Ex Parte Racz

Patent Trial and Appeal BoardMar 29, 2017

11853785 (P.T.A.B. Mar. 29, 2017)

United States Patent and Trademark Office 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. 11/853,785 09/11/2007 N. Sandor Racz 20029.0003 .NPU S 00 3648 63467 7590 Ramey & Schwaller, LLP 5020 Montrose Blvd. Suite 750 Houston, TX 77006 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): u spto @ ramey firm .com wramey @rameyfirm.com bwilliams@rameyfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte N. SANDOR RACZ Appeal 2014-006943 Application 11/853,7851 Technology Center 3700 Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a request for rehearing under 37 C.F.R. § 41.52 (“Req. Reh’g”) of the Decision on Appeal (“DOA”) (mailed Nov. 2, 2016) in the above- identified application. In the Decision, we affirmed the Examiner’s rejections of claims 1,3,4, 11, 12, and 22 as obvious over Wang and Racz, and claims 5—9, 23, and 25 over Wang and Racz in combination with either VanTassel or Yamamoto. DOA 2, 9—10. The claimed subject matter is directed to a surgical needle comprising, inter alia, “[a] tip end [that] comprises at least two facets” and where the tip end comprises “at least one beveled edge extending from the shoulder to a point of the top end.” Appellant contends that neither Wang nor Racz 1 “The ’785 Application.” Appeal 2014-006943 Application 11/853,785 describes a tip end that comprises at least two facets as required by the claims. Appellant contends that the “Board has misapprehended the meaning of facet and the difference in meaning of bevel and facet. Req. Reh’g 4. Appellant asserts the statement in the Decision that “Wang teaches a tip with at least two facets (‘beveled surfaces’), where one of these facets is beveled, as required by claim 1” (DOA 7) is evidence of the Board’s misapprehension of the meaning of the terms. Req. Reh’g 4. Appellant also contends: The Board states that “. . . the skilled worker reading the ’785 application would have understood that a “facet” can be a “bevel”.” November 2, 2016 Decision on Appeal at p. 7. This in incorrect. The definition of facet used by the Examiner and the Board is not the broadest reasonable meaning. The broadest reasonable interpretation does not mean the broadest possible interpretation. MPEP 2111. Having bevel and facet have the same meaning is not reasonable for the meaning of each term. Id. at 5. To begin with, we agree that the statement in the Decision quoted by Appellant that Wang describes two facets, where one of the facets is beveled (DOA 7) was not accurate. We therefore do not rely on this finding in reaching our decision. The rejection by the Examiner was based on Figures 13 and 14 of Wang. A portion of Figure 13 is reproduced below with our annotations. "Tip 171 is preferably 2 Appeal 2014-006943 Application 11/853,785 Figure 13 shows tip 171 of Wang’s biopsy needle, with annotations added herein. The solid arrow on the left points to a beveled surface. Two beveled surfaces are shown. The dotted arrow on the right points to a beveled edge which the Examiner found served as the recited “at least one beveled edge extending from the shoulder to a point of the tip end” of claim 1. Ans. 2—3. The beveled edge is shown as being formed from the intersection of the two beveled surfaces shown in the drawing. “[A] ‘bevel’ . . . is an angle that is made by the intersection of two surfaces.” Appeal Br. 29. Wang expressly referred to the surfaces depicted above as “beveled surfaces.” Wang, col. 8,11. 6—7, quoted in annotated Fig. 13. The claims require the tip end to have “facets.” Appellant contends that the Board misapprehended the terms by identifying Wang’s beveled surfaces as facets. Req. Reh’g 5—6. In the Decision, we relied on a statement in the ’785 Application to find that a beveled surface can be a facet. DOA7. We reproduce below the passage from the ’785 Application in which the statement (italicized) appears: Angles of bevel for various embodiments can vary. In general, an angle of bevel can be from about 1° to about 90°. .. . The angle of bevel is capable of being the same for all facets. However, in various embodiments, the angle of bevel varies for at least one facet as compared to the remaining facet(s). Design characteristics to consider when determining a proper bevel include, but are lot [sic, not?] limited to, the tissue to be punctured, the delicate organs about the incision, the medicament to be administered, and/or the like. 3 Appeal 2014-006943 Application 11/853,785 ’785 Application 8:30-9:6 (emphasis added). This passage clearly shows that the inventors described a bevel as being a facet. The inventors used the term “facet” generically to include beveled surfaces.2 Because a patent applicant can act as its own lexicographer (see Thornerv. Sony Comput. Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) and because claims are read in the light of the Specification, we find that the manner in which the terms “facet” and “bevel” are used in the ’785 Application to be highly dispositive. Thus, based on the usage of these terms in the ’785 Application, we conclude that the beveled surfaces of Wang can be characterized as facets, meeting the claimed requirement of a needle with two facets. Appellant provided dictionary definitions of facet and bevel to dispute the finding that a “beveled surface” can be a “facet.” Facet is defined by Merriam-Webster Online as a “smooth plane surface”. Available at http://www.merriam-webster. com/ dictionary/facet, last visited April 29, 2013. Plane is defined as a “flat or level surface”. Available at http://www.merriam- webster.com/dictionary/plane, last visited April 29, 2013. . . . Bevel is defined by Merriam-Webster Online as “the angle that one surface or line makes with another when they are not at right angles”. Available at http://www.merriam-webster.com/dictionary/bevel, last visited April 29, 2013. Appeal Br. 29. 2 The ’785 Specification also describes “a point associated with a tip of the present invention can be defined by any number of bevels or facets.” Spec. 8:26—27. When this passage is read in the context of the statement that “an angle of bevel can be from about 1° to about 90°” (id. at 8:30-31), the skilled worker would understand that the facet can be planar and at 90° angle, while the bevel is less than 90°. 4 Appeal 2014-006943 Application 11/853,785 While Appellant’s extrinsic definition of facet could be understood to exclude “bevel” since a bevel is not at right angles, the definition in the Specification includes it because an angle of a bevel is specifically described as “from about 1° to about 90°” (’785 Application 8:30-31) which includes a right angle of 90° and planar surface. While Appellant has selected an extrinsic dictionary definition to distinguish the claimed subject matter, this definition is not consistent with how the term is used in the ’785 application nor other extrinsic definitions. For example, in the following dictionary definition of “facet,” the term is used to refer to a “side”, similar to how the term is used in the ’785 Application: “One side of something many-sided, especially of a cut gem. ‘a blue and green jewel that shines from a million facets. ”’3 Under this definition, as well as the use in the ‘785 application, a bevel is a species of a facet, i.e., an angled facet of the needle. We modify the Decision to clarify the location of the beveled edge with respect to the two beveled surfaces in Wang as set forth herein. However, we maintain the rejection based on our findings that a preponderance of the evidence supports the Examiner’s conclusion that Wang describes a tip end comprising at least two facets, therefore rendering the appealed claims obvious. GRANTED-IN-PART: DENIED-IN-PART 3 Facet, Oxford Dictionaries.com, https://en.oxforddietionaries.com/ defmition/facet. Accessed Mar. 24, 2017. 5