11377656 (P.T.A.B. Mar. 26, 2013)

Ex Parte Voegele

Patent Trial and Appeal BoardMar 26, 2013

11377656 (P.T.A.B. Mar. 26, 2013)

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. 11/377,656 03/17/2006 Aaron C. Voegele END-5703 5044 21884 7590 03/27/2013 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER GERIDO, DWAN A ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 03/27/2013 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 OF PATENT AND APPEAL BOARD ____________ Ex parte AARON C. VOEGELE ____________ Appeal 2012-001887 Application 11/377,656 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001887 Application 11/377,656 2 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 2, 3, and 15-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative of the claimed subject matter: 1. A medical instrument, comprising: a body member; an indicator component, the indicator component is a non-critical, breakable component for identifying when reprocessing of the medical instrument has occurred, the non-critical, breakable component being necessarily broken during reprocessing and the breakable component is positioned along a seam of the body member within recesses formed along opposed surfaces of the medical instrument. The Examiner maintains the following rejections: 1) claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Haswell (US 5,520,041, issued May 28, 1996); and 2) claims 1-3 and 15-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Haswell in view of Dean (US 2006/0054525 A1, published March 16, 2006). MAIN ISSUE ON APPEAL Did the Examiner err in finding that the Haswell reference describes the claimed breakable component “positioned along a seam of the body member within recesses formed along opposed surfaces of the medical device” as required in independent claim 1? We answer this question in the affirmative. Appeal 2012-001887 Application 11/377,656 3 PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631-32 (Fed. Cir. 1987). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). ANALYSIS Appellant’s Specification describes that a breakable component “is preferably placed within a recess on the inner or outer surface of the medical instrument” (Spec. 17:3-4) so that the material spanning the seam of two parts of the medical instrument “will not catch on anything or interfere with a surgical process” (Spec. 17: 1-3; see also Spec. 16:13-19). Appellant’s Specification further describes that the breakable component may be substantially rectangular “with a central area 308 having semi-circular recesses 310, 312 on both sides thereof” and positioned at a mid-point along the length of the breakable component (Spec. 18:9-14; see also Figs. 4a and 5a). Appellant argues that the Examiner has not shown how Haswell’s tamper evident tape strip 54 identically discloses a breakable component “positioned along a seam of the body member within recesses formed along opposed surfaces of the medical device” as recited in claim 1 (emphasis added). We agree. Appeal 2012-001887 Application 11/377,656 4 Specifically, we agree with Appellant that the Examiner has taken an unreasonably broad interpretation of the aforementioned claim limitation when considered in light of the Specification (App. Br. 10; Reply Br. 2-3). It is noted that Appellant’s reliance in the Reply Brief upon recesses 310 and 312 as the recesses recited in claim 1 (Reply Br. 3) appears to be misplaced, since recesses 310 and 312 are described as the recesses on the breakable component (Spec. 18:9-14; see also dependent claims 18, 19). Nonetheless, the Specification also describes that the breakable component may be “placed within a recess” of the medical instrument (Spec. 17:1-4). This necessitates recesses formed along opposed surfaces of the medical device so as to accommodate the breakable component across a seam, or joint, dividing two parts (that is, opposed surfaces) of the device, as described in the Specification and illustrated in Figs. 4a and 5a (Spec. 17:16- 19). Therefore, we are persuaded that the Examiner's interpretation of the disputed claim language is overly broad and not reasonable. As such, we cannot sustain either the anticipation rejection or the obviousness rejection, both of which rely on these flawed interpretations. Accordingly, both of the Examiner's rejections are reversed. DECISION We reverse the Examiner’s § 102 and § 103 rejections. ORDER REVERSED sld