Ex Parte Blocher et al

Patent Trial and Appeal Board

Jan 26, 2018

13193161 (P.T.A.B. Jan. 26, 2018)

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.
13/193,161 07/28/2011 Martin Blocher 02581 -P1440A 7387
131672 7590
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
01/26/2018 EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
01/26/2018 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 MARTIN BLOCHER and ROBIN MERZ
Appeal 2016-002149
Application 13/193,1611
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Blocher and Robin Merz (“Appellants”) appeals under 35
U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Jan.
29, 2015, hereinafter “Final Act.”) rejecting under 35 U.S.C. § 102(b) claims
3—10 and 18—23 as being anticipated by Brass (US 4,057,886, issued Nov.
15, 1977).2 Appellant’s representative presented oral argument on January
23, 2018. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants’ Appeal Brief (filed June 29, 2015, hereinafter
“Appeal Br.”), Karl Storz GmbH & Co. KG of Tuttlingen, Germany is the
real party in interest. Appeal Br. 2.
2 Claims 1, 2, and 12—17 are withdrawn. Appeal Br. 2.
Appeal 2016-002149
Application 13/193,161
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “a method for mounting a sheath on a
distal end of a surgical shaft instrument.” Spec., para. 2.
Claim 3, the sole independent claim, is representative of the claimed
invention and reads as follows:
3. An apparatus for mounting a sheath onto a distal end of a
surgical shaft instrument, the apparatus comprising:
a base body;
at least two spreading elements each having a proximal
end and a distal end for fastening a sheath on the base body, the
proximal ends of the at least two spreading elements being
mounted to the base body such that the at least two spreading
elements extend from the proximal ends into the base body, the
at least two spreading elements being actuatable to radially
widen at least a proximal end of the sheath; and
an insertion opening formed in the base body between the
proximal ends of the at least two spreading elements, the
insertion opening providing an entry point to receive a distal
end of a surgical shaft instrument and direct the distal end of
the surgical shaft instrument into the widened proximal end of
the sheath;
the spreading elements being configured for transferring
the sheath from the base body onto the distal end of the surgical
shaft instrument.
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Appeal 2016-002149
Application 13/193,161
ANALYSIS
Independent claim 3 requires, inter alia, “at least two spreading
elements” that are: (1) “for fastening a sheath on the base body”; (2)
“actuatable to radially widen at least a proximal end of the sheath”; and (3)
“configured for transferring the sheath from the base body onto the distal
end of the surgical shaft instrument.” Appeal Br. 19—20 (Claims App.).
The Examiner finds that Brass discloses a device including, inter alia,
a base body 22 and at least two spreading elements 32, 33 for fastening
sheath 36 onto base body 22 that can be actuated to widen radially sheath 36
and are configured to transfer sheath 36 from base body 22. Final Act. 2—3.
Appellants argue that Brass’ jaws 32, 33 (1) are not for fastening gun
cap 36 onto housing 22 (see Appeal Br. 5—6); (2) cannot be actuated to
widen gun cap 36 radially (see id. at 8—9); and (3) are not configured to
transfer gun cap 36 onto housing 22 (see id. at 14—15).
The Examiner responds that because Brass’ jaws 32, 33 can be used to
attach to a workpiece, jaws 32, 33 constitute “at least two spreading
elements having a distal end for fastening a sheath on the base body.”
Examiner’s Answer 8 (dated Oct. 13, 2015, hereinafter “Ans.”). The
Examiner further notes that Brass’ jaws 32, 33 are actuatable. Id. at 11
(citing Brass, Fig. 6). Finally, in response to Appellants’ argument that
Brass’ jaws 32, 33 are not “configured to” transfer gun cap 36 onto housing
22, the Examiner takes the position that this limitation is an intended use
limitation and does not carry patentable weight. Id. at 13.
We agree with the Examiner that the argued limitations noted above,
and as set forth in claim 3, are functional limitations. However, although
“[a] patent applicant is free to recite features of an apparatus either
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Appeal 2016-002149
Application 13/193,161
structurally or functionally,” nonetheless, the Examiner is required “to make
sufficient factual findings, such that it can reasonably infer that the prior art
product and that of the patent at issue are the same.” Howmedica Osteonics
Corp. v. Zimmer Inc., 640 Fed. Appx. 951, 958 (Fed. Cir. 2016). In this
case, we agree with Appellants that “[t]he Examiner asserts without factual
evidence that Brass discloses” the argued limitations noted above. Appeal
Br. 8, 13.
For example, Appellants are correct in that Brass’ jaws 32, 33
(spreading elements)3 4are not capable of fastening cap 36 (sheath) onto
housing 22 (base body). See Reply Brief 3 (filed Dec. 11, 2015, hereinafter
“Reply Br.”). Brass discloses that “[j]aws 32 and 33 move in and out of
cap 36 upon actuation of trigger 28” so as “to open and close jaws 32 and 33
around base 16 of rivet 8.” Brass, col. 4,11. 33—35. Hence, although Brass’
jaws 32, 33 are capable of holding and releasing rivet 8, jaws 32, 33 are not
capable of fastening cap 36 onto housing 22.
Appellants are also correct that Brass’ jaws 32, 33 are not capable of
widening radially cap 36. Reply Br. 6. Although we appreciate the
Examiner’s position that jaws 32, 33 are actuatable (see Ans. 11),
nonetheless, jaws 32, 33 do not act upon cap 36, but rather act upon rivet 8
to stretch it and reduce its diameter so as to be inserted into holes 4 of
plate 2/bar 3. See Brass, col. 3,11. 31—36. We agree with Appellants that
“FIGS. 9-10 [of Brass] clearly show that when the jaws 32 and 33 are
actuated into the closed position to hold a rivet 8, the gun cap 36 maintains
the same shape and size as when the jaw members are in the open position
3 Parenthetical nomenclature refers to claim language.
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Appeal 2016-002149
Application 13/193,161
shown in FIGS. 5-7.” Appeal Br. 8—9. Accordingly, Brass’ jaws 32, 33 are
not capable of widening radially cap 36.
Finally, the Examiner has not explained adequately how jaws 32, 33
are “configured to” transfer cap 36 onto another element. See Ans. 13.
Although we appreciate that jaws 32, 33 can transfer rivet 8 onto plate 2/bar
3, there is a difference between how the device is capable of being used and
the structure of the device. See In re Giannelli, 739 F.3d 1375, 1379 (Fed.
Cir. 2014). In this case, Brass’ jaws 32, 33 are not configured or designed to
transfer cap 36 from housing 22 to another element because jaws 32, 33
move along the longitudinal axis of the rivet gun and cap 36 is permanently
fixed onto housing 22. See Appeal Br. 14—15, Reply Br. 9-10; see also
Brass, Figs. 5—7, 9-11.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 3—10 and 18—23 as anticipated
by Brass.
SUMMARY
The Examiner’s decision to reject claims 3—10 and 18—23 under 35
U.S.C. § 102 is reversed.
REVERSED
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