Ex Parte 6589259 et al

Board of Patent Appeals and Interferences

Jun 22, 2009

90007852 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KARL STORZ GMBH & CO. KG1
____________________

Appeal 2009-001087
Reexamination Control 90/007,852
Patent US 6,589,259 B12
Technology Center 3900
____________________

Decided: June 22, 20093
____________________

Before CAROL A. SPIEGEL, DANIEL S. SONG and KEN B. BARRETT,
Administrative Patent Judges.

SONG, Administrative Patent Judge.
DECISION ON APPEAL

1 Karl Storz GmbH &Co. KG is the real party in interest (App. Br. 2).
2 Issued Jul. 8, 2003 to Solingen.
3 The 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.

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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claims 1, 2, 6-21, 26,
and 35-41. Claims 3-5 have been confirmed patentable while claims 22-25
and 27-34 have been previously cancelled (App. Br. 2). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306 (2002). We AFFIRM-IN-
PART.
An oral hearing with the Appellant’s representative was held before
the Board of Patent Appeals and Interferences on March 4, 2009. In
addition to the Appeal Brief filed on January 18, 2008, the Appellant also
relies on the Reply Brief filed on April 28, 2008 in support of patentability.
The Patentee claims a medical instrument having a push/pull rod that
activates tool parts at a distal end thereof, the push/pull rod forming a force-
limiting device having a “spring-like elasticity” along its line of
displacement.
Claims 1, 3, 5, 13-19, and 41 are independent claims. Representative
independent claims 1, 18, and 41 read as follows (App. Br., Claims App’x;
emphasis added, underlining omitted):
1. (Original) A medical instrument comprising a push/pull rod
displaceable by a hand manipulator arranged on a proximal end
of said push/pull rod for activating remote tool parts at a distal
end of said push/pull rod, said medical instrument further
comprising a force-limiting device envisaged for limiting the
transmission of force onto said remote tool parts from said hand
manipulator via said push/pull rod, wherein said push/pull rod
itself is designed to form said force-limiting device having
spring-like elasticity along the line of displacement.

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18. (New) A medical instrument comprising a push/pull rod
displaceable by a hand manipulator arranged on a proximal end
of said push/pull rod for activating remote tool parts at a distal
end of said push/pull rod, said medical instrument further
comprising a force-limiting device envisaged for limiting the
transmission of force onto said remote tool parts from said hand
manipulator via said push/pull rod, wherein said push/pull rod
itself is designed to form said force-limiting device having
spring-like elasticity along the line of displacement, wherein the
hand manipulator comprises an axis of rotation, a first handle
element having a first proximal end and a second handle
element having a second proximal end, wherein the first
proximal end is located further from the remote tool parts in a
direction along the line of displacement than the second
proximal end, and wherein the first handle element is movable
about the axis of rotation.

41. (New) A medical instrument comprising a push/pull rod
displaceable by a hand manipulator arranged on a proximal end
of said push/pull rod for activating remote tool parts at a distal
end of said push/pull rod, said medical instrument further
comprising a force-limiting device envisaged for limiting the
transmission of force onto said remote tool parts from said hand
manipulator via said push/pull rod, wherein said push/pull rod
itself is designed to form said force-limiting device having
spring-like elasticity along the line of displacement and having
a spring constant that remains substantially unchanged
throughout the entire length of elastic displacement.

The prior art relied upon by the Examiner as evidence of
unpatentability is:
Poncet 5,254,130 Oct. 19, 1993
Heimberger 5,562,699 Oct. 8, 1996
Scarfone 5,683,412 Nov. 4, 1997

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The Examiner rejected claim 41 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejected claims 1, 2, 6-12, 14, 19, 26, 35, 36, 38, 39,
and 41 under 35 U.S.C. § 102(b) as being anticipated by Scarfone.
The Examiner rejected claims 1, 11, 12, and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Heimberger.
The Examiner rejected claims 13, 15-17, 20, 21, 37, and 40 under 35
U.S.C. § 103(a) as being obvious over Heimberger in view of Scarfone.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Appellant has shown that the Examiner erred in
finding that the claim limitation reciting that the push/pull rod has “a spring
constant that remains substantially unchanged throughout the entire length of
displacement” lacks written descriptive support.
2. Whether the Appellant has shown that the Examiner erred in
finding that Scarfone inherently describes the recited push/pull rod for
activating remote tool parts.
3. Whether the Appellant has shown that the Examiner erred in
finding that Heimberger describes the recited push/pull rod having a “spring-
like elasticity.”
4. Whether the Appellant has shown that the Examiner erred in
finding that Heimberger describes the first handle element recited in claim
18.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Scarfone describes an endoscopic instrument 100 including a
force-limiting control member 102 and a proximal handle assembly 104 for
operating a pair of forceps jaws 108 (col. 3, ll. 54-61; fig. 1).
2. Scarfone states:
A. “The force-limiting control member is a flexible
wire, having a bent, pre-stressed portion which
constitutes a spring portion of the control member.
Preferably, the flexible wire is bent into a
sinusoidal shape to form the spring portion near
the proximal end of the wire.” (Col. 2, ll. 31-36).

B. “The force-limiting control member 102 is a
relatively flexible pull wire which extends through
the coil and is coupled to the forceps jaws 108 at
its distal end.” (Col. 3, ll. 61-63; fig. 1).

C. “Referring generally now to FIGS. 1-3, it will be
appreciated that the amount of force applied to the
forceps jaws 108 by the spring portion 120 of the
pull wire 102 will be determined by the spring
constant of the spring portion 120 and the distance
through which the pull wire is pulled.” (Col. 5, ll.
37-41; figs. 1-3).

3. Scarfone describes that in the preferred embodiment, a pull wire
having a 0.027 inch diameter is used (col. 6, ll. 18-20).
4. In describing the state of the art, Scarfone states “[t]he control
member is typically either a push rod or a pull wire . . .[.]” (col. 1, ll. 23-24),
thereby recognizing a distinction between a rod and a pull wire.
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5. Scarfone describes a portion of the force-limiting control
member 102 close to its proximal end being formed as “a pre-stressed
sinusoidal spring 120.” (Col. 3, ll. 63-67).
6. Heimberger describes forceps including a tubular shaft 1, a pair
of gripping jaws 2, a handle 3 disposed at the proximal end of the shaft 1,
and a “force transfer and limiting member constructed in the form of a pull-
push rod 7” which is slidably received or guided in the tubular shaft 1 (col.
3, ll. 41-46 and 53-55; figs. 1 and 2).
7. Heimberger states that the pull-push rod 7 “is preferably made
of a superelastic, reversibly deformable material having a memory of its
physical form.” (Col. 3, ll. 63-65). In this regard, Heimberger states that the
pull-push rod 7, “because of its preferred reversibly deformable
composition, elastically contracts and reassumes its initial physical form …”
(Col. 4, ll. 23-28).
8. Heimberger also describes that the handle 3 includes fixed arm
4 rigidly connected the tubular shaft 1 and a movable arm 5 pivotably
connected to the shaft 1 via a pin 6 (col. 3, ll. 49-53; figs. 1 and 2). The
fixed arm 4 is illustrated as being positioned further from the gripping jaws 2
than the movable arm 5 (figs. 1 and 2).

PRINCIPLES OF LAW
Written Description
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
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time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language.” In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983).

Anticipation
“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.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. The properly interpreted claim must then be compared with the
prior art.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).

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Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
The Supreme Court stated that “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
KSR, 550 U.S. at 418. The Court also noted that “[t]o facilitate review, this
analysis should be made explicit.” Id. at 418. (Citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Id.

