Ex Parte PRETRE et alDownload PDFPatent Trials and Appeals BoardJun 12, 201914446617 - (D) (P.T.A.B. Jun. 12, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/446,617 07/30/2014 Isabelle PRETRE 76960 7590 06/12/2019 Fay Kaplun & Marcin, LLP 150 Broadway, suite 702 New York, NY 10038 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. CONFIRMATION NO. 10139/26505 1402 EXAMINER SW ANSON, LEAH JENNINGS ART UNIT PAPER NUMBER 3783 MAIL DATE DELIVERY MODE 06/12/2019 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 ISABELLE PRETRE, SAMUEL LEUENBERGER, JENS RICHTER, and URS HULLIGER Appeal2019-000179 Application 14/446,617 1 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated Feb. 9, 2018, hereinafter "Final Act.") rejecting claims 40-42, 60-62, and 70. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). 1 DePuy Synthes Products, Inc. is the applicant and is identified as the real party in interest in Appellants' Appeal Brief (filed June 26, 2018, hereinafter "Appeal Br."). Appeal Br. 2. 2 Claims 1-39 and 66-68 are canceled and claims 43-51, 53-59, and 63-65 are withdrawn. Appeal Br. 7-13 (Claims App.). Claims 52 and 69 are objected to by the Examiner as being dependent upon a rejected base claim and otherwise indicated as being allowable if rewritten in independent form Appeal 2019-000179 Application 14/446,617 We AFFIRM. SUMMARY OF DECISION INVENTION Appellants' invention relates to a system for treating elevated intracranial pressure by draining cerebrospinal fluid. Spec. paras. 2, 3. Claims 40 and 62 are independent. Claim 40 is illustrative of the claimed invention and reads as follows: 40. A catheter guiding device, comprising: a bolt including a shaft configured to be inserted within a hole drilled in a bone and a passageway extending longitudinally therethrough along a bolt axis; a guide member received within the passageway of the bolt and extending longitudinally along a guide axis, the guide member including a guide channel extending therethrough along the guide axis, wherein, in a first configuration, the guide member is movable relative to the bolt within a predetermined range of angulation to alter an angle between the guide axis and the bolt axis to a desired angle aligning the guide axis with a target area and, in a second configuration, the guide member is fixed in the desired angle; and a first ring sized and shaped to be mounted over a proximal end of the bolt, the first ring including a first distal most surface which, in an operative position, faces toward the bolt and a second proximal most surface which, when in the operative position faces away from the bolt, the first and second surfaces being angled with respect to one another. including all of the limitations of the base claim and any intervening claim. Final Act. 6. Claims 52 and 69 are not part of the instant appeal. 2 Appeal 2019-000179 Application 14/446,617 REJECTION The Examiner rejects claims 40-42, 60-62, and 70 under 35 U.S.C. § I02(b) as anticipated by Flint (US 2009/0306501 Al, pub. Dec. 10, 2009). ANALYSIS Appellants do not present arguments for the patentability of claim 40 apart from claims 41, 42, 60-62, and 70. See Br. 5-6 ("Because claims 41- 42, 60-62[,] and 70 ... include all the limitations of claim 40, it is respectfully submitted that these claims are allowable."). Therefore, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 40 as the representative claim to decide the appeal of the rejection of these claims, with claims 41, 42, 60-62, and 70 standing or falling with claim 40. Independent claim 40 requires, inter alia, "a first ring ... including a first distal most surface ... fac[ing] toward the bolt and a second proximal most surface ... fac[ing] away from the bolt, the first and second surfaces being angled with respect to one another." Appeal Br. 7 (Claims App.). The Examiner finds that Flint discloses a first ring 30 including a first distal most surface 3 7 angled with respect to a second most proximal surface 34. Final Act. 3--4 (citing Flint, Fig. 4B). Appellants argue "that the angled surface of the opening 34 is not the proximal most surface of the upper part 30." Appeal Br. 5. Rather, according to Appellants, "the proximal most surface of the upper part 30 is the proximal edge of the opening 34 extending about a circumference of the opening 34." Id ( emphasis added). Thus, Appellants note that "this proximal edge or surface, depicted as the proximal-most boundary of the upper part 30, is parallel to the rim 37 of the upper part 30." Id. 3 Appeal 2019-000179 Application 14/446,617 In response, the Examiner takes the position "that [the] 'proximal end of the opening 34 extending about a circumference of the opening 34' is part of the surface forming opening 34." Examiner Answer (dated Aug. 27, 2018, hereinafter "Ans.") 6. According to the Examiner, and as illustrated below in the Examiner's annotated Figure 3 of Flint, the surface forming opening 34 constitutes "the proximal most surface of the upper part 30." See id. 34 33 32 > .