Ex Parte Schaefer et al

Patent Trial and Appeal Board

Dec 22, 2016

11398082 (P.T.A.B. Dec. 22, 2016)

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.
11/398,082 04/05/2006 Dean Schaefer 388700-612-07-CIP-CON 8079
37374 7590 12/27/2016
INSKEEP INTELLECTUAL PROPERTY GROUP, INC
2281 W. 190TH STREET
SUITE 200
TORRANCE, CA 90504
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
inskeepstaff @ inskeeplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN SCHAEFER, BRIAN J. COX,
GEORGE R. GREENE JR., DAVID A. FERRERA, MATTHEW FITZ, and
ROBERT F. ROSENBLUTH1
Appeal 2014-005780
Application 11/398,082
Technology Center 3700
Before MURRIEL E. CRAWFORD, ROBERT L. KINDER, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 61—68, 70-77, 79, 81, and 82. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants state that “MicroVention, Inc.” is the real party in interest.
App. Br. 1.
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Application 11/398,082
Appellants ’ Invention
Appellants’ “invention relates generally to the field of vascular
occlusion devices and methods,” and “[m]ore specifically, it relates to an
apparatus and method for occluding a blood vessel by embolizing a targeted
site (such as an aneurysm) in the blood vessel.” Spec. 1,11. 12—15.
Claims 61 and 72 are the independent claims on appeal. Claim 61 is
illustrative of the claimed subject matter and reproduced below:
61. A vaso-occlusive device comprising:
a microcoil that, when in a substantially minimum energy state,
forms a secondary configuration having a substantially open
structure comprising a plurality of interconnected closed loops,
wherein an angle formed by adjacent loops is substantially
greater than or equal to 90 degrees and less than 180 degrees.
Appeal Br. 89 (Claims App.).
Examiner’s Rejections2
Appellant seeks review of the following rejections:
I. Claims 61—68, 70—76, 79, 81, and 823 are rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
2 Appellants also seek review of the Examiner’s objections to the
Specification and drawings (App. Br. 20, 21) but these matters are
reviewable by petition under 37 C.F.R. § 1.181 {see Manual of Patent
Examining Procedure (MPEP) §§ 1002 and 1201) and are thus not within
the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA
1967).
3 The Examiner states that “[t]he rejection of claim 77 under 35 U.S.C. 112,
first paragraph has been withdrawn.” Ans. 2; Reply Br. 3. The Examiner
provides no further explanation of this withdrawal or the impact of
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II. Claims 61—68, 70—77, 79, 81, and 82* * 4 are rejected under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter.
III. Claims 61—64, 66—68, 70, and 71 stand rejected under 35
U.S.C. § 102(b) as anticipated by Chee (US 5,304,194, issued Apr. 19,
1994).
IV. Claims 61—64, 66—68, 70, and 71 stand rejected under 35
U.S.C. § 102(e) as anticipated by Konya (US 6,551,340 Bl, issued Apr. 22,
2003).
V. Claims 61—68, 70-77, 79, 81, and 82 stand rejected under 35
U.S.C. § 102(e) as anticipated by Nikolchev (US 6,705,323 Bl, issued Mar.
16, 2004).
ANALYSIS
Except for the Examiner’s anticipation rejections (Rejections III—V
above), we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which the appeal is taken and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
maintaining the rejection of independent claim 72, from which claim 77
indirectly depends.
4 The Examiner states “[t]he rejections of claims 64, 66, 75, and 76 under
35 U.S.C. 112, second paragraph have been withdrawn,” (Ans. 2), but the
Examiner later includes these claims within the rejection (Ans. 4).
Appellants note the Examiner withdrew the rejection of these claims (Reply
Br. 3) but Appellants likewise argue these claims as part of the rejection
(Reply Br. 12). Because both the Examiner and Appellants treat the
indefmiteness rejections of these dependent claims as maintained, we
consider the Section 112, paragraph two, rejection of claims 64, 66, 75, and
76, as maintained.
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Application 11/398,082
Appeal Brief. We concur with the conclusions reached by the Examiner.
We further highlight and address specific findings and arguments for
emphasis as follows.
I. Rejection of Claims 61—68, 70—76, 79, 81, and 82 under 35 U.S.C.
§ 112, as Failing to Comply with the Written Description Requirement
We are not persuaded the Examiner erred in concluding that claims
61—68, 70-76, 79, 81, and 82 fail to satisfy the written description
requirement. We agree with the Examiner that the Specification fails to
provide adequate written description support for several claim limitations
within these claims. See Office Act. 5—6 (Jan. 18, 2013); Ans. 2-4. Below,
we address one example limitation found in both independent claims (“a
substantially open structure”) and one limitation found in claim 61 (“an
angle formed by adjacent loops”).
