Ex Parte Schuele et al

Patent Trial and Appeal Board

Jun 14, 2018

14075548 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/075,548 11/08/2013 Matthias E. Schuele
26874 7590 06/18/2018
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
CINCINNATI, OH 45202
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.
0101546/0601222 3120
EXAMINER
MATTHEWS, TESSA M
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS E. SCHUELE
and BERNHARD GANTNER 1
Appeal2017-006513
Application 14/075,5482
Technology Center 3700
Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a skull clamp. The Examiner
rejected the claims as anticipated under 35 U.S.C. § 102. Appellants appeal
the rejections pursuant to 35 U.S.C. § 134. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part and reverse-in-part the anticipation
rejections.
STATEMENT OF THE CASE
The claims are drawn to a skull clamp, which is a head fixation device
used to stabilize a patient's head and neck during medical procedures. '548
Spec. ,r 2. The claims also are directed to an "opening device" which is the
1 The Appeal Brief ("Appeal Br.") 2 lists pro med instruments GmbH, the
assignee of record, as the real-party-in-interest.
2 The application is referred to as "the '548 Specification."
Appeal2017-006513
Application 14/075,548
part of the skull clamp that permits the user to open the clamp and adjust it
to the size of the patient's skull.
There are two grounds of rejection listed in the Examiner's Answer.
There were other rejections set forth in the Final Action, but they were not
repeated in the Answer and thus we consider them to have been withdrawn.
Claims 1, 15, 20, and 21 stand rejected as follows:
Claims 1 and 15 under pre-AIA 35 U.S.C. § I02(b) as anticipated by
Dinkler (U.S. Pat. No. 5,537,704, issued July 23, 1996). Ans. 2.
Claims 20 and2I underpre-AIA 35 U.S.C. § I02(b) as anticipated by
Easton (US 2006/0190010 Al, published August 24, 2006). Ans. 4.
Claims 1, 15, and 20 are independent claims. Appeal Br. 21-23.
A declaration under 37 C.F.R. § 1.132 by co-inventor Matthias E.
Schuele ("Schuele Deel.") was provided by Appellants to support their
arguments.
REJECTION BASED ON DINKLER
Claim 1
Claim 1 is directed to a skull clamp comprising an actuator in which
"at least a portion of the actuator is positioned along an upright portion of
the skull clamp." The Examiner found that Dinkler describes a skull clamp
comprising an actuator located on the clamp's upright portion. Final Act. 2.
The Examiner defined the "upright portion" to be "the surface facing a
surgeon, in other words a side surface opposite the inner ring defined by the
C-shaped device." Id. 2-3.
The claim is directed to a skull clamp. We interpret the "skull clamp"
to have the characteristic U-shape of a skull clamp described in Background
section of the '548 Specification. Spec. ,r 2. The term "upright," which is
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Application 14/075,548
not defined in the Specification has the ordinary meaning of "vertical" or
"perpendicular. " 3 We therefore find that a person of ordinary skill in the art
would have believed the upright position on the clamp to be the arms of the
U-shaped clamp, which are in a vertical position in use, and the actuator
recited in claim 1 is to be located on one of the arms.
The Examiner interpreted the skull clamp to have the same shape as a
U, although the Examiner characterized it as a C-shape. Final Act. 3. The
Examiner did not find that the actuator described in Dinkler was on either
arm of the C ( or arm of the U), but rather found it to be on the inner ring of
the C-shape which corresponds to the lateral part of the clamp. Id. 2-3. The
Examiner found this part to be upright with respect to a surgeon facing the
clamp. Id.
The Examiner's interpretation of the claim is not reasonable. The
Examiner, in describing the claimed skull clamp, acknowledges that the
clamp has the characteristic C-shaped structure of a skull clamp. Final Act.
2-3. The orientation of the actuator on the clamp is with respect to this
characteristic structure of a skull clamp, not with respect to the orientation of
a surgeon who is using it. We find that a skilled artisan would not have
understood the lateral part of the U-shape structure, which is horizontal to
the skull clamp, to be upright and vertical with respect to the clamp, itself.
For the foregoing reason, we find Dinkler does not disclosed the
claimed actuator. The rejection of claim 1 is reversed.
