Ex Parte Wu et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09746990 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SU-SYIN S. WU, NANCY C. CHU,
and SZU-MIN LIN
____________

Appeal 2008-3274
Application 09/746,990
Technology Center 1700
____________

Decided:1 January 30, 2009
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4, 6, 8-10, 13,
15-17, 20, 21, 23-25, 27, and 28.2 We have jurisdiction under 35 U.S.C. §
6(b).

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3274
Application 09/746,990

We AFFIRM.

The invention relates to an apparatus (appealed claims 1, 4, 6, 8-10,
13, 15, 21, and 23-25) and a method (appealed claims 16, 17, 20, 27, and 28)
for delivering cleaning fluid, rinsing fluid, scrubbing fluid, or germicide to
contact surfaces between parts of a medical device. (See Spec. 1:10-12.)
Independent claims 1 and 16 are illustrative of the invention and are
reproduced from the Appeal Brief, Claims Appendix, below:
1. A medical device comprising a first surface and a second surface,
the first surface and second surface being adjacent to each other in facing
relationship, being rotatable with respect to one another about a pivot point
and having a contact area therebetween adjacent the pivot point, said
medical device being made up of at least one material, said medical device
comprising a plurality of projections on at least one of the first surface and
second surface at the contact area, and wherein said projections are adapted
to allow a fluid to flow around said projections whereby to enhance cleaning
and sterilization processes which employ the fluid.

16. A method of cleaning, rinsing, scrubbing, disinfecting, or
sterilizing a medical device having a first surface and a second surface
adjacent to and in facing relation to reach [sic, each] other and which are
rotatable with respect to one another about a pivot point and have a contact
area therebetween at the pivot point, said method comprising; providing a
plurality of projections on at least one of the first surface and second surface
at the contact area; contacting said medical device with a fluid in a vessel;
circulating said fluid in said vessel and contacting said medical device at the
contact area with said fluid by flowing said fluid around the projections, said
fluid being selected from the group consisting of a cleaning fluid, a rinsing
fluid, a scrubbing fluid, a disinfecting fluid, and a sterilizing fluid.
2 Claims 7, 22, and 26, the remaining claims pending in the Application,
stand objected to as dependent on a rejected base claim. (Supplemental
Examiner’s Answer (“Ans.”) 9-10, mailed January 8, 2008.)
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The Examiner relies on the following prior art references to show
unpatentability (Ans. 4 (8)):
Markham 5,176,699 Jan. 5, 1993
Schad WO 96/30058 Oct. 3, 1996
Sackier 5,776,146 Jul. 7, 1998
Schad 5,935,537 Aug. 10, 19993
Moyers 6,090,213 Jul. 18, 2000

Appellants request review of the following grounds of rejection4:
1. claims 1, 4, 6, 13, 15, 21, and 23-25 under 35 U.S.C. § 102(b) as
anticipated by Markham;
2. claims 1, 4, 6, 13, 15, 21, and 23-25 under 35 U.S.C. § 102(b) as
anticipated by Sackier;
3. claims 8-105 under 35 U.S.C. § 103 as unpatentable over Markham
or Sackier;
4. claims 16, 17, 27, and 286 under 35 U.S.C. § 103 as unpatentable
over Schad in view of Markham or Sackier; and

3 The Examiner relies on this reference as “the English language equivalent
and 371 filing of WO 96/30058” (Ans. 4).
4 Since the filing of Appellants’ Amended Appeal Brief on January 29, 2007
(“Br.”), the Examiner has withdrawn the rejection of claim 7 under 35
U.S.C. § 112, second paragraph, and the rejection of claim 22 under 35
U.S.C. § 102(b). (Ans. 3.)
5 The Examiner notes that claim 10 was inadvertently omitted from the
statement of the rejection in the Final Office Action (Ans. 3 (6).) The
Examiner maintains that claim 10 was addressed in the Final Office Action.
(Ans. 7.) Appellants have not filed a Reply Brief or otherwise objected to
correction of this error in the Examiner’s Answer. Accordingly, we
determine the inadvertent omission of claim 10 from the statement of the
rejection is harmless error.
6 Appellants incorrectly identify claim 28 as being allowable. (Br. 2 (III);
see Final Office Action, mailed January 5, 2006, Disposition of Claims.)
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5. claim 20 under 35 U.S.C. § 103 as unpatentable over Schad in
view of Markham or Sackier as applied to claim 16, and further in view of
Moyers.

