Ex Parte Moore et al

Patent Trial and Appeal BoardDec 6, 2012

11585045 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS G. MOORE, JR. and RONALD D. SPOOR ____________________ Appeal 2010-005955 Application 11/585,045 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and BRADFORD E. KILE, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005955 Application 11/585,045 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The Invention Appellants’ claimed invention relates to “a self-engaging peristaltic pump head having a thread for pulling a loop of tubing onto the roller-head assembly.” Spec. para. [0001]. Claims 1 and 3 are the independent claims on appeal, and claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ophthalmic aspiration pump roller-head assembly comprising: a plurality of rollers; a base attached to a first end of the rollers; and a face-plate attached to a second end of the rollers and having at least one groove formed in the face-plate for grabbing a tube and drawing the tube onto the rollers. Evidence Relied Upon Knapp US 5,387,088 Feb. 7, 1995 Cull US 2005/0069419 A1 Mar. 31, 2005 The Rejections The following rejections are before us on appeal: 1. Claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Knapp. 2. Claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Knapp and Cull. Appeal 2010-005955 Application 11/585,045 3 The Objection The Examiner objected to claims 1-4 because in independent claims 1 and 3 it is unclear if the claim term “the rollers” refers to “a plurality of rollers” for antecedent basis, or alternatively if “the rollers” only refers to some portion of the “plurality of rollers.” Office Action dated Feb. 25, 2009, at 2. Appellants contend that the Board should address this issue because the Examiner has rejected claims 1-4 as indefinite. App. Br. 3-4; Reply Br. 1-2. The Examiner did not reject claims 1-4 under 35 U.S.C. § 112, second paragraph; rather, the Examiner objected to these claims.1 See Office Action dated Feb. 25, 2009, at 2. Ordinarily, an objection is a petitionable matter, and not an appealable one. See Ans. 2; see also MPEP §§ 706.01 and 1201 (8th ed., Rev. Aug. 2012); Cf. Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential) (similarly determining an objection to the drawings was outside of the Board’s jurisdiction). Further, addressing the two prior art rejections that are before us does not require consideration of the scope of independent claims 1 and 3 with regard to the “plurality of rollers” or “the rollers.” In other words, the objection does not relate to a rejection. See In re Hengehold, 440 F2.d 1395, 1404 (CCPA 1971) (“the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”). Accordingly, the objection is not before us on review. 1 Perhaps the Examiner determined this issue warranted clarification of the claim but did not rise to the level of rendering the claims indefinite. Appeal 2010-005955 Application 11/585,045 4 OPINION Claims 1 and 2 as anticipated by Knapp Appellants argue that claim 1 “requires without any further structure or manipulation that the face-plate groove grab the tube not that the tube is grab[bed] by a notch after the tube is place on the face-plate.” Reply Br. 3. Based upon this claim construction, Appellants argue that Knapp does not grab and draw a tube as claimed because: one, components other than notch 26 are required to perform the claimed function (“further structure”), and two, a user must pre-position tubing 12 (“manipulation”). App. Br. 4-6; Reply Br. 2-3 (quotations at 3). For the reasons that follow, we do not agree with Appellants’ claim construction that further structure and manipulation are precluded by claim 1. The preamble of independent claim 1 uses the transitional open-ended phrase “comprising,” indicating the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. See Ans. 5-6 (noting that the presence of other components is not precluded by claim 1); see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Similarly, claim 1 does not recite that the groove grabs and draws the tube without any manipulation by the user. See Ans. 5- 6. In other words, nothing in claim 1 precludes manipulation of the tube by the user. Therefore, Appellants’ assertions are unpersuasive because they are not commensurate in scope with claim 1. See Ans. 5-6; see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Thus, we sustain the rejection of claim 1 as anticipated by Knapp. Appeal 2010-005955 Application 11/585,045 5 Claim 2 depends from claim 1 and recites “[t]he roller-head assembly of claim 1, wherein the face-plate groove includes a tapered double-start screw thread.” The Specification does not provide a lexicographical definition of “screw thread,” which is commonly understood to mean continuous helical ribs on a cylindrical shank.2 We discern nothing in the Specification inconsistent with this ordinary meaning. Consistent with this meaning, the Specification states that face-plate groove 20 preferably includes a tapered double-start screw thread 22, 24. Spec. para. [0008]; fig. 1. The Examiner found that angled top surface 26a and angled lower surface 26b of Knapp’s notch 26 are tapered and in the shape of a screw thread and therefore correspond to a tapered double-start screw thread as claimed. Ans. 3, 6. Knapp’s notch 26 is located along the edge of flange 36 and includes an angled top surface 26a and angled lower surface 26b. Knapp, col. 3, ll. 64-68; figs. 2, 4. Angled top surface 26a and angled lower surface 26b of notch 26 of flange 36 are not helical ribs, and therefore, do not correspond to a tapered double start screw thread as claimed. See App. Br. 6; Reply Br. 3. Consequently, we do not sustain the rejection of claim 2 as anticipated by Knapp. Claims 1-4 as unpatentable over Knapp and Cull Claim 1 The Examiner’s obviousness rejection of claim 1 relies upon the same finding utilized in the anticipation rejection of claim 1 that Knapp discloses 2 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 906 (6th ed. 2003), “screw threads.” Appeal 2010-005955 Application 11/585,045 6 a groove (notch 26) as claimed. Ans. 3-4. Appellants repeat the arguments used against the anticipation rejection of claim 1. App. Br. 6-7; Reply Br. 3- 4. For the reasons given in the analysis of claim 1 as anticipated by Knapp, supra, those arguments are unconvincing here as well. Consequently, we sustain the rejection of claim 1 as obvious over Knapp and Cull. Claim 2 The Examiner’s obviousness rejection of claim 2 relies upon the same finding utilized in the anticipation rejection of claim 2 that Knapp discloses a tapered double-start screw thread as claimed. Ans. 3-4. For the reasons explained in the analysis of claim 2 as anticipated by Knapp, supra, this finding is erroneous. Accordingly, we do not sustain the rejection of claim 2 as obvious over Knapp and Cull. Claims 3 and 4 Independent claim 3 is directed to a method of leading an ophthalmic surgical pump cassette onto an aspiration pump roller-head assembly that includes the step of “causing the pump to move the drawer towards the roller-head assembly as the roller-head assembly is rotated, such that a groove formed in the face-plate causes a tube of the cassette to be drawn onto the rollers even when the tube is misaligned with the roller-head assembly” (emphasis added). The Examiner found that Knapp discloses the structure of a groove (notch 26) as claimed. Ans. 4. However, the rejection is deficient in that it does not contain a finding that Knapp’s groove (notch 26) is capable of causing a tube of the cassette to be drawn onto the rollers even when the tube is misaligned with the roller-head assembly. See Reply Br. 4; see also Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. Appeal 2010-005955 Application 11/585,045 7 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). As such, we do not sustain the rejection of claim 3 and its dependent claim 4. DECISION We affirm the Examiner’s decision to reject claim 1, and we reverse the Examiner’s decision to reject claim 2 as anticipated by Knapp. We affirm the Examiner’s decision to reject claim 1 as obvious over Knapp and Cull. We reverse the Examiner’s decision to reject claims 2-4 as obvious over Knapp and Cull. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls