14215284 (P.T.A.B. Feb. 27, 2019)

Ex Parte MARK et al

Patent Trial and Appeal BoardFeb 27, 2019

14215284 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/215,284 03/17/2014 22045 7590 03/01/2019 Brooks Kushman 1000 Town Center 22nd Floor SOUTHFIELD, MI 48075 FIRST NAMED INVENTOR Joseph L. MARK 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. NIC00107PUSP 4358 EXAMINER ULSH, GEORGE J ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH L. MARK and BRIAN C. DOUGHERTY Appeal2017-010826 Application 14/215,284 Technology Center 3700 Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and RACHEL H. TOWNSEND, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellant1 appeals from Examiner's decision to reject claims directed to a surgical instrument. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 Appellant is the Applicant, Nico Corp., which, according to the Brief, is the real party in interest. Appeal Br. 1. Appeal2017-010826 Application 14/215,284 STATEMENT OF THE CASE Claims 1-13 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows: 1. A surgical instrument, comprising: a housing; a first actuation member to impart a reciprocating action to a portion of the instrument; a second actuation member arranged adjacent the first actuation member to impart a rotational action to a portion of the instrument; a first cannula operatively connected to the second actuation member, such that the first cannula is configured for rotational movement with respect to the housing in response to actuation of the second actuation member, and a wire member disposed within the first cannula and configured to rotate with the first cannula. Appeal Br. 10 (Claims Appendix). Appellant requests review of the following issues raised by Examiner: I. Interpretation of the claims under the provision of 35 U.S.C. Â§ 112(Â±). II. The rejection of claims 1-3, 7-9, and 17 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Noda. 2 Final Act. 5---6. III. The rejection of claims 4 and 5 under 35 U.S.C. Â§ 103 as unpatentable over Noda in view of Jacobson. 3 IV. The rejection of claims 10-13 under 35 U.S.C. Â§ 103 as unpatentable over Noda in view ofWright. 4 2 Noda, US 5,366,476, issued Nov. 22, 1994. 3 Jacobson et al., US 2003/0060732 Al, published Mar. 27, 2003 ("Jacobson"). 4 Wright et al., US 6,090,120, issued July 18, 200 ("Wright"). 2 Appeal2017-010826 Application 14/215,284 I. Claim Interpretation under 35 USCÂ§ 112(!)5 Examiner finds that recitation of "actuation member" in the claim to be a generic placeholder because it does not recite sufficient structure to achieve the recited function of "reciprocating action" or imparting "rotational action." Final Act. 3. "The term 'actuation' prior to 'member' does not impart any structure." Id. at 2. Therefore, Examiner has to look to the Specification to determine if the Specification defines "actuation member" or describes structures that can carry out the recited function. Examiner finds that the Specification describes the following structures "the first actuation member is a lever (Paragraph 0040), and the second actuation member is a rotation wheel (Paragraph 0033)." Id. at 4. Appellant requests withdrawal of the Section 112(Â±) interpretation because the claim limitations do not use the term "means" or "step" for. See Appeal Br. 4. Appellant contends "the 'actuation member' in the present claims would be understood as one of skill in the art as having a definite meaning." Id. Appellant contends that the use of functional language does not render a claim improper. Id. at 5 (citing In re Swinehart, 439 F.2d 210, 212 CCPA 1971) andMPEP 2173.05). The issue is not whether the use of functional language is impermissible in a claim, but as pointed out by Examiner, the issue is whether the recitation of "actuation member to impart a reciprocating 5 35 U.S.C. 112(Â±) recites: ELEMENT IN CLAIM FOR A COMBINATION.-An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 3 Appeal2017-010826 Application 14/215,284 action" apprises one of ordinary skill of a structure that meets this requirement. See Final Act. 2; see Ans. 2-3. In other words, we know from the claim that the structure needs to move back and forth because it is to have a reciprocating action, but the function of moving back and forth, alone, does not describe the structure of the actuation member. Examiner finds that the "second actuation member arranged ... to impart a rotational action" as recited in the claim has a similar issue because it also does not apprise one of ordinary skill in the art to a particular structure that carries out the function. See Ans. 3. Appellant does not explain how the term "actuation member" would have been understood by persons of ordinary skill in the art to have a particular structure. "The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). We agree with Examiner that "actuation member" as recited in the claims does not have a sufficiently definite meaning, alone, and therefore it is necessary to consult the Specification. MPEP 2181 (I) recites a three prong analysis for determining whether 35 U.S.C. Â§ 112(f) applies. Prong one asks whether the claims recite the term "means" for, "step" for, or uses an alternatively generic placeholder or a nonce term that does not have an associated structural meaning for performing the particular function. Here, the claim uses the generic placeholder "member" that is not further defined by the modifier word "actuation," other than by the fact that some sort of motion must be effectuated by the "member." See Ans. 3. In other words, "actuation" is a 4 Appeal2017-010826 Application 14/215,284 non-structural modifier, unlike, for example "detent" in the phrase "detent mechanism." Id. Prong two asks whether the generic placeholder is modified by a linking word or phrase. Here, the claim recites the linking phrase "to impart" and "configured for" between the generic placeholder and action, thus, meeting prong two of the analysis. See Final Act. 3. The third prong of the analysis asks whether the generic placeholder is modified by sufficient structure. On this point we agree with the Examiner that the modifier "actuation" does not impart a structure to the generic "member" placeholder. See Final Act. 2. 6 Accordingly, we agree with Examiner's claim interpretation that "actuation member" as recited in the claims is a generic placeholder because it does not apprise one of ordinary skill in the art with an associated structure 6 Furthermore the phrase "actuation member to impart ... ," is unlike the term "reciprocating member" in the claims at issue in CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). See Appeal Br. 4--5. That is, unlike here, in CCS Fitness, the term "reciprocating member" did not include a functional requirement thereafter. 288 F.3d at 1363. As the Court explained in CCS Fitness: "In this case, the claims at issue do not phrase the 'reciprocating member' limitation in means-plus-function language, thereby triggering the rebuttable presumption thatÂ§ 112 ,r 6 does not govern" and "Life Fitness itself ... has done nothing to try to overcome the presumption." Id. at 1369. Here, in contrast, the "actuation member" phrase at issue is, indeed, phrased in means-plus-function manner. Furthermore, explained the Court: "the claims themselves describe the 'member' as having a 'rear support and a front end' with one end of this structure circulating around a crankshaft and the other having wheels so that it can 'rollably engage the base portion' of the claimed invention. This suffices for purposes ofÂ§ 112 ,r 6 and the presumption thereto." Id. at 1370. Here, on the other hand, the claims do not further describe the actuation member as having any particular structure. 5 Appeal2017-010826 Application 14/215,284 and therefore requires the importation of the structure from the Specification into the claims based on 35 U.S.C. Â§ 112(Â±). We are also not persuaded by Appellant's contention that the interpretation under 35 U.S.C. Â§ 112(Â±) limits the applied art to a "wheel" and "lever." See Reply Br. 4 ("the Examiner had already interpreted the claims to include a lever and a wheel under Section 112(Â±) ... Noda fails to teach such 'lever' and 'wheel"'). 35 U.S.C. Â§ 112(Â±), itself requires that terms deemed to invoke the statute "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof" (Emphasis added.) In other words, the broadest reasonable interpretation requires that the Examiner not only consider the structure described in the specification, but equivalents thereof. II. Anticipation by Noda The issue is whether the preponderance of evidence of record supports Examiner's finding that Noda discloses a surgical instrument as claimed. Findings of Fact FPL Figure 1 ofNoda, reproduced below, shows an electrosurgical device. 6 Appeal2017-010826 Application 14/215,284 FIG. 1, shows: [E]lectrosurgical device 20 has an actuator handle 22 having a distal end 24 and a proximal end 26. The handle has an opening or aperture 28 on a lateral side in which is disposed a pivotable lever 30. Lever 30 has a thumb switch 32 slidably disposed on a lateral surface of the lever. Id. 6:63---68 (bold emphasis omitted). Axial translation of paddle element 46 past surgical hook 42 provides a shearing action as the paddle element is moved forward. Id. 9:20- 24. FF2. Annotated Figure 12B of Noda, is reproduced below, and shows the components of the surgical instrument as identified by Examiner. FIG. 12/l Figure 12 B, of Noda shows a surgical instrument with annotations of the elements as identified by Examiner. See Ans. 3--4; see also at 4 ("a separate trocar that houses the device and first cannula, the device and first cannula can freely rotate within the housing."). Noda describes 7 Appeal2017-010826 Application 14/215,284 the components of the electro surgical instrument in Figure 12 Bas follows: Electrosurgical device 20 will be positioned through cannula 222 with the surgical hook 42 near the body structure S desired to be dissected, cauterized or manipulated. The surgeon will grasp handle 22 to manipulate instrument 20 axially and rotationally so as to engage body structure Swithin hook 42. Noda 12:26-31. Analysis Claim 1 Appellant contends that Noda does not disclose a mechanism that "'impart[ s] a rotational action to a portion of the instrument,' as claimed." Appeal Br. 6. Appellant contends that Examiner's interpretation of the first actuation member being a lever and the second actuation member being a wheel are limitations not met by Noda. Reply Br. 4. Examiner finds that "Noda discloses a second actuation member (22) arranged adjacent to the first actuation member (30) to impart a rotational action ... to a portion of the instrument (20) ... such that the first cannula (36) is configured for rotational movement ... with respect to the housing (222) in response to actuation of the second actuation member (22)." Ans. 3--4; FF 1-FF2. We agree with Examiner that Noda discloses an electrosurgical device (FF 1) that contains a first actuation member (30) and a second actuation member (22). FFl. The surgical instrument identified by Examiner is the combination of the electro surgical device once inserted into the cannula. FF2. Examiner explains that the surgeon rotates the device by grasping 8 Appeal2017-010826 Application 14/215,284 handle 22, this in tum will rotate shaft 36 when it is positioned through cannula 222. Ans. 4--5. We are not persuaded by Appellant's argument that Examiner's interpretation of the structures associated with the respective actuation members described in the Specification necessitates that Examiner finds these specific structures in the art. See Reply Br. 4. Rather, as discussed above, the broadest reasonable interpretation of these claimed elements under a means-plus-function claim structure is the corresponding structure described in the specification and equivalents thereof Here, Examiner identified the actuation members as being a lever and a dial, but has found that Noda's lever 30 (FF2) is a functional equivalent to the lever recited by the first actuation member of the claim. Examiner also identified Noda's actuator handle 22 (FF2) as a functional equivalent to a dial as recited by the second actuation member of the claim. Accordingly, Examiner has reasonably identified what structures are encompassed by the actuation members and then has applied the broadest reasonable interpretation of the structures when searching and applying art against the claim. Contrary to Appellant's contention (see Reply Br. 4), there is no contradiction in Examiner's position. We are also not persuaded by Appellant's argument that Noda does not disclose a mechanism that imparts rotational action. Appeal Br. 6. First, the claim does not require a mechanism, but instead recites an "actuation member." Examiner identified that the structure associated with an actuation member is a dial. See Final Act. 4. Second, claim 1 does not require that the housing, the first actuation member, and the second actuation member are physically connected. Third, all that is required by the claim is that the 9 Appeal2017-010826 Application 14/215,284 instrument contain the recited elements. Examiner explains that when the surgeon grasps and rotates the handle (element 22) while it sits in the housing (element 222), the cannula (element 36) by virtue of its attachment to the handle (element 22) will rotate within the housing. FF2. Accordingly, we find no error with Examiner's position that the combination of elements 22, 33, and 222 when operated together meets the elements of the claim. Accordingly, for the reasons discussed, we are not persuaded that the Examiner failed to make out a prima facie case of anticipation. As claims 3, 9, and 17 have not been argued separately, they fall together with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 2 Appellant contends that a "hook" as shown in Noda cannot be interpreted as a "cut block" within the context of the claims. Noda's figure 5A is reproduced below: 42~Â· .4.6;.Â· ... â€¢. rl06c..~., 48 ~-::J [: ~ 112 FIG. 5A. Figure 5A is a side sectional view of the surgical assembly. Noda 2:49-51. Figure 5 shows a surgical hook 42 secured to the distal end of the shaft, and paddle element 46 is slidably disposed in the axial lumen. Id. 7:3-12. "Thus, when tissue or other body structure is held within hook 42, the shearing action of paddle 46 may enhance dissection afforded by the electric current." Id. 9:24--26; FF 1 (bold emphasis omitted). 10 Appeal2017-010826 Application 14/215,284 Figure 4 of the Specification is reproduced below: Figure 4 shows a cut block at the distal end of inner cannula 108. See Spec. ,r 33. "[K]ey way 120 is configured to receive a suitable material that has sufficient rigidity to receive an opposing cutting blade material without dulling a blade .... [T]he key way 120 may be insert molded with a resin to form a cut block at the distal end of inner cannula 108." Id. "The center wire 112 includes a cutting edge 131 on a distal end 133 thereof." Id. ,r 35. Examiner's position is that "[t]he claim provides no added structure to [this] limitation it just simply recites a cut block." Ans. 4. Examiner finds that the cut block as recited in the Specification "is used to engage the end of the blade while cutting a vessel/tissue." Id. We agree with Examiner's position that the structural limitations of the cut block are met by the hook and paddle elements of Noda. See id. Accordingly, we affirm the rejection of claim 2. Claim 7 and 8 Appellant contends that cannula or shaft 36 of Noda "does not appear to have varying diameters regardless of whether [the] cut block protrudes out of the first cannula." Appeal Br. 7. With respect to the tapering cannula as recited in claims 7 and 8, we find that Appellant has the better position. We agree with Appellant that 11 Appeal2017-010826 Application 14/215,284 Noda is silent with respect to the shape of the cannula changing diameters over its length. We do not agree with Examiner's interpretation that because the diameter of the cut block is less than the diameter of the cannula the limitation that the cannula has a narrower portion at the distal end is met. That is because, in Noda, the cut block fits inside the cannula and is thereby a separate structure from the cannula. Accordingly, we reverse the rejection of claims 7 and 8. III. Obviousness over Noda and Jacobson Appellant does not separately argue the limitations of claims 4 and 5 in this obviousness rejection, instead relying on arguments made with respect to the anticipation rejection of claim 1. See Appeal Br. 7. Having affirmed the anticipation rejection of claim 1 by Noda, we also find that the combination with Jacobson renders the claims 4 and 5 obvious for the reasons given by the Examiner in the Final Office Action and Answer. See Final Act. 7; see Ans. 5. IV. Obviousness over Noda and Wright Claim 10 Appellant contends that claim 10 requires a lever member that includes teeth members that are configured to engage teeth members on a gear mechanism. Appeal Br. 7-8. Specifically, noting that the detent pins 56 are used to rotationally position the end effector 58 to prevent inadvertent rotational movement. Id. at. 8. Examiner's position is that mechanism taught in Wright provides "teeth ( 5 6) [ that engage] engage teeth ( 5 7) via intermeshing/ snapping 12 Appeal2017-010826 Application 14/215,284 between ... the two circumferential teeth (57) located on ... gear mechanism (58)." Ans. 5. Figure 2 of Wright is reproduced below: FIG. 2 10 _,,./ l Figure 2 shows a perspective view of the surgical instrument and illustrates the interconnection of the elements in the instrument handle. Wright 3: 25--63. "Actuation trigger 24 includes thumb ring 48, pivot 50, yoke 52, yoke arms 54 and detent pins 56. Articulation collar 58 is positioned in yoke 52 and rotatably engaged by detent pins 56." Id. 3:32-35 (bold emphasis omitted). In handle mechanism "actuation trigger 24 is pivotally connected to articulation collar 58 by yoke 52. [They Joke arms 54 and yoke 52 spring load detent pins 56 in collar rotation channel 57 [of articulation collar 58]." Id. 4:21-24 (bold emphasis omitted). With respect to claim 10, we find that Appellant has the better position. Claim 10 requires "teeth members that are configured to engage teeth on a gear mechanism." Here, the detent pins 56 of Wright insert into a channel on the articulation collar 58. We do not agree with Examiner that 13 Appeal2017-010826 Application 14/215,284 the channel guide 57, which has no protruding parts, of the articulation collar 58 meets the "teeth" limitation as recited in the claim. Accordingly, we reverse the rejection of claim 10. Claims 11-13 Appellant does not separately argue claims 11-13 in this obviousness rejection, instead relying on arguments made for claim 1. See Appeal. Br. 7. Having affirmed the anticipation rejection of claim 1 by Noda, we also find that further combination with Wright renders claims 11-13 obvious for the reasons given by the Examiner in the Final Office Action and Answer. See Final Act. 7-8; see Ans. 5---6. SUMMARY We affirm the interpretation of the claims under provision of 3 5 U.S.C. Â§ 112(Â±). We affirm the rejection of claims 1-3, 9, and 17 as anticipated by Noda. We reverse the rejection of claims 7 and 8 as anticipated by Noda. We affirm the rejection of claims 4 and 5 under obvious over Noda and Jacobson. We affirm the rejection of claims 11-13 as obvious over Noda and Wright. We reverse the rejection of claim 10 as obvious over Noda and Wright. 14 Appeal2017-010826 Application 14/215,284 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 )(iv). AFFIRMED-IN-PART 15