Claims 61 and 72 each require, in pertinent part, “a secondary
configuration having a substantially open structure.” App. Br. 89, 90,
Claims App. The Examiner contends that the limitation “a substantially
open structure” constitutes new matter added to the claims during
prosecution and the original disclosure does not support these limitation.
Ans. 2.
Relying on the Declaration of Mr. Mathew Fitz, Appellants contend
“one having ordinary skill in the art would recognize what an ‘open
structure’ is in the context of the present application.” App. Br. 7.
Appellants contend “the terms ‘open structure’ or ‘closed structure’ are
commonly used in the field to characterize the overall three-dimensional
secondary configuration of a microcoil in the minimum energy state.” Id.
According to Appellants, “open structure” describes a structure that does not
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define an interior area or volume, such as depicted in Figures 3—5 of the
Application.
The Examiner considers the Declaration of Mr. Fitz but still finds
there is not sufficient evidence to support the conclusory assertions made
therein. Ans. 3. The Examiner finds that “[i]t is further unclear how the
microcoil with interconnected ‘closed loops’ as claimed in claims 61 and 72
has a substantially open structure,” considering “the original disclosure does
not provide sufficient support for the recitation ‘a substantially open
structure,’ the recitation is considered as new matter.” Id.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991). The written
description requirement prevents an applicant from claiming subject matter
that was not adequately described in the specification as filed. New or
amended claims which introduce elements or limitations which are not
supported by the as-filed disclosure violate the written description
requirement. See, e.g., In re Lukach, 442 F.2d 967, 968—69 (CCPA 1971)
(subgenus range was not supported by generic disclosure and specific
example within the subgenus range).
We agree with the Examiner that the Specification does not support
the claim limitation “a substantially open structure.” The Specification does
not mention “open structure” or closed structure. Although the Specification
does discuss open and closed loops, Appellants make clear that these
individual loops are distinct and the loops themselves form the overall three-
dimensional structure of the microcoil. Reply Br. 7—8. Appellants do not
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directly cite to any portion of the Specification for written description
support for the “substantially open structure” limitation, but instead rely on
attorney argument and a supporting inventor declaration.
We have considered the supporting declaration of Mr. Matthew Fitz, a
named inventor, but determine the information provided therein does not
convince us the original disclosure provides the necessary support to satisfy
the written description requirement for the claimed “substantially open
structure.” Mr. Fitz’s Declaration does not affirmatively state that by
reading the quoted portions of the Specification, a person of ordinary skill in
the art would understand that the inventors were in possession of “a
substantially open structure” at the time of filing. See Fitz Deck 17 (quoting
Spec. 4,11. 1—6 (Background of the Invention)). The Declaration was signed
on July 24, 2012, and the Application lists a filing date in 2006. The
Declaration does not indicate whether the statements comprise Mr. Fitz’s
personal understanding as of 2012, or whether the statements support what a
person of ordinary skill in the art would have understood as of the time of
filing, some six years earlier.
Further, the Declaration attests to Mr. Fitz’s understanding of what
would be encompassed by the disclosure of a “secondary configuration that
is one of a variety of three-dimensional shapes” in the Specification. Spec.
4,11. 4—6. Mr. Fitz does not address why the Specification fails to mention
“open structure.” We do not find Mr. Fitz’s Declaration persuasive based on
the record before us for the reasons set forth above and we therefore give it
little weight. See In re Brandstadter, 484 F.2d 1395, 1405—06 (CCPA 1973)
(explaining that although an affidavit or declaration that states only
conclusions may have some probative value, such an affidavit or declaration
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may have little weight when considered in light of all the evidence of
record).
Even if we were to give Mr. Fitz’s Declaration considerable weight,
we read Mr. Fitz’s testimony as supporting at most that an “open structure”
may be a characterization, or description, of one type of three-dimensional
secondary configuration. Fitz Decl. 17. The inverse, however, does not
necessarily follow — that the broad disclosure of a three-dimensional
secondary configuration in the Specification demonstrates that Appellants
had possession of “a substantially open structure.” See In re Smith, 458 F.2d
1389, 1395 (CCPA 1972) (a subgenus is not necessarily described by a
genus encompassing it and a species upon which it reads). Even if a person
of skill in the art could understand that “a substantially open structure” may
be encompassed within the broader genus of a “secondary configuration that
is one of a variety of three-dimensional shapes” (Spec. 4,11. 4—6), we do not
believe that the disclosure of a variety of three-dimensional shapes would
permit a person of ordinary skill in the art to envisage the product claimed.
A lack of adequate written description issue may also arise if the
knowledge and level of skill in the art would not permit one skilled in the art
to immediately envisage the product claimed from the disclosure of a
generic category of designs. In the present Application, the Specification
describes “three-dimensional shapes” broadly but it does not support the
determination that the inventors were also in possession of “a substantially
open structure,” which Appellants’ allege, without evidentiary support, is a
narrower subset of secondary configurations. Appellants have not
established that the cited disclosure in the Specification would “reasonably
lead” those skilled in the art to the claimed “a substantially open structure.”
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See id.
In addition, we also agree with the Examiner that the claim 61
limitation of “an angle formed by adjacent loops is substantially greater than
or equal to 90 degrees and less than 180 degrees” lacks adequate support.
Ans. 3—A. The Examiner finds that “the original disclosure discloses that the
angle formed by axes of adjacent loop is no more than about 90 degrees.”
Ans. 4. Further, although the original disclosure describes a “shallow
angle,” we agree with the Examiner that “a shallow angle is not an obtuse
angle.” Thus we agree the claimed range from 90 to 180 degrees lacks
adequate support in the original disclosure. We have considered Appellants’
contentions that a “shallow” angle is an obtuse angle, but find these
positions unreasonable. App. Br. 10—18. The Specification refers to a
“shallow” angle as generally not more than 90 degrees, but preferably not
more than 45 degrees. See, e.g., Spec. 11,11. 14—18.
For the remaining limitations cited by the Examiner as lacking written
description support, we have considered Appellant’s arguments to the
contrary but find them unpersuasive. We adopt the findings and conclusions
of the Examiner. We affirm the Examiner’s decision to reject claims 61—68,
70-76, 79, 81, and 82 under 35 U.S.C. § 112, as failing to comply with the
written description requirement.
II. Rejection of Claims 61—68, 70—77, 79, 81, and 82 under 35 U.S.C.
§ 112 as Indefinite
We are not persuaded the Examiner erred in concluding that claims
61—68, 70-77, 79, 81, and 82 are indefinite for failing to particularly point
out and distinctly claim the subject matter that Appellant regards as the
invention. We agree with the Examiner that certain claim terms are
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indefinite for the reasons set forth by the Examiner. See Office Act. 7—9;
Ans. 4—6. Below, we address two example limitations — “a substantially
open structure” (claims 61, 72) and “an angle formed by adjacent loops”
(claim 61, and several dependent claims).
“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as the invention.” 35 U.S.C. § 112,12 (2011). In determining
whether a claim is indefinite, “we employ a lower threshold of ambiguity
when reviewing a pending claim for indefmiteness than those used by post­
issuance reviewing courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential). Our precedential Miyazaki decision “hold[s]
that if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Id.
We employ this standard because of our “duty to guard the public against
patents of ambiguous and vague scope” and “because the applicant has an
opportunity and a duty to amend the claims during prosecution to more
clearly and precisely define the metes and bounds of the claimed invention
and to more clearly and precisely put the public on notice of the scope of the
patent.” Id. at 1211—12.
We agree with the Examiner that the term “substantially open
structure” is indefinite. See Ans. 4—5. The term is vague and it is amenable
to two or more plausible, yet distinct, claim constructions. Compare Ans. 4
(interpreting “‘open structure’” to be any ‘structure that has a space’”) with
Fitz Decl. 17 (“the term ‘open structure’ implies that the structure does not
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define an interior area or volume”). Despite Appellants’ contentions that the
term “open structure” would be understood by one having ordinary skill in
the art (Reply Br. 13), Appellants have not persuasively shown that this term
was a known term of art at the time of filing of the Application. As
discussed above, the Specification does not mention the term and Appellants
have not cited any evidence dating to the time of filing that discloses the
term “open structure.” Facially, the term “open structure” is vague and the
Examiner’s rejection as indefinite is justified. The Examiner finds that
Appellants’ contentions that it was known to characterize vascular coils as
having an open structure are unsupported conclusory assertions. Ans. 3.
Based on the record before us, we are unpersuaded of error in the
Examiner’s finding that the claim limitation “open structure” is indefinite.
The Examiner also finds that the modifier “substantially” before
“open structure” causes further ambiguity because the scope of this modifier
would not be understood to a person of skill in the art. Office Act. 5—7 (“the
term ‘substantially’ ... is a relative term which renders the claim indefinite”
and “[t]he term ‘substantially’ is not defined by the claim, the specification
does not provide a standard for ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention”). When a “word of degree” is used, we must determine whether
the pending application provides “some standard for measuring that degree.”
