Ex Parte 4915435 et al

Board of Patent Appeals and Interferences

Mar 7, 2012

90010466 (B.P.A.I. Mar. 7, 2012)

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.
90/010,466 03/30/2009 4915435 7397/91781 2287
21918 7590 03/07/2012
DOWNS RACHLIN MARTIN PLLC
199 MAIN STREET
P O BOX 190
BURLINGTON, VT 05402-0190
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TRACTUS MEDICAL, INC.1
Patent Owner, Appellant
____________________

Appeal 2012-000917
Reexamination Control 90/010,466
Patent 4,915,4352
Technology Center 3900
____________________

Before DANIEL S. SONG, ROBERT A. CLARKE and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Tractus Medical, Inc. is the real party in interest (App. Br. 2).
2 Issued April 10, 1990 to Levine (hereinafter "'435 patent"). The '435
patent expired on April 5, 2009, prior to the Order Granting Ex Parte
Reexamination on June 11, 2009.
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The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 306 (2002)
from a Final Rejection of claims 1-18 and 30. Claims 19-29 and 31-35 were
canceled in a certificate issued July 21, 2009 that resulted from previously
filed reexamination proceeding 90/009,055. In addition to the Appeal Brief
and the Reply Brief, the Patent Owner also relies on evidence as set forth in
the Evidence Appendix which includes declarations of Messrs. Rudy,
Waugh and Brower in support of patentability. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306 (2002). The '435 patent is also involved in a
suit styled Mobile Medical International Corp. v. Advanced Mobile Hospital
Systems, Inc., Case No. 2:07-cv-231 (D.Vt.) (App. Br. 2).
The invention is directed to a mobile operating room that is
transportable in which invasive surgical procedures can be performed
(Abstract). Representative claim 1 reads as follows (Claims App'x.;
emphasis added):
1. A mobile invasive surgery van capable of being
transported on the roads and highways and equipped with
essential equipment for invasive surgery to be performed
within the van, said van comprising:
a main body section that is capable of being towed,
mounted on wheels for mobility by a separate power
section;
an expandable portion of said main body provided
by telescoping side sections thereof which move
outwardly from the main body portion in order to form
an expanded invasive surgery room; and
an operating table centrally located in said
expandable section, said table being stowable so that the
expandable section may be nested or expanded without
removal of said surgery room operating table from said
van.

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The Examiner rejected claims 1 and 3-11 under 35 U.S.C. § 103(a) as
unpatentable over Black (U.S. Pat. No. 2,744,781 issued May 8, 1956).
The Examiner rejected claims 2, 12-18 and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Black in view of Stewart (U.S. Pat. No. Re.
32,262 reissued Oct. 7, 1986).
We REVERSE.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Black discloses:
A. A vehicle body 25 having expansible housing sections 40 that
"are slidably mounted along opposite sides of the body and are
normally telescoped within the body in nested relationship to the
fixtures or equipment which is installed upon the trailer floor."
(Col. 1, ll. 64-71; see also col. 1, ll. 15-19; col. 4, ll. 67-73; col. 5, ll.
10-20; Figs. 1-3)
B. "The present expansible body provides a mobile unit in which
various types of equipment, fixtures or the like, may be installed
permanently upon the floor, while the expansible sections, when
extended outwardly, provide a generous floor area along opposite
sides of the equipment or fixtures." (Col. 1, ll. 38-43).
C. The expansible body "has a wide variety of uses" including for
commercial and military activities, and discloses example uses "as a
traveling medical or dental laboratory." (Col. 1, ll. 44-54).
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2. Black does not disclose:
A. Any type of surgery being performed within the vehicle body.
B. An operating table.

3. Stewart discloses:
A. An expandable travel trailer 10 with a "telescoping room 16" or
"room section 16" that extends and retracts therefrom (col. 1, ll. 13-
16, 27-33; col. 2, ll. 7-22; Figs. 1-4).
B. "[S]ince the entire room section is self[-]contained, furnishings
and wall hangings located in the room do not have to be disturbed."
(Col. 4, ll. 3-6).

4. Stewart does not disclose:
A. Any type of surgery being performed within the travel trailer.
B. An operating table.

PRINCIPLES OF LAW
In KSR, the Supreme Court noted that "[t]o facilitate review, this
[obviousness] analysis should be made explicit." KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")).
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ANALYSIS
Claims 1 and 3-11
The Examiner rejects claims 1 and 3-11 as obvious over Black stating
that "[t]he claimed invention differs from Black only in specifying that the
trailer is utilized as a surgery van and that one of the non-movable pieces of
equipment is an operating table." (Ans. 4; see also FF 1A-1B). The
Examiner notes that the term "invasive surgery" is not defined in the
specification of the '435 patent, so "given the broadest reasonable
interpretation, [it] only means 'a room' in that any room can be used for
invasive surgery." (Ans. 6). The Examiner concludes that it would have
been obvious to have "utilized the mobile medical vehicle of Black for
surgery and to have utilized an operating table as one of the pieces of
equipment that is permanently secured to the floor as a mere matter of
intended use as surgery is a type of medical procedure and operating tables
are commonplace equipment for surgical procedures." (Ans. 4). As to
claims 3-11, the Examiner concludes that the recited equipment in these
claims are commonplace items in a surgical unit, and the use thereof would
have been obvious (Ans. 4).
The Patent Owner argues, inter alia, that the Examiner did not
properly construe or give weight to the term "invasive surgery" which is
understood by those in the art, especially in view of the Specification (App.
Br. 7-13; see also Reply Br. 3). The Patent Owner relies on various
declarations as well as a medical dictionary definition of "invasive
procedure" which is a "[p]rocedure in which the body cavity is entered" to
argue that the term has an understood meaning in the art and limits the
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claims (App. Br. 9 citing Decl. of Rudy, Waugh and Bower; App. Br. 11).
The Patent Owner also argues, inter alia, that no prima facie case of
obviousness has been shown because Black merely discloses "a travelling
medical or dental laboratory" instead of an invasive surgery room, and the
Examiner failed to articulate a rational reason for modifying the trailer of
Black to be an invasive surgery room (App. Br. 19-20).
We agree with the Patent Owner. Initially, as noted supra, the '435
patent expired on April 5, 2009, prior to the Order Granting Ex Parte
Reexamination on June 11, 2009, thereby precluding any opportunity for
amendments to the claims. "[I]n reexamination proceedings in which the
PTO is considering the patentability of claims of an expired patent which are
not subject to amendment, a policy of liberal claim construction may
properly and should be applied. Such a policy favors a construction of a
patent claim that will render it valid, i.e., a narrow construction, over a broad
construction that would render it invalid." Ex parte Bowles, 23 USPQ2d
1015, 1017 (BPAI 1991) (quoting Ex parte Papst-Motoren, 1 USPQ2d 1655,
1656 (BPAI 1986)) (both nonprecedential).
Whereas the Examiner characterizes the recitation "invasive surgery"
in the claims as merely a statement of intended use based on the broadest
reasonable construction, the claims actually recite "[a] mobile invasive
surgery van," and includes the further recitation "equipped with essential
equipment for invasive surgery to be performed within the van." Moreover,
"invasive surgery van" gives life and meaning to the claim, the body of
which further recite a specific structure, i.e., an operating table. See
Catalina Mktg Int'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
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Cir. 2002) ("In general, a preamble limits the invention if it recites essential
structure or steps, or if it is 'necessary to give life, meaning, and vitality' to
the claim."). Correspondingly, we find it unreasonable to ignore "invasive
surgery" recitation as done by the Examiner considering the claim language
as well as the expired status of the '435 patent which counsels against broad
construction. Thus, we interpret the claim recitation "mobile invasive
surgery van" to structurally define the claimed invention and find error in the
Examiner's interpretation as merely a statement of intended use.
Furthermore, we also find persuasive the Patent Owner's argument
based on the fact that Black merely discloses a vehicle for medical or dental
laboratories, and not dental surgery or other type of surgery (App. Br. 23; FF
1C). We find no basis to dispute the Patent Owner's contention that dental
"extractions are not performed in a dental laboratory because laboratories, as
understood by a person of ordinary skill in the art, are a 'place equipped for
experimental study in a science or for testing and analysis.'" (App. Br. 23-
24, citation to dictionary omitted). In this regard, the operating table
specifically recited in the claims is entirely absent in Black (FF 2A-2B) and
there is no evidence of record that establishes dental laboratories include an
operating table. Correspondingly, the Examiner's rejection appears to be
merely based on impermissible hindsight.
Therefore, in view of the above, we do not sustain the Examiner's
rejection based on Black. The Patent Owner's remaining arguments and
reliance on evidence of secondary considerations are moot.

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Claims 2, 12-18 and 30
The Examiner rejects claims 2, 12-18 and 30 as obvious over the
combination of Black and Stewart, these claims requiring a section of said
van's main body that is "separate and apart" from the surgical room section.
The Examiner contends that this limitation is shown in Stewart, and that it
would have been obvious "to have included additional areas in the vehicle of
Black in view of teachings of Stewart" to allow for particular use of the
additional separate areas (Ans. 5-6; see also FF 3A-3B).
The Patent Owner argues, inter alia, that Stewart does not cure the
deficiencies of Black (App. Br. 25). Indeed, Stewart fails to disclose any
type of surgery being performed within the disclosed travel trailer or an
operating table therein (FF 4A-4B). The Examiner's application of Stewart
does not address the deficiencies of Black discussed supra. Thus, we also
do not sustain the Examiner's rejection of claims 2, 12-18 and 30.

CONCLUSION
The Examiner's rejections are REVERSED.

REVERSED
ack

cc:
Patent Owner:
DOWNS RACHLIN MARTIN PLLC
199 MAIN STREET
P O BOX 190
BURLINGTON, VT 05402-0190
Appeal 2012-000917
Reexamination Control 90/010,466
Patent US 4,915,435

9

Third Party Requester:
KENDREW H. COLTON
FITCH EVEN TABIN & FLANNERY, ONE LAFAYETTE CENTRE
1120 20TH STREET, NW, SUITE 750 SOUTH
WASHINGTON, DC 20036