Ex Parte Szweda et al

Board of Patent Appeals and Interferences

Jun 14, 2012

11404217 (B.P.A.I. Jun. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/404,217 04/14/2006 Gina Szweda END-5622USNP7 2336
21884 7590 06/14/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
DVORAK, LINDA C
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
06/14/2012 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 GINA SZWEDA,
PATRICK A. WEIZMAN, RICHARD F. SCHWEMBERGER,
JOHN L. RANDALL JR., JOHN L. STAMMEN,
JOHN P. MEASAMER, and ANIL K. NALAGATLA
__________

Appeal 2011-004228
Application 11/404,217
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4, 8, and 11.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Claim 7 is also pending, but stands withdrawn from consideration (Ans. 2).
App
App

endo
assem
(Id. a
(emp
1.
eal 2011-0
lication 11
The Spe
scopic ins
Figure 2
bly of th
[T]he ha
elongate
generally
and a thu
the elong
use. A
releasab
assembly
3. Altho
from the
fastener
thumb ri

t 5.)
Claim 1
hasis adde
A flexib
04228
/404,217
ST
cification t
truments”
shows a “
e biopsy fo
ndle assem
slot 54 e
designat
mb ring 5
ate memb
C-clip fast
ly connec
50 durin
ugh other
scope of
is a C-clip
ng.
is represen
d):
le endosco
ATEMEN
eaches tha
(Spec. 1).
partially d
rceps” (id
bly 50 in
xtending p
ed by 56, i
8 is provi
er 32 for r
ener 60 is
ting the e
g storage
fastener ty
the presen
integrally
tative of t
pic device
2
T OF TH
t the “inve
Figure 2
isassemble
. at 3). As
cludes a ho
artially al
s slidably
ded at an e
eceiving a
provided
longate m
and packa
pes may b
t invention
molded
he claims
comprisin
E CASE
ntion gen
is reproduc
d side ele
shown in
llow shan
ong its len
mounted o
nd of the
surgeon’
on the thu
ember 32
ging as illu
e used wi
, in one e
on a proxi
on appeal,
g:
erally rela
ed below
vation of a
the Figure
k 52 havin
gth. A s
n the shan
shank opp
s thumb du
mb ring 5
to the ha
strated in
thout depa
mbodimen
mal end o
and reads
tes to
:

handle
:
g an
pool,
k 52
osite
ring
8 for
ndle
Fig.
rting
t the
f the
as follow

s
Appeal 2011-004228
Application 11/404,217

3
an elongate flexible member having opposite ends;
an effector assembly mounted on one of said opposite ends of the
flexible member;
a handle mounted on the end of the flexible member opposite the
effector assembly, the handle including a fastener for receiving a portion of
the flexible member spaced from the end of the member opposite the
effector assembly, the fastener being integrally formed with a thumb ring
formed along a proximal end of the handle, wherein the thumb ring includes
a central axis extending perpendicular to a plane in which the thumb ring lies
and the fastener supports the flexible member in a perpendicular orientation
relative to the central axis of the thumb ring; and
an actuator assembly extending through the flexible member and
operatively connected to the effector assembly for actuating the effector.

Claim 8, the other independent claim on appeal, also requires “a
fastener releasably connected to the flexible member for maintaining the
member in the loop configuration, the fastener being integrally formed with
a thumb ring formed along a proximal end of the handle.”
The following grounds of rejection are before us for review:
I. Claims 1 and 8 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Gingrich.
II. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Gingrich and Klinger.
We reverse.

ANALYSIS
We have carefully considered the Examiner’s rejection and
Appellants’ arguments as set forth in the Examiner’s Answer, the Appeal
Brief, and the Reply Brief, and conclude that Appellants have the better
position.
Appeal 2011-004228
Application 11/404,217

4
At issue is the interpretation of the term “integrally” as used in the
phrase “the fastener being integrally formed with a thumb ring formed along
a proximal end of the handle.” Referring to Figure 1 of Gingrich, the
Examiner finds that Gingrich teaches a flexible endoscopic device having a
handle “including a fastener (Fig. 2, ref. numb. 111& 112) for receiving a
portion of the flexible member spaced from the end of the member opposite
the effector assembly” (Ans. 3). Citing Dictionary.com, the Examiner finds
that “‘integrally’” means ‘belonging as part of the whole’ and ‘formed’ is ‘to
make’” (id. at 4). The Examiner thus finds that Gingrich “disclose[s] that
the fastener is integrally formed with a thumb ring formed along a proximal
end of the handle (11, Fig. 10) because the thumb ring and the fastener are
made as parts of a whole, that whole being the entire instrument” (id.).
More specifically, the Examiner interprets “integrally” to mean “of,
pertaining to, or belonging as a part of the whole; constituent or component”
(id. at 7). The Examiner notes that “definition is not inconsistent with
Appellant’s invention because Appellant’s fastener (60, Fig. 2) belongs as
part of the whole with Appellant’s thumb ring (58, Fig. 2), the whole being
the entire handle assembly (50)” (id.). As to Gingrich’s device, the
Examiner finds that the “fastener is formed on the spool like device,” and
thus “the spool-like device and fastener, the ring portion, and the elongate
portion all belong as parts of a whole, the whole being the handle” (id.).
Gingrich discloses “an endoscopic instrument with a handle portion
configured to accommodate an elongate, flexible member and an end
effector assembly of the endoscopic instrument for protection, coiling,
App
App

loop
Figu
Figu
p. 1,
(id. a
Figu
eal 2011-0
lication 11
ing, contai
re 1 of Gin
re 1 is an e
¶12). As
The end
member
includes
and/or in

t p. 2, ¶24
re 2 of Gin
04228
/404,217
nment, pa
grich is re
xemplary
shown in t
oscopic i
14, and a
a spool-li
tegrally fo
).
grich is re
ckaging an
produced
endoscopi
he above F
nstrument
n end effe
ke device 2
rmed with
produced
5
d for disp
below:
c instrume
igure:
1 has a
ctor assem
0 and a ri
an elonga
below:
osal” (Gin

nt as taug
handle 1
bly 15.
ng portion
te portion
grich, p. 1
ht by Ging
0, an elon
The handl
11 attach
12.
, ¶1).
rich (id. a
gate
e 10
ed to

t
App
App

Figu
taugh
(Id. a

“fast
is no
that
form
at 13
eal 2011-0
lication 11
re 2 shows
t by Ging
The dev
and a c
radial g
radial gr
the mem

t 2, ¶28)
Appellan
ener being
t taught by
Gingrich t
ed with th
). Appella
04228
/404,217
an embod
rich:
ice 100 ha
entral por
roove 111
oove 111
ber 14.
ts argue th
integrally
Gingrich
eaches gro
e thumb ri
nts assert
iment of t
s a proxim
tion 130.
and a ci
configured
at the ind
formed w
(App. Br.
oves on a
ng, and in
that the Ex
6
he spool-l
al portion
The prox
rcumferen
to accom
ependent c
ith a thum
9-10). Sp
spool-like
fact slides
aminer’s
ike device
110, a dis
imal port
tial groov
modate m
laims on a
b ring,” as
ecifically,
device, w
relative to
interpretat
(id. at 2, ¶
tal portion
ion 110 h
e 112 of
ultiple loo
ppeal bot
serting th
Appellant
hich is not
the ring p
ion of “int

28). As
120,
as a
f the
ps of
h require a
at feature
s assert
integrally
ortion (id
egrally

.
Appeal 2011-004228
Application 11/404,217

7
formed” goes beyond the broadest reasonable interpretation consistent with
the Specification (id. at 10). Appellants assert that “Gingrich makes clear
the spool-like device on which the ‘fastener’ is integrally formed is separate
and distinct from ring portion 11” (id. at 14). According to Appellants, the
“interpretation offered by the Examiner would make the addition of the term
‘integrally’ in the claims at issue irrelevant” (Reply Br. 2).
We conclude that Appellants have the better position. To anticipate,
every element and limitation of the claimed invention must be found in a
single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Moreover, we
recognize that during prosecution before the Office, claims are to be given
their broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Claim language, however, “should not [be] treated as meaningless.” Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006).
The claims require that a fastener that is “integrally formed” with a
thumb ring. We agree with Appellants that the Examiner’s interpretation
reads the limitation of “integrally formed” out of the independent claims. As
noted by Appellants, “by using the open ended terms ‘comprising’ and
‘including’ in the pending claims, it is already understood that both the
thumb ring and the fastener form part of the claimed handle” (Reply Br. 2).
Moreover, Appellants’ interpretation is consistent with how “integrally” is
used both in the Specification (see Spec. 5 (excerpted above in the
discussion of Figure 2)) and by Gingrich (see Gingrich p. 2, ¶24 (excerpted
Appeal 2011-004228
Application 11/404,217

8
above in the discussion of Figure 1)). We thus reverse the anticipation
rejection.
As to the obviousness rejection over Gingrich and Klinger, the
Examiner cites Klinger for teaching a C-clip (Ans. 5). Thus, as Klinger does
not remedy the deficiencies of Gingrich discussed above, the obviousness
rejection is also reversed.

REVERSED

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