Ex Parte Merrell

Patent Trial and Appeal Board

Oct 28, 2016

12372300 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/372,300 02/17/2009 Gregory Merrell
69713 7590 11/01/2016
OCCHIUTI & ROHLICEK LLP
321 Summer St.
Boston, MA 02210
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.
60021-003001 9416
EXAMINER
PLIONIS, NICHOLAS J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY MERRELL
Appeal2014-001870
Application 12/372,300
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory Merrell ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 2-9 and 32-38, which are all the
pending claims. Appeal Br. 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
pursuant to our authority under 3 7 C.F .R. § 41. 50(b ).
Appeal2014-001870
Application 12/372,300
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to devices and methods for
fixation and compression of bone fractures." Spec. i-f 1. Claim 32,
reproduced below with emphasis and line breaks added, is the sole
independent claim appealed and is representative of the subject matter on
appeal.
32. An intramedullary device for use in stabilizing a fracture
of a bone, the device comprising:
a rod having a longitudinal axis and including an
insertion end configured for insertion into an intramedullary
cavity of the bone and a proximal end opposed to the insertion
end, and a plurality of recesses formed along an outer surface of
the insertion end of the rod in a direction transverse to the axis,
each recess including a flat engaging surface extending
substantially transverse to the axis, a curved surface
longitudinally spaced apart along the axis from the engaging
surface, and a sliding surface extending between the engaging
surface and the curved surface in a direction parallel to the axis.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Trieu
Hamm
Sanders
US 2005/0278029 Al
US 2006/0175785 Al
US 2007 /0069493 Al
2
Dec. 15, 2005
Aug. 10, 2006
Mar. 29, 2007
Appeal2014-001870
Application 12/372,300
REJECTIONS
The following rejections are before us for review:
I. Claims 2, 3, 5-7, 9, and 32-36 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hamm. Final Act. 2---6.
II. Claims 32, 37, and 38 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Trieu. Id. at 6-7.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamm and Sanders. Id. at 8.
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamm. Id. at 8-9.
ANALYSIS
New Ground of Rejection
Claims 2-9 and 32-38 as indefinite
Independent claim 3 2 recites an intramedullary device that includes a
rod having a longitudinal axis, an insertion end, a proximal end, and a
plurality of recesses. See Appeal Br., Claims App. The Examiner makes
sufficiently supported findings that each of Hamm and Trieu discloses a rod
having these recited structural features. Final Act. 2-3, 6-7. The claim also
recites that the insertion end of the rod is "configured for insertion into an
intramedullary cavity of [a] bone." Appeal Br., Claims App. The Examiner
correctly identifies this recitation as a functional limitation and determines
that each of Hamm's rod and Trieu's rod is capable of performing this
function. Final Act. 2-3, 7 (citing In re Casey, 370 F.2d 576, 580 (CCPA
1967)).
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Application 12/372,300
Accurately noting that "claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function,"
the Examiner's position is that Appellant does not identify any structural
recitations in the claim that would differentiate the claimed rod from the
known rods of either Hamm or Trieu, which-having the same recited
structure-logically would be capable of performing the same function.
Ans. 10-11 (citing In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997)); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) ("apparatus claims cover what a device is, not
what a device does").
Appellant, on the other hand, takes the position that this function
implies "some structural change" that would "separate the [claimed] rod ...
from all other rods in existence," such as the rods of Hamm or Trieu.
Appeal Br. 8 (emphasis added); see id. at 6-7, 8-9; see also Reply Br. 3
(asserting that the claim "restricts the invention to rods that work as
intramedullary devices," and that "[n]ot all rods would have this property,"
but not identifying with any particularity what structure, other than that
expressly recited in the claim, would be required in order to have "this
property") (emphasis added)).
Thus, the disputed issue in the appeal, as defined by Appellant's
arguments, centers on what specific structural features, if any, would be
required for a rod to be "configured for insertion into an intramedullary
cavity of [a] bone," so as to be considered an intramedullary device, as
claimed. Resolution of this issue, however, is not possible on the record
before us because Appellant does not identify what specific structure would
be implied by this functional recitation. Although it is certainly possible that
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Appeal2014-001870
Application 12/372,300
this function may imply some structural feature required of the rod, the
problem here is that Appellant does not direct us to anything in the record,
let alone in the claim itself, that would specifically identify what these
structural features might be. See Appeal Br. 6-7, 8-9; see also Ans. 11-12.
Stated another way, because we are unable to determine the scope of
what specific structure would be implied by the capability to perform the
recited function, independent claim 32 is indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention. This inability to determine the claim scope also pervades the
associated dependent claims.
Accordingly, we enter a new ground of rejection for claims 2-9 and
32-38 pursuant to 37 C.F.R. § 41.50(b). Claims 2-9 and 32-38 are rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1378 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second
paragraph, is "whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
Of course, it is not categorically indefinite to include functional
limitations in an apparatus claim, but the reliance on functional language in a
claim may fail "to provide a clear-cut indication of the scope of the subject
matter embraced by the claim," and thus be indefinite. In re Swinehart, 439
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Appeal2014-001870
Application 12/372,300
F .2d 210, 213 (CCP A 1971 ). Such is the case here. When a claim merely
recites a function to be achieved by recited element-here, the rod having an
insertion end that is "configured for insertion" into a cavity of a bone-the
boundaries of the claim scope may be unclear. See Halliburton Energy
Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that
the Supreme Court has explained that a vice of functional claiming occurs
"when the inventor is painstaking when he recites what has already been
seen, and then uses conveniently functional language at the exact point of
novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S.
364, 371 (1938)).
Here, Appellant urges that there is some structural distinction between
the claimed rod and the known rods of either Hamm or Trieu implicit in the
functional recitation, but does not identify with clarity what such a structural
distinction would be. Although Appellant's Specification provides some
general guidance regarding structural details of one embodiment of the
invention, 1 any such details are conspicuously absent from the claim itself.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), "the name of the game is the claim." It is well established
For example, the background discussion describes intramedullary rods
as simply including "an elongate rod," without any structural specifics.
Spec. i-f 3. The detailed description of one depicted embodiment describes "a
tapered portion" that can "reduce[] injury to the interior surface of the
medullary canal ... during insertion of the rod," and mentions a "distal tip"
of the insertion end as being "rounded to allow it to pass easily through the
medullary canal." Id. i-fi-140,42; see also Figs. 1, 2, 4A--4C. But the
disclosure also concludes by stating that the description covers only a
"selected illustrative embodiment of the invention," and that the invention
"is not limited to the working example described," indicating that such
structural details are not necessarily imparted to the claims. Spec. i-f 7 6.
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Application 12/372,300
that limitations not appearing in the claim cannot be relied upon for
patentability. See In re Self, 671F.2d1344, 1348 (CCPA 1982). Thus,
although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
To the extent that Appellant endeavors to rely on some structural
distinction implied by the functional recitation, it is only fair-both to the
Examiner and to the public-that Appellant clearly delineate, either by
express language in the claim itself or by citation to evidence in the record,
the scope encompassed by the claim. Appellant does not direct us to any
such delineation; absent which, we are not in a position to speculate as to
what specific structural features may be imparted by the function recitation
of the insertion end of the rod being "configured for insertion" into a cavity
of a bone. Unless and until one reading the claim is able to ascertain with
reasonable certainty what the asserted structural features implied by this
functional recitation may be, the scope of the claim is unclear because it
lacks sufficient precision to permit one endeavoring to practice the invention
to adequately determine the metes and bounds thereof.
In light of the above, we conclude that independent claim 32, and
dependent claims 2-9 and 33-38, are indefinite under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
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Application 12/372,300
Re} ections I-IV
Claims 2, 3, 5-7, 9, and 32-36 as anticipated by Hamm,
Claims 32, 37, and 38 as anticipated by Trieu,
Claim 4 as unpatentable over Hamm and Sanders, and
Claim 8 as unpatentable over Hamm
We do not sustain the Examiner's rejections of claims 2-9 and 32-38
under 35 U.S.C. §§ 102(b) or 103(a). For the reasons explained in detail
supra, independent claim 32, and dependent claims 2-9 and 33-38 are
indefinite. Before a proper review of these rejections can be performed, the
subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Therefore, since the claims fail to
satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are
constrained to reverse, proforma, the prior art rejections because they
necessarily are based on speculative assumptions as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims because the
rejection was based on speculative assumptions as to the meaning of the
claims). We emphasize, however, that our decision in this regard is 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
rejections.
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Application 12/372,300
DECISION
We ENTER A NEW GROUND OF REJECTION of claims 2-9 and
32-38 under 35 U.S.C. § 112, second paragraph, as being indefinite.
We REVERSE, proforma, the Examiner's decision rejecting claims
2, 3, 5-7, 9, and 32-36 under 35 U.S.C. § 102(b) as anticipated by Hamm.
We REVERSE, proforma, the Examiner's decision rejecting claims
32, 37, and 38 under 35 U.S.C. § 102(b) as anticipated by Trieu.
We REVERSE, proforma, the Examiner's decision rejecting claim 4
under 35 U.S.C. § 103(a) as being unpatentable over Hamm and Sanders.
We REVERSE, proforma, the Examiner's decision rejecting claim 8
under 35 U.S.C. § 103(a) as being unpatentable over Hamm.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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Appeal2014-001870
Application 12/372,300
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
REVERSED; 37 C.F.R. § 41.50(b)
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