Ex Parte Burg et al

Patent Trial and Appeal Board

Feb 15, 2017

13281001 (P.T.A.B. Feb. 15, 2017)

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.
13/281,001 10/25/2011 Bruce M. Burg 5074A-000134/US 9688
132492 7590 02/17/2017
Harness, Dickey, & Pierce, PLLC
(Medtronic Surgical Technologies)
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE M. BURG and STEVEN L. HARTMANN
Appeal 2015-0039271
Application 13/2 81,0012
Technology Center 3700
Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
ROBERT L. KINDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellants, the “disclosure relates to a trackable biopsy
needle.” Spec. 11. Claims 1,15, and 18 are the only independent claims.
1 Our decision references Appellants’ Specification (“Spec.,” filed Oct. 25,
2011), Appeal Brief (“Appeal Br.,” filed Aug. 25, 2014), and Reply Brief
(“Reply Br.,” filed Feb. 4, 2015), as well as the Final Office Action (“Final
Action,” mailed Mar. 25, 2014) and the Examiner’s Answer (“Answer,”
mailed Dec. 4, 2014).
2 According to Appellants, Medtronic Navigation, Inc. is the real party in
interest. Appeal Br. 2.
Appeal 2015-003927
Application 13/281,001
Appeal Br., Claims App. We reproduce claim 1, below, as illustrative of the
claims.
1. A trackable biopsy needle assembly comprising:
an inner tube of an outer cannula defining a bore and a first
inner diameter configured to slidably receive an inner cannula
therein, the inner tube including a first inner surface that is
smooth along its length to slidably mate with a first outer surface
of the inner cannula that is smooth along its length;
an inner dielectric layer secured onto an outer surface of
the inner tube;
a first coil, a second coil, and a third coil wound over the
inner dielectric layer;
an outer dielectric layer secured onto the first coil, the
second coil, and the third coil; and
an outer tube of the outer cannula fastened to the outer
dielectric, the outer tube defining a first outer diameter at a
second outer surface thereof that is smooth along its length, the
first coil, the second coil, and the third coil are between the inner
tube of the outer cannula and the outer tube of the outer cannula;
wherein the inner tube and the outer tube are fixed to one
another and each one of the first coil, the second coil, and the
third coil are adhesively embedded between the inner tube and
the outer tube.
Id.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 5—9, 15—17, and 20 under 35 U.S.C.
§112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter that Appellants regards as the
invention.
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Appeal 2015-003927
Application 13/281,001
The Examiner rejects claims 1—9 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Hartmann (US 2010/0210939 Al, pub. Aug. 19, 2010),
Goldenberg (US 2009/0204023 Al, pub. Aug. 13, 2009), and Taniguchi
(US 5,840,024, iss. Nov. 24, 1998).
The Examiner rejects claims 10 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Hartmann, Goldenberg, Taniguchi, and Gordin
(US 2009/0209947 Al, pub. Aug. 20, 2009).
The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Hartmann, Goldenberg, Taniguchi, Gordin, and Mugan
(US 2010/0081965 Al, pub. Apr. 1, 2010).
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Hartmann, Goldenberg, Taniguchi, Gordin, Mugan, and
Tsonton (US 2005/0215922 Al, pub. Sept. 29, 2005).
The Examiner rejects claims 13 and 16—20 under 35 U.S.C. § 103(a)
as unpatentable over Hartmann, Goldenberg, Taniguchi, and Anderson
(US 2010/0063383 Al, pub. Mar. 11, 2010).
ANALYSIS
Indefiniteness rejection
The Examiner rejects claims 5—9, 15—17, and 20 because the claims
use the terms “about” and “substantially.” See Final Action 2—5. Appellants
argue the rejection is in error, because
[ujnder U.S. patent law, relative terms (such as “about” and
“substantially”) are not indefinite merely because they are
relative. Rather, acceptability of the claim language depends on
whether a person of ordinary skill in the art would understand
what is claimed in light of the specification. Specifically, MPEP
§ 2173.05(b) states that the fact that claim language, including
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Application 13/281,001
terms of degree, may not be precise[] does not automatically
render the claim indefinite under 35 U.S.C. § 112, second
paragraph. Acceptability of the claim language depends on
whether one of ordinary skill in the art would understand what is
claimed in light of the specification. MPEP § 2173.05(b) further
states that when a term of degree is presented in a claim, first a
determination is to be made as to whether the [Specification
provides some standard for measuring that degree. If it does not,
(which is not admitted by [Appellants]) a determination is made
