Ex Parte NishikiDownload PDFPatent Trial and Appeal BoardAug 29, 201410687748 (P.T.A.B. Aug. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/687,748 10/20/2003 Abe Nishiki 9269 7590 09/02/2014 Clyde I. Coughenour 16607 Sutton Place Woodbridge, VA 22191 EXAMINER OBU, KENDRA NNEAMAKA ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 09/02/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ABE NISHIKI ____________ Appeal 2012-002333 Application1 10/687,748 Technology Center 3700 ____________ Before TONI R. SCHEINER, ERIC B. GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a phimosis curer. The Examiner has rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification describes “a phimosis curer with which a phimosis patient can cure phimosis by himself.” (Spec. 2, ll. 1-2.) The procedure requires that “[t]he handle grips have to be held for as long as 30 minutes 1 Appellant identifies Abe Nishiki as the Real Party in Interest. (App. Br. 5.) Appeal 2012-002333 Application 10/687,748 2 each use, and they need to be used twice a day continuously for 2~3 weeks. Hand holding the grips becomes tiresome.” (Spec. 2, ll. 6-7.) Claims 1-5 and 11-16 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. The Examiner has withdrawn the enablement rejection under 35 U.S.C. § 112, first paragraph of claims 3-8 and 12 (Ans. 4). The Examiner has withdrawn the rejections under 35 U.S.C. § 103(a) of claims 6-8, 9, and 10 (Ans. 4). The following grounds of rejection remain before us for review: I. claims 1, 2, and 11 under 35 U.S.C. § 102(e) as unpatentable over Chang;2 II. claims 3, 5, and 12-16 are rejected under 35 U.S.C. § 103(a) over Chang in view of Ramamurti;3 and III. claim 4 under 35 U.S.C. § 103(a) as unpatentable over Chang in view of Ramamurti and Seber.4 I. The Issue: Anticipation by Chang The Examiner takes the position that Chang’s surgical retractor meets all the structural limitations of the claims (Ans. 5-7). Does the evidence of record support the Examiner’s finding that Chang anticipates the claimed phimosis curer? 2 Chang, US 6,663,562 B2, issued Dec. 16, 2003. 3 Ramamurti et al., US 6,635,072 B1, issued Oct. 21, 2003. 4 Seber et al., US 6,748,829 B2, issued June 15, 2004. App App Find open pawl Abst (Cha close eal 2012-0 lication 10 ings of Fa FF1. Ch ed and clo allowing ract). Fig FIG. 1, together compris 16 inclu of the de connecti portions W mechani position ng col. 5, FF2. Fi d position 02333 /687,748 ct ang discl sed using the arms to . 1, reprod retractor 1 at a comm es a handle de handle vice. Lev on 14 such 18 open. ith referen sm 30 is p from unw ll. 1-8; see g. 2 of Ch : osed a surg handles ha be locke uced below 0 comprise on pivota 16 and ar loops 20 fo ers 12 are that . . . w ce again t rovided to anted or un also Ans. ang, repro 3 ical retrac ving a loc d in any op , shows th s a pair of l connectio m portion r more co angled ou hen hand o FIG. 1, prevent h timely reo 5) duced belo tor having king ratch en positio e surgical levers 12 n 14. Eac 18. Prefe nvenient m twardly at les 16 are a locking r andles 16 pening. w, shows arms that et mechan n.” (Chan retractor: , joined h lever rably, han anipulati pivot closed, arm achet in any clos the handle “are ism and g, dles on ed s in a App App (Cha abov the s pivo mean Figu sides anno eal 2012-0 lication 10 Referrin compris As hand rachet 32 rachet te by teeth 16 at paw rachet 32 18 to clo ng col. 5, FF3. Th e in Fig. 1 econd han ted relativ FF4. Th s. “The b re 7 A) wh such that tated copy 02333 /687,748 g to FIG. 2 es a conve les 16 are . A sprin eth 36 suc 36 catchin l pivot 38 , thereby se. ll. 11-19; s e Examin & 2 as “a dle grip so e to the sec e Examin lades com erein the h the tip sid of Figure , a lockin ntional rac closed, paw g (not illus h that any g in pawl , allowing allowing h ee also An er identifi fulcrum p that the fi ond handl er finds th prise hook ook mean es and rea 7 A.” (An 4 g rachet m het 32 and l 34 slide trated) ho reversal o 34. Pawl pawl 34 t andles 16 s. 5) es the pivo in 14 attac rst handle e grip and at Fig. 7A means (e s compris r sides pro s. 5.) echanism spring-lo s across te lds pawl 3 f moveme 34 is moun o be pulle to open an tal connec hing the f grip [and] the secon of Chang nlarged pa e tip sides trude as sh preferably aded pawl eth 36 of 4 against nt is preve ted to han d away fro d, hence, tion 14 as irst handle the first j d jaw.” (A provides a ddles show , front side own in th 34. nted dle m arms shown grip and aw may be ns. 6.) hook n in s and rear e followin g App App The notin Prin Hew Cir. the c perfo 946 1473 eal 2012-0 lication 10 Examiner’ g the tip s ciple of La “[A]ppa lett-Packa 1990). Function orrespond rming the F.2d 821, , 1478 (Fe 02333 /687,748 s annotate ide, front w ratus claim rd Co. v. B al recitatio ing prior a recited fu 832 (Fed. d. Cir. 199 d copy of side and re s cover w ausch & L ns in an a rt structur nction. Se Cir. 1991) 7). 5 Chang’s F ar side of hat a devic omb Inc., pparatus c es must po e Intel Co . Also see ig. 7A is r the blade ( e is, not w 909 F.2d laim are g ssess the c rp. v. U.S. In re Schr eproduced Ans. 6 & hat a devi 1464, 146 iven weigh apability o Int’l Trad eiber, 128 above, 11). ce does.” 8 (Fed. t in that f e Comm’n F.3d , Appeal 2012-002333 Application 10/687,748 6 Analysis Appellant contends that Chang does not meet all the claim limitations. Specifically, the claim “requires the blades to extend upward for insertion into a foreskin. The blades of Chang do not extend into any particular direction.” (App. Br. 17.) We are not persuaded by Appellant’s contentions. Although Figures 1 & 2 of Chang show the retractor blades pointing down in the drawings, the blades are attached with a swiveling knee joint (FF2). Chang disclosed that “[a]t a distal end of each arm portion 18 of levers 12 is provided a swiveling knee joint 50.” (Chang col. 5, ll. 20-21.) As shown in Chang’s Figure 2, this swiveling knee joint would allow the retractor blades 78 to be in any position around the rotational axis, thus, they could easily be pointing up. Alternately, the surgical retractor shown in Figures 1 & 2 could merely be turned over so that the retractor blades 78 would point up. Accordingly, we agree with the Examiner that the disclosure of Chang meets the “upward” limitation as recited in claim 1. Appellant challenges the Examiner’s interpretation of the phrase “ratchet means pivots between said first handle grip and said second handle grip” as recited in claim 1, arguing that the “[t]here is no pivotal movement of the ratchet means 30 of Chang between the first and second handle grips.” (App. Br. 17.) It is the Examiner’s position that “claim 1 does not require that the ratchet means pivots relative to the handle grips.” (Ans. 5; see also Ans. 9.) The Examiner notes that “claim 1 merely requires that the ratchet means pivots within a space between the handle grips.” (Ans. 10) The Examiner’s position is “[t]he ratchet means pivots about pivot point 14 as the handle Appeal 2012-002333 Application 10/687,748 7 grips are moved, and since the ratchet means is disposed between the handle grips, the ratchet means is fairly considered to pivot between the handle grips as claimed” (Ans. 5; see also FF1-3) During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We first turn to the Specification to determine whether the meaning of the phrase “ratchet means pivots between said first handle grip and said second handle grip” can be discerned. The Specification provides that Ratchet mechanism 6 is equipped with a pawl 7, pivotably held by a second pivot pin on one handle grip 2R, and a rack 8, attached to the other handle grip. The rack 8 is designed to engage with the pawl 7 when the grips 2R and 2L move away from each other. The curved rack 8 having an upper surface, a lower surface, first end, second end, first and second side, is pivotably supported at its first end on the handle grip 2L by a first pivot pin 9, that receives a force or bias from a spring 10. (Spec. 6: ll. 8-14.) Here, the Specification provides that a pawl can be pivotally engaged with the rack or the rack itself can be pivotally engaged with a pawl. Accordingly, the Specification provides at least two alternate configurations for the ratchet means, one with the pawl pivoting and the other with the rack pivoting. The Examiner’s claim interpretation suggest yet a third alternative configuration that the pivoting of either a fixed rack (or the pawl) around pivot point 14 would also meet the limitation that the ratchet means pivots between the handles (Ans. 10; see also FF3). “[T]he ratchet 32 pivots about Appeal 2012-002333 Application 10/687,748 8 fulcrum pin 14 as the handle grips are moved together and apart. Since the ratchet 32 is disposed between the handle grips while it pivots about point 14, the ratchet means is fairly considered to pivot between the first and second handle grips.” (Ans. 10; see also FF1-2.) Given the totality of the teaching in the Specification presenting two alternative configurations, we do not find the Examiner’s third interpretation unreasonably broad. “[W]hile ‘the specification [should be used] to interpret the meaning of a claim,’ courts must not ‘import[ ] limitations from the specification into the claim.’ . . . [I]t is improper to ‘confin[e] the claims to th[e] embodiments’ found in the specification . . . .” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (citations omitted, bracketed text in internal quotes in original). The Appellant has the burden of showing that the Examiner’s claim interpretation was unreasonable under the broadest reasonable interpretation standard by a preponderance of the evidence. Even if we were to agree with the Appellant’s position that the Examiner’s claim interpretation is unreasonably broad, which we do not, we find that Chang still meets the claim limitation of “ratchet means pivots.” Specifically, we find that Chang’s surgical retractor uses “a locking ratchet mechanism [that] preferably comprises a conventional ratchet 32 and spring- loaded pawl 34” (FF2; see also FF1). “Pawl 34 is mounted to handle 16 at pawl pivot 38, allowing pawl 34 to be pulled away from ratchet 32, thereby allowing handles 16 to open and, hence, arms 18 to close.” (Chang col. 5, ll. 16-19.) Accordingly, we agree with the Examiner’s position that Chang meets this claim limitation. Appeal 2012-002333 Application 10/687,748 9 Appellant contends that claim 1 requires a hook means, and “Chang has no such hook means. . . . Claim 1 requires that the enlarged hook means have tip sides that protrude and rear sides that protrude. The sharp tapered curved ends of Chang do not meet either this structure or its slippage prevention or damage prevention.” (App. Br. 17.) We are not persuaded by Appellant’s contentions. The Examiner has explained what parts of Chang’s device meet the structural limitations as recited in the claims (FF4). Functional recitations in an apparatus claim are given weight in that the corresponding prior art structures must possess the capability of performing the recited function. See Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). Also see In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant has not provided any persuasive evidence that would indicate that Chang’s retractor blade would not be capable of the functions recited in claim 1. Appellant’s position is that Chang does not have “the grips and jaws and blade and hooks to be integral” as recited in claim 11. (App. Br. 18.) The Examiner’s position is that the “entirety of the device, including the grips, jaws, blade and hooks, forms an integral unit since all of the elements work together to form an integrated device.” (Ans. 7) Claims will be given their plain meaning unless their plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here, Appellant has not directed us to any part of the Specification that imparts a special meaning to the term integral. Accordingly we agree with the Examiner that integral refers to being composed of constituent parts (Ans. 11). Appeal 2012-002333 Application 10/687,748 10 We conclude that the preponderance of the evidence of record supports the Examiner’s finding that Chang anticipates the claims. II. The Issue: Obviousness over Chang and Ramamurti Appellant does not separately argue the rejection of claims 3, 5, and 12-16 based on obviousness in view of the teachings of Chang and Ramamurti, instead Appellant contends that these claims are “dependent from claim 1 and are allowable therewith” (App. Br. 18). Having affirmed the anticipation rejection of claim 1 based on Chang, we find that further combination with Ramamurti renders the remaining claims obvious for the reasons given by the Examiner (see Ans. 7-9, 12). “When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived.” Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). III. The Issue: Obviousness over Chang, Ramamurti, and Seber Appellant does not separately argue the rejection of claim 4 based on obviousness in view of the teachings of Chang, Ramamurti and Seber, instead Appellant contends that this claim depends “from claim 3 and is allowable therewith.” (App. Br. 20.). Having affirmed the anticipation rejection of claim 1 based on Chang, we also find that further combination with Ramamurti renders claim 3 obvious, we find that the combination with Seber renders claim 4 for the reasons given by the Examiner (see Ans. 9, 12). Appeal 2012-002333 Application 10/687,748 11 SUMMARY We affirm the rejection of claims 1, 2, and 11 under 35 U.S.C. § 102(e) over Chang. We affirm the rejection of claims 3, 5, and 12-16 under 35 U.S.C. § 103(a) over Chang in view of Ramamurti. We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) over Chang in view of Ramamurti and Seber. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED dm Copy with citationCopy as parenthetical citation