Ex Parte Weber et al

Board of Patent Appeals and Interferences

Aug 16, 2012

11700915 (B.P.A.I. Aug. 16, 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.
11/700,915 02/01/2007 Robert M. Weber A8130.0491/P491 6745
24998 7590 08/16/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
08/16/2012 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 ROBERT M. WEBER and PHILIPS S. O’QUINN
__________

Appeal 2011-011009
Application 11/700,915
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, STEPHEN WALSH, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
instrument having a certain handle configuration. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-011009
Application 11/700,915

2
STATEMENT OF THE CASE
According to Appellants, the invention relates to a surgical instrument
that has a “wishbone” handle configuration which allows a surgeon to grip
the handle ergonomically and to effectively maneuver tissue or suture during
surgery. (App. Br. 3.)
Claim 1 is the only independent claim and reads as follows (emphasis
added):
1. A surgical instrument, comprising:
a shaft;
an end effector assembly at a distal end of the instrument;
a handle extending from the shaft, the handle having a wishbone
configuration in a plier-type arrangement and being provided with an
actuating mechanism on the handle, wherein the handle includes a
movable handle and a stationary handle, the movable handle and the
stationary handle being provided substantially symmetric relative
to a longitudinal axis of the instrument;
a ratchet mechanism for locking the handle, the ratchet mechanism
being actuated by the actuating mechanism, the actuating mechanism
being actuatable by a user in a first direction to partially open the
ratchet mechanism, and in a second direction to fully release and
unlock the ratchet mechanism, the first direction being different than
the second direction; and
a rod extending along the shaft and linking the end effector
assembly at the distal end of the instrument to the handle.

The following grounds of rejection are before us for review:
I. Claims 1, 2 and 5-7 stand rejected under 35 U.S.C. §102(b) as
being anticipated by MacLean (U.S. Patent No. 5,735,873).
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacLean.

Appeal 2011-011009
Application 11/700,915

3
I.
Issue
Whether MacLean discloses a surgical instrument with a handle that is
in a wishbone configuration, said handle having a movable handle and a
stationary handle and where the movable handle and the stationary handle
are substantially symmetric relative to a longitudinal axis of the instrument.
Findings of Fact
FF1. Appellants’ claims require the “wishbone” handle to have a
movable handle and a stationary handle. (See claim 1.)
FF2. The Specification does not expressly define the term
“wishbone”, nor does the Specification provide language to limit the
interpretation of the term.
FF2. The figures of the Specification show the “wishbone”
configuration as a doubly shaped curve.
FF3. The dictionary definition relied on by the Examiner defines
“wishbone” as “the V-shaped bone above the breastbone in most birds
consisting of the fused clavicles.” (Ans. 6.) The Examiner finds that
elements 12 (handle) and 32 (rod actuator) of the tool described in MacLean
form a V-shape and thus meet the “wishbone” element of the claim. (Ans.
5.)
FF4. The Examiner finds that element 12 of tool described in
MacLean is the stationary handle and that element 32 is the movable handle.
(Ans. 5.)
FF5. MacLean’s Figure 1 is reproduced here:
App
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)
Appeal 2011-011009
Application 11/700,915

5
Principles of Law
Claim terms are not interpreted in a vacuum, devoid of the context of
the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“[p]roper claim construction … demands
interpretation of the entire claim in context, not a single element in
isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered.…”).
“[U]nless a prior art reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill in the
relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972).
Appeal 2011-011009
Application 11/700,915

6
Analysis
Appellants argue that Maclean fails to teach an instrument with a
handle in a wishbone configuration, where “wishbone” is interpreted to
mean a handle with a doubly shaped curve. (App. Br. 5.) This argument is
unpersuasive. The Examiner correctly points out that the ordinary meaning
of the term “wishbone” is not limited to a doubly shaped curve, but that the
ordinary meaning of the term may include additional meanings such as a V-
or Y-shaped structure. (Fin. Rej. 5, at page 5, paragraph 12.)
Independent claim 1 defines a handle with wishbone configuration
where that handle includes two portions (a movable handle and a stationary
handle) that are “substantially symmetric relative to a longitudinal axis of
the instrument.” The Examiner contends that the claim does “not
necessarily require that one handle be symmetric to the other handle.” (Ans.
7.) We disagree. The evidence of record fails to establish that a wishbone
configuration does not connote a symmetric arrangement between the two
prongs of the wishbone, but rather suggests that the two prongs are indeed
symmetric to each other. When the claim is read as a whole, as opposed to
focusing on the elements of the claim in isolation, the use of the term
“wishbone” in the claim in combination with the requirement that the two
handle portions be symmetrical conveys to a person of ordinary skill in the
art that the two handle portions are symmetrical to each other.
Having determined the scope of Appellants’ claims, we find that
MacLean did not describe a surgical instrument having a handle in a
wishbone configuration that includes a movable handle and a stationary
Appeal 2011-011009
Application 11/700,915

7
handle, where the movable handle and the stationary handle are substantially
symmetric relative to a longitudinal axis of the instrument. The handles
portions 12 and 32 of the instrument of MacLean, as assigned by the
Examiner, are not substantially symmetric to each other and therefore are
not in a wishbone configuration with symmetric handles as required by
claim 1. (See FF5, 7.)
For the 103 rejection, we note that MacLean failed to teach or suggest
the wishbone configuration, and the obviousness rejection did not remedy
that deficiency. Therefore, we will not sustain the Examiner's rejection of
these claims under 35 U.S.C. § 103 for the same reasons as above.
Conclusion of Law
In view of the foregoing, we reverse the Examiner's rejection of
claims 1, 2 and 5-7 under 35 U.S.C. § 102 and the Examiner's rejection of
claim 8 under 35 U.S.C. § 103.

REVERSED

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