Ex Parte DiPaola

Patent Trial and Appeal Board

Sep 21, 2017

13748520 (P.T.A.B. Sep. 21, 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.
13/748,520 01/23/2013 Christian P. DiPaola UMMC-12-19 1078
88993 7590 09/22/2017
Milstein Zhang & Wu LLC
2000 Commonwealth Avenue, Suite 400
Newton, MA 02466-2004
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
09/22/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN P. DiPAOLA1
Appeal 2016-008337
Application 13/748,520
Technology Center 3700
Before ULRIKE W. JENKS, RYAN H. FLAX,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
anterior spine array clamp, which have been rejected as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s “invention relates to medical instruments in general and
particularly to an instrument used in making medical images.” (Spec. 12.)
1 Appellant identifies the Real Party in Interest as Christian DiPaola, and
states that Dr. DiPaola has an obligation assignment with the University of
Massachusetts. (App. Br. 2.)
Appeal 2016-008337
Application 13/748,520
Claims 1—5 and 9-12 are on appeal. Claim 1 is illustrative:
1. An anterior spine array clamp, comprising:
an attachment clamp configured to mate removably with
and configured to be fixed to a first fixed location relative to a
surgical site in a body of a patient, said attachment clamp
representing a proximal end of said anterior spine array clamp;
a first rigid arm having a first end adjustably attached to
said attachment clamp and having a second end, and having a
rotation axis disposed along the length of said first arm;
a rotational connector adjustably attached to said second
end of said first arm;
a second rigid arm having a first end adjustably attached
to said rotational connector and having a second end, and having
a rotation axis disposed along the length of said second arm; and
an array mating surface adjustably attached to said second
end of said second arm, said array mating surface representing a
distal end of said anterior spine array clamp, said array mating
surface configured to allow a digital imaging system to be
attached thereto, said digital imaging system held in a second
fixed location relative to said surgical site;
each of said attachment clamp, said first rigid arm, said
rotational connector, said second rigid arm and said array mating
surface provided with tightening screws configured to be
operated manually, and each of said attachment clamp, said first
rigid arm, said rotational connector, said second rigid arm and
said array mating surface configured to be locked in place by
tightening a respective tightening screw for a time period during
a surgical operation.
(App. Br. 26 (Claims App.) (emphases added).)
The claims are rejected as anticipated under § 102(b) by McGowan et
al., US 6,086,228, issued July 11, 2000 (“McGowan”).
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Application 13/748,520
DISCUSSION
Issue
Has the Examiner established by a preponderance of the evidence that
McGowan anticipates Appellant’s invention recited in claims 1—5 and 9—12?
Findings of Fact (FF)
The Examiner’s findings of fact and statement of the rejection are
provided at pages 2-4 of the Final Rejection dated July 10, 2015. (See also
Final Act. 5—6 and Ans. 2—6.) We provide the following findings for
emphasis and convenient reference.
FF 1. Fig. 1 of McGowan is reproduced below.
S3
FIG.1
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Application 13/748,520
Fig. 1 is a perspective view of an apparatus for illuminating and magnifying
an object in a sterile field. (McGowan 1:5—7.) The apparatus shown
includes, inter alia, base (22), an adjustable arm (21), pivot joints (60 and
61), holder (30), light (40), and magnifying lens (50). {Id. at 3:24—31 and
3:66—67; see also id. Fig. 3C; see also id. at 3:38-48 (describing clamping of
base (22), e.g., “knurled knob [29] is rotated, causing the bolt [27] (and the
pad [28]) to advance toward the post [26] until the support surface is firmly
held between the pad and the post”).)
FF 2. McGowan further teaches
the arm 21 can be attached to the base 22 by a swivel joint 64
[see Fig. 3C] which permits the arm to rotate with respect to the
base. Other swivel joints, or other rotating connections, can be
inserted into the arm, allowing sections of the arm to rotate with
respect to each other. For example, a swivel joint can be
positioned on the holder 30 where it meets the arm, allowing the
holder to be rotated. Further various combinations of swivel and
pivot joints may be employed as a particular application requires.
{Id. at 4:5-13.)
FF 3. McGowan teaches “the base assembly and the holder are
brought into the sterile field and positioned on a support surface. In certain
circumstances ... the clamp is attached to a support surface 100, such as a
Mayo table, in the sterile field.” {Id. at 5:22—26.)
Principles of Law
“‘Functional’ terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
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Application 13/748,520
A patent applicant is free to recite features of an apparatus either
structurally or functionally. ... Yet choosing to define an
element functionally, i.e., by what it does, carries with it a risk.
As [the Federal Circuit’s] predecessor court stated . . .
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic
relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal quotation
marks and citations omitted).
Analysis
Claim 1
The Examiner finds that McGowan anticipates claim 1. The
Examiner finds, among other things, that “McGowan discloses a clamp (Fig.
1) that could be used for an anterior spine array comprising an attachment
clamp (22) capable of mating removably with and capable of being fixed to
a first location relative to an intended surgical site in a body of a patient.”
(Final Act. 2.) The Examiner further finds that McGowan’s clamp
“comprises a surface (any surface located on the distal part of the second
arm [e.g., holder (30)]) that could mate with an array . . . [and] [t]he array
mating surface is capable of allowing a digital imaging system to be attached
thereto.” {Id. at 2—3)
Unless otherwise stated, we agree with and adopt the Examiner’s
findings and rationale supporting the rejection. (See Final Act. 2—6 and Ans.
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Application 13/748,520
2—6.) The preponderance of the evidence supports the Examiner’s finding
that McGowan anticipates claim 1. Below we address Appellant’s
arguments.
First, Appellant argues McGowan fails to teach all the limitations of
claim 1. Appellant argues McGowan fails to teach the limitation reciting
“an attachment clamp configured to mate removably with and configured
to be fixed to a first location relative to a surgical site in a body of a
patient.” (App. Br. 17.) Appellant contends McGowan teaches attaching
the clamp to a Mayo table, which is a small movable stand and “using a
Mayo table creates the possibility that if one or both of the patent [sic] or the
table is moved, the illumination moves relative to the surgical site.” {Id. at
16—17.) In contrast, Appellant contends, “[i]n the present application, the
attachment is made directly to the spine of the patient, so no relative motion
of the digital imaging system and the surgical site will occur.” {Id. at 17; see
also id. at 23—24.)
Appellant’s argument is unpersuasive. Appellant seeks to distinguish
between the clamp of claim 1 and McGowan’s clamp based on how the
respective clamps are intended to be used without identifying actual
structural differences between them. But, claim 1 is for an apparatus, and
“apparatus claims cover what a device is, not what a device does.'” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
As the Examiner points out, “the Examiner is not directly relying on
any table to teach the limitations of the claim ... [as the] claim limitation
simply requires the clamp to be able to be fixed to a first location.” (Ans.
2.) The Examiner finds that McGowan’s clamp is attachable in the same
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Application 13/748,520
way that is claimed, “and the teaching of a Mayo table provides evidentiary
support of its capability.” (Id. at 2—3.) We agree with the Examiner.
Indeed, the attachment of the clamp to a Mayo table is only an example, and
McGowan suggests the clamp is capable of firmly attaching to support
surfaces more generally. (FF 1,3.) The Examiner further finds that the size
and nature of McGowan’s clamp compared to what is described and shown
in Appellant’s Specification (see, e.g., Spec. Fig. 3.) indicates McGowan’s
clamp is capable of the same functionality as Appellant’s clamp, including
the ability to mate with a mechanical device attached to a patient or Caspar-
pin distractor. (Ans. 3—5.) Appellant cites no contraindication in McGowan,
nor do we find any, suggesting that McGowan’s clamp could not be used in
the same way as the clamp of claim 1.