CLAIM CONSTRUCTION
Deciding the present appeal requires construction of the claim
limitation “spring-like elasticity” because all of the claims appealed recite a
push/pull rod designed to form a force-limiting device having a spring-like
elasticity.
The Examiner contends that “spring-like elasticity” can be broadly
construed to refer to the resilient characteristics of a member, and as such, “a
device having ‘spring-like elasticity’ is a device that regains its original
shape and/or initial state following deformation, such as after being
compressed or extended” (Ans. 10, 14, 16 and 17). In contrast, the
Appellant contends that “spring-like elasticity” requires elasticity like a
spring having a spring constant (that relates displacement to the force
applied) which remains substantially unchanged “throughout the entire
length of elastic displacement” (App. Br. 10, 16, 17, 19 and 20; Reply Br. 2).
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Thus, the Appellant argues that spring-like elasticity is distinguished from
other types of elasticity, such as superelasticity (App. Br. 18-20).
We construe “spring-like elasticity” to mean that the push/pull rod
must have an elastic characteristic similar to that of a spring by returning to
its original shape following deformation, but is not required to have a spring
constant that remains substantially unchanged throughout its length of elastic
displacement. By inclusion of the modifier “like,” the scope of the recited
elasticity is further broadened beyond that provided by springs generally,
much less a particular type of spring which has a spring constant that
remains substantially unchanged throughout its length of elastic
displacement. Hence, the claim language, on its face, can be broadly
interpreted to merely require that the push/pull rod have elastic
characteristics similar to that of a spring, not that the push/pull rod have all
the elastic characteristics of a particular type of spring.
In construing the limitation “spring-like elasticity” broadly, we note
that the Board gives claims their broadest reasonable construction in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Prater, 415 F.2d 1393, 1395-96 (CCPA 1969); In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (stating giving broad
construction to claim terms is not unreasonable during examination because
the applicant can amend the claims, and further stating that “it is error for the
Board to ‘appl[y] the mode of claim interpretation that is used by courts in
litigation, when interpreting the claims of issued patents in connection with
determination of infringement and validity’” (citing In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989))). This is the standard for claim interpretation in
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both original examination and reexamination. See In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Moreover, “[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
In the present case, there does not appear to be any specific definition
of “spring-like elasticity,” or a disclaimer within the Specification, that
would otherwise limit the meaning thereof. The Appellant has not
substantiated through evidence that all “springs” necessarily have
substantially unchanging spring constants throughout their length of elastic
displacement. There is also insufficient evidence in the record to establish
that “spring-like elasticity” has any specific meaning or definition in the art,
or would be understood by one of ordinary skill in the art as requiring an
unchanging spring constant. To the contrary, the Examiner refers to Poncet
in support of the contention that the term used by the Appellant has a broad
meaning in the art to even encompass superelasticity (Ans. 10, 14).

ANALYSIS
Rejection of claim 41 under 35 U.S.C. § 112
The Examiner rejected claim 41 stating that the ‘259 patent “lacks any
reference to the push/pull rod ‘having a spring constant that remains
substantially unchanged throughout the entire length of displacement,’ as
recited.” (Ans. 5).
The Appellant concedes that the identical words of claim 41 are not
used in the Specification (App. Br. 10). However, the Appellant contends
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there are numerous references to “spring-like elasticity” in the Specification,
and the term refers to elasticity like a spring which has a spring constant
relating displacement to the force applied (App. Br. 10; Reply Br. 2). The
Appellant argues that spring-like elasticity is distinguished from other types
of elasticity, such as superelasticity, and the recited “spring-like elasticity”
fairly discloses the recited limitation “having a spring constant that remains
substantially unchanged throughout the entire length of displacement” to one
of ordinary skill in the art (App. Br. 10; Reply Br. 3).
The Appellant’s arguments are not persuasive. As construed supra,
“spring-like elasticity” refers to the resilient characteristics similar to that of
a spring, but does not require such a device to have a spring constant that
remains substantially unchanged throughout its length of elastic
displacement. (Ans. 14). There is nothing in the record, nor has the
Appellant established through persuasive evidence, that providing “spring-
like elasticity” requires a spring constant that is unchanging over the length
of elastic displacement.
Therefore, the Appellant has not shown that the Examiner erred in
rejecting independent claim 41 as failing to comply with the written
description requirement.

Rejection of claims 1, 2, 6-12, 14, 19, 26, 35, 36, 38, 39 and 41 based
on Scarfone
The Examiner rejected these claims contending that Scarfone
describes each and every limitation of the rejected claims, including a pull
wire 102 which corresponds to a push/pull rod forming a force-limiting
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device with spring-like elasticity as recited in the rejected claims (Ans. 5 and
6). The Examiner concedes that Scarfone is silent as the pull wire’s 102
capability of performing a pushing function, but contends that the pull wire
102 is formed from a relatively heavy gauge stainless steel wire that
inherently possesses enough linear stiffness to perform the pushing function
(Ans. 14 and 15).
The Appellant contends that independent claim 1 recites a push/pull
rod that can be moved to open and close the remote tool parts, and argues
that a push/pull rod is not inherently described in Scarfone (App. Br. 11 and
12; Reply Br. 3 and 4). We agree with the Appellant.
In order to find inherency, the prior art must necessarily function in
accordance with, or include, the claimed limitation, and cannot be
established by probabilities or possibilities. See In re Cruciferous Sprout
Litig., 301 F.3d at 1349; In re Robertson, 169 F.3d at 745. While Scarfone
does describe the pull wire’s diameter (FF 3) which is the basis for the
Examiner finding of inherent disclosure, we must also take into account the
contrary descriptions in Scarfone which, in various places, describe the pull
wire as “flexible” and performing a pulling function (FF 2A-2C; App. Br. 11
and 12), as well as Scarfone’s recognition of a distinction between a “push
rod” from a “pull wire” (FF 4; App. Br. 12). The Examiner’s argument that
the pull wire must perform a pushing function in Scarfone in view of lack of
any further disclosure as to how the forceps jaws 108 are opened (Ans. 6) is
based on speculation as to the opening operation of the forceps jaws and is
insufficient to establish inherency.
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Therefore, in view of the above, the Appellant has shown that the
Examiner erred in concluding that Scarfone inherently describes the
push/pull rod for activating remote tool parts recited in claim 1. The
Appellant also relies on the same argument to contend that the Examiner
erred in rejecting claims 2, 6-12, 14, 19, 26, 35, 36, 38, 39 and 41 (App. Br.
15), all of these claims requiring a push/pull rod for activating remote tool
parts. Thus, the Appellant has shown that the Examiner erred in rejecting
these claims as anticipated by Scarfone as well.

Rejection of claims 1, 11, 12 and 18 based on Heimberger
The Examiner rejected claims 1, 11, 12 and 18 contending that
Heimberger describes each and every limitation of these claims, including a
push/pull rod that forms a “force-limiting device having ‘spring-like
elasticity’ along the line of displacement” as specifically recited (Ans. 8 and
9). Unlike Scarfone, Heimberger specifically describes a “pull-push rod 7”
that is coupled to the gripping jaws 2 for operatively engaging the gripping
jaws 2 (FF 6).
Nonetheless, the Appellant contends that Heimberger does not
describe the pull-push rod as having a “spring-like elasticity,” but instead,
describes the pull-push rod as having superelasticity (FF 7; App. Br. 16;
Reply Br. 5). In particular, the Appellant relies on Figure 10 of Heimberger
as showing that the described pull-push rod “does not behave like a spring
because it does not have, throughout the entire length of elastic
displacement, a spring constant that describes displacement in response to
applied force[,]” but instead, “changes its behavior in response to applied
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force depending on how much displacement has occurred, all within its
elastic displacement” (App. Br. 19; see also Reply Br. 6).
However, the Appellant’s argument is not persuasive. As discussed
supra, the limitation “spring-like elasticity” merely requires the push/pull
rod to have an elastic characteristic in which the rod regains its original
shape following deformation similar to that of a spring, a function which is
performed by the pull-push rod of Heimberger (FF 7). Mere recitation of a
“spring-like elasticity” does not require an elastic characteristic of a
particular type of spring which has a spring constant that remains
substantially unchanged throughout its length of elastic displacement. Thus,
the pull-push rod of Heimberger satisfies the recited “spring-like elasticity”
limitation.
In arguing for a narrower construction of the limitation “spring-like
elasticity,” the Appellant appears to be confusing claim interpretation
principles applied during patent prosecution with principles applied during
validity and infringement analysis, and is requesting the Examiner and the
Board to apply a narrow construction of the limitation at issue so as to avoid
reading on the prior art even though there is no basis to do so. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
The Appellant further argues that Heimberger “teaches away” from
using a rod having spring-like elasticity because Heimberger teaches the
benefits of using the superelastic push/pull rod (App. Br. 21). However, “[a]
reference is no less anticipatory if, after disclosing the invention, the
reference then disparages it. Thus, the question whether a reference ‘teaches
away’ from the invention is inapplicable to an anticipation analysis.”
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Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998) (citing Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772 (Fed.Cir.1983)).
The Appellant’s argument that due to the difference between
superelasticity and spring-like elasticity, “one of ordinary skill in the art
would have had no motivation to modify Heimberger to arrive at the
invention embodied by claim 1 because to do so would destroy Heimberger's
intended functionality and advantages” (App. Br. 21) is also not pertinent to
anticipation analysis since no modification to Heimberger is made in the
anticipation rejection.
Thus, the Appellant has not shown that the Examiner erred in
rejecting claim 1 as being anticipated by Heimberger. With respect to
claims 11 and 12, the Appellant merely relies on the arguments set forth
with respect to independent claim 1 (App. Br. 22) which are unpersuasive
for the reasons discussed.
Regarding claim 18, in addition to relying on unpersuasive arguments
set forth with respect to independent claim 1, the Appellant argues that
Heimberger fails to describe the recited first handle element which is both
movable about the axis of rotation, and has a proximal end that is located
further from the remote tool parts than a second proximal end of the second
handle element (App. Br. 22). Claim 18 recites, inter alia, that “the hand
manipulator comprises an axis of rotation, a first handle element having a
first proximal end and a second handle element having a second proximal
end, wherein the first proximal end is located further from the remote tool
parts in a direction along the line of displacement than the second proximal
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end, and wherein the first handle element is movable about the axis of
rotation.”
We agree with the Appellant. In rejecting claim 18, the Examiner
cited and relied upon Figures 1 and 2 of Heimberger (Ans. 11). However,
with respect to these figures, Heimberger describes that the handle element 5
is movable and handle 3 has a fixed arm 4, and thus, is fixed (FF 8). In view
of this disclosure, we agree with the Appellant that each and every limitation
of claim 18 is not described in Heimberger, and conclude that the Appellant
has shown that the Examiner erred in rejecting claim 18 as anticipated by
Heimberger.

Rejection of claims 13, 15-17, 20, 21, 37 and 40 based on Heimberger
and Scarfone
The Examiner rejected these claims as unpatentable over the
combination of Heimberger and Scarfone (Ans. 11). The Examiner
contends that Heimberger describes all of the recited limitations except the
recited “at least sectional undulatory curves” which provide the spring-like
elasticity (Ans. 12). The Examiner relies on Scarfone to cure this
deficiency, contending that Scarfone includes “undulatory curves on a
proximal section 120 of the rod 102, the undulatory curves 120 providing
spring-like elasticity along the line of displacement of the push/pull rod 102”
(FF 5; Ans. 12). Thus, the Examiner contends that “it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify Heimberger by replacing the push/pull rod 7 that is made from
relatively costly superelastic material (e.g. Ni-Ti alloy), and substituting in
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its place a less expensive, stainless steel push/pull rod (as taught by
Scarfone), with the push/pull rod being designed with undulatory curves on
at least a portion of the rod, the push/pull rod with undulatory curves
providing a force-limiting device having spring-like elasticity along the line
of displacement” (Ans. 12).
Regarding claims 13 and 15-17, the Appellant argues that Heimberger
teaches away from using a device that has a spring-like elasticity because it
teaches that superelastic material is preferred (FF 7; App. Br. 24). While we
do not agree that Heimberger’s disclosure that the use of superelastic
material is preferred “teaches away” from using other elastic materials, the
deficiency of the Examiner’s articulated rejection is that Scarfone does not
describe a push/pull rod, but instead, describes a pull wire (FF 2A-2C and 4)
as discussed supra relative to the Examiner’s anticipation rejection based on
Scarfone. Hence, it is speculative that the substitution of the pull wire of
Scarfone into the device of Heimberger would result in the invention
claimed.
Thus, we conclude that the Examiner erred in rejecting claims 13 and
15-17 as obvious in view of Heimberger and Scarfone. We further conclude
that the Examiner erred in rejecting claims 20, 21, 37 and 40 based on the
combination of Heimberger and Scarfone for the same reason.

CONCLUSIONS
1. The Appellant has not shown that the Examiner erred in finding
lack of written description for the limitation reciting that the push/pull rod
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has “a spring constant that remains substantially unchanged throughout the
entire length of displacement.”
2. The Appellant has shown that the Examiner erred in finding
that Scarfone inherently describes the recited push/pull rod.
3. The Appellant has not shown that the Examiner erred in finding
that Heimberger describes the recited push/pull rod having a “spring-like
elasticity along the line of displacement.”
4. The Appellant has shown that the Examiner erred in finding
that Heimberger describes the first handle element recited in claim 18.

ORDER
1. The Examiner’s rejection of claim 41 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is AFFIRMED.
2. The Examiner’s rejection of claims 1, 2, 6-12, 14, 19, 26, 35,
36, 38, 39, and 41 under 35 U.S.C. § 102(b) as being anticipated by Scarfone
is REVERSED.
3. The Examiner’s rejection of claims 1, 11, and 12 under 35
U.S.C. § 102(b) as being anticipated by Heimberger is AFFIRMED.
4. The Examiner’s rejection of claim 18 under 35 U.S.C. § 102(b)
as being anticipated by Heimberger is REVERSED.
5. The Examiner’s rejection of claims 13, 15-17, 20, 21, 37 and 40
under section 35 U.S.C. § 103(a) as being obvious over Heimberger in view
of Scarfone is REVERSED.

Appeal 2009-001087
Reexamination Control 90/007,852
Patent 6,589,259 B1

20
SUMMARY
1. The Examiner’s rejection of claims 1, 11, 12, and 41 is
AFFIRMED.
2. The Examiner’s rejection of claims 2, 6-10, 13-21, 26, 35-39,
and 40 is REVERSED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

MAT

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