Seiyukai Healthcare Corporation

Patent Trials and Appeals Board

Jun 5, 2020

14441729 - (D) (P.T.A.B. Jun. 5, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/441,729 05/08/2015 Tomotaka Oyabu 1780-0001WOUS 9415
49698 7590 06/05/2020
MKG LLC
306 INDUSTRIAL PARK ROAD
SUITE 206
MIDDLETOWN, CT 06457
EXAMINER
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
06/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mkgip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMOTAKA OYABU
____________

Appeal 2019-004450
Application 14/441,729
Technology Center 3700
____________

Before ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8–16 in this application.2
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Seiyukai Healthcare Corporation as
the real party in interest. Appeal Br. 2.
2 Claims 1–7 are canceled. See Appeal Br. 4, 16 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 8 is the sole independent claim on appeal, and it recites, with
our emphases added:
8. A guide jig for guiding a cutting bar attached to a handpiece
when forming an implant cavity at an implantation position of an
implant, the guide jig comprising:
an elongated handle section;
a pole section that supports an end side of the handle section
on an alveolar bone[3]; and
a guide section, provided on the end side of the handle
section, the guide section having a tubular shape, the tubular
shape fixed to and in contact with the pole section, the guide
section configured to guide the cutting bar along the pole section;
wherein:
the pole section is formed into a columnar shape and is fixed
to the end of the handle section in an upright position,
the pole section is tiltably and rotatably supported by
abutting against the alveolar bone,
at least one of the pole section and the guide section
protrudes from the end side of the handle section in a direction
opposite to a direction of cutting by the cutting bar, and
the pole section comprises an abutting section formed on
one end of the pole section, the abutting section being tapered
such that a diameter of the abutting section decreases in size in
the cutting direction.
Appeal Br. 16–17 (Claims App.) (emphases added).
REJECTIONS ON APPEAL
Claims 8–16 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 2.

3 The alveolar bone is part of a person’s jaw. See Subst. Spec. (filed May 8,
2015) ¶¶ 2, 27–28; Appeal Br. 12 (stating “the alveolar bone is a thickened
ridge of bone on a jaw that contains the tooth sockets that hold teeth”).
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Claims 8–16 are rejected under 35 U.S.C. § 102(e) as anticipated by
Wong (US 2013/0103037 A1, published Apr. 25, 2013). Final Act. 3–5.
OPINION
A. Statutory Subject Matter
The Examiner determines claims 8–16 are directed to non-statutory
subject matter, because claim 8 “recite[s] part of the human body in
combination with the device, e.g. ‘a pole section that supports an end side of
the handle section on an alveolar bone’ and ‘abutting against the alveolar
bone.’” Final Act. 2. In the Examiner’s view, these limitations “appear[] to
structurally require that the pole section is in contact with an alveolar bone,
and thus positively recite[] the alveolar bone.” Ans. 5. The Examiner
concludes “a human being will not be considered to be patentable subject
matter under 35 U.S.C. 101,” because the grant of an exclusive property
right in a human being is prohibited by the constitution. Final Act. 2 (citing
In re Wakefield, 422 F.2d 897 (CCPA 1970)). The Examiner suggests
Appellant might overcome this rejection by amending claim 8 to include
“[l]anguage such as ‘when in use’, ‘adapted to be attached’, or ‘for
attachment to.’” Id.; Ans. 5.
Appellant opposes on the basis that “the limitations of independent
Claim 8 are not directed to a human body or part thereof, nor is the human
body included within the scope of Claim 8.” Appeal Br. 10 (emphases by
Appellant). In Appellant’s view: “Claim 8 recites a structure of a guide jig,
and the guide jig’s structural components do not include ‘an alveolar bone.’”
Id. Appellant argues claim 8’s references to an alveolar bone simply specify
“a mounting location” and “support features” for the claimed guide jig to
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interact with bone, such that “no claim is made to the alveolar bone itself.”
Reply Br. 7 (emphases by Appellant). Appellant disagrees with the
Examiner’s determination that additional claim language is necessary to
clarify that claim 8 is not directed to a part of the human body. Appeal
Br. 10–11. Appellant concludes the claim construction underlying the
Examiner’s rejection is unreasonably broad and inconsistent with
Appellant’s Specification. Reply Br. 8.
We agree with Appellant’s position that the Examiner’s rejection
relies upon an unreasonable claim construction. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (holding that, during examination
of a patent application, pending claims are given their broadest reasonable
construction consistent with the Specification).
[U]nder the broadest reasonable [claim] interpretation, the
Board’s construction “cannot be divorced from the specification
and the record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011), and “must be consistent with the one that those
skilled in the art would reach,” In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is “unreasonably
broad” and which does not “reasonably reflect the plain language
and disclosure” will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
A person of ordinary skill in the art would understand Appellant’s
invention is directed to a tool that may be used to guide a cutting implement
during oral surgery, by placing a pole section of the tool against the alveolar
bone in the patient’s mouth. See, e.g., Subst. Spec. ¶¶ 1–2, 5–7, 27–28. The
Examiner’s conclusion that claim 8 is directed to the combination of the tool
and an alveolar bone is not consistent with how a person of ordinary skill in
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the art would read claim 8. Instead, such a person would read claim 8 as
requiring only that the guide jig is capable of being used to guide a cutting
implement during oral surgery, by placing a pole section of the tool against
the alveolar bone in the patient’s mouth. Indeed, this is how the Examiner
construes claim 8 in support of the anticipation rejection, as discussed
below. See, e.g., Ans. 6 (stating that “all of Appellant’s arguments appear to
be directed to the intended use of the device rather than the structure of the
device,” and “[s]ince the claims are directed to an apparatus, it is only the
resulting structure at issue and the prior art only need be capable of such
use”).
Because the rejection of claims 8–16 as directed to non-statutory
subject matter is based upon an unreasonable claim construction, we do not
sustain the rejection.
B. Anticipation by Wong
In response to the anticipation rejection based on Wong, Appellant
argues claims 8–16 as a group, without separately arguing any one claim in
the group. Appeal Br. 11–15. Accordingly, we select claim 8 to decide the
appeal as to this rejection, with the other grouped claims standing or falling
with claim 8. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner cites Figures 1 and 2 of Wong as disclosing a device
that anticipates claim 8. See Final Act. 3–4. Figure 1 of Wong is
reproduced here:
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Figure 1 of Wong is a perspective view of drill guide assembly 100. Wong
¶¶ 8, 45. As described in Wong, assembly 100 may be used to repair
damaged or fractured foot bones, by “provid[ing] guidance for targeting,
aligning, measuring and drilling of a hole for placement of a bone screw and
then actual placement of the bone screw while holding or compressing the
bones in reduction.” Id. ¶¶ 2–4. In use, one or more bones are grasped
between first arm 106 and second arm 110 by adjusting the longitudinal
position of second arm 110 along body 102, using ratchet teeth 104. Id.
¶¶ 45, 48, 50. Then, a drill bit (not shown) is inserted through bore 117 of
guide housing 116 to perform a drilling operation on the bone(s). Id.
¶¶ 45–46. Sharp tip 108 of first arm 106, and spikes 118 on guide
housing 116, dig into the bone(s) to provide a good grip during the drilling
operation. Id. ¶ 51.
Comparing claim 8 to Figure 1 of Wong, the Examiner finds Wong
discloses a guide jig comprising a handle section (i.e., the portion of second
arm 110 extending between base portion 112 and guide housing 116), a pole
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section (i.e., one of the spikes 118), a guide section (i.e., guide housing 116),
and an abutting section (i.e., the tapered end of the spike 118). Final
Act. 3–4. Appellant does not challenge these findings.
The Examiner additionally finds Wong’s pole section 118 “supports
an end side of the handle section . . . on an alveolar bone (capable of being
used on an alveolar bone),” and “is tiltably and rotatably supported by
