Ex Parte Bohner et al

Patent Trial and Appeal Board

Feb 14, 2019

13796817 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796,817 03/12/2013
14717 7590 02/19/2019
Medtronic Inc. (SurgNav)
710 Medtronic Parkway NE
MS: LC340 Legal Patents
Minneapolis, MN 55432
FIRST NAMED INVENTOR
Michelle Bohner
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.
C00003388.USU2 5561
EXAMINER
BAYS,PAMELAM
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE BOHNER, RALPH I. MCNALL,
and HARDEY KAHLON
Appeal2018-000353
Application 13/796,817
Technology Center 3700
Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1-7, 9, 10, 12, 14, 17, 20, and 21. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-000353
Application 13/796,817
CLAIMED SUBJECT MATTER
The claims are directed to electrosurgical devices for resecting,
cutting and/or removing tissue. Spec. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An electrosurgical device for cutting tissue comprising:
a handle;
a shaft having a major longitudinal axis and defining an
exterior surface;
the shaft defining a distal end portion comprising a distal
most edge having an exposed electrosurgical cutting surface that
is substantially perpendicular to the longitudinal axis, the
exterior surface being continuous along the shaft and the distal
end portion;
an arcuate surface extending proximally from the distal
most edge along the major longitudinal axis;
first and second arcuate edges defining lateral edges of the
arcuate surface;
an electrical insulation layer coating substantially all of the
distal end portion with the exception of at least the distal most
edge of the distal end portion such that the distal most edge is
exposed; and
a connector adapted to associate the electrosurgical device
to an electrical energy source so that at least the distal most edge
comprises an electrode configured to deliver electrical energy to
the tissue.
Appeal Br. 11 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Davison
Qiu
Dickhaus
US 2002/0052600 Al
US 2004/0176760 Al
US 2011/0054461 Al
2
May 2, 2002
Sept. 9, 2004
Mar. 3, 2011
Appeal2018-000353
Application 13/796,817
THE REJECTIONS ON APPEAL
I. Claims 1-7, 9, 10, 12, 14, 17, 20, and 21 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1, 4--7, 9, 12, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Qiu and Dickhaus.
III. Claims 2, 3, 10, 14, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Qiu, Dickhaus, and Davison.
OPINION
Rejection I
Appellants argue the claims subject to the first ground of rejection,
i.e., claims 1-7, 9, 10, 12, 14, 17, 20, and 21, as a group. Appeal Br. 4--5.
We select claim 1 as representative of the group, and claims 2-7, 9, 10, 12,
14, 17, 20, and 21 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the phrases "the shaft defining a distal
end portion" and "the exterior surface being continuous along the shaft and
the distal end portion" in claim 1 are unclear. See Final Act. 2-3.
Specifically, the Examiner states, "it is unclear how the shaft can 'define' a
distal end portion, or what is being structurally defined by 'the exterior
surface being continuous along the shaft and the distal end portion."' Id. at
3.
Appellants assert that a person of ordinary skill in the art would
understand the scope of claim 1, in particular, in view of Figure 5, where the
structure identified by reference number 16 is, at least in part, a shaft.
Appeal Br. 5. Appellants acknowledge that the Specification refers to the
structure identified with reference number 13 as a "'shaft [that] includes a
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Appeal2018-000353
Application 13/796,817
proximal shaft portion 14 and a distal end portion 16,"' but assert "there is
no ambiguity that [the] distal end portion is defined, at least in part, by a
shaft, and that the claimed feature of the 'the shaft defining a distal end
portion' ( emphasis added) must be referring to the structure identified by
reference designator 16 in FIG. 5." Id.
The Examiner finds that Appellants' Specification describes a shaft 13
that includes proximal portion 14 and distal portion 16, and, therefore, it is
reasonable to interpret the "shaft" as comprising two distinct portions. See
Ans. 14--16 (citing Spec. 10, 11, Figs. 3, 5, 6, 19). Thus, according to the
Examiner, Appellants' interpretation of the recited shaft in claim 1 as just
the distal end portion 16, and not also the proximal portion 14, is
inconsistent with the Specification.
In reply, Appellants state that claim 1 was drafted "to exclude the
exact configuration the Examiner is attempting to impart on the claims" and
"[ s ]imply, because Appellant used a term in its claims supported by the
Specification, but not identical to the word or phrase used in the
Specification to refer to this feature, does not make it indefinite." Reply Br.
2.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (Plager, J., concurring)
( Approving, for pre-issuance claims, the standard from MPEP
§ 2173.05(e) (Nov. 2013).); see also Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(Adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard.). Our reviewing court instructs us that an applicant "is
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Appeal2018-000353
Application 13/796,817
in the best position to resolve the ambiguity in the patent claims, and it is
highly desirable that patent examiners demand that applicants do so in
appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation."
Halliburton Energy Servs. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008).
We agree with the Examiner that Appellants' Specification describes
the "shaft" as comprising two distinct portions. See, e.g., Spec. 10:26-28
("System 20 includes a device 10 comprising a handle 12 and a shaft 13
having a longitudinal axis 'A' where the shaft 13 includes a proximal shaft
portion 14 and a distal end portion 16."). 1 Although Appellants assert that
the "shaft" recited in claim 1 refers to structure identified by reference
number 16 (Appeal Br. 5), the Specification consistently refers to the "shaft"
with reference number 13 and its distal end portion with reference number
16. See Spec. Further, the Specification does not describe the shaft as
having an exterior surface that is continuous. 2, 3 Nor does the Specification
1 We note that the language in dispute was added to independent claims 1,
12, and 21 in an Amendment filed on March 3, 2017, (hereinafter
"Amendment") and which stated "[n]o new matter has been added."
Amendment 2, 4, 6, 8. The Amendment did not specifically identify where
support for the limitation at issue could be found in the original disclosure.
See Amendment 8.
2 The Specification teaches that, in one embodiment, "proximal shaft 14 and
distal end portion 16 may comprise a unitary structure or may comprise
separately formed members which are permanently or removably joined."
Spec. 11 :27-29 ( emphasis added). However, this portion of the
Specification does not explain whether the surface of any such unitary
structure is continuous.
3 Appellants point out that the Examiner did not reject the claims under
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Appeal2018-000353
Application 13/796,817
ever refer to the distal end portion as being, itself, a shaft. Therefore, claim
1 does not merely use language that is not identical to terms used in the
Specification (as Appellants assert (Reply Br. 2)), claim 1 uses language that
contradicts the consistent use of the term "shaft" in the Specification. 4 In
consideration of the contradiction between the description in Appellants'
Specification and Figures and the language of the claims, we agree with the
Examiner that claim 1 is unclear. Accordingly, we sustain the Examiner's
rejection of claims 1-7, 9, 10, 12, 14, 17, 20, and 21 under 35 U.S.C. § 112,
second paragraph.
As we agree that the language discussed above renders claims 1-7, 9,
10, 12, 14, 17, 20, and 21 indefinite, we also agree with the Examiner that,
in the context of independent claims 1, 12, and 21, it is not clear how a shaft
may define a distal end portion ( and also a surface "continuous along the
shaft") inasmuch as it is unclear what structure Appellants mean by the term
"shaft."
35 U.S.C. § 112, first paragraph, and assert that there is no dispute as to
whether support exists for the claimed features. Appeal Br. 5 n.1. We do
not reach this issue.
4 Appellants' interpretation of the "shaft" recited in claim 1 as just the distal
end portion 16, and not also the proximal portion 14, is also arguably
inconsistent with claim 7. Claim 7 recites "wherein the shaft is configured
for removable attachment to the handle." Although the distal end portion
16, as described in the Specification, is configured for indirect, removable
attachment to the handle 12 by way of the proximal portion 14, claim 7 at
least suggests that the recited "shaft" is the structure (namely, the shaft 13),
which is configured for direct, removable attachment to the handle 12.
Indeed, the separate recitation of the "distal end portion" in claim 6, and of
the "shaft" in claim 7, implies that the recited "distal end portion" and the
recited "shaft" refer to separate structures.
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Appeal2018-000353
Application 13/796,817
Rejections 11-111
Some of the limitations at issue in the rejection of claims 1-7, 9, 10,
12, 14, 17, 20, and 21 as indefinite are the same as those argued by
Appellants' in traversing the rejection of these claims as unpatentable over
the prior art. See Appeal Br. 4--9. In view of our determination that claims
1-7, 9, 10, 12, 14, 17, 20, and 21 are indefinite, it follows that the prior art
rejection of these claims must fall, because the rejection is based necessarily
on speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that
our decision in this regard is proforma and based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
DECISION
I. The rejection of claims 1-7, 9, 10, 12, 14, 17, 20, and 21 as
indefinite is affirmed.
II. The rejection of claims 1, 4--7, 9, 12, and 17 as unpatentable
over Qiu and Dickhaus is reversed.
III. The rejection of claims 2, 3, 10, 14, 20, and 21 as unpatentable
over Qiu, Dickhaus, and Davison is reversed.
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)(l )(iv).
AFFIRMED
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