MUSICCO, Pietro et al.

Patent Trials and Appeals Board

Mar 9, 2022

2021004351 (P.T.A.B. Mar. 9, 2022)

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. 15/749,041 01/30/2018 Pietro MUSICCO BIEMUS-PT001 9763 3624 7590 03/09/2022 VOLPE KOENIG 30 SOUTH 17TH STREET, 18TH FLOOR PHILADELPHIA, PA 19103 EXAMINER STAMBAUGH III, JAMES STEWART ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/09/2022 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): eoffice@volpe-koenig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PIETRO MUSICCO, CECILIA MUSICCO, and GIORGIO RAMORINO Appeal 2021-004351 Application 15/749,041 Technology Center 3700 Before BENJAMIN D. M. WOOD, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventors, Pietro Musicco and Cecilia Musicco. Appeal Br. 3. Appeal 2021-004351 Application 15/749,041 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “a biopsy gun” and in particular, “an automatic gun of the type used to sample tissues from the human body.” Spec. 1:4-6. Claim 1 is reproduced below as the sole independent claim on appeal, and dependent claim 3 is reproduced below as representative of the subject matter argued on appeal, with disputed claim terms italicized for emphasis. 1. An automatic biopsy gun (1), comprising: - a box-shaped body (2), - a needle (4) cantileverly extending from the box-shaped body (2) in a longitudinal direction (X-X), wherein the needle (4) in turn comprises a stylet (9) provided with a collecting hollow (10) to collect a tissue sample, and a cannula (8), wherein the stylet (9) is slidingly housed in the cannula (8) so that the collecting hollow (10) can emerge from the cannula (8) and return inside with a guillotine effect, - a first pushing member (13) constrained to the cannula (8) and movable in the box-shaped body (2) parallel to said longitudinal direction between a forward position, at which the cannula (8) is completely extended from the box-shaped body (2), and a rearward position, at which the cannula (8) is partially inserted in the box-shaped body (2), - a second pushing member (24) constrained to the stylet (9) and movable in the box-shaped body (2) parallel to said longitudinal direction between a forward position, at which the stylet (9) is partially inserted in the box-shaped body (2), - first and second elastic countering means (21, 33) to bias the first pushing member (13) and the second pushing member (24), and - driving means (3) to drive the first pushing member (13) and the second pushing member (24), operable by a user, wherein the first pushing member (13) and the second pushing member (24) are guided by respective inner guides (22, 32) that are inside the box-shaped body (2) and the first pushing member (13) and the second pushing member (24) are movable Appeal 2021-004351 Application 15/749,041 3 in their respective inner guides (22, 32) parallel to one another, side by side, and the inner guide (22) of the first pushing member (13) and the inner guide (32) of the second pushing member (24) are staggered along said longitudinal direction.2 3. The automatic biopsy gun (1) according to claim 1, wherein each inner guide (22, 32) extends longitudinally and a first stop corresponding to the rearward position of the first pushing member (13) is a deviation (22´) of the first inner guide (22), and a second stop corresponding to the rearward position of the second pushing member (24) is a deviation (32´) of the second inner guide (32). THE REJECTIONS The following rejections by the Examiner are before us on appeal: I. Claims 4, 5, 11, and 14 under 35 U.S.C. § 112(b) as being indefinite. II. Claims 1-14 under 35 U.S.C. § 103 as being unpatentable over Baltschun (US 2003/0073929 A1; Apr. 17, 2003). OPINION Rejection I This rejection is summarily affirmed for being uncontested. Appeal Br. 8 (“Appellant[] will amend the claims to address the §112 rejection after this Appeal has been decided.”). 2 Reference characters corresponding to elements recited in the detailed description and drawings of the specification generally do not affect the scope of a claim (see Manual of Patent Examining Procedure § 608.01(m)); such characters may serve to aid in understanding the claim. Appeal 2021-004351 Application 15/749,041 4 Rejection II Appellant presents arguments solely for the patentability of dependent claim 3, and claims 13 and 14 based on their dependency from claim 3. Appeal Br. 8-12. Accordingly, we summarily sustain the Examiner’s rejection of claims 1, 2, and 4-12, and address claims 3, 13, and 14 infra. Regarding independent claim 1, from which claim 3 depends, the Examiner finds that Baltschun discloses an automatic biopsy gun including a needle comprising a stylet and also a cannula, as claimed, and also first and second pusher members movable in their respective inner guides and staggered along a longitudinal direction. Appeal Br. 7-8.3 Regarding dependent claim 3, the Examiner finds that Baltschun further discloses that each inner guide extends longitudinally and a first stop (i.e., “shoulder” as depicted in Figure 1) corresponding to the rearward position of the first pushing member is a deviation of the first inner guide, and a second stop (i.e., “shoulder” as depicted in Figure 4) corresponding to the rearward position of the second pushing member is a deviation of the second inner guide. Final Act. 9. In particular, the Examiner construes the meaning of the claim term “deviation” as “to depart from an established course or norm”4 and finds that Baltschun’s shoulders (i.e., elements 26, 27) “deviate” from the walls of Baltschun’s bores, as required by claim 3, 3 The Examiner finds that Baltschun fails to disclose a “box-shaped” body, as claimed, and reasons that it would have been obvious to make Baltschun’s body box-shaped “through routine optimization” and “an obvious matter of choice.” Final Act. 8. 4 The Examiner finds that Appellant’s definition of the claim term “deviation” as a “change in direction” is “not commensurate in scope with the claimed invention.” Ans. 6. Appeal 2021-004351 Application 15/749,041 5 because Baltschun’s elements 26, 27 are “protrusion[s] that extend orthogonal to the longitudinal direction” of the wall, “resulting in a functional effect . . . that allows [the device] to stop the components from moving.” Ans. 4 (citing, generally, the Merriam-Webster dictionary). Appellant submits that Baltschun5 discloses “a solution wherein the stops of the pushing members are snap-fit couplings, or detents, obtained by flexible webs (19, 25 . . . ) engaging teeth (26, 27 . . . ) radially projecting from the coaxial inner guides.” Appeal Br. 11. Appellant argues that Baltschun does not disclose “a solution wherein the stops of the pushing members are defined by deviations, or a change in direction, of the inner guides as claimed,” in that “[t]he inner guides of Baltschun extend along the same axis for their entire lengths and do not deviate from that axis to define a stop as claimed.” Id.; see also Reply Br. 4 (arguing that “[Baltschun’s] guides extend longitudinally and are stopped by the snap-fit couplings, without a deviation or ‘departure from an established course’, i.e., they continue to extend longitudinally.”). Appellant submits that support for Appellant’s claim construction, wherein “a deviation” means “a change in direction,” includes the Specification’s disclosure that first and second “stops” are “deviations” 22, 22´, and the description of “the ends of 22´, 32´ . . . bend[ing] downwards by 90°,” wherein “guides 22, 32” are “differentiated from the stops 22´, 32´.” Reply Br. 3 (citing Spec. 14:4-5, 15:3-4, Fig. 5). 5 The Specification distinguishes Baltschun from the present invention by stating, “[Baltschun] describes a gun in which the carriages are loaded by telescopically inserting half of the gun body in the other half” and wherein “[a]n operating button is provided at the rear in order to release the carriages and to allow them to slide forward.” Spec. 4:13-15. Appeal 2021-004351 Application 15/749,041 6 During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, it is improper to read a limitation from the specification into the claims. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir. 2003). Claim 1 recites respective inner guides relative to first and second pushing members, and claim 3 requires each inner guide to extend longitudinally and also that first and second stops are each “a deviation . . . of the [respective] inner guide.” The Specification discloses, generally, that its automatic biopsy gun “advantageously comprises inner guides that are inside the box-shaped body for guiding the first and second pushing members” (Spec. 5:23-24), wherein “[t]he proposed solution allows the gun structure to be made remarkably easier: in fact the inner guides can be designed so as to have themselves the stops of the pushing members in the rearward position” (id. at 5:29-6:1 (emphasis added)). The Specification discloses that “[b]y driving the pushing members by means of inner guides, a further advantage is achieved given by the greater smoothness and fluidity of movement of these elements with respect to known solutions.” Id. at 6:8-10; see also id. at 7:14-17, 22 (discussing the sliding of fastening members in sections of the inner guides that are with and without deviations). Appeal 2021-004351 Application 15/749,041 7 With reference to “the preferred embodiment,” the Specification also discloses that “each inner guide mainly extends in the longitudinal direction, except at the stop,” wherein “this stop is a deviation of the guide itself in a direction transversal to the longitudinal direction, for example, a 90° corner or with an angle greater than 90°.” Spec. 6:22-26 (emphasis added). Figure 5 from