3 https://www.merriam-webster.com/dictionary/upright (last visited June 8,
2017).
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Appeal2017-006513
Application 14/075,548
Claim 15
Claim 15 is directed to an "opening device for use with a skull clamp"
that comprises: "(a) an actuator comprising a trigger portion positioned
proximate to a pin holder assembly of a first arm of the skull clamp."
The key issue in this rejection is whether Dinkler describes an
actuator that is "proximate" to a pin holder of a first arm of the skull clamp.
The Examiner found Dinkler describes a skull clamp with an actuator 37, 39
that is proximate to a pin holder on arms 14, 16. Final Act. 4, 13; Ans. 11.
Figure 1 of Dinkler, reproduced below, shows this configuration:
FIG. I
Figure 1 of Dinkler, reproduced above, shows a head/skull clamp.
Dinkler Abstract. The figure shows actuator 37, 39 (at the bottom of the
head clamp) and pin holder assemblies 41, 42 (left top of the clamp) and 46,
48, 45 (right top of clamp). The issue in this rejection is whether the pin
holders (41, 42, 46, 48, 45) are "proximate" to the actuator (37, 39).
The Examiner found that actuator 37, 39 is near or close to the pin
holder assemblies, meeting the requirement of the claim. Ans. 12.
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Application 14/075,548
Appellants contend that the Examiner's finding is unreasonable
because the term "proximate" has not been interpreted in light of the
teachings in the '548 Specification. 4 Appeal Br. 13. While Appellants have
identified disclosure in the '548 Specification describing the locations of the
actuator and pin assembly, they have not adequately explained how this
description defines the term "proximate" such that it is distinguished from
the configuration shown in Dinkler. Id. at 12-13.
We begin with interpreting the meaning of the claim term
"proximate." "Proximate" is not specifically defined in the '548
Specification. Accordingly, we adopt its meaning as defined in a general
purpose dictionary, namely: "1. next; nearest; immediately before or after in
order, place, occurrence, etc. 2. Close; very near."5 The '548 Specification
provides examples of what is meant by "proximate," or "near," as that term
would be understood:
As shown in the illustrated version, opening device (110) is
actuated or able to be actuated to open, close, or adjust skull
clamp (100) from a location along upright portion (162) of first
arm ( 160) of skull clamp ( 100), and more specifically from a
location near, proximate, or just below pin holder assembly
(170) along upright portion (162). In some versions a
proximate distance between trigger ( 117) of actuator and pin
holder assembly (170) is less than 10 centimeters. In some other
4 During patent examination proceedings, claim terms are given "the
broadest reasonable meaning ... in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
5 http://www.dictionary.com/browse/proximate (last visited June 8, 2017).
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Application 14/075,548
versions this distance is less than 7 .5 centimeters. Still in some
other versions this distance is less than 5 centimeters.
'548 Spec. ,r 40 (p. 7).
The '548 Specification thus teaches that the pin holder can be just
below the actuator, or at a distance of less than 10 centimeters between
them, as examples of "proximate distance" in "some versions" of the
opening device. However the '548 Specification does not limit "proximate"
to the "just below" position or the "less than 10 cm" distance, and neither do
the claims. Although Appellants referred to this disclosure in their brief,
Appellants have not adequately distinguished the distance between the
actuator and pin assembly of Dinkler from their claimed invention based on
this measurement. Appeal Br. 12.
Appellants also identified disclosure in the '548 Specification that
teaches: "When actuator (112) is in the open position, trigger (117) is
readily accessible to a user such that opening device (110) can be operated to
open and/or adjust skull clamp (100)." Appeal Br. 12, citing '548 Spec. ,r
40. However, the claims do not require that the trigger be "readily
accessible to a user" and it is not clear how such accessibility distinguishes
the claims from the configuration of the actuator and pin holder assembly in
Dinkler, which are also accessible to a user.
To the extent Appellants mean that the trigger portion of the actuator
must be just below and on the same arm as the pin holder to facilitate
operation of the opening device by a user, the claim simply does not require
both to be on the same arm of the claim. In the "illustrated version" of skull
clamp as shown in Figure 1 of the '548 Specification (' 548 Spec. ,r 40), the
actuator is shown on the same arm as the pin holder assembly, and just
below it. In contrast, the claim does not recite that the actuator is on the
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Application 14/075,548
same arm as the pin holder assembly. Rather, the claim only requires the pin
holder to be on an arm of the clamp ("a pin holder assembly of a first arm of
the skull clamp"), but not the actuator. Thus, the claim is broader than the
embodiment shown in Figure 1 of the '548 Specification. "[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment."
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004); see also Homeland Housewares LLC v. Whirlpool Corp., 865 F.3d
1372, 1375 (Fed. Cir. 2917). Appellants have not adequately explained how
the term "proximate" requires the actuator and pin holder assembly to be on
the same arm of the clamp; certainly, the plain language of the claim does
not compel this configuration. The claim also does not require the actuator
to be just below the pin holder; the '548 Specification contemplates
embodiments where the distance between then is 10 cm or less, and
therefore also 10 cm or more.
Mr. Schuele stated in his declaration:
[T]hose of ordinary skill in the art, including myself, would not
consider the ordinary and customary meaning of the language
in claim 1 stating "a trigger portion positioned proximate to a
pin holder assembly of a first arm of the skull clamp" as
reasonably being said to mean that that the trigger portion of the
actuator may located along the lateral portion or base of the
skull clamp and yet still be considered proximate to the pin
holder assembly.
Schuele Deel. ,r 10.
Mr. Schuele does not explain why the Examiner's interpretation of the
claim to read on the actuator located on the lateral portion of the opening
device and the pin holder on the arm of the device would be unreasonable as
he asserts. Rather, Mr. Schuele's testimony is conclusory. Accordingly,
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Application 14/075,548
because we have not been given an adequate explanation as to why the
Examiner's interpretation unreasonable, we do not find Mr. Schuele' s
testimony on this point persuasive.
Mr. Schuele states that the claimed invention solved an "unmet need"
that "the clamp of the present application can be adjusted by a single user
while that user maintains both hands securely on each side of the clamp.
With clamps like that in the Dinkler patent this is not possible." Schuele
Deel. ,r 8.
We understand Mr. Schuele to be referring to the location of the
actuator proximate to the pin holder assembly and on the same arm of the
opening device. However, as discussed above, the claim does not require
both structures to be on the same arm nor that the distance between them
allows adjustment "by a single user while that user maintains both hands
securely on each side of the clamp." Id. Mr. Schuele did not identify either
a structural or functional limitation of the claims that would require such an
interpretation of the claim.
Summary
In sum, while we agree with Appellants that claims must be
interpreted in view of the Specification of which they are part, we conclude
that Appellants have not established that the Examiner's interpretation of the
claim is broader than the explicit claim language warrants when read in the
light of the Specification. Accordingly, the rejection of claim 15 is affirmed.
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Application 14/075,548
REJECTION BASED ON EASTON
Claim 20
Independent claim 20 is reproduced below ( emphasis added to
highlight the disputed feature of the claim):
20. A skull clamp comprising an attachment feature for
connecting the skull clamp with other structures, wherein the
attachment feature is formed as part of a lateral portion of a
first arm of the skull clamp and comprises:
(a) a first starburst having a first bore;
(b) a second starburst having a second bore;
( c) wherein the first and second starbursts are positioned in
opposing directions; and
( d) wherein the first bore and the second bore are off set from
one another.
The issue in this rejection is whether Eaton describes a head support
device with an attachment feature that is "formed as part of a lateral portion
of a first arm of the skull clamp." The Examiner found that Eaton describes
a head support device with an attachment feature that meets the claim
limitation. Final Act. 5. The attachment feature is used to attach accessories
to the clamp. '548 Spec. ,r 39.
Appellants contend that the attachment feature described by Easton
"connects" with a separable swivel adaptor 26 and is not "formed as a part
of a lateral portion of a first arm" of the head support device. Appeal Br.
15-16.
Claim interpretation
We begin with claim interpretation. The phrase "formed as part of a
lateral portion of a first arm of the skull clamp" does not appear in the
Specification. The term "formed" appears in the Specification in reference
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Application 14/075,548
to recesses, slots, and other openings that are made in the skull clamp, such
as a recess in an arm ('548 Spec. i-fi-f40, 41), a recess in a wall (id. ,r 42), a
channel in a screw (id. ,r 42), an opening in a bevel (id. ,r 47), a slot in an
arm (id. ,r,r 54, 59), etc. In this context, "formed as part of' would mean a
recess in the structure.
The term "form" is also used in the Specification in reference to
assembling the arms to "form" the clamp, i.e., where "form" means to
construct the clamp by assembling the parts (id. ,r 37).
Thus, the term "form" is used with two different meanings in the '548
Specification.
Fig. 3 (A and B) of the '548 Specification shows the attachment
feature "located" on a lateral portion of an arm. Id. ,r 39. The term
"formed" is not used to describe the attachment features location on the arm.
Fig. 3B is reproduced below (the handwritten numbering is in the
original; the labels are annotations added herein):
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Application 14/075,548
Fig. 3B shows attachment feature 172. The '548 Specification does
not explain whether the attachment feature 172 is molded as an integral part
of the arm 160, whether it is located and assembled on to the arm 160, or a
combination thereof. While threaded bores 175 and 177 are reasonably
described to be formed in arm 160, starbursts 171 and 1 73 could be molded
or parts inserted into a recess, which when assembled, are formed as a part
of the arm. For this reason, we interpret "formed as part of' to include a
structure where the attachment feature parts, such as the starbursts 1 71 and
173, are assembled with the arm to construct the attachment feature.
Discussion
Figure 1 of Eaton, showing the elements found by the Examiner to
meet the claimed attachment feature, is reproduced below (the handwritten
circle was present on the only available copy; grey circles added by
annotation herein):
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Appeal2017-006513
Application 14/075,548
FIG. 1
44
4{)
Fig. 1 of Easton shows the attachment feature (22, 24, 46, and 48)
located on the lateral arm of the skull clamp (arm perpendicular to arm 20).
The starburst portions 46 and 48 are attached to the lateral arm by starburst
connectors 22 and 24 which are mated to the lateral arm. Easton ,r 24. The
Examiner found that these elements (22, 24, 46, and 48) constitute the
"attachment feature." Final Act. 5; Ans. 4.
Appellants' attempt to distinguish the claimed "attachment feature"
from Easton's by directing attention to the swivel adaptor 26. Appeal Br.
15-16. While the Examiner in response to this argument states the adaptor
is part of the skull clamp of Easton (Final Act. 18), the Examiner expressly
pointed to the starbursts as constituting the attachment feature. Final Act. 5,
7.
Appellants argue that "the claim does not recite that the attachment
feature is 'connected to,' but rather 'formed as part of.' Easton plainly does
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Application 14/075,548
not teach this, and thus this lack of disclosure cannot be used as the basis for
rejecting claim 20 for anticipation under 35 U.S.C. 102." Appeal Br. 16.
Appellants do not explain the meaning of "formed as part" as recited
in claim 20. Because it is necessary to interpret a claim before it can be
compared to the prior art, we first interpreted "the attachment feature is
formed as part of a lateral portion of a first arm of the skull clamp" in light
of the Specification to include embodiments where the attachment feature is
assembled with the skull clamp arm to form the arm with the attachment
feature as a part of it. In Easton as depicted above, the attachment feature,
which includes the starburst portions and connectors (22, 24, 46, and 48), are
shown located on the skull clamp's lateral arm and as a part of it, e.g., the
connectors 22, 24 are mated and a part of the arm. This meets the disputed
claim limitation.
For the foregoing reasons, we affirm the rejection of claim 20 as
anticipated by Easton.
Claim 21
Claim 21, which depends from claim 20, further recites, inter alia,
"wherein the first and the second starbursts are positioned along the lateral
portion of the first arm of the skull clamp in a partial overlapping
orientation."
The Examiner illustrated the overlapping orientation of starbursts 24
and 46 as follows:
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Application 14/075,548
Second start burst is
t1efined as the entire
sriaded stnJcture
l First stan burst is 1
··· ( defined as the entire !
l shaded structure !
; ' !