Ex Parte Chiu et al

Board of Patent Appeals and Interferences

Mar 15, 2012

11279898 (B.P.A.I. Mar. 15, 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.
11/279,898 04/17/2006 Kwok Wai Chiu PRP.00001 8941
88906 7590 03/15/2012
William S. Wang
2202 Mac Davis Ln, #311-A
Lubbock, TX 79401
EXAMINER
SZPIRA, JULIE ANN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/15/2012 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 KWOK WAI CHIU and HONGTAO QIU
____________

Appeal 2010-009945
Application 11/279,898
Technology Center 3700
____________

Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 3, and 6-11
(App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a circumcision clamp. Claim 1 is
representative and is reproduced in the “CLAIMS APPENDIX” of
Appellants‟ Brief (App. Br. 20-21).
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Application 11/279,898

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Claims 1, 3, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lee
1
and Rebuffat.
2

Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lee, Rebuffat, and Steinberg.
3

Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lee, Rebuffat, and Diaz.
4

We affirm the rejection of claims 1, 3, and 6-10. We reverse the
rejection of claim 11.

The combination of Lee and Rebuffat:
ISSUE
Does the preponderance of evidence on this record suggest a
circumcision clamp comprising a clamp-brace tilt angle that “is on the order
of a few degrees and refers to an acute angle formed between the length of
the circumcision clamp, in a closed position, and the axis of curvature shared
by the interior brace and the exterior brace” (Claim 1)?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Lee suggests all the elements of the circumcision
clamp of Appellants‟ claims 1, 3, and 6, with the exception of semi-circular
braces and the clamp-brace tilt angle (Ans. 3-4).
FF 2. Examiner finds that Rebuffat suggests semi-circular braces (Ans. 3).
FF 3. Examiner relies on Rebuffat to suggest a clamp-brace tilt angle that
“is on the order of a few degrees and refers to an acute angle formed

1
Lee, US 6,547,797 B1, issued April 15, 2003.
2
Rebuffat, US 4,605,002, issued August 12, 1986.
3
Steinberg et al., US 5,746,748, issued May 5, 1998.
4
Diaz, US 2,887,111, issued May 19, 1959.
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between the length of the circumcision clamp, in a closed position, and the
axis of curvature shared by the interior brace and the exterior brace” (Ans. 3-
4).
FF 4. Examiner finds that Appellants fail to define the “„length of the
circumcision clamp‟ . . . in such a way that distinguishes the invention from
the teachings of the prior art” and that “[a] variety of lengths may be
selected [from Rebuffat] such that the claim limitation is met” as is
illustrated in Examiner‟s annotations of Rebuffat‟s Fig. 2 below:

(Ans. 6-7.) Rebuffat‟s Fig. 2 “is a left side view of . . . [Rebuffat‟s] string-
purse instrument” (Rebuffat, col. 2, ll. 30-31).
ANALYSIS
Appellants provide separate arguments for claims 1 and 3 (App. Br.
10-14). Because it is not separately argued, claim 6 stands or falls together
with claim 1 (see App. Br. 14). 37 C.F.R. § 41.37(c)(1)(vii).

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Claim 1:
Based on the combination of Lee and Rebuffat, Examiner concludes
that, at the time Appellants‟ invention was made, it would have been prima
facie obvious to a person of ordinary skill in this art “to provide the
invention of Lee with [(1)] the semi-circular brace as taught by Rebuffat in
order to have more leeway in the suture surface” and (2) “the clamp-brace
tilt angle as taught by Rebuffat in order to facilitate usage of the device”
(Ans. 4).
Appellants contend that Lee and Rebuffat alone or in combination fail
to suggest the clamp-brace tilt-angle set forth in Appellants‟ claim 1 (App.
Br. 10-11). We are not persuaded (see FF 4). See In re Zletz, 893 F.2d 319,
322 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.”) Here, the Examiner provides two
different interpretations of the prior art (FF 4) which reasonably address the
angle limitation. Appellants have not shown that the Examiner‟s
interpretations of the prior art are unreasonable.

Claim 3:
Claim 3 depends from and further limits the acute angle of claim 1 to
10° (Claim 3). Based on the combination of Lee and Rebuffat, Examiner
concludes that, at the time Appellants‟ invention was made, it would have
been prima facie obvious to a person of ordinary skill in this art “to have the
clamp-brace tilt angle be 10 degrees since it has been held that where the
general conditions of a claim are disclosed in the prior art, discovering the
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optimum value of a result effective variable involves only routine skill in the
art” (Ans. 4, citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
For the foregoing reasons, we are not persuaded by Appellants‟
contention that “Lee does NOT disclose or suggest Applicants‟ claim
limitation of „an acute angle formed between the length of the circumcision
clamp, in a closed position, and the axis of curvature shared by the interior
and exterior brace‟” (App. Br. 13).
CONCLUSION OF LAW
The preponderance of evidence on this record suggests a circumcision
clamp comprising a clamp-brace tilt angle that “is on the order of a few
degrees and refers to an acute angle formed between the length of the
circumcision clamp, in a closed position, and the axis of curvature shared by
the interior brace and the exterior brace” (Claim 1). The rejection of claims
1 and 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Lee and Rebuffat is affirmed. Because it is not separately argued claim 6
falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

The combination of Lee, Rebuffat, and Steinberg:
ISSUE
Does Steinberg teach away from its combination with Lee and
Rebuffat?
FACTUAL FINDINGS (FF)
FF 5. Examiner relies on the combination of Lee and Rebuffat as discussed
above (Ans. 5)
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FF 6. Examiner finds that the combination of Lee and Rebuffat fails to
suggest a clamp “made of medical-grade stainless steel, disposable plastic,
or ceramic” (id.).
FF 7. Examiner relies on Steinberg to suggest “a circumcision instrument
made of stainless steel, disposable plastic, or ceramic” (id.).
FF 8. Steinberg suggests that the Steinberg device offers advantages over
the use of prior art circumcision instruments (see generally Steinberg, col. 6,
ll. 24-49).
ANALYSIS
We recognize Appellants‟ recitation of the limitations of each claim,
as well as Appellants‟ concession that Steinberg suggests a circumcision
clamp made of medical-grade stainless steel, plastic, or ceramic (see App.
Br. 14). However, while Appellants separately identify the limitations of
each rejected claim, Appellants fail to provide separate arguments for each
claim. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board
[has] reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”) Accordingly, the claims stand or fall together. 37 C.F.R. §
41.37(c)(1)(vii). Claim 7 is representative.
Based on the combination of Lee, Rebuffat, and Steinberg, Examiner
concludes that at the time Appellants‟ invention was made, it would have
been prima facie obvious to a person of ordinary skill in this art “to make the
clamp out of the materials . . . taught by Steinberg” (Ans. 5). We agree.
For the reasons set forth above, we are not persuaded by Appellants‟
contention that Steinberg alone “do[es] not teach or suggest a circumcision
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clamp having curved bracing members” (App. Br. 15). We are also not
persuaded by Appellants‟ contention that Steinberg‟s discussion of the
advantages of the Steinberg device over prior art circumcision instruments
teaches away from making the device suggested by the combination of Lee
and Rebuffat out of a medical grade stainless steel, disposable plastic, or
ceramic (App. Br. 15-16; FF 8). Cf. In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”).
CONCLUSION OF LAW
Steinberg does not teach away from its combination with Lee and
Rebuffat. The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Lee, Rebuffat, and Steinberg is affirmed. Because
they are not separately argued claims 8-10 fall together with claim 7. 37
C.F.R. § 41.37(c)(1)(vii).

The combination of Lee, Rebuffat, and Diaz:
ISSUE
Does the preponderance of evidence on this record support a
conclusion that the combination of Lee, Rebuffat, and Diaz suggests interior
and exterior braces arranged as set forth in Appellants‟ claim 11?
FACTUAL FINDINGS (FF)
FF 9. Examiner relies on the combination of Lee and Rebuffat as discussed
above (Ans. 5)
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FF 10. Examiner finds that the combination of Lee and Rebuffat fails to
suggest a clamp with an “interior brace ha[ving] a greater depth than the
exterior brace” (id.).
FF 11. With reference to Diaz‟s Fig. 11, reproduced below, Examiner finds
that Diaz suggests “a clamp wherein the interior brace (a) has a depth greater
than that of the exterior brace (b), such that the interior brace protrudes in
the proximal direction beyond the proximal edge of tile [sic] exterior brace”
(id.).

Diaz‟s “Fig. 11 shows how, after cutting the vein, a thread is passed behind
the blocking forceps so as to effect another knot” (Diaz, col. 2, ll. 19-21).
FF 12. For clarity, we reproduce Diaz‟s Fig. 4 below:

Diaz‟s “Fig. 4 shows . . . [a] forcep in which the jaws are elbowed nearly as
rectangle towards the right” (Diaz, col. 2, ll. 1-2).
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FF 13. For clarity, Appellants‟ FIG. 1 and FIG. 7 are reproduced below:

“Figure 1 is a perspective view of a top circumcision clamp for clamping
and removing the upper portion of excess foreskin according to the present
invention” (Spec. 5: 6-7). “Figure 7 is a partial, enlarged, perspective view
of the top clamp of Figure 1, closed” (Spec. 5: 18).
FF 14. Appellants‟ Specification discloses that “interior brace 120 depth is
preferably slightly greater than the . . . exterior brace 118 depth, such that
the . . . interior brace 120 protrudes in the proximal direction slightly beyond
the proximal edge of the . . . exterior brace 118” (Spec. 9: 13-15).
ANALYSIS
Based on the combination of Lee, Rebuffat, and Diaz, Examiner
concludes that at the time Appellants‟ invention was made, it would have
been prima facie obvious to a person of ordinary skill in this art “to modify
the invention of Lee modified by Rebuffat with the uneven jaws as taught by
Diaz in order to facilitate suturing beyond the zone of tissue that is clamped”
(Ans. 5).
Appellants contend that
Diaz does NOT disclose a clamping brace surface that
protrudes in the proximal direction relative to its opposing
clamping brace surface. Rather, all of the embodiments in Diaz
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. . . show the protruding brace or jaw 4 protruding with a
terminal 11 projection in the distal direction (i.e., away from the
rest of the instrument).

(App. Br. 17.) We agree (see FF 13).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion that the combination of Lee, Rebuffat, and Diaz suggests interior
and exterior braces arranged as set forth in Appellants‟ claim 11. The
rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Lee, Rebuffat, and Diaz is reversed.

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).

AFFIRMED-IN-PART

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