as to whether one of ordinary skill in the art, in view of the prior
art and the status of the art, would be nevertheless reasonably
apprised of the scope of the invention.
Appeal Br. 22.
It is true that when a “word of degree” is used in a claim, the claim is
not indefinite when the Specification provides “some standard for measuring
that degree.” BiosigInstr., Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed.
Cir. 2015) (addressing indefmiteness of a limitation within an issued patent).
In this case, however, Appellants do not establish that the Specification
provides any standard by which the claim terms “about” and “substantially”
may be measured.
Further, the Examiner determines that “a skilled artisan would not be
able to ascertain the scope of’ any of these claims because of the inclusion
of “about” and “substantially.” Final Action 3—5. In response to the
Examiner, Appellants proffer the Declaration of Bruce M. Burg to show that
one of ordinary skill would understand the scope of the claims. Declaration
(“Deck,” dated Mar. 11, 2014) 5. Notwithstanding that the Declaration only
addresses the claim term “about,” we are not persuaded by the Declaration
that the scope of either claim term would be understood by one of ordinary
skill. Id. For example, the Declaration explains that “if narrow tolerances
are used, ‘about’ will refer to a narrow range. If wide tolerances are used,
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Application 13/281,001
‘about’ will refer to a broad range.” Id. However, this explanation does
persuade us that one of ordinary skill would understand when a tolerance is
wide or narrow, for example, or to what extent a range is narrow or broad.
Thus, we sustain the indefiniteness rejection of claims 5—9, 15—17, and 20.
Obviousness rejections
With respect to independent claim 1, based on our review of the
record, because we cannot ascertain on which features the Examiner relies to
reject the claims, specifically with respect to Hartmann, we determine that
the Examiner fails to support adequately the determination that a
combination of Hartmann, Goldenberg, and Taniguchi renders obvious the
claim.
Examination “shall be complete with respect... to the patentability of
the invention as claimed.” 37 C.F.R. § 1.104(a)(1). “When a reference is
complex . . . , the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified.” 37 C.F.R.
§ 1.104(c)(2) (emphases added). The Examiner finds that “Hartmann . . .
[is] a voluminous reference.” Answer 3. We fully agree, noting that
Hartmann is more than one hundred pages in length, including almost fifty
pages of drawings, with more than one hundred ten figures, and more than
ninety columns of text in the Detailed Description section alone. The
Examiner relies on Hartmann to disclose the majority of the limitations of
claim 1. For each of these limitations, the Examiner states little more than
“Hartmann discloses” the limitation, and “(see Figs. 12, 17, 85, 87B, 91A,
and 91B and para[s.] 10-12, 128-130, 133, 146-148, 155,202-208,211,
214-217, 222, 226-229, 232, 234, 250, 563, 564, 566-570, 574, 576, 585,
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Application 13/281,001
586).” Final Action 6—7 (repeating same block citation for each of seven
claim limitations). It is insufficient for the Examiner to offer an invitation to
review the same six figures and approximately 40 paragraphs, without even
an indication as to which of Hartmann’s elements within those figures or
paragraphs teaches the limitation, for virtually every limitation of claim 1.
We note that the figures and paragraphs appear to refer to different
embodiments of the invention, and to different structures. Thus, even in
view of the minimal additional determinations provided by the Examiner in
the Response to Arguments section of the Answer, it is unclear on which
elements in Hartmann the Examiner relies, and how these elements from
different embodiments and structures are proposed to be combined.
Answer 2—8. Therefore, the Examiner fails to establish that a combination
of the references discloses all the limitations of claim 1.
Based on the foregoing, we do not sustain the rejection of independent
claim 1, or its dependent claims 2—14. Further, inasmuch as independent
claims 15 and 18 are similarly rejected, we do not sustain the rejection of
these independent claims or their dependent claims 16, 17, 19, and 20.
DECISION
We AFFIRM the Examiner’s indefmiteness rejection of claims 5—9,
15-17, and 20.
We REVERSE the Examiner’s obviousness rejections of claims 1—20.
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Application 13/281,001
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)(l)(iv).
AFFIRMED-IN-PART
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