11491626 (B.P.A.I. Mar. 16, 2012)

Ex Parte Smith et al

Board of Patent Appeals and InterferencesMar 16, 2012

11491626 (B.P.A.I. Mar. 16, 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. 11/491,626 07/24/2006 Kevin W. Smith KMS/Endostapler 4849 27316 7590 03/16/2012 MAYBACK & HOFFMAN, P.A. 5722 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330 EXAMINER SMITH, SCOTT A ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 03/16/2012 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 KEVIN W. SMITH, MATTHEW A. PALMER, KOREY ROBERT KLINE, and DEREK DEE DEVILLE ____________________ Appeal 2010-004216 Application 11/491,626 Technology Center 3700 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004216 Application 11/491,626 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 24, 26-28, 32 and 33 under 35 U.S.C. § 102(b) as anticipated by Schulze (US 5,673,840, iss. Oct. 7, 1997. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a medical device with a passive joint or connection. Claim 1, reproduced below, is illustrative: 1. A medical device end effector connection assembly, comprising: a passive articulation joint for connecting an end effector to a control handle. OPINION Each claim involved in this appeal includes a “passive” articulation or articulating joint or connection. The Examiner found that the Figure 29 embodiment of Schulze anticipates each pending claim. Ans. 3. Regarding the “passive” articulation joint, the Examiner found that “the end effector of Schulze . . . would yield if a great enough external force was applied thereto.” Ans. 3-4. The Examiner further found that [t]he device of Schulze discloses a locking device 612 which locks the joint into a desired position. When this locking means is put into an unlocked state, the end effector is free to move. This movement is permitted in a situation when the handle is moved, or when a force is applied to the end effector, which would cause the handle to move as a result thereof . . . the end effector can be moved or articulated via a great enough external force, even if such an action would damage the device. Ans. 4. This, the Examiner determined, was sufficient to render Schulze’s joint “passive” as claimed. Id. We disagree. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Appeal 2010-004216 Application 11/491,626 3 Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellants disclose that the passive articulation joint allows the distal end to passively move into a new position by pressing the end effector against a feature of the environment such as surrounding tissue. Spec. [0028, 0151]. By the Examiner’s logic, the ability to damage the device by breaking the joint makes a joint “passive” as claimed. Any joint would fail or yield under a great enough force. The Examiner’s interpretation essentially disregards the term “passive.” All words in a claim must be considered in judging the obviousness of the claimed subject matter. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner correctly found that Schulze’s locking device can be placed in an unlocked state, manually or automatically. Schulze, col. 21, ll. 1-22, fig. 29, 29A-C. At that point, it appears Schulze’s head 602 is entirely under the influence of the depicted articulation arrangement 650, 652, 654, 608, or one of the other disclosed articulation arrangements. Id. Even adopting the construction that a joint becomes passive by its mere ability to be moved by external forces1, arguendo, we are not persuaded that in the unlocked state Schulze’s device would necessarily be capable of functioning in this manner. [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Before an applicant can be put to this burdensome task, however, the examiner must provide sufficient evidence or scientific reasoning to establish a sound basis for the belief that the functional limitation is an inherent characteristic of the prior 1 Compared to requiring external forces to articulate the joint – the definition in the amendment to the Specification entered Nov. 14, 2008. Appeal 2010-004216 Application 11/491,626 4 art. See In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990). The Examiner’s reliance on an overly broad claim construction and an unsubstantiated factual finding are fatal to the rejection of all claims on appeal. DECISION The Examiner’s rejection of claims 1-24, 26-28 and 32-33 is reversed. REVERSED nlk