ISSUES
1. Have Appellants shown reversible error in the Examiner’s finding
that Markham discloses (1) a plurality of projections on at least one of two
adjacent, facing surfaces at a contact area of the surfaces, and/or (2) that the
projections allow fluid to flow around them?
2. Have Appellants shown reversible error in the Examiner’s finding
that Sackier discloses (1) a plurality of projections on at least one of two
adjacent, facing surfaces at a contact area of the surfaces, and/or (2) that the
projections allow fluid to flow around them?
3. Have Appellants shown reversible error in the Examiner’s
determination that one of ordinary skill in the art would have been motivated
to use Schad’s method of cleaning surgical instruments to clean the
Markham and/or Sackier medical devices?
4. Have Appellants shown reversible error in the Examiner’s
determination that modification of Schad’s method to include a vacuum as
taught by Moyer would result in the method recited in appealed claim 20?
We answer each of these questions in the negative for the reasons
well-stated in the Examiner’s Answer, and further discussed below.

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FINDINGS OF FACT (“FF”)
1. The Examiner, referencing figure 11 of Markham, finds that
Appellants’ claimed “plurality of projections” reads on Markham’s
“gear teeth . . . which are in contact at the contact point between the
gears [58, 62]” (Ans. 5). The Examiner further finds that Markham’s
gear teeth would permit fluid flow between them and promote better
flow than two flat surfaces in contact. (Ans. 5-6.)
2. The Examiner, referencing figure 15 of Sackier, finds that Appellants’
claimed “plurality of projections” reads on the teeth on the curved
surface of pawl 243 and on the surface of ratchet wheel 239 of
Sackier’s medical device. (Ans. 6.) The Examiner further finds that
Sackier’s teeth would permit fluid flow between them and promote
better flow than two flat surfaces in contact. (Ans. 7.)
3. Appellants argue that Markham’s gear teeth and Sackier’s teeth “are
not on the surfaces in facing relationship, and further they are not
adapted to allow a fluid to flow around them to enhance cleaning and
sterilization of the facing surfaces.” (App. Br. 4, 5.)
4. Appellants’ Specification (“the Specification” or “Spec.”) does not
include an explicit definition of the term “facing surfaces.”
5. The Specification reads: “[t]he embodiments of the method and the
apparatus can be applied wherever contact areas exist on a device”
(Spec. 5:21-22). According to the Specification, “[t]he contact areas
on the medical device can be due to a joint, a hinge, a box lock, or a
mated surface. Devices with hinged surfaces include scissors,
forceps, and clips. Typical medical devices with two or more parts
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having contact surfaces include scissors, forceps, holders, hemostats,
or rongeurs.” (Spec. 14:15-19.)
6. According to the Specification, “[w]hen medical devices are made of
two or more parts with contact areas between the parts, the parts are
often movable . . . around a pivot.” (Spec. 14:3-5.) In an exemplary
embodiment of Appellants’ invention, the device is a scissors and the
pivot is a pin. (Spec. 14:5-6.)
7. According to the Specification, the use of projections enhances
penetration of cleaning fluids in the contact areas of a medical device.
(See, e.g., Spec. 11:9-20.) “More liquid flows around the plurality of
projections on the contact surface than through the material of the
medical device, thus cleaning, rinsing, scrubbing, disinfecting, or
sterilizing the medical device and the contact areas between the two or
more parts of the medical device.” (Spec. 15:20-23.)
8. According to the Specification, “the plurality of projections [] can
have the shapes of points, lines, or a combination of points and lines.”
(Spec. 13:23-24.) The projections can be in random positions on the
contact surface, in regular rows, and of equal or unequal heights. (See
Spec. 13:10-19.)
9. Claim 1 of Markham (emphasis added) reads:
A surgical device comprising:

a first upper rigid elongated shaft member keyed along a
substantial portion of its length to a second lower rigid
elongated shaft member for reciprocal movement
therealong in parallel relation thereto;

handle means at one end of said first and second shaft
members for grasping said device;
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biasing means associated with said first and second shaft
members for normally biasing said first shaft member in
a direction laterally along said second shaft member;

an upper jaw member;

a lower jaw member;

said upper jaw member being pivotally connected to said
upper shaft member and said lower jaw member being
pivotally connected to said lower shaft member, each of
said jaw members having a plurality of spaced teeth
thereon, the teeth of one of said jaw members facing the
teeth of the other of said jaw members; and

said jaw members being in meshing engagement whereby
reciprocation of said upper shaft member in a direction
sliding along said lower shaft member and toward said
jaw members and parallel to said lower shaft member
moves said upper jaw member in a counterclockwise
direction whereby said lower jaw member, in meshing
engagement with said upper jaw member, moves in a
clockwise direction thereby moving the teeth of said jaw
members together.

10. Claim 3 of Sackier (emphasis added) reads, in relevant part:
A surgical clamp, comprising:

a first jaw having a proximal end and a distal end, the
first jaw having a first fixed set of teeth located near the
proximal end of the first jaw;

a second jaw having a proximal end and a distal end, the
second jaw having a second fixed set of teeth located
near the proximal end of the second jaw;

moving means for moving the first jaw and the second
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jaw between an open state wherein the distal end of the
first jaw is spaced from the distal end of the second jaw
to accept a body conduit, and a closed state wherein the
distal end of the first jaw and the distal end of the second
jaw are proximate to at least partially occlude the body
conduit, the moving means being adaptable for moving
the first fixed set of teeth in and out of mesh with the
second fixed set of teeth;

the moving means being configured to receive a force
from an external device, the force being sufficient to
move the first jaw and the second jaw between the open
state and the closed state;

the first jaw being rotatably secured to the second jaw
near the respective first set of teeth and the second set of
teeth, so that the first set of teeth and the second set of
teeth can be moved in and out of mesh.

11. The Examiner finds that “Schad teaches a method of cleaning and
disinfecting jawed surgical instruments, such as forceps and
endoscopic instruments.” (Ans. 8.) The Examiner contends that it
would have been obvious to have used Schad’s method “to clean and
disinfect the jawed surgical instruments of [Markham and Sackier], as
it has been shown to be effective in cleaning such.” (Ans. 8.)
12. Appellants argue that “Schad appears singularly unsuited to cleaning
either of the instruments depicted by Markham and Sackier et al. . . .
On[e] of skill in the art would not be motivated to use such a device
on the instruments of either Markham or Sackier et al.” (App. Br. 5.)
13. With respect to claim 17, Appellants concede that “S[c]had changes
the orientation of the entire device,” but argue that Schad “does not
teach moving the parts of the device” as claimed. (App. Br. 6.)
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14. Claim 17 recites “moving at least one of said at least two parts of said
medical device.” (See Ans. 12.)
15. Schad discloses an apparatus and method for cleansing and
disinfecting surgical instruments (col. 1, ll. 6-8), such as biopsy
forceps (col. 1, l. 26). Schad discloses oscillating the surgical
instrument while cleansing (claim 9).
16. The Examiner maintains that the claim 17 moving step is met by
Schad’s oscillation step. (Ans. 12.)
17. The Examiner finds that the combined teachings of Schad with
Markham or Sackier disclose the invention as claimed in claim 20
with the exception of the step of reducing pressure in the vessel.
(Ans. 9.) The Examiner finds that Moyers “discloses a method of
cleaning endoscopic implements wherein after cleaning a vacuum is
pulled on the chamber in combination with the application of hot air
in order to remove all moisture from the implements. See col.3, line
31 to col.4, line 5.” (Ans. 9.) The Examiner contends that it would
have been obvious to also apply a vacuum in Schad’s method, as
taught by Moyers, in order to shorten the drying time. (Ans. 9.)
18. Appellants concede that “Moyers employs a vacuum line to move
gases,” but argue that “Moyers does not draw a vacuum to vaporize
fluid and does not draw sufficient vacuum for such purpose.” (App.
Br. 6.)
19. The Examiner points out that Moyer discloses that eductors used to
pull a vacuum can exhaust air or any other gas used, and any
moisture. (Ans. 13 (citing Moyers, col. 3, ll. 45-52).) The Examiner
maintains that the vacuum drawn in Moyers would be sufficient to
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assist in vaporization of any liquid left in the cleaned instruments.
(Ans. 13.)
PRINCIPLES OF LAW
During examination, claims terms must be given their broadest
reasonable construction consistent with the specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Anticipation requires that each limitation of a claim must be found in
a single reference. In re Donohue, 766 F.2d 531, 534 (Fed. Cir. 1985). The
law of anticipation does not require that the reference teach what the subject
patent or application teaches. It is only necessary that the claims, as
construed, “read on” something disclosed in the reference, i.e., all limitations
of the claim are found in the reference, or fully met by it. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). “A reference
may be from an entirely different field of endeavor than that of the claimed
invention or may be directed to an entirely different problem from the one
addressed by the inventor, yet the reference will still anticipate if it explicitly
or inherently discloses every limitation recited in the claims.” In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claims limitations, it
anticipates.” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1354
(Fed. Cir. 2008) (finding patent claim requiring a cold UV source “effective
to impinge sufficient UV light on the ink” to cure the ink inherently
anticipated by patent disclosing LEDs which necessarily were “effective to
impinge sufficient UV light on the ink to substantially cure the ink”) (citing
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005)
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(quoting In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349
(Fed.Cir.2002))). “Thus, a prior art reference may anticipate when the claim
limitation or limitations not expressly found in that reference are nonetheless
inherent in it.” Leggett, (quoting MEHL/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999)).
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).