•"' 30 38 36 FJG, 3 37 The Examiner's annotated Figure 3 of Flint illustrates at the top of part 30 a truncated cone formed by dashed lines that surrounds opening 34 and rim 3 7 at the bottom of part 30. Id. at 7. Appellants disagree with the Examiner and take the position "that the angled swface of the opening 34 is not the proximal most surface of the upper part 30, as recited in claim 40," but "[r]ather, the proximal most surface of the upper part 30 is the proximal edge of the opening 34 (enclosed in the dashed box added to the figure) extending about a circumference of the opening 34 ... as depicted in marked up [F]igure 4A below." Reply Brief (filed Oct. 4, 2018, hereinafter "Reply Br.") 3--4 (emphasis added). 4 Appeal 2019-000179 Application 14/446,617 .... Appellants' annotated Figure 4A of Flint illustrates at the top of part 30 a rectangular formed by dashed lines that surrounds opening 34. Id. at 4. Appellants explain that because an ordinary and customary meaning of the term "surface" is "'the exterior or upper boundary of an object or body,"' "the proximal edge is the proximal-most boundary simply by showing a proximal-most edge as parallel to the distal rim 37." Id. at 5 (citing https://www.merriam-webster.com/dictionary/surface). Appellants assert that "the angled surface extending into the opening 34, because it extends into the upper part 30 and is distal to the proximal rim, is an inner wall thereof, not a proximal-most surface." Id. We are not persuaded by Appellants' arguments because during examination, "claims ... are to be given their broadest reasonable interpretation consistent with the specification, [ ] and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831,833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). This means that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989). In this case, an ordinary and customary meaning of the term "surface" is "a plane or curved two- 5 Appeal 2019-000179 Application 14/446,617 dimensional locus of points (such as the boundary of a three-dimensional region)."3 Although we appreciate Appellants' position that a "surface" constitutes a "boundary of an object," we note that the "boundary" defined by a "surface" is a "two-dimensional locus of points." Such an interpretation is consistent with Appellants' Specification, which illustrates "first surface 290" and "second surface 292" as "two-dimensional locus of points" facing towards and away from head portion 216 of bolt 204, respectively. Spec. para. 22, Fig. 14. In contrast, an ordinary and customary meaning of the term "edge" is "a line or line segment that is the intersection of two plane faces (as of a pyramid) or of two planes."4 Hence, we do not agree with Appellants' position that "the proximal most surface of the upper part 30 is the proximal edge of the opening 34" because a "surface" is a "two-dimensional locus of points," whereas an "edge" is a "line," that is, a one-dimensional locus of points, and, thus, a "surface" is not the same as an "edge." See Reply Br. 4. Appellants' position in effect reduces a "surface" to an "edge," which is inconsistent with both the plain meanings of the terms and Appellants' Specification. In conclusion, for the foregoing reasons, we agree with the Examiner's finding that Flint's opening 34 constitutes a surface that is angled with respect to rim 37. See Ans. 7 (Examiner's annotated Figure 3 of Flint). Therefore, we sustain the rejection of claim 40 under 35 U.S.C. 3 See https://www.merriam-webster.com/dictionary/surface ( emphasis added). 4 See https://www.merriam-webster.com/dictionary/edge (emphasis added). 6 Appeal 2019-000179 Application 14/446,617 § 102(b) as anticipated by Flint. Claims 41, 42, 60-62, and 70 fall with claim 40. SUMMARY The Examiner's decision to reject claims 40-42, 60-62, and 70 under 35 U.S.C. § 102(b) as anticipated by Flint 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 7 Copy with citationCopy as parenthetical citation