Ex Parte Sauer

Patent Trial and Appeal Board

Nov 22, 2016

12039503 (P.T.A.B. Nov. 22, 2016)

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.
LSI-PAT-0032.01 US 7617
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/039,503 02/28/2008
118339 7590
LSI Solutions, Inc
7796 Victor-Mendon Road
Victor, NY 14564
11/22/2016
Jude S. Sauer
11/22/2016 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 JUDE S. SAUER
Appeal 2015-000891
Application 12/039,503
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the non-final
rejection of claims 1—6 under 35 U.S.C. § 102(b) as anticipated by Weston
(US 5,391,174, iss. Feb. 21, 1995). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-000891
Application 12/039,503
THE INVENTION
Appellant’s invention is a ferrule receiving tip on surgical suturing
instruments. Spec. 14. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A ferrule receiving compartment for a surgical suturing
instrument comprising:
a ferrule receiving opening for receiving a ferrule into the
compartment, the opening having three radially spaced apart
surfaces for contacting an outside surface of a ferrule and
aligning a ferrule within the opening, the opening extending
longitudinally to permit insertion and removal of a ferrule by
frictional engagement with a needle;
a suture receiving slot radially disposed between first and
second adjacent ones of the three radially spaced aprt [sic apart]
surfaces and extending longitudinalyl [sic longitudinally] the
full length of the opening; and
at least one suture receiving chamber radially disposed
between second and third adjacent ones of the three radially
spaced apart surfaces.
OPINION
Appellant argues claims 1—6 as a group. Appeal Br. 3—7. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Weston is capable of receiving a ferrule and
permitting insertion and removal of the ferrule by frictional engagement
with a needle.
Ferrules come in all shapes and sizes and Weston discloses a
needle can fit within the opening longitudinally (Fig 5).
Examiner sees nothing in Weston that precludes a ferrule from
being able to Fictionally fit within the opening, permitting
inserting and removal of the ferrule by frictional engagement
with a needle.
Final Action 5.
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Appeal 2015-000891
Application 12/039,503
Appellant argues that Weston lacks a ferrule receiving opening having
three radially spaced apart surfaces for contacting an outer surface of a
ferrule. App. Br. 5. Appellant argues that the only objects in Weston that
contact channel 40 are grasping members 12 and 14. Id. Appellant argues
that grasping members 12 and 14 are distinguishable from a “ferrule.” Id.
Appellant also argues that Weston fails to permit insertion and removal of a
ferrule by frictional engagement with a needle. Id. at 7.
In response, the Examiner provides annotated versions of Figures 6
and 7 illustrating and identifying the location of three radially spaced apart
surfaces in Weston. Ans. 3. The Examiner explains that the claim limitation
“for contacting . . .” is treated as functional claim language. Id. at 4 (citing
MPEP § 2114(H)). The Examiner points out that the claims do not
positively recite either a ferrule or a needle. Id. The Examiner notes that
Appellant has failed to explain how the claimed “surfaces” are structurally
different than the surfaces of Weston. Id.
In reply, Appellant argues that MPEP § 2114(11) and interpretive case
law should not apply to the instant claims. Reply Br. 3. Appellant argues
that, to apply the rules for functional claiming, the Examiner: (1) must show
identity of utility and purpose between the prior art and the claimed
invention; and (2) make a factual determination that the cited reference is
capable of performing the claimed function. Id. at 3^4. Appellant argues
that Weston does not share the same utility and purpose as Appellant’s
claimed surfaces. Id. at 4.
Appellant’s argument is not persuasive as it is based on a misreading
of applicable law. In the case of In re Schreiber, 128 F.3d 1473 (Fed. Cir.
1997), the applicant claimed a popcorn dispenser. The Examiner, in
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Appeal 2015-000891
Application 12/039,503
Schreiber, rejected claim 1 as anticipated by Harz, which disclosed a
structurally similar conical spout for dispensing oil from an oil can. Id. at
1475. The Examiner’s position in Schreiber was ultimately upheld on
appeal by the Federal Circuit. Appellant’s argument regarding identity of
utility and purpose between the prior art and the claimed invention cannot be
reconciled with the facts and ruling in Schreiber. Id. at 1479 (Board’s
finding that Harz would be capable of performing the claimed functions not
shown to be clearly erroneous).
In the instant case, Appellant’s Specification defines “ferrule”
broadly.
As used herein ferrule is intended to include any structure that
allows a needle to be selectively coupled to the end of a suture.
Spec. 117. The limitations of claim 1: “for contacting an outside surface of
a ferrule and aligning a ferrule with an opening;” and “to permit insertion
and removal of a ferrule by frictional engagement with a needle;” are
functional limitations. Claims App., claim 1 (emphasis added). A patent
applicant is free to recite features of an apparatus either structurally or
functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“[Tjhere is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk.
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
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Appeal 2015-000891
Application 12/039,503
Swinehart, 439 F.2d at 213. In the instant case, the Examiner finds that
ferrules come in all shapes, sizes, and materials. Ans. 4. The Examiner
finds that the surfaces of Weston’s channel 40 are inherently sized to receive
a ferrule that would receive a needle. Id. The Examiner’s findings in this
regard are sufficient, under Swinehart, to shift the burden of proof to
Appellant to prove that Weston does not possess the claimed functional
characteristics.1
Appellant argues that Weston is not capable of aligning a ferrule
within a ferrule receiving opening because the surfaces alleged by the
Examiner change location. Reply Br. 14. In other words, channel 40 is
crescent shaped along its length such that the cross-sectional location of the
internal surfaces vary along the length of the channel. Weston, Figs. 5—10.
We have reviewed Figures 5 through 10 of Weston and are not persuaded
that the crescent shaped contours of channel 40 render it incapable of
aligning a ferrule within the opening as claimed. Appellant’s cursory
argument regarding the crescent shape of Weston’s channel, unaccompanied
by any persuasive evidence, is insufficient to carry Appellant’s burden of
proof to show that Weston is not capable of meeting the functional
limitations of claim 1.
It is well settled that “where all the structural elements of a claim exist
in a prior art product, and the prior art product is capable of satisfying all
functional or intended use limitations, the claimed invention is nothing more
1 Appellant argues that the Examiner must make a “factual
determination”: that Weston is capable of performing a functional limitation.
Appeal Br. 4. To the extent that Appellant is attempting to alter the burden
shifting framework set forth in Swinehart, we reject this argument as
inconsistent with applicable law.
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Application 12/039,503
than an unpatentable new use for an old product.” Schreiber, 128 F.3d at
1477. The Examiner’s finding that Weston discloses all the features of
claim 1 is supported by a preponderance of the evidence.
We sustain the Examiner’s rejection of claims 1—6 as anticipated by
Weston.
DECISION
The decision of the Examiner to reject claims 1—6 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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