ANALYSIS
Appellants argue that Markham’s gear teeth and Sackier’s teeth are
not on facing surfaces. (FF 3.) Appellants’ argument appears to be based on
a contention that the term “facing relationship” is not intended to encompass
all adjacent facing surfaces, but is limited to particular device surfaces, such
as the surfaces between scissor blades. However, Appellants have not
identified, nor do we find any language in the claims or Specification which
warrants such narrow interpretation of the claims. (See, e.g., FF 4-6.)
Rather, we are in agreement with the Examiner’s findings that both
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Markham’s and Sackier’s teeth are on adjacent surfaces in a facing
relationship as claimed (FF 1, 2).
We are likewise unpersuaded by Appellants’ arguments that
Markham’s gear teeth and Sackier’s teeth are not adapted to allow fluid to
flow around them to enhance cleaning (FF 3). In our view, the teachings of
both references support the Examiner’s findings (see Ans. 5-7, 11; FF 1, 2)
that the configurations of Markham’s and Sackier’s teeth are such that they
would enhance fluid flow between the contact areas (compare FF 7, 8 with
FF 9 and with FF 10).
Accordingly, we determine that Appellants have not identified
reversible error in the Examiner’s rejections of claims 1, 4, 6, 13, 15, 21, and
23-25 under 35 U.S.C. § 102(b). Appellants do not present any additional
substantive arguments in traversing the rejection of claims 8-10 under 35
U.S.C. § 103(a). (See App. Br. 5.) We have considered the arguments
presented in connection with independent claim 1 as they pertain to
limitations found in claims 8-10. However, we are not persuaded of error in
the facts and reasons relied on by the Examiner in rejecting claims 8-10 (see
Ans. 8) for the reasons explained above.
With respect to the rejection of method claims 16, 17, 20, 27, and 28,
we determine that the Examiner set forth a reasonable basis to conclude that
the claimed invention would have been obvious for the reasons well-stated
in the Examiner’s Answer (Ans. 8-9, and 12). Appellants have not identified
error (FF 12, 13, and 18) in the facts and reasons relied on by the Examiner
(see Ans. 12; FF 11, 14-17, and 19). Nor have Appellants proffered
evidence to show that the Examiner’s proposed combination would not
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necessarily or inherently possess the characteristics of the claimed method.
(See Br. in its entirety.)
Accordingly, we conclude that Appellants have not shown reversible
error in the Examiner’s determination that one of ordinary skill in the art
would have been motivated to use Schad’s method of cleaning surgical
instruments to clean the Markham and Sackier medical devices. Nor have
Appellants shown reversible error in the Examiner’s determination that
modification of Schad’s method to include a vacuum as taught by Moyer
would result in the method recited in appealed claim 20.
CONCLUSION
We sustain the Examiner’s rejections of:
claims 1, 4, 6, 13, 15, 21, and 23-25 under 35 U.S.C. § 102(b) as
anticipated by Markham;
claims 1, 4, 6, 13, 15, 21, and 23-25 under 35 U.S.C. § 102(b) as
anticipated by Sackier;
claims 8-10 under 35 U.S.C. § 103 as unpatentable over Markham or
Sackier;
claims 16, 17, 27, and 28 under 35 U.S.C. § 103 as unpatentable over
Schad in view of Markham or Sackier; and
claim 20 under 35 U.S.C. § 103 as unpatentable over Schad in view of
Markham or Sackier as applied to claim 16, and further in view of Moyers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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