abutting against the alveolar bone (capable of being placed against alveolar
bone and since the pole section ends in a point, it may be tilted and rotated in
relation thereto).” Final Act. 3; id. at 5 (referring to “placing the pointed tip
of the pole [118] against alveolar bone and tilting/rotating”).
Appellant disputes the Examiner’s findings that Wong’s pole
section 118 is capable of supporting the handle section on an alveolar bone,
and that Wong’s pole section 118 is capable of being tiltably and rotatably
supported by abutting against the alveolar bone. Appeal Br. 12–14.
Appellant asserts “[a]ccess is limited” within a person’s oral cavity, which
precludes insertion of Wong’s drill guide assembly 100 so that pole
section 118 may contact the alveolar bone, because Wong’s device is
designed to clasp bones or tissue between first arm 106 and second arm 110
for foot or ankle repair. Id. at 12 (citing Wong ¶¶ 3–5), 14; Reply
Br. 11–12. Thus, Appellant’s view is that “it cannot be said that the drill
guide assembly 100 of Wong is capable of performing” the functions recited
in claim 8, and the Examiner’s findings to the contrary are not supported by
the evidence of record. Appeal Br. 12–13.
Appellant further contends Wong’s disclosure establishes that Wong’s
device is not capable of performing the functions recited in claim 8. Id.
at 13–14. For example, according to Appellant, Wong does not describe
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spikes 118 “as being tiltably or rotatably supported by abutting against a
bone.” Id. at 13. Further: “Wong merely describes the drill guide
assembly 110 as being immovably fixed to a bone in order to align and drill
a hole in a bone,” with tip 108 of first arm 106 and spikes 118 of second
arm 110 being “fixed to a bone as a single assembly.” Id. (emphasis by
Appellant) (citing Wong ¶ 51); Reply Br. 9–10, 12–14. Thus, in Appellant’s
view, second arm 110 cannot be removed from first arm 106 to be used
separately from first arm 106. Appeal Br. 13–14; Reply Br. 13.
The Examiner answers “that all of Appellant’s arguments appear to be
directed to the intended use of the [claimed] device rather than the structure
of the [claimed] device.” Ans. 6. The Examiner’s view is that Wong “only
need[s to] be capable of” the uses recited in claim 8, and Wong is so
capable, “such as placing the pointed tip of the pole [118] against alveolar
bone and tilting/rotating.” Id. The Examiner analogizes this capability as
being “essentially equivalent to taking a pencil, placing the tip against a
surface, and then rotating or tilting the pencil relative to the surface.” Id.
Upon review of the foregoing, we determine it is undisputed that the
claim limitations reciting “a pole section that supports an end side of the
handle section on an alveolar bone” and “the pole section is tiltably and
rotatably supported by abutting against the alveolar bone” (emphases
added) are functional limitations. This claiming strategy, while permissible,
“carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). When an Examiner has reason to believe that a functional limitation
asserted to be critical may in fact be an inherent characteristic of the prior
art, the Examiner possesses the authority to shift the burden to the applicant
to show otherwise. Id.; see also In re Simpson, 102 F. App’x 675, 678
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(Fed. Cir. 2004) (unpublished) (as in Schreiber, existence of claimed
structural elements in prior art gave the Office reason to believe those
elements could perform the claimed function, thereby shifting burden to
applicant to show lack of inherency of claimed functionality). The
Examiner may do this by establishing that the structure disclosed in the prior
art is capable of performing the recited function. Schreiber, 128 F.3d at
1478–79.
In this case, a preponderance of the evidence supports the Examiner’s
finding that Wong discloses a device that is capable of performing the
claimed functions. In particular, the Examiner finds Wong’s Figure 1
discloses all of the structural limitations recited in claim 8: a handle section
as the portion of second arm 110 extending between base portion 112 and
guide housing 116, a pole section as spike 118 with an abutting section
formed at one end, and a guide section as guide housing 116. Appellant
does not challenge these findings. All of the identified structures are found
on the “modular” second arm 110 that is “a piece separate from the
elongated body 102” such that second arm 110 “is configured and adapted to
be longitudinally movable along the elongated body [102] in two directions,
towards or away from the first arm member 106.” Wong, Fig. 1, ¶ 45.
Assembly 100 is formed by sliding elongated body 102 into through-
hole 114 of base portion 112, and second arm 110 may be removed from
body 102. Id. at Figs. 1 & 12, ¶¶ 49–50, 57–58.
We find that when second arm 110 is removed from elongated
body 102, pole section 118 is capable of supporting an end side of second
arm 110 on an alveolar bone inside a person’s mouth, and pole section 118 is
tiltably and rotatably supported by abutting against the alveolar bone, as
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recited functionally in claim 8. See, e.g., Wong, Figs. 27B–27D (illustrating
a typical size of second arm 110 in relation to a person’s foot). Appellant’s
arguments that the entire assembly 100 is too large to fit inside a person’s
mouth, such that pole section 118 is not capable of performing the recited
functions, overlook the fact that second arm 110 is removable from
body 102, to be handled like “a pencil” in the Examiner’s analogy. Ans. 6.
Appellant’s further argument that second arm 110 “cannot be
removed” from body 102 to be “separately used” is not a persuasive rebuttal
to the Examiner’s rejection. See Appeal Br. 13–14; Reply Br. 13. While it
is true that Wong does not disclose removing second arm 110 from body 102
in order to perform a surgical operation, the fact remains that the two
components are capable of being separated. Wong, Figs. 1 & 12, ¶¶ 49–50,
57–58. Thus, the structures of Wong cited by the Examiner as
corresponding to the structures recited in claim 8 are capable of performing
the functions recited in claim 8, so Wong anticipates. See Schreiber,
128 F.3d at 1478–79.
For the foregoing reasons, we sustain the rejection of claims 8–16 as
anticipated by Wong.
CONCLUSION
In summary, we reverse the statutory subject matter rejection, and we
affirm the anticipation rejection, as summarized in this table:
Claims
Rejected
35 U.S.C. § Reference / Basis Affirmed Reversed
8–16 101 Eligibility 8–16
8–16 102 Wong 8–16
Overall
Outcome
8–16
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED