Ex Parte Ma et alDownload PDFPatent Trial and Appeal BoardJul 13, 201814085127 (P.T.A.B. Jul. 13, 2018) Copy Citation 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 Appeal2017-009294 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. 2 Appeal2017-009294 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 3 Appeal2017-009294 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 4 Appeal2017-009294 Application 14/085,127 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. 5 Appeal2017-009294 Application 14/085,127 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. 6 Appeal2017-009294 Application 14/085,127 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) 7 Copy with citationCopy as parenthetical citation