BiosigInstr., Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015)
(addressing indefmiteness of a limitation within an issued patent). In the
pending Application, there is no standard for measuring the degree of a
“substantially open structure.” Appellants do not address how the term
“substantially” would modify “open structure.” For example, the
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Declaration does not delineate how the term of degree (“substantially”)
when used with “open structure” can be ascertained by one of ordinary skill
in the art when reading the disclosure. Fritz Deck 5—8. Further,
Appellants address the term “substantially minimum energy state,” but do
not explain what a “substantially open structure” would encompass. App.
Br. 25. See also id. at 27; Reply Br. 13. The Specification does not provide
any standard for measuring the scope of the term “substantially” as a
modifier for “open structure.” We therefore agree with the Examiner’s
decision, and determine that the limitation “substantially” when used with
“open structure” is also indefinite.
We also agree with the Examiner that the claim term “an angle formed
by adjacent loops” of claims 61, 68, 70, 71, 76, 79, 81, and 82, is indefinite.
The ambiguity surrounding this limitation leads the Examiner and
Appellants to basically guess as to what specific angle the claim language
captures. As the Examiner explains, “it is unclear how the angle is formed
between the adjacent loops based on the original disclosure. Therefore, it is
unclear how the angle of ‘substantially greater than or equal to 90 degrees
and less than 180 degrees’” is determined. Ans. 7. The Specification
discloses several distinct angles formed by adjacent loops, which creates
ambiguity as to which angle is being claimed. See, e.g., Spec. Figs. 1, 3—6,
p. 5,11. 19-32, p. 6,11. 12—25 (“each pair of adjacent loops defines a shallow
angle” and “the angle formed by the axes of adjacent loops”), p. 11,11. 10-
18 (listing four angles in Figs. 3^4 of not more than 90 degrees), p. 14,11.
13—18. The Examiner interprets the claim scope in a certain manner and
adopts an angle to apply to the prior art. See Ans. 5 (“The examiner
interpreted the indicated recitation of each corresponding claim above to be
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‘an angle formed by intersecting axes of adjacent loops is substantially
greater than or equal to 90 degrees and less than 180 degrees’ for claim 61
. . . Appellants, however, contend the Examiner’s interpretation is
erroneous and the Examiner picked the wrong angle. Appellants’ allege the
claimed angle must be the obtuse angle as depicted, and created, in
annotated Figure 3 at page 32 of Appellants’ Brief.
The failure to particularly point out which specific angle the claim
language captures is further highlighted by Appellants’ contention that “the
principles of geometry and trigonometry inherent in the Applicant’s
disclosed characterization of the angular relationship of the claimed loops”
allows a person of ordinary skill in the art to determine the scope of the
claim limitation. App. Br. 33 (emphasis added); see also App. Br. 32
(annotated Fig. 3), 34 (“without apparently appreciating the Applicant’s
disclosure and the related inherent principles of geometry and trigonometry
regarding the inverse relationship of’ two formed angles). For a pending
application, our Miyazaki standard requires clarity of claim scope without
the need to resort to “principles of geometry and trigonometry” to
understand a specific claim limitation.
For the remaining limitations cited by the Examiner as indefinite, we
have considered Appellant’s arguments to the contrary but find them
unpersuasive. We adopt the findings and conclusions of the Examiner. For
the reasons set forth above, we sustain the Examiner’s decision to reject
claim 61—68, 70-77, 79, 81, and 82, as indefinite under 35 U.S.C. § 112,
paragraph two.
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III. Rejections under 35 U.S.C. § 102 based on Chee, Konya, and
Nikolchev
Because the claims under consideration are so indefinite that
“considerable speculation as to [the] meaning of the terms employed and
assumptions as to the scope of such claims” is needed, we do not address the
merits of the Examiner’s three rejections under 35 U.S.C. § 102. See In re
Steele, 305 F.2d 859, 862, (CCPA 1962) (holding that the Examiner and the
Board were wrong in relying on what, at best, were speculative assumptions
as to the meaning of the claims and in basing a prior-art rejection thereon).
We therefore reverse these rejections pro forma.
CONCLUSION
We conclude that the Examiner did not err in rejecting claims 61—68,
70-76, 79, 81, and 82 under 35 U.S.C. § 112, first paragraph.
We conclude that the Examiner did not err in rejecting claims 61—68,
70—77, 79, 81, and 82 under 35 U.S.C. § 112, second paragraph.
We reverse the rejection of claims 61—68, 70-77, 79, 81, and 82 under
35 U.S.C. § 102 as anticipated. See Examiner’s Rejections, supra. Our
reversal is pro forma only; we do not reach the merits of this rejection
because the scope of the claims cannot be ascertained.
DECISION
We AFFIRM the Examiner’s rejection of claims 61—68, 70—77, 79,
81, and 82.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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