Ex Parte Svehla et al

Board of Patent Appeals and Interferences

Mar 1, 2012

10825367 (B.P.A.I. Mar. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARTIN SVEHLA and PETER GIBSON
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Appeal 2010-002426
Application 10/825,367
Technology Center 3700
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Before STEVEN D. A. McCARTHY, EDWARD A. BROWN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 20-22, 25-37 and 73 (App. Br. 3). Claims 1-19, 23, 24,
38-72 and 74-76 have been cancelled (App. Br. 3). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to a forceps tool having first and
second flexible arms wherein the distal end of the first arm is concave in
shape along its longitudinal axis. The second arm contains a tip region that
travels toward the concave-shaped region of the first arm and the proximal
ends of both arms are connected together. Independent claim 20 is
illustrative of the claims on appeal and is reproduced below:

20. A manually adjustable forceps tool for controlling an
implantable electrode assembly of a stimulating medical device
comprising:
a first flexible arm comprising contiguous first and
second elongate regions, wherein the distal end of said first
region is connected to the proximal end of said second region, a
length of said second region comprising a concave cross-
sectional shaped region, wherein the proximal end of said
concave-shaped cross-sectional region is configured to receive
said electrode assembly along a longitudinal axis through the
geometric center of said concave-shaped cross-sectional region
and wherein said concave cross-sectional shape enables said
second region to receive and support said electrode assembly
such that relative longitudinal movement of said electrode
assembly with respect to the forceps tool is permitted while
relative lateral movement of said electrode assembly with
respect to the forceps tool is substantially restricted; and
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a second flexible arm comprising first and second
contiguous elongate regions, wherein the distal end of said first
region is connected to the proximal end of said second region,
said second region of said second arm having a tip region,
wherein said longitudinal axis is substantially parallel to a
longitudinal axis of said tip region, and
wherein said proximal end of said first region of said first
arm is connected to the proximal end of said first region of said
second arm, and wherein application of a force to at least
one of said first regions causes said tip region to travel toward
said concave cross-sectional shaped region, and when said tip is
in proximity to said concave cross-sectional shaped region said
electrode assembly is retained in a space defined by said
concave cross-sectional shaped region and said tip region,
thereby providing operator control of the relative longitudinal
movement of said electrode assembly.

References Relied on by the Examiner
Fisher US 1,653,803 Dec. 27, 1927
Roeschmann US 2,887,110 May 19, 1959
Blomberg US 3,738,366 Jun. 12, 1973
Chester US 3,815,607 Jun. 11, 1974
Willis US 4,759,359 Jul. 26, 1988
Baccala US 4,785,810 Nov. 22, 1988
Fujitsu US 5,464,405 Nov. 7, 1995

The Rejections on Appeal
1. Claims 20-22, 25, 27, 35, 37 and 73 are rejected as anticipated under
35 U.S.C. § 102(b) by Blomberg (Ans. 3).
2. Claims 20-22, 25-27, 32, 37 and 73 are rejected as anticipated under
35 U.S.C. § 102(b) by Baccala (Ans. 4).
3. Claims 20-22, 27, 28, 32, 33, 35, 37 and 73 are rejected as anticipated
under 35 U.S.C. § 102(b) by Willis (Ans. 5).
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4. Claims 20-22, 27, 29, 30, 32, 34, 37 and 73 are rejected as anticipated
under 35 U.S.C. § 102(b) by Fujitsu (Ans. 7).
5. Claims 20, 25, 27, 29, 31, 37 and 73 are rejected as anticipated under
35 U.S.C. § 102(b) by Fisher (Ans. 8).
6. Claims 20, 27, 29, 30, 32, 34, 37 and 73 are rejected as anticipated
under 35 U.S.C. § 102(b) by Roeschmann (Ans. 10).
7. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willis (Ans. 11).
8. Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Willis and Chester (Ans. 12).

ISSUE
Does Blomberg, Baccala, Willis, Fujitsu, Fisher or Roeschmann,
standing alone, anticipate a forceps tool having first and second flexible
arms configured at their distal ends as set forth in claim 20?

ANALYSIS
The rejection of claims 20-22, 25, 27, 35, 37 and 73 as being anticipated by
Blomberg
Appellants argue claims 20-22, 25, 27, 35 and 37 together (App. Br.
11). We select independent claim 20 for review with claims 21, 22, 25, 27,
35 and 37 standing or falling with claim 20 (37 C.F.R. § 41.37(c)(1)(vii)
(2011)). Appellants separately argue claim 73 which is separately addressed
below (App. Br. 13).
Claim 20 is directed to a forceps tool with a first flexible arm having
contiguous first and second elongate regions. Claim 20 further requires that
"a length of said second region comprising a concave cross-sectional shaped
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region, wherein the proximal end of said concave-shaped cross-sectional
region is configured to receive said electrode assembly along a longitudinal
axis through the geometric center of said concave-shaped cross-sectional
region."
The Examiner notes that this claim limitation contains functional
language and concludes that Blomberg’s forceps tool discloses the claimed
structure and that it is also capable of performing this function (Ans. 3-4, 12-
13). Appellants contend that, as explained in Paragraphs 36-40 of the
Specification directed to a “preferred form” of the electrode assembly, the
pre-curved tubular electrode assembly is held straight and that in order to
enable receipt of the electrode assembly along the specified longitudinal
axis, it is “important that no region of the tool obstructs any portion of the
‘longitudinal axis’” (Reply Br. 8-9 referencing also Spec. ¶¶ [40]-[44]). A
lack of obstruction by the forceps tool is not a claimed limitation and further,
the electrode assembly is only described in the preamble of claim 20 as
being “implantable.” The claim does not call for the electrode assembly to
have any specific size or shape. Appellants contend, however, that one of
ordinary skill in the art would interpret the “proximal end of said concave-
shaped cross-sectional region” claim language “as a device in which the
longitudinal axis through the concave region is not physically obstructed, in
any direction, by any other region of the tool” (Reply Br. 9) (italics added).
Appellants contend that another region of Blomberg’s tool physically
obstructs this longitudinal axis and thus “Blomberg fails to expressly or
inherently disclose all elements of Appellants’ claim 20” (Reply Br. 9-10,
see also App. Br. 12-13).
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We are cautioned against importing limitations from the embodiments
into the claims and particularly where Appellants have chosen to use claim
language that is broader than the language used to describe the preferred
embodiment in the Specification (e.g., SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)). The language of claim 20
requires that the concave-shaped region receive an electrode “along a
longitudinal axis through the geometric center of said concave-shaped cross-
sectional region.” Appellants do not expressly define any of these claim
terms in the Specification and accordingly they are provided their broadest
reasonable interpretation consistent with the Specification. Claim 20 does
not expressly state that the electrode assembly extends entirely along the
longitudinal axis when it is received by the forceps tool and the ordinary and
customary meaning of “along” also encompasses partially along1. As claim
20 encompasses receiving the electrode assembly partially along this
longitudinal axis, claim 20 is broadly yet reasonably interpreted as not
further requiring the lack of obstruction of the electrode assembly or the
longitudinal axis by “any other region of the tool” as Appellants contend2.
Because Appellants employ claim language broader than a preferred
embodiment, we decline to import limitations from such embodiment into
claim 20. Accordingly, Appellants’ contentions are not persuasive in

1 “Along” is defined as “beside;” “parallel to the length or direction of;” and
“during; in the course of” (WEBSTER’S ENCYCLOPEDIC
UNABRIDGED DICTIONARY OF THE ENGLISH LANGUAGE 42
(1989).
2 This interpretation is consistent with Appellants’ Specification and
Drawings which disclose a flexible, elongated, curved electrode grasped by
the distal end of Appellants’ forceps (Spec. ¶ [37] and Figs. 1-3 and 9).
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showing that the Examiner’s reasoning is in error. In view of the record
presented, we sustain the rejection of claims 20-22, 25, 27, 35 and 37.
Regarding claim 73, Appellants repeat the ‘obstruction’ argument
addressed above and state that claim 73 should be allowed “[f]or at least the
same reason as discussed above with reference to claim 20” (App. Br. 13,
Reply Br. 11-12). For reasons discussed supra for claim 20, we are not
persuaded by Appellants’ contention and accordingly sustain the Examiner’s
rejection of claim 73.
The anticipation of:
a) claims 20-22, 25-27, 32, 37 and 73 by Baccala;
b) claims 20-22, 27, 28, 32, 33, 35, 37 and 73 by Willis;
c) claims 20, 25, 27, 29, 31, 37 and 73 by Fisher; and
d) claims 20, 27, 29, 30, 32, 34, 37 and 73 by Roeschmann
For each rejection, the Examiner employs similar analysis with
respect to each of these references as was employed above with respect to
Blomberg (Ans. 4-11). In addressing each such rejection, Appellants set
forth separate headings addressing the rejections of claims 20 and 73 in view
of the respective cited art (App. Br. 14-18 and 22-27; Reply Br. 12-29).
Except for claim 73 which is separately addressed, the remaining claims
stand or fall with claim 20 for each rejection. Regarding claims 20 and 73,
Appellants present the same claim importation and obstruction contentions
as discussed supra but as applied to the cited art rather than Blomberg. For
reasons similar to those discussed above with respect to the rejection over
Blomberg, we sustain the Examiner’s rejection of these claims.
The anticipation of claims 20-22, 27, 29, 30, 32, 34, 37 and 73 by Fujitsu
The Examiner again elaborates why Fujitsu discloses the claimed
subject matter (Ans. 7-8). In addressing this rejection, Appellants set forth
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separate headings addressing the rejections of claims 20 and 73 in view of
Fujitsu (App. Br. 18-21; Reply Br. 29-33). The remaining claims are argued
together with claim 20 and as such, they stand or fall with claim 20.
Regarding claims 20 and 73, Appellants present arguments similar to those
already addressed supra with respect to Blomberg (App. Br. 20; Reply Br.
30-33). Appellants further contend that because Fujitsu’s concave region
stops prior to Fujitsu’s tip portion, it is impossible for Fujitsu to retain the
electrode in the claimed “concave cross-sectional shaped region” (App. Br.
19, 21). The Examiner, however, clarifies that “the tip region of Fujitsu is
being considered to extend proximally from the distal-most point to include
a portion of the forceps that includes the tube” (i.e. the concave region)
(Ans. 15). In view of the Examiner’s clarification, which Appellants do not
directly address, we are not persuaded by Appellants’ contentions and we
sustain the Examiner’s rejection of claims 20-22, 27, 29, 30, 32, 34, 37 and
73.
The rejection of:
a) claims 25 and 26 as being unpatentable over Willis and
b) claim 36 as being unpatentable over Willis and Chester
Claims 25, 26 and 36 depend directly or indirectly from claim 20.
The Examiner concludes that their further limitations (i.e., establishing a
particular angle range for the first and second arms (claims 25 and 26) and a
post on one of the arms (claim 36)) is directed either to the discovery of an
optimum value of a result effective variable or is obvious in view of the post
taught by Chester (Ans. 11-12). For each rejection, Appellants set forth
separate headings addressing the rejection of these claims in view of the
respective cited art (App. Br. 27-28). However, Appellants do not present
new arguments under these headings but instead reiterate contentions
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previously presented and rely on “the reasons discussed above with
reference to the rejection of claim 20” (App. Br. 27). We find no
deficiencies in the Examiner’s application of Willis to claim 20 and
accordingly, we sustain the Examiner’s rejection of claims 25, 26 and 36.

CONCLUSIONS
Blomberg, Baccala, Willis, Fujitsu, Fisher and Roeschmann, standing
alone, anticipate a forceps tool having first and second flexible arms
configured at their distal ends as set forth in claim 20.

DECISION
The rejections of claims 20-22, 25-37 and 73 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP