056-US 2880
EXAMINER
DORNA, CARRIER
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/16/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@coloplast.com
dkbvd@coloplast.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH J. DEITCH and JON CORNELL
(APPLICANT: Coloplast A/S)
Appeal2017-007886
Application 13/945,928 1
Technology Center 3700
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-18 (App. Br.
6). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify "Coloplast A/S" as the real party in interest (App. Br.
4).
Appeal2017-007886
Application 13/945,928
STATEMENT OF THE CASE
Appellants' disclosure relates to "an artificial urinary sphincter system
having a pressure reservoir attachable to a pump and a conduit attachable
between the pump and a cuff' (Spec. 1: 23-25). Appellants' claim 1 is
representative and reproduced below:
1. An artificial urinary sphincter system comprising:
a pressure reservoir attachable to a pump and a conduit
attachable between the pump and a cuff, the cuff formed as a
one-piece monolithic polymer structure that is substantially
circular in radial cross-section, the cuff having an interior wall
connected by a pair of opposing end walls to an exterior wall,
the cuff including a closed cavity located between the interior
wall and the exterior wall and between the pair of opposing end
walls;
wherein the one-piece monolithic polymer structure
has a part line that is formed by a first face of the cuff that is
separable from a second face of the cuff to allow the first face
to be separated from the second face for placement of the cuff
around a urethra of a user; and
wherein the conduit is attachable to a connector that is
attached to the exterior wall of the cuff adjacent to one of the
first face or the second face, the connector communicating with
the closed cavity.
(App. Br. 31.)
The claims stand rejected as follows:
I. Claims 1, 4--6, 8-12, and 14--16 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Rosenbluth2 and Kuyava. 3
2 Rosenbluth et al., US 4,958,630, issued Sept. 25, 1990.
3 Kuyava et al., US 2003/0028076 Al, published Feb. 6, 2003.
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Application 13/945,928
II. Claims 2, 3, 13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rosenbluth, Kuyava, and
Fitzgerald. 4
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rosenbluth, Kuyava, and Haber. 5
Re} ection III:
On this record, Appellants do not present the rejection of claim 7
under 35 U.S.C. § 103(a) over the combination of Rosenbluth, Kuyava, and
Haber for our review or present arguments regarding this ground of rejection
(see generally App. Br. 12). Therefore, we summarily affirm this rejection
and will not discuss it further.
Re} ections 1-11:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The artificial urinary sphincter system set forth in each of Appellants'
independent claims requires, inter alia, a "pressure reservoir" (see App. Br.
31 and 33). As Appellants explain, the premise of Examiner's rejections of
Appellants' claims over the combination of Rosenbluth and Kuyava, with
or without Fitzgerald, is based on an incorrect interpretation of the term
"pressure reservoir" (Reply Br. 1-3).
4 Fitzgerald, US 4,019,499, issued Apr. 26, 1977.
5 Haber, US 4,634,443, issued Jan. 6, 1987.
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Application 13/945,928
According to Examiner:
Absent a special definition in the original specification of this
limitation, "pressure reservoir" has been interpreted in light of
its broadest reasonable interpretation to mean a reservoir or
chamber that influences cuff pressure. This limitation does not
confer the additional limitations appellant has asserted, such
that maintaining positive pressure in the cuff is not required. It
is noted that the features upon which applicant relies (i.e.,
pressure reservoir maintains pressure (i.e., positive pressure) in
a closed system and that the increased pressure in the closed
system is sufficient to maintain the cuff in the closed position)
are not recited in the rejected claim(s). Although the claims are
interpreted in light of the specification, limitations from the
specification are not read into the claims.
(Ans. 3 (emphasis added).) We are not persuaded.
As Appellants explain, Examiner's "construction is made in a
vacuum, separate and apart from [Appellants'] [S]pecification" (Reply Br.
2). We agree. According to Appellants, their "Appeal Brief arguments
in connection with all the appealed claim rejections are based upon the
construction of the term 'pressure reservoir' as meaning 'a pressure reservoir
that maintains pressure (i.e., positive pressure) in a closed system and that
the increased pressure in the closed system is sufficient to maintain the cuff
in a closed position."' (Reply Br. 1 (footnote omitted)). In this regard,
Appellants' describe both their and prior art artificial urinary sphincter
systems that comprise a "pressure-regulating reservoir" (see Spec. 4: 11-19
and 6: 6-9). Specifically, Appellants disclose:
The system[] is filled with liquid (e.g., saline) to provide a
liquid-filled closed system maintained at an equilibrium
pressure that is selected to close the cuff [] around the urethra.
When the user wishes to void, he squeezes and releases the
pump [] several times to move the liquid from the cuff [] into
the [] pressure-regulating reservoir []. The cuff[] "deflates"
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Appeal2017-007886
Application 13/945,928
and opens, which allows the urethra to open and pass urine.
The pressure-regulating reservoir[], having been pressurized
to a pressure above the equilibrium pressure by action of the
pump [], eventually returns to the equilibrium pressure over the
course of several minutes to again inflate the cuff [] and coapt
the urethra.
(Spec. 4: 11-19 (emphasis added); see also id. at 6: 6-9 (Appellants describe
their system as comprising a "reservoir ... sized to retain a volume of liquid
at an equilibrium pressure that is selected to inflate the cuff [] for coaptation
of the urethra. The reservoir [] maintains the pressure in the closed system []
after the tubing [] is connected between the components"); cf App. Br. 31
and 33 (Appellants' independent claims 1, 15, and 17).)
Thus, as Appellants' explain, notwithstanding Examiner's assertions
to the contrary:
All of the claims recite the pressure reservoir as part of
an artificial urinary sphincter system that controls urinary
continence. In the embodiments of the invention described in
the specification, the pressure reservoir functions as a device
that normally maintains the cuff in an inflated state to close the
urethra and provide the user with a state of continence
(dryness). When the user wishes to void, fluid is removed from
the cuff and into the reservoir, thereby deflating the cuff and
opening the urethra so it can pass urine. The Appellant's
construction is therefore consistent with the context and use of
the term in the specification, and with the ordinary and
customary meaning of the term [and] ... Examiner's assertion
that the "broadest reasonable interpretation" of "pressure
reservoir" is a "reservoir or chamber that influences cuff
pressure" improperly ignores this context.
(Reply Br. 2 (footnotes omitted).) We agree.
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Appeal2017-007886
Application 13/945,928
Examiner's improper interpretation of Appellants' claimed invention
leads, at best, to a combination of incompatible alternatives (see Final Act. 6
2-13; cf App. Br. 15-16). Notwithstanding Examiner's assertions to the
contrary, Appellants correctly explain:
[T]he system of Rosenbluth is not pressurized but is pumped in
order to create a restraint around a vein, thus restricting blood
flow for the purpose of enhancing an erection of the penis. The
urinary continence device of Kuyava is pressurized to have a
steady state that is closed around the urethra to reduce or
prevent urine from leaking out of the urethra, thus keeping the
user dry.
(App. Br. 16.) In sum, we agree with Appellants' contention that Examiner
failed to establish an evidentiary basis on this record to support a conclusion
that the pressure-regulating component of Kuyava's system "would be a
'suitable alternative' for" use in Rosenbluth's device (id. at 17). See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness").
We also agree with Appellants' contention that "Fitzgerald is not
cited for, nor does it remedy the deficiencies ... for the proposed
modification of Rosenbluth with Kuyava" (App. Br. 21; see also id. at 27-
29).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to rejections I and II. The
rejection of claims 1, 4---6, 8-12, and 14--16 under 35 U.S.C. § 103(a) as
6 Office Action mailed September 22, 2015.
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Application 13/945,928
unpatentable over the combination of Rosenbluth and Kuyava is reversed.
The rejection of claims 2, 3, 13, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rosenbluth, Kuyava, and Fitzgerald is
reversed.
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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