Ex Parte Dietz et al

Patent Trial and Appeal Board

Oct 11, 2012

11005420 (P.T.A.B. Oct. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TIMOTHY DIETZ, DANIEL M. BROUNSTEIN, MEIR MOSHE,
and JAMES R. GANNOE
__________

Appeal 2011-001726
Application 11/005,420
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
device for stabilizing the epicardial surface of a heart. The Examiner has
rejected the claims as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse the Examiner’s anticipation rejection but enter a new
ground under 37 C.F.R. § 41.50(b), rejecting the same claims as obvious.

Appeal 2011-001726
Application 11/005,420

2
STATEMENT OF THE CASE
The Specification describes heart stabilizers that use a suction source
to minimize motion of heart tissue during cardiac surgery (Spec. 1). Figure
3 in the Specification shows an embodiment:

Figure 3 depicts a suction assembly comprising frame (33) that
includes first arm (81) and second arm (82), and cross-member (83) (id. at 6,
ll. 17-20). Frame (33) also has “three living hinges to permit frame 33 to be
bent to conform to the anastomotic site,” including living hinge (88) located
in the middle of cross member (83), and a pair of living hinges (89) located
at the junction of arms (81) and (82) and cross member (83) (id. at ll. 30-33).
Appeal 2011-001726
Application 11/005,420

3
Claims 5-7 are on appeal.1 Independent claim 5 is representative and
reads as follows (emphasis added):
5. A stabilizer for stabilizing an epicardial surface of the heart,
comprising:
a bendable frame;
a first suction foot connected to the frame;
a second suction foot connected to the frame at a location
spaced apart from the first suction foot; the frame including at least
two living hinges to permit the frame to be bent to a position that
conforms to the epicardial surface of the heart.
The claims stand rejected under 35 U.S.C. §102(b) as anticipated by
Hamilton et al. (U.S. Pat. No. 5,885,271, issued Mar. 23, 1999).
ANTICIPATION
Findings of Fact
1. Hamilton describes a unibody device for immobilizing a region of an
organ, such as a heart for use in cardiovascular surgical procedures
(Hamilton, col. 1, ll. 6-12).
2. Figures 1 and 2 in Hamilton show the following:

1 Claims 1-4 and 8-17 have been withdrawn (App. Br. 3).
Appeal 2011-001726
Application 11/005,420

4
Figure 1 depicts a top view of a unibody device, which includes a frame (2)
having an elbow region (3) and arms (4), as well as a handle mounting
bracket (7) (id. at col. 10, ll. 23-39). Figure 2 depicts a side view of the
device of Figure 1, which shows that it includes suction arrangement (9)
(id.).
3. Hamilton discloses that the frame includes an elbow region and a first
and second arm extending from the elbow region, where the elbow region
“is a region including an apex where the arms of the frame meet” (id. at col.
5, ll. 7-10).
4. Hamilton teaches that the arms may be non-linear, such as “curved, S-
shaped, undulating, or other configuration which can provide flexibility in
the shape or size of the surface area immobilized by the device” (id. at col.
5, ll. 19-23) (cited by the Examiner, Ans. 3, 5).
5. Hamilton also discloses that the frame can be made from “non-metals
such as plastic,” and that the frame can be “malleable material which
advantageously provides for varying the shape of the arms of the frame to
more closely follow the contours of the compliant body” (id. at ll. 42-48)
(cited by the Examiner, Ans. 3, 5).
6. Hamilton further teaches the following:
The size of the apex angle of a unibody device can be
made adjustable by including a hinging arrangement. A
hinging arrangement includes a hinge between the arms of the
device at the elbow region. A hinging arrangement can also
include a locking device to maintain the arms in a fixed position
once the desired angle is selected. In an alternative
embodiment, the angle of intersection of the arms can be
adjusted by use of a malleable material which will not tend to
Appeal 2011-001726
Application 11/005,420

5
crack or break upon repeated adjustment in the elbow region.
According to this embodiment, the angle of the apex can be
adjusted by pressing the arms together or pulling the arms apart
to the desired size. As previously stated, the entire frame can
also be prepared from a malleable material. Suitable malleable
materials are known.
(Id. at col. 6, ll. 9-22.)
Principles of Law
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to
establish a prima facie case of unpatentability in the first instance, however,
the rejection is improper and must be reversed. Id.; In re Rijckaert, 9 F.3d
1531, 1532 (Fed. Cir. 1993). “[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
Analysis
In the anticipation rejection, the Examiner notes that the Specification
provides no special meaning for the claim phrase “living hinge.” Rather,
according to the Examiner (Ans. 4), the Specification discloses that a living
hinge permits “the frame to bend at each point and take a set to maintain the
suction feet at a preferred position” (Spec. 4, ll. 18-21). The Examiner also
points out that the Specification states that living hinges “permit frame 33 to
be bent to conform to the anastomotic site,” and that the frame may bend “to
conform to convex or concave surfaces or certain saddle geometries” on the
heart surface (Spec. 6, l. 30 – 7, l. 9; Ans. 4).
Appeal 2011-001726
Application 11/005,420

6
Based on these disclosures in the Specification the Examiner asserts
that the malleable frame in Hamilton connecting each suction foot forms a
living hinge (Ans. 4). The Examiner takes the position that “the malleable
frame members of Hamilton form living hinges because the members may
be bent to allow the suction feet to conform to the surfaces of the heart”
(Ans. 5 (citing Hamilton, col. 5, ll. 19-23 and 42-49, and quoting col. 6, ll.
14-22); see also FF 4-6).
By contrast, Appellants argue that “living hinges” as recited in claim 5
must “have undergone some processing or modification to create a surface
that enables a hinging effect” relative to the frame (App. Br. 4). In support
of this interpretation, Appellants cite U.S. Pat. No. 7,685,676 (id. at 5).
According to Appellants, Hamilton does not disclose a “living hinge” under
a proper interpretation, and therefore the reference cannot anticipate claims
5-7 (id. at 4).
We agree with the Examiner that the Specification does not define
“living hinge” per se, and the Specification discloses that such a hinge
allows a frame to bend in a relevant manner. That said, an ordinary artisan
would have understood that “living hinge” is a term of art having an
ordinary meaning. Specifically, “living hinge” refers to a thin flexible
hinge, such as one made of plastic, extending between two comparatively
rigid parts, allowing those parts to bend along the line of the hinge. See,
e.g., U.S. Pat. No. 4,377,247 (issued Mar. 22, 1983), col. 3, ll. 28-41 (cited
on attached PTO-892 form); U.S. Pat. Appl. Publ. No. 2009/0221878 (cited
by Examiner, Ans. 7), [0018], [0037], Figs. 1A and 1B (describing “true
hinge” versus “living hinge”). Such a hinge is often manufactured with the
Appeal 2011-001726
Application 11/005,420

7
two rigid parts at the same time, i.e., so that all three form a single part. See,
e.g., “Living hinge” definition at Reference.com (Oct. 4, 2012),
http://www.reference.com/browse/living+hinge?s=t (cited on attached PTO-
892 form). The ordinary meaning of “living hinge” is consistent with
disclosures in the Specification cited by the Examiner (Ans. 4).
Considering our claim interpretation, we disagree with the Examiner
that the frame described in Hamilton forms a living hinge, simply by virtue
of the frame being malleable and therefore able to “be bent to allow the
suction feet to conform to the surfaces of the heart” (id. at 5). Because the
Examiner does not establish that Hamilton discloses a frame including “at
least two or more living hinges” as cited in claims 5-7, the Examiner fails to
establish a prima facie case of anticipation.
OBVIOUSNESS
On appeal of the anticipation rejection, Appellants respond to the
Examiner’s interpretation of “living hinge” as recited in pending claims
(App. Br. 4-5). As noted by Appellants and discussed above, the Examiner
incorrectly “equates ‘a malleable material’ to a ‘living hinge’” and therefore
the Examiner fails to establish anticipation (id. at 4).
Hamilton does not only disclose a device having a frame prepared
from malleable material, however. Hamilton also discloses that the “size of
the apex angle of a unibody device can be made adjustable by including a
hinging arrangement,” and that such a hinging arrangement “includes a
hinge between the arms of the device at the elbow region” (FF 6). In the
same paragraph, Hamilton further teaches that “the angle of intersection of
Appeal 2011-001726
Application 11/005,420

8
the arms can be adjusted by use of a malleable material which will not tend
to crack or break upon repeated adjustment in the elbow region” (id.).
Hamilton also discloses that “the entire frame can also be prepared from a
malleable material” (id.).
Based on these teachings, one of ordinary skill in the art would have
had reason to place living hinges on each side of the U-shaped elbow region
between that region and each of the two arms of Hamilton’s device, for
example, just past bracket (7) as shown in Figure 1 of Hamilton (FF 2).
Thus, an ordinary artisan would have had reason to make a relevant frame
including “at least two living hinges to permit the frame to be bent to a
position that conforms” to the surface of a heart, as recited in claim 5. Such
hinges would allow the arms in Hamilton’s device “to be adjusted by use of
a malleable material which will not tend to crack or break upon repeated
adjustment in the elbow region” and also would provide a hinging
arrangement, where “the entire frame can also be prepared from a malleable
material,” as taught in Hamilton (FF 6).
Thus, we find that Hamilton suggests the use of a “frame including
two or more living hinges” as recited in claim 5. Because we find that the
Examiner establishes, and Appellants do not dispute, that all other elements
recited in claims 5-7 are present in the device disclosed in Hamilton, we
conclude that claims 5-7 are obvious under 35 U.S.C. §103(a) over
Hamilton. We designate this as a new ground of rejection under 37 C.F.R.
§ 41.50(b) to provide Appellants with an opportunity to respond.
Appeal 2011-001726
Application 11/005,420

9
SUMMARY
We reverse the Examiner’s rejection of claims 5-7 as anticipated by
Hamilton. We enter a new ground under 37 C.F.R. § 41.50(b), however,
rejecting the same claims as obvious over Hamilton.

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

cdc

Notice of References Cited

Application/Control No.

11/005,420
Applicant(s)/Patent Under
Reexamination
Timothy Dietz et al.
Examiner

Samuel Gilbert
Art Unit

3700

Page 1 of 1

U.S. PATENT DOCUMENTS

* DOCUMENT NO. DATE NAME CLASS SUBCLASS
DOCUMENT
SOURCE **
APS OTHER

4,377,247 3/22/83 Robert E. Hazard et al.

B

C

D

E

F

G

H

I

J

K

L

M

FOREIGN PATENT DOCUMENTS

* DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS
DOCUMENT
SOURCE **
APS OTHER

N

O

P

Q

R

S

T
NON-PATENT DOCUMENTS

* DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages)
DOCUMENT
SOURCE **
APS OTHER

U

“Living hinge” definition at Reference.com (Oct. 4, 2012),
http://www.reference.com/browse/living+hinge?s=t

V

W

X

*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98) Notice of References Cited Part of Paper No. 16
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
10/4/2012, EAST Version: 3.0.0.6
Related Searches
Transparent hinge...
Small hinged plas...
Definitions
living
hinge
Nearby Words
Living goddesse...
Living graph
Living green
Living hinge
Living history ...
Living history ...
Living human tr...
');
Ads
Wholesale Door Hinges
www.boltonhardware.com/
Same Day Shipping Order Before 3PM At
Least 55% Less Any Local Store
Hinges
www.contempolivinginc.com/
Save up to 70%. Free Shipping.
Durable Hinges for Cabinets.
Hinge Manufacturers
www.thomasnet.com/hinges
Find Trusted Hinge Mfrs & Suppliers From
The Leading Industrial Source.
Related Articles

Michigan Inventor Develops Coextruded Living
Hinge
Feb 20, 2008; ALEXANDRIA, Va., Feb. 20 -- Michael
P. Schoemann of Waterford, Mich., has developed a
coextruded living hinge. According to the...
Read more with a free trial on HighBeam.com »
');
');
Did you know: Does each toe have its own name? The big toe sure does, right here.
Living hinge
A living hinge is a thin flexible hinge ( flexure bearing) made
from plastic (rather than cloth, leather, or some other substance)
that joins two rigid plastic parts together, allowing them to bend
along the line of the hinge. It is typically manufactured in an
injection molding operation that creates all three parts at one time
as a single part , and if correctly designed and constructed, it can
remain functional over the life of the part. Polyethylene and
polypropylene are considered to be the best resins for living
hinges, due to their excellent fatigue resistance.
A thinned section of the plastic bends to allow movement. The
minimal friction and very little wear in such a hinge makes it useful
in the design of microelectromechanical systems, and the low cost
and ease of manufacturing makes them quite common in
disposable packaging. These can flex more than a million cycles
without failure.
History
A few years after the introduction of polypropylene (PP) in 1957,
"engineers at Enjay (now ExxonMobil) noticed an unusual
phenomenon while studying pigment dispersion in very thin-walled
color chips. Below a certain thickness, the PP molecules oriented in
the direction of flow. Bending perpendicular to this orientation
resulted in a stronger part that did not break with repeated flexing.
Bob Munns, who worked at Enjay at the time, coined the term
living hinge and the name stuck. The living hinge was introduced
to the industry as a hinged recipe box at the 1963 NPE. Over the
next 40 years, creative design engineers used living hinges in
thousands of applications ranging from dispensing closures with
hinged caps to automobile gas pedals and carrying cases. The
current trend for parts consolidation and assembly minimization
has created a renewed interest in integrally molded hinges.
Sources and notes
Further reading
http://www.rtpcompany.com/info/molding/design/hinge.htm
Wikipedia, the free encyclopedia © 2001-2006 Wikipedia contributors (Disclaimer)
This article is licensed under the GNU Free Documentation License.
Last updated on Wednesday October 01, 2008 at 06:15:54 PDT (GMT -0700)
View this article at Wikipedia.org - Edit this article at Wikipedia.org - Donate to the
Wikimedia Foundation
Living hinge
» Confusing Words
» School gear
» Style guide
» Literary terms
Style guide
Confusing words
Word of the Day
Free tools
Blog
Games
Page 2 of 3Living hinge | Learn everything there is to know about Living hinge at Reference.com
10/4/2012http://www.reference.com/browse/living+hinge?s=t