Ex Parte Allen et al

Patent Trial and Appeal Board

Aug 1, 2016

13228957 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/228,957 09/09/2011
26812 7590 08/03/2016
HA YES SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
FIRST NAMED INVENTOR
Kraig H. Allen
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.
SYMM 11.06 8579
EXAMINER
KOEHLER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
TSULLIV AN@HA YES-SOLOWAY.COM
jhrycuna@hayes-soloway.com
dbrancheau@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRAIG H. ALLEN and GARY T. DANE
Appeal2014-008584
Application 13/228,957
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kraig H. Allen and Gary T. Dane (Appellants 1) appeal under 35
U.S.C. § 134 from the Examiner's final decision rejecting claims 1--4, 6-19,
and 21. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is Symmetry Medical
Manufacturing, Inc. App. Br. 3.
2 Claims 5 and 20 are canceled. August 1, 2013 Amendment 4, 8.
Appeal2014-008584
Application 13/228,957
SUMMARY OF INVENTION
Appellants' invention "is related to a medical instrument holder."
Spec. 1:4--5. Claim 1, reproduced below from page 25 (Claims Appendix)
of the Appeal Brief, is representative of the claimed subject matter:
1. A medical instrument holder comprising:
a first substantially planar structure having at least a first
aperture positioned therein;
a second substantially planar structure positioned
approximately parallel to the first substantially planar structure,
the second substantially planar structure having at least a
second aperture positioned therein, wherein the second
substantially planar structure is flexible;
a plurality of third apertures positioned within the second
substantially planar structure; and
a plurality of holding structures extending from the first
substantially planar structure, wherein at least a portion of the
plurality of holding structures engage with at least a portion of
the plurality of third apertures within the second substantially
planar structure, and wherein the second substantially planar
structure is stretched between the portion of the plurality of
holding structures.
Additionally, independent claim 13 is drawn to a medical instrument
holder and requires, inter alia, "at least two substantially rigid posts
connected to the at least one substantially planar portion at a first side,
wherein a second side of each of the at least two substantially rigid posts is
removably engaged to one of the plurality of third apertures." App. Br. 28-
29. Independent claim 14 is drawn to a method for holding, and includes
similar limitations to claim 1. See id. at 29-30.
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Appeal2014-008584
Application 13/228,957
REJECTION
Claims 1--4, 6-19, and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Marek (US 2004/0144739 Al, published July 29,
2004).
ANALYSIS
Independent Claim 1
The Examiner finds that Marek discloses all of the elements of
independent claim 1, including, inter alia, a first substantially planar
structure (main body outer section 18)3 and a second substantially planar
surface (insert 14 in combination with main body inner section 16) having a
plurality of third apertures ("notches in [main body inner section] 16 from
which [retaining tabs] 26 protrude[]") therein, wherein "[main body inner
section] 16 'stretches' or extends from one holding structure 26 to the next
holding stn.1cture 26" and "[insert] 14 'stretches' or extends along the same
length as well as, along that length, stretches upon insertion of an
instrument." Final Act. 2-3.
Appellants dispute the Examiner's findings, arguing, inter alia, that
Marek does not disclose a second substantially planar structure stretched
between holding structures because "[i]nterpreting 'stretched between' as
connected between two points is not an interpretation that one of ordinary
skill in the relevant art would find accurately reflects the ordinary and the
customary meaning of the terms in the claims." App. Br. 19. Continuing,
Appellants argue:
3 Parentheticals refer to the terminology of Marek.
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Application 13/228,957
One having skill in the art would find that when a flexible
structure that is "stretched between" the holding structures such
that [it] is retained tightly therebetween, the ordinary and
customary meaning of the terms "stretched between" would
mean elastically stretched between or biased between the
holding structures, not merely connected to the holding
structures.
Id. at 20.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the claim language requires
that "the second substantially planar structure is stretched between the
portion of the plurality of holding structures." App. Br. 25. We initially
note that "is stretched between" connotes some amount of elongated
deformation. This interpretation is bolstered by the Specification, which
explains that "[ t ]he second substantially planar structure 40 may be
constructed from a substantially flexible or pliable material, such as silicon,
which is capable of being retained with the holding structures 60, such that
is has a substantially planar shape" (Spec. 7: 14--16 (emphasis added)), and:
As can be seen [in Fig. 3], the second substantially planar
structure 40 is shown engaged with the holding structures 60,
thereby holding the second substantially planar structure 40
proximate to the first substantially planar structure 20. In this
position, the center portion of the second substantially planar
structure 40 (the portion of the second substantially planar
structure 40 that is located between the holding structures 60)
may be retained tightly between the holding structures 60,
thereby providing the planar shape of the second substantially
planar structure 40. As shown, the ends of the second
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Appeal2014-008584
Application 13/228,957
substantially planar structure 40 may droop down, since they
are not retained between the holding structures 60.
(Spec. 10:17-11:2 (emphasis added)). Thus, both the claims and the
Specification indicate that the flexible second substantially planar structure
is stretched, or longitudinally deformed/elongated, between the holding
structures. The Examiner's attempt to interpret the "is stretched between"
language of the claim to mean "extends" (see. e.g., Final Act. 3, 10) is
inconsistent with the term as would be understood by one of ordinary skill in
the art in light of the Specification, and, therefore, is unpersuasive. The
Examiner has not convincingly established that either Marek' s insert 14 or
main body inner section 16 is "stretched between" retaining tabs 26.
Accordingly, for the foregoing reasons, we reverse the Examiner's
rejection of independent claim 1 as being anticipated by Marek.
Independent Claim 13
The Examiner finds that Marek discloses all of the elements of
independent claim 13, including, inter alia, a first rigid structure (main body
outer section 18) having a substantially planar portion to which two rigid
posts (retaining tabs 26) are connected, and a flexible substantially planar
membrane (insert 14 in combination with main body inner section 16)
having a plurality of third apertures ("indents in [main body inner section]
16 from which [retaining tabs] 26 protrude[]"), "wherein a second side of
each of the at least two substantially rigid posts is removably engaged to one
of the plurality of third apertures." Final Act. 5---6.
Appellants argue, inter alia, that "[t]he retaining tabs 26 of Marek are
not 'removably engaged to one of the plurality of third apertures' of a
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Appeal2014-008584
Application 13/228,957
flexible membrane." App. Br. 22-23. Rather, Appellants continue, "[t]hey
are rigid tabs connected between two rigid structures, the inner and outer
inserts 16, 18." Id. at 23. We are persuaded by this argument. Marek's
retaining tabs 26 appear to be undivided parts of the top surface of main
body inner section 16 that are bent upwards to engage main body outer
section 18. See, e.g., Marek Fig. 1. It is not clear what the Examiner relies
upon to support the position that retaining tabs 26 are removably engaged to
main body inner section 16. 4 The Examiner broadly cites Marek Figure 1
(see Final Act. 6), but does not clearly set forth any disclosure within Marek
that suggests that retaining tabs 26 are removable from main body inner
section 16.
The Examiner is possibly taking the position that the retaining posts
may be removable from the main body inner section by destructive means,
such as cutting. However, Appellants, in their Specification, distinguish a
"removable connection" from a "permanent connection." Spec. 13 :21-22.
This evidences that the term "removably engaged to" is employed in a
manner that requires removal of the flexible planar membrane without
damaging, at a minimum, the rigid posts with which it is engaged. We
conclude that the Examiner's interpretation of "removably engaged to," to
the extent that it broadly encompasses removal by destructive means, is
unreasonably broad because it effectively gives no meaning to the term
"removably" in Appellants' claim language.
4 We note that the Examiner did not address Appellants' arguments
regarding claim 13 in the Examiner's Answer.
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Application 13/228,957
Accordingly, for the foregoing reasons, we reverse the Examiner's
rejection of independent claim 13 as being anticipated by Marek.
Independent Claim 14
The Examiner finds that Marek discloses all of the elements of
independent claim 14. Final Act. 6-7. Appellants expressly rely on
arguments advanced with respect to the rejection of independent claim 1.
App. Br. 23. For the reasons stated above with respect to claim 1,
Appellants' arguments are persuasive and the rejection is reversed.
Dependent Claims
Because each of dependent claims 2--4, 6-12, 15-19, and 21 depends,
directly or indirectly, from one of independent claims 1 and 14, and the
Examiner's application of Marek to the dependent claims does not remedy
the aforementioned errors for claims 1 and 14, we likewise reverse the
Examiner's rejection of claims 2--4, 6-12, 15-19, and 21.
DECISION
The Examiner's decision to reject claims 1--4, 6-19, and 21 is
reversed.
REVERSED
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