David R. Whittaker et al.

Patent Trials and Appeals Board

Oct 22, 2019

13157627 - (D) (P.T.A.B. Oct. 22, 2019)

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.
13/157,627 06/10/2011 David R. Whittaker CCF-019873-US-ORD 7602
26294 7590 10/22/2019
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
NGUYEN, HUONG Q
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID R. WHITTAKER, RYAN S. KLATTE,
SHAWN D. ELLIS, and JASON T. MIKULSKI
____________________

Appeal 2018-001610
Application 13/157,627
Technology Center 3700
____________________

Before: JEREMY M. PLENZLER, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–29 and 31–33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as The
Cleveland Clinic Foundation, Windcrest LLC, and Parker-Hannifin
Corporation. Appeal Br. 3.
Appeal 2018-001610
Application 13/157,627

2
CLAIMED SUBJECT MATTER
The claims are directed to a guidewire control device. Claims 1, 29,
and 31–33 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A controller for manually controlling a guidewire, the
controller comprising:
a housing comprising a passage for receiving the
guidewire;
a gripper that is actuatable to grasp the guidewire in the
passage; and
a cap connected to the housing by threads, the cap being
rotatable relative to the housing so that the threads actuate the
gripper, the housing comprising an element in addition to the
threads for maintaining the cap in a receiving position, the cap
when in the receiving position placing the controller in a
condition in which the guidewire can be moved into and out of
the passage.

REFERENCES
The prior art relied upon by the Examiner is:
Wright
Carlson
Holman
Nash
Whittaker
Fisher
von Malmborg
US 4,034,882
US 4,157,674
US 5,224,939
US 2004/0133185 A1
US 7,615,032 B2
US 2010/0234897 A1
US 8,038,628 B2
July 12, 1977
June 12, 1979
July 6, 1993
July 8, 2004
Nov. 10, 2009
Sept. 16, 2010
Oct. 18, 2011

Appeal 2018-001610
Application 13/157,627

3
REJECTIONS
Claims 1–5 and 16–22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Whittaker and von Malmborg.
The remaining claims are rejected under the same grounds, but further
in view of Carlson (claims 14, 15, 29), Nash (claims 23–28), Wright (claims
6–13, 31, 32), and Holman and Fisher (claim 33).

OPINION
Claims 1–28
Independent claim 1 includes a “housing comprising an element . . .
for maintaining the cap in a receiving position, the cap when in the receiving
position placing the controller in a condition in which the guidewire can be
moved into and out of the passage.” Appellant and the Examiner dispute
whether Whittaker and von Malmborg suggest this claim element. See App.
Br. 16–19; Ans. 3–4. However, neither the Examiner nor Appellant offer
any construction for this limitation. See Medichem, S.A. v. Rolabo, S.L., 353
F.3d 928, 933 (Fed. Cir. 2003) (“The first step in both [anticipation and
obviousness] analyses is a proper construction of the claims.”).
Claim 1 does not recite any particular structure associated with the
“element” that performs the function of “maintaining the cap in a receiving
position.” Based on the record before us, we determine that “element” is a
Appeal 2018-001610
Application 13/157,627

4
means-plus-function term, subject to 35 U.S.C. § 112, ¶ 6.2,3 The standard
for determining whether a limitation is a means-plus-function term is not
based merely on the presence of the word “means,” but, rather, “is [based
on] whether the words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the name for
structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015) (internal citation omitted). Appellant does not contend that
“element” is understood as the name for any particular structure. Although
there is a presumption that a limitation lacking the word “means” is not
subject to § 112, ¶ 6, that presumption is overcome when it is
“demonstrate[d] that the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for
performing that function.’” Id. Claim 1 recites function (i.e., “maintaining
the cap in a receiving position”) “without reciting sufficient structure for
performing that function.” In fact, claim 1 does not recite any structure,
other than an “element,” for performing that function.

2 35 U.S.C. § 112, ¶ 6 (“An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts described
in the specification and equivalents thereof.”) (emphasis added).
3 It has long been recognized that § 112, ¶ 6 applies during patent
examination. See In re Donaldson Co., Inc., 16 F.3d 1189, 1194–95 (Fed.
Cir. 1994) (en banc) (When 35 U.S.C. § 112, ¶ 6 applies, “the ‘broadest
reasonable interpretation’ that an examiner may give means-plus-function
language is that statutorily mandated in paragraph six.”). Invoking § 112,
¶ 6 sua sponte at the Board is nothing new. See, e.g., Ex parte Lakkala, 108
USPQ2d 1392 (PTAB 2013) (informative); Ex parte Erol, 107 USPQ2d
1963 (PTAB 2013) (informative); Ex parte Smith, 108 USPQ2d 1198
(PTAB 2013) (informative).
Appeal 2018-001610
Application 13/157,627

5
A means-plus-function limitation “shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.” 35 U.S.C. § 112, ¶ 6. The Specification describes a
multi-function element 160 on the housing 100 that interacts with a tab 260
on the cap “to maintain the controller in desired conditions,” such as a
“receiving position.” Spec. ¶¶ 51, 52. The element 160 is described with
reference to Figure 7, reproduced below.

Figure 7 above, shows a cross-section of the housing.
The Specification describes the element 160 as follows:
Adjacent the threaded portion 150, the housing 100
includes a multi-function element 160 that projects outward
from the central portion 106 of the housing away from the axis
20. Fig. 7 illustrates the element 160 in detail. The element 160
has a curved contour, merging at a first end 162 with the
surface 164 of the central portion 106 adjacent the primary
receiving portion 130 of the slot 120. An opposite second end
166 of the element 160 also terminates and merges with the
outer surface 164, although at a larger or steeper angle than that
at which the first end 162 merges.
The element 160 includes a first portion 170 that projects
outward from the housing 100 and has an outward facing
Appeal 2018-001610
Application 13/157,627

6
surface 172. The element 160 also includes a second portion
174, adjacent the first portion 170, that also projects outward
from the housing 100. The second portion 174 projects further
outward from the housing 100 than the first portion 170 and
therefore has a height, as viewed in Fig. 7, that is greater than
the height of the first portion. The second portion 174 has a
lateral surf ace 176 formed where the element 160 transitions
from the first portion 170 to the second portion 174. The lateral
surface 176 of the second portion 174 extends transverse to the
outward facing surface 172 of the first portion 170. The
element 160 further includes a third portion 180 that is formed
in the area of the first end portion 162 where the element
merges with the outer surface 164. The third portion 180
includes a surface 182 that extends transverse to and merges
with the outer surface 164.
Id. at ¶¶ 36–37.
As the Specification does not describe any other feature for
maintaining the cap in a receiving position, we construe “an element . . . for
maintaining the cap in a receiving position” in claim 1 as requiring the
structure discussed above or its equivalents.
The Examiner’s rejection does not explain how the references meet
the limitations associated with “an element . . . for maintaining the cap in a
receiving position” under the construction noted above. Furthermore,
review of the rejection does not reveal how the portions of Whittaker and
von Malmborg cited by the Examiner disclose or teach the recited
“maintaining the cap in a receiving position” limitations required by that
term. Indeed, the Examiner was not applying that construction when making
these rejections. For this reason, we do not sustain the rejection of claim 1,
or the rejections of the claims which depend therefrom.

Appeal 2018-001610
Application 13/157,627

7
Claim 29
Independent claim 29 includes “threads of at least one of the housing
and cap having asymmetrical flank angles.” Appellant argues that flank
angles are defined as “the angle made by the flank of a screw thread with a
line perpendicular to the axis of the screw.” Appeal Br. 28 (quoting
http://encyclopedia2.thefreedictionary.com/flank+angle). Appellant also
points to Figure 6 and the related discussion in the Specification concerning
flank angles as being consistent with this definition. Id. Appellant argues
that Carlson does not teach or suggest asymmetrical flank angles. Id. at 27.
Rather than focus on the flanks of the threads, the Examiner points to
“[t]he space between ring 14 and the first thread.” Final Act. 6 (“The flank
angle has been defined to include the entire spacing between each
thread/ring.”). The Examiner further finds that the claim “does not require
the flank angles to be associated with threads of a screw.” Ans. 6.
However, we disagree as the claim specifically links the flank angles with
the threads. Further, the claim specifically requires a screw-like connection
between the cap and the housing (“cap having a threaded connection with
the housing.”). The Examiner does not sufficiently address Appellant’s
dictionary definition or support from the Specification.
The Examiner also takes an alternative position that because the angle
between the threads and the shaft in ring 14 is different than the angle of
threads 15, asymmetrical flank angles are present. Ans. 6. This reasoning
also misunderstands the definition of flank angles. See Appeal Br. 28–29.
As the Examiner has not shown that Carlson teaches asymmetrical flank
angles or provided a sufficient reason to modifying Whittaker and von
Appeal 2018-001610
Application 13/157,627

8
Malmborg to provide asymmetrical flank angles, we do not sustain the
rejection of claim 29.4
Claims 31–33
Appellant generally alleges that none of the cited references teaches or
suggests the claimed invention of independent claims 31–33. Appeal Br.
31–33. However, none of independent claims 31–33 include the same
limitations as independent claims 1 and 29 discussed above. Further, the
Examiner’s rejections of independent claims 31–33 involve art that is not
part of the rejections of independent claims 1 and 29. For these reasons,
Appellant’s mere allegation of patentability without addressing the
rejections does not inform us of error in the rejections. See 37 C.F.R.
§ 41.37(c)(1)(iv) (Arguments presented in an appeal must address the
grounds of rejection set forth by the Examiner.).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–5, 16–22 103(a) Whittaker, von Malmborg 1–5, 16–22
14, 15, 29 103(a) Whittaker, von Malmborg,
Carlson
14, 15, 29
23–28 103(a) Whittaker, von Malmborg,
Nash
23–28
6–13, 31,
32
103(a) Whittaker, von Malmborg,
Wright
31, 32 6–13
33 103(a) Whittaker, von Malmborg,
Holman, Fisher
33
Overall Outcome 31–33 1–29

4 We take no position concerning what flank angles are shown by threads 14
and 15 in Carlson.
Appeal 2018-001610
Application 13/157,627

9
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 IN PART