Ex Parte Ma et al

Patent Trial and Appeal Board

Jul 13, 2018

14085127 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/085,127 11/20/2013
137834 7590 07/17/2018
MDT_RTGNV/Shumaker & Sieffert P.A.
Attn: IP Legal Department
826 Coal Creek Circle
Louisville, CO 80027
FIRST NAMED INVENTOR
XiaodongMa
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.
H-KN-02800US/1213-046US01 6251
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
pairdocketing@ssiplaw.com
rs. patents. two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAODONG MA, JUNWEI LI, MIN-SHY AN SHEU,
ANASTASIA RIGHTER, and ARIANA GILMORE
Appeal2017-009294
Application 14/085, 127
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
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Application 14/085,127
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 1 and4-I4. Wehavejurisdictionunder35U.S.C. § 6(b).
Claim 1 illustrates the invention:
1. A medical device, comprising:
a substrate, wherein the substrate comprises a material
selected from the group consisting of glass, ceramics, and
metals, wherein the metal is selected from the group consisting
of silver, copper, steel, aluminum, cobalt, chromium, titanium,
niobium, tantalum, alloys thereof, and combinations thereof;
a silane layer comprising at least one sulfur-functional
silane and at least one additional silane, on at least a portion of
the substrate;
at least one additional component bound to the silane
layer, the at least one additional component selected from the
group consisting of monomers, polymers, bioactive agents, and
combinations thereof.
Appellant1 (App. Br. 4--5) requests review of the Examiner's rejection
of claims 1 and 4--14 under AIA 35 U.S.C. § 103 as unpatentable over
Kyomoto (U.S. 2011/0027757 Al, published February 3, 2011), Ferrera
(U.S. 6,241,691 Bl, issued June 5, 2001), Nakatsuka (JP 2002-038105 A,
published December 2002, and relying on an English Machine Translation
of the document dated November 3, 2015), and Yumoto (Hiromichi Yumoto
et al., Anti-inflammatory and protective effects of 2-methacryloyloxyethyl
phosphorylcholine polymer on oral epithelial cells, Journal of Biomedical
Materials Research A, February 2015, Vol. 103A, Issue 2, (cited by the
1 Appellant is the Applicant Covidien LP. Covidien LP is also identified as
the real party in interest. App. Br. 3.
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Application 14/085,127
Examiner as Society for Biomaterials NPL document and retrieved by the
Examiner on November 3, 2015)). Final Act. 4; Ans. 3; App. Br. 4.
OPINION
Without reaching the merits of the prior art rejection, we REVERSE
the Examiner's prior art rejection of claims 1 and 4--14 under 35 U.S.C.
§ 103.
We enter the following NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
REJECTION UNDER§ l 12(b) -Indefiniteness
Claims 1 and 4--14 are rejected under 35 U.S.C. § 112(b ).
The text of 35 U.S.C. § 112 (b) requires "[t]he specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention." "As the statutory language of 'particular[ity]' and
'distinct[ ness]' indicates, claims are required to be cast in clear-as opposed
to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112(b) if
"the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits." Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624
(Fed. Cir. 1985)). Thus, the test for determining the question of
indefiniteness may be formulated as whether the claims "set out and
circumscribe a particular area with a reasonable degree of precision and
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Application 14/085,127
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, while exact precision is not required, an applicant
is required to use language as precise as the subject matter reasonably
permits. Id.
The subject matter of claim 1 encompasses a substrate that comprises
metals "selected from the group consisting of silver, copper, steel,
aluminum, cobalt, chromium, titanium, niobium, tantalum, alloys thereof,
and combinations thereof." When the phrase "consisting of' appears in a
clause of the body of a claim, rather than immediately following the
preamble, there is an "exceptionally strong presumption that a claim term set
off with 'consisting of' is closed to unrecited elements." Multilayer Stretch
Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359
(Fed. Cir. 2016) (a layer "selected from the group consisting of' specific
resins is closed to resins other than those listed). However, there is a lack of
clarity as to the recited element "alloys thereof."
After careful review of the record before us, we determine that the
Specification does not provide guidance as to what the term "alloys thereof'
means.
The term "alloys thereof' appears as one of the choices for the
substrate material of the claimed medical device. However, it is unclear
whether the term "alloys thereof' in claim 1, as presented for review on
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appeal, excludes alloys comprising metals not included in the claim's
selection of metals, such as gold. 2 That is, it is not clear that the term
"alloys thereof," as a choice of substrate material, is limited to alloys of
metals selected from the group consisting of silver, copper, steel, aluminum,
cobalt, chromium, titanium, niobium, and tantalum or encompasses alloys
comprising one of these metals with metals not otherwise identified.
It is well established that "the PTO must give claims their broadest
reasonable [interpretation] 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." In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee." Id.
Our review of the Specification does not reveal any definition of the
term "alloys thereof' that would lead one skilled in the art to ascertain that
the disputed term is limited to the specifically identified and claimed metals.
In fact, the Specification appears to favor an interpretation where the "alloys
thereof' includes alloys comprising metal elements not listed in the claim.
Spec. ,r 31 ("Suitable alloys include cobalt-nickel . .. "(emphasis added)).
Thus, we find the disputed language does not reasonably apprise those
2 The Specification and the originally filed claims contemplated gold as one
of the metals suitable for the substrate. Spec. ,r 31 and original claim 3. The
prosecution history shows that Appellant amended independent claim 1 by
incorporating the subject matter of original claims 2 and 3 and additionally
deleting gold as an option for the substrate material in response to an Office
Action dated April 14, 2016. Response dated June 8, 2016 (hereinafter
"June Response"), 10.
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skilled in the art both of the utilization and scope of the invention in a
manner that is as precise as the subject matter reasonably permits to notify
the public of what they are excluded from making and using.
Therefore, we are unable to determine the metes and bounds of the
subject matter of independent claims 1 and 4--14.
For the foregoing reasons, the scope of the claimed invention cannot
be determined.
Accordingly, on this record, claims 1 and 4--14 are indefinite for the
reasons given above.
REJECTION UNDER§ 103
Having determined that the subject matter of claims 1 and 4--14 is
indefinite, we are unable to determine the propriety of the prior art rejection
of claims 1 and 4--14. The review of the rejection of claims 1 and 4--14
under 35 U.S.C. § 103 would require considerable speculation as to the
scope of the claims. Such speculation would not be appropriate. In re
Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, procedurally
reverse the prior art rejections of claims 1 and 4--14 under 35 U.S.C. § 103.
We emphasize that this is a technical reversal of the rejection under 35
U.S.C. § 103, and not a reversal based upon the merits of the rejections.
DECISION
The Examiner's prior art rejection of claims 1 and 4--14 under 35
U.S.C. § 103 is reversed, but, pursuant to 37 C.F.R. § 4I.50(b), we enter a
new ground of rejection as to claims 1 and 4--14.
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Section 4I.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R. § 4I.50(b)
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