the Specification is reproduced below. Figure 5 of the Specification depicts “the assembling sequence of the first carriage of the gun shown in [F]igure 1” (Spec. 11:8-9), including a first pusher member defined by (i) fastening member 14 to which cannula 8 is fixed; and (ii) first slider 15 “with side projections 16 designed to interface with corresponding sliding guides of the first carriage assembly” (id. at 13:20-25). Figure 5 further shows that “in the shell 19 [of the casing of the first carriage assembly] there is a sliding guide 22 for the first slider 15 [of the pushing member],” wherein “guides 22 extend parallel to the longitudinal axis X-X, except the respective ends 22´, which bend downward by 90°,” as relied on by Appellant supra. Id. at 13:30-14:5. The Specification discloses that “[w]hen the first carriage assembly 11 is assembled, the side projections 16 of the first slider 15 are forced to move in Appeal 2021-004351 Application 15/749,041 8 the sliding guides 22 and to follow the path thereof,” wherein “corners 22´ form the stops.” Id. at 14:6-8. Figure 9 of the Specification depicts a similar configuration for the second carriage assembly 12, such that, when assembled, “side projections 27 of the second slider 26 are forced to move in sliding guides 32, following the path thereof,” wherein “guides 32 are inner guides provided with stop 32´and the slider 26 represents a follower able to translate back and forth along the corresponding guide 32.” Id. at 15:5-9; see also id. at 14:18-15:9; see also Figs. 35, 37, 38. In operation, the Specification discloses that, in the loaded position, side projections 16 of the first slider 15 are forced to follow the guide 22 (see [F]igure 5) obtained in the casing 18 of the first carriage assembly 11 until they engage the corners 22´. When the side projections 16 of the first slider 15 engage the corners 22´, the first slider 15 is locked . . . . [W]hen the shoot is triggered, the first slider 15 is lifted just enough to disengage the corners 22´. Spec. 18:12-20; see also id. at 20:26 (“first slider 15 does not move and remains locked in the corners 22´ of the respective internal guide 22”); id. at 21:13 (“first slider 15 is then lifted just enough to disengage the corners 22´”). The Specification discloses a similar operation for second slider 26 of the second carriage assembly 12. Id. at 18:26-19:26; see, e.g., id. at 19:10- 13 (“side projections 27 of the second slider 26 are forced to follow the inner guide 32 obtained in the casing 29 of the second carriage assembly 12”); id. at 20:1-3 (“[w]hen the second slider 26 reaches its stop to the rearward position, its side projections 27 (see [F]igure 8) engage the corners 32´ (compare [F]igure 9) of the inner guides 32 obtained in the casing 29 of the second carriage assembly 12”); Fig. 26. Appeal 2021-004351 Application 15/749,041 9 We construe claim 3 to require each inner guide (i.e., in the context of claim 1, a structure that directs or guides the motion of a pushing member) to extend longitudinally and also to have a deviation that functions as a stop. Although the Specification further describes such a deviation as a corner or bend in the longitudinal direction of the guide, we decline to import into the claims such an exemplary structure that is not expressly recited in the claims or required by the plain meaning of the claim term “deviation.” In other words, even accepting Appellant’s definition of the claim term “deviation” as a change in direction, claim 3 is silent regarding the structure of the guide that must change direction; for example, claim 3 does not require the guide to be a channel or to change the direction of its channel from a longitudinal extent to create a stop. The change in direction of Baltschun’s inner guide formed by a shoulder or protrusion is a radial or transverse change in direction of the guiding surface of the guide relative to the longitudinal axis of Baltschun’s automatic biopsy device and thus, meets our construction of the “deviation” required by claim 3. Therefore, Appellant’s argument in this regard is not persuasive. Accordingly, we sustain the Examiner’s rejection of claim 3. Appellant does not present arguments for the patentability of claims 13 and 14 apart from their dependency from claim 3 and arguments for the patentability of claim 3 presented supra. Appeal Br. 12. Thus, for essentially the same reasons as presented supra, we also sustain the Examiner’s rejection of claims 13 and 14. Appeal 2021-004351 Application 15/749,041 10 CONCLUSION The Examiner’s rejections of claims 4, 5, 11, and 14 under 35 U.S.C. § 112(b) and of claims 1-14 under 35 U.S.C. § 103 are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 4, 5, 11, 14 112(b) Indefiniteness 4, 5, 11, 14 1-14 103 Baltschun 1-14 Overall Outcome 1-14 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED