Ex Parte Mizoguchi et alDownload PDFPatent Trial and Appeal BoardOct 20, 201613595052 (P.T.A.B. Oct. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/595,052 08/27/2012 143331 7590 10/24/2016 Medtronic, Inc, 555 Long Wharf Drive Mailstop 8 N-1, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Masato MIZOGUCHI 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. H-NS-01260 PP VTDI TMJ/VH CONFIRMATION NO. 7500 EXAMINER BOSQUES, EDELMIRA ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 10/24/2016 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): SurgicalUS@covidien.com medtronic_mitg-rcs_docketing@cardinal-ip.com pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASATO MIZOGUCHI, MASASHIGE HORI, and MASANORI MAKINO Appeal2014-008448 Application 13/595,052 Technology Center 3700 Before GEORGE R. HOSKINS, AMANDA F. WIEKER, and FREDERICK C. LANEY, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Masato Mizoguchi et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1--4 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 The Appeal Brief identifies Covidien LP as the real party in interest. Appeal Br. 1. Appeal2014-008448 Application 13/595,052 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, and it recites: 1. A catheter fixing tool for securing a tubular catheter to a patient comprising a plate-shaped fixing tool main body having a retaining part, into which is formed a catheter retaining slot, and [a] pair of wing parts, and a securing member that can be interlocked with the fixing tool main body by rotation of the securing member parallel to a principal plane of the fixing tool main body taking a virtual line perpendicular to the principal plane of the fixing tool as a central axis, wherein the retaining part is pressed by the securing member to constrict the catheter retaining slot when rotationally interlocked with the securing member. Appeal Br. 9 (Claims App.) (emphasis added). REJECTIONS ON APPEAL Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as anticipated by Choksi (US 4,820,274, iss. Apr. 11, 1989). Claims 1and4 stand rejected under 35 U.S.C. § 102(b) as anticipated by Levine (US 4,170,995, iss. Oct. 16, 1979). ANALYSIS A. Anticipation by Choksi In rejecting claim 1 as anticipated by Choksi, the Examiner finds Choksi discloses a tool comprising, inter alia, the claimed "plate-shaped" main body as element 20. Final Act. 2 (citing Choksi, Figs. 2 and 7). The Examiner reasons Choksi's "member 20" is plate-shaped because Appellants have "not claimed any structural limitations to the word 'plate shape' that would restrict the meaning of the word 'plate' to the shape of their invention." Id. at 5; see also Ans. 5 ("for instance [Appellants have] not 2 Appeal2014-008448 Application 13/595,052 claimed that the plate has to be strictly flat or thin"). The Examiner further determines "[i]t is well known that a plate can have many different shapes, and the plate of [Choksi] meets the currently claimed structural and functional limitations" of claim 1. Final Act. 5. Appellants assert the Examiner's interpretation of the term "plate- shaped" as covering Choksi's element 20 is overly broad, and renders the term meaningless by leaving no guidance concerning "the type of structure that would not" be plate-shaped. Appeal Br. 4---6. Appellants contend the Examiner's claim construction is inconsistent with their Specification, which states at paragraph 10 that an object of the claimed tool is to operate in a space saving manner. Id. at 6. Appellants further contend the term "plate- shaped" means "shaped as a thin, flat sheet or strip of metal or other material." Id. (citing dictionary definition of "plate"). Appellants assert, when the term is so construed, Choksi's element 20 is not plate-shaped. Id. Appellants' arguments are persuasive. First, the Examiner cites Choksi's element 20 as corresponding to the "plate-shaped" body. Final Act. 2, 5. Choksi describes element 20 as a "medical tube and/or cable holder 20," and as comprising an assembly of parts-including, at the least, holder body 21 and anchoring means 40. Choksi, 2:35-36, 2:41--42. Indeed, the Examiner cites plate 31 of holder body 21 and plate 41 of anchoring means 40 as the claimed "pair of wing parts" of the plate-shaped body. Final Act. 2, 4--5. Thus, the Examiner's rejection is premised upon finding the combination of holder body 21 and anchoring means 40 is a "plate-shaped" body as claimed. That finding rests upon an overly broad claim construction of "plate- shaped." Our reviewing court has instructed that: 3 Appeal2014-008448 Application 13/595,052 [U]nder the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011 ), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). Figure 3a of Appellants' Specification representatively illustrates a "plate- shaped" main body 21, as well as a "plate-shaped" cover 41. Spec. i-fi-1 31, 45. As Appellants contend, that illustration is consistent with the dictionary definition of "plate" as meaning "a thin, flat sheet or strip of metal or other material." Appeal Br. 6. We recognize that, given Figure 3a of Appellants' Specification, some deviation from strict flatness is permitted by the claim term "plate-shaped." Nonetheless, based on the evidence of record presently before us, we agree with Appellants' construction of "plate-shaped" as meaning "shaped as a thin, flat sheet or strip of metal or other material." Thus, the issue presented here is: would a person of ordinary skill in the art understand the combination of Choksi' s holder body 21 and anchoring means 40 to be plate-shaped, that is, shaped as a thin, flat sheet or strip of material? We determine not. For example, anchoring means 40 is shaped like a clamp with a jaw to grip fabric, not like a plate. Choksi, Fig. 2, 3:32--45. The complex structure formed by the combination of holder body 21 and anchoring means 40 is not shaped as a thin, flat sheet or strip of material. 4 Appeal2014-008448 Application 13/595,052 For the foregoing reasons, we do not sustain the rejection of claim 1 and its dependent claims 2 and 3 as anticipated by Choksi. B. Anticipation by Levine In rejecting claim 1 as anticipated by Levine, the Examiner finds Levine discloses a tool comprising, inter alia, the claimed "plate-shaped" main body as jaw member 6. Final Act. 3. The Examiner, relying on the same construction of "plate-shaped" discussed above in connection with the Choksi rejection, finds Levine's jaw member 6 correspondingly "has a 'thin flat shape."' Ans. 6. Appellants assert the Examiner's interpretation of the term "plate- shaped" as covering Levine's jaw member 6 is overly broad. Appeal Br. 7- 8. Appellants also contend a preponderance of evidence fails to support the Examiner's finding that Levine's jaw member 6 is a thin, flat shape. Reply Br. 3. Appellants' arguments are persuasive. We determine a person of ordinary skill in the art would not understand Levine's jaw member 6 to be plate-shaped, that is, shaped as a thin, flat sheet or strip of material. Jaw member 6 is shaped like a clamp with teeth to grip a catheter, not like a plate. Levine, Fig. 1, 2:34-52. For the foregoing reasons, we do not sustain the rejection of claim 1 and its dependent claim 4 as anticipated by Levine. DECISION The Examiner's decision to reject claims 1--4 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation