Ex Parte Bohner et al

Patent Trials and Appeals BoardFeb 14, 2019

13796817 - (D) (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/796,817 03/12/2013 14717 7590 02/19/2019 Medtronic Inc. (SurgNav) 710 Medtronic Parkway NE MS: LC340 Legal Patents Minneapolis, MN 55432 FIRST NAMED INVENTOR Michelle Bohner 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. C00003388.USU2 5561 EXAMINER BAYS,PAMELAM ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/19/2019 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): rs.patents.five@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHELLE BOHNER, RALPH I. MCNALL, and HARDEY KAHLON Appeal2018-000353 Application 13/796,817 Technology Center 3700 Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision to reject claims 1-7, 9, 10, 12, 14, 17, 20, and 21. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2018-000353 Application 13/796,817 CLAIMED SUBJECT MATTER The claims are directed to electrosurgical devices for resecting, cutting and/or removing tissue. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrosurgical device for cutting tissue comprising: a handle; a shaft having a major longitudinal axis and defining an exterior surface; the shaft defining a distal end portion comprising a distal most edge having an exposed electrosurgical cutting surface that is substantially perpendicular to the longitudinal axis, the exterior surface being continuous along the shaft and the distal end portion; an arcuate surface extending proximally from the distal most edge along the major longitudinal axis; first and second arcuate edges defining lateral edges of the arcuate surface; an electrical insulation layer coating substantially all of the distal end portion with the exception of at least the distal most edge of the distal end portion such that the distal most edge is exposed; and a connector adapted to associate the electrosurgical device to an electrical energy source so that at least the distal most edge comprises an electrode configured to deliver electrical energy to the tissue. Appeal Br. 11 (Claims App.). REFERENCES RELIED ON BY THE EXAMINER Davison Qiu Dickhaus US 2002/0052600 Al US 2004/0176760 Al US 2011/0054461 Al 2 May 2, 2002 Sept. 9, 2004 Mar. 3, 2011 Appeal2018-000353 Application 13/796,817 THE REJECTIONS ON APPEAL I. Claims 1-7, 9, 10, 12, 14, 17, 20, and 21 are rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. II. Claims 1, 4--7, 9, 12, and 17 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Qiu and Dickhaus. III. Claims 2, 3, 10, 14, 20, and 21 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Qiu, Dickhaus, and Davison. OPINION Rejection I Appellants argue the claims subject to the first ground of rejection, i.e., claims 1-7, 9, 10, 12, 14, 17, 20, and 21, as a group. Appeal Br. 4--5. We select claim 1 as representative of the group, and claims 2-7, 9, 10, 12, 14, 17, 20, and 21 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner determines that the phrases "the shaft defining a distal end portion" and "the exterior surface being continuous along the shaft and the distal end portion" in claim 1 are unclear. See Final Act. 2-3. Specifically, the Examiner states, "it is unclear how the shaft can 'define' a distal end portion, or what is being structurally defined by 'the exterior surface being continuous along the shaft and the distal end portion."' Id. at 3. Appellants assert that a person of ordinary skill in the art would understand the scope of claim 1, in particular, in view of Figure 5, where the structure identified by reference number 16 is, at least in part, a shaft. Appeal Br. 5. Appellants acknowledge that the Specification refers to the structure identified with reference number 13 as a "'shaft [that] includes a 3 Appeal2018-000353 Application 13/796,817 proximal shaft portion 14 and a distal end portion 16,"' but assert "there is no ambiguity that [the] distal end portion is defined, at least in part, by a shaft, and that the claimed feature of the 'the shaft defining a distal end portion' ( emphasis added) must be referring to the structure identified by reference designator 16 in FIG. 5." Id. The Examiner finds that Appellants' Specification describes a shaft 13 that includes proximal portion 14 and distal portion 16, and, therefore, it is reasonable to interpret the "shaft" as comprising two distinct portions. See Ans. 14--16 (citing Spec. 10, 11, Figs. 3, 5, 6, 19). Thus, according to the Examiner, Appellants' interpretation of the recited shaft in claim 1 as just the distal end portion 16, and not also the proximal portion 14, is inconsistent with the Specification. In reply, Appellants state that claim 1 was drafted "to exclude the exact configuration the Examiner is attempting to impart on the claims" and "[ s ]imply, because Appellant used a term in its claims supported by the Specification, but not identical to the word or phrase used in the Specification to refer to this feature, does not make it indefinite." Reply Br. 2. A claim fails to comply with 35 U.S.C. Â§ 112, second paragraph, "when it contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (Plager, J., concurring) ( Approving, for pre-issuance claims, the standard from MPEP Â§ 2173.05(e) (Nov. 2013).); see also Ex parte McAward, Appeal 2015- 006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (Adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard.). Our reviewing court instructs us that an applicant "is 4 Appeal2018-000353 Application 13/796,817 in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation." Halliburton Energy Servs. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). We agree with the Examiner that Appellants' Specification describes the "shaft" as comprising two distinct portions. See, e.g., Spec. 10:26-28 ("System 20 includes a device 10 comprising a handle 12 and a shaft 13 having a longitudinal axis 'A' where the shaft 13 includes a proximal shaft portion 14 and a distal end portion 16."). 1 Although Appellants assert that the "shaft" recited in claim 1 refers to structure identified by reference number 16 (Appeal Br. 5), the Specification consistently refers to the "shaft" with reference number 13 and its distal end portion with reference number 16. See Spec. Further, the Specification does not describe the shaft as having an exterior surface that is continuous. 2, 3 Nor does the Specification 1 We note that the language in dispute was added to independent claims 1, 12, and 21 in an Amendment filed on March 3, 2017, (hereinafter "Amendment") and which stated "[n]o new matter has been added." Amendment 2, 4, 6, 8. The Amendment did not specifically identify where support for the limitation at issue could be found in the original disclosure. See Amendment 8. 2 The Specification teaches that, in one embodiment, "proximal shaft 14 and distal end portion 16 may comprise a unitary structure or may comprise separately formed members which are permanently or removably joined." Spec. 11 :27-29 ( emphasis added). However, this portion of the Specification does not explain whether the surface of any such unitary structure is continuous. 3 Appellants point out that the Examiner did not reject the claims under 5 Appeal2018-000353 Application 13/796,817 ever refer to the distal end portion as being, itself, a shaft. Therefore, claim 1 does not merely use language that is not identical to terms used in the Specification (as Appellants assert (Reply Br. 2)), claim 1 uses language that contradicts the consistent use of the term "shaft" in the Specification. 4 In consideration of the contradiction between the description in Appellants' Specification and Figures and the language of the claims, we agree with the Examiner that claim 1 is unclear. Accordingly, we sustain the Examiner's rejection of claims 1-7, 9, 10, 12, 14, 17, 20, and 21 under 35 U.S.C. Â§ 112, second paragraph. As we agree that the language discussed above renders claims 1-7, 9, 10, 12, 14, 17, 20, and 21 indefinite, we also agree with the Examiner that, in the context of independent claims 1, 12, and 21, it is not clear how a shaft may define a distal end portion ( and also a surface "continuous along the shaft") inasmuch as it is unclear what structure Appellants mean by the term "shaft." 35 U.S.C. Â§ 112, first paragraph, and assert that there is no dispute as to whether support exists for the claimed features. Appeal Br. 5 n.1. We do not reach this issue. 4 Appellants' interpretation of the "shaft" recited in claim 1 as just the distal end portion 16, and not also the proximal portion 14, is also arguably inconsistent with claim 7. Claim 7 recites "wherein the shaft is configured for removable attachment to the handle." Although the distal end portion 16, as described in the Specification, is configured for indirect, removable attachment to the handle 12 by way of the proximal portion 14, claim 7 at least suggests that the recited "shaft" is the structure (namely, the shaft 13), which is configured for direct, removable attachment to the handle 12. Indeed, the separate recitation of the "distal end portion" in claim 6, and of the "shaft" in claim 7, implies that the recited "distal end portion" and the recited "shaft" refer to separate structures. 6 Appeal2018-000353 Application 13/796,817 Rejections 11-111 Some of the limitations at issue in the rejection of claims 1-7, 9, 10, 12, 14, 17, 20, and 21 as indefinite are the same as those argued by Appellants' in traversing the rejection of these claims as unpatentable over the prior art. See Appeal Br. 4--9. In view of our determination that claims 1-7, 9, 10, 12, 14, 17, 20, and 21 are indefinite, it follows that the prior art rejection of these claims must fall, because the rejection is based necessarily on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that our decision in this regard is proforma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. DECISION I. The rejection of claims 1-7, 9, 10, 12, 14, 17, 20, and 21 as indefinite is affirmed. II. The rejection of claims 1, 4--7, 9, 12, and 17 as unpatentable over Qiu and Dickhaus is reversed. III. The rejection of claims 2, 3, 10, 14, 20, and 21 as unpatentable over Qiu, Dickhaus, and Davison is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7