Appellant directs us to the Specification, yet the Specification
reinforces that Appellant has claimed a clamp based on its intended use. In
particular, Appellant quotes paragraph 24 of the Specification, which
discloses “[t]he anterior spine array clamp of the invention has as a purpose
the fixing of an image guided navigation array solidly to the anterior spine
(cervical, thoracic or lumbar).” (Spec. 124 (emphasis added); App. Br. 12;
Reply Br. 2—3.) The “purpose” of the clamp, without more, is not a
structural feature of the clamp itself that distinguishes over the prior art.
In short, McGowan teaches a clamp encompassed by the structural
elements recited in claim 1. And the Examiner provided a reasoned basis to
believe that McGowan’s clamp, having these structures and when compared
to the clamp described and depicted in Appellant’s Specification, is capable
of the functionality claimed. In re Schreiber, 128 F.3d at 1478; In re Best,
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Application 13/748,520
562 F.2d 1252, 1254—55 (CCPA 1977). Appellant provides insufficient
persuasive evidence or argument to the contrary.
Second, Appellant argues McGowan fails to teach an “array mating
surface configured to allow a digital imaging system to be attached
thereto ...” as also recited in claim 1. (App. Br. 17.) According to
Appellant, McGowan teaches an illumination device comprising a light and
a magnifier and “does not teach or suggest a digital imaging system of any
kind.” (App. Br. 15; see also id. at 18.)
We remain unpersuaded because this argument suffers from flaws
similar to those explained above regarding Appellant’s first argument.
Claim 1 is to the clamp itself and, as the Examiner points out, “the claims do
not positively recite a digital imaging system.” (Ans. 2.) Thus, here too,
Appellant is citing functional language related to how the clamp of claim 1
is intended to be used and “the prior art just needs to teach a surface that is
capable of attaching a digital imaging system,” which McGowan does.
(Ans. 2; see also id. at 4 (“a common digital imaging system such as a
digital camera could be attached to any part of the arm past joint 60”).)2
Claims 2 and 3
Claim 2 depends from claim 1 and recites “wherein said first fixed
location relative to said surgical site in said body of said patient is a location
in or on a mechanical device attached to said patient.” (App. Br. 26.) Claim
3 depends from claim 2 and recites “wherein said first fixed location relative
2 Appellant has not, for example, claimed a kit or a method, in which
Appellant might affirmatively claim other specific structures that can be
attached to the clamp of claim 1, or a specific use of the clamp.
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Application 13/748,520
to said surgical site in said body of said patient is a location in or on a
Caspar-type pin distractor attached to said patient.” (Id. at 27.)
Unless otherwise stated, we agree with and adopt the Examiner’s
findings and rationale in support of the rejection of claims 2 and 3. (See
Final Act. 2—6 and Ans. 2—6.)
Appellant argues the Examiner admitted that a limitation was given
“no patentable weight,” and thus the Examiner erred. (App. Br. 19.)3 More
specifically, Appellant contends claims 1,2, and 3 were amended to remove
the word “intended” with respect to the phrase “an intended surgical site,”
and so the Examiner’s determination that the limitations of claims 2 and 3
reflect an intended use of the claimed clamp is not supported. (Id. at 19-20.)
Put differently, Appellant contends, “[b]y ascribing the attribute of ‘intended
use’ to the limitation of Claim 2, the Examiner is attempting to ascribe no
patentable weight to that limitation.” (Id. at 20.)
Appellant’s argument is unpersuasive. A deletion of the word
“intended” in the claims would not be dispositive. To the contrary, we agree
with the Examiner that the language Appellant has cited in claim 2 (as well
as in claim 1 and 3) as allegedly distinguishing over McGowan relates to an
intended use of the claimed clamp. With respect to claim 2, for example, the
claim language indicates how and where the clamp may be attached to the
first fixed location — it is at a “location in or on a mechanical device
attached to [a] patient.” But this is simply narrower intended-use language
3 Appellant’s briefing is unclear whether Appellant regards this argument as
specifically applicable to claim 1 as well. Even assuming the argument does
apply to claim 1, it is unpersuasive for reasons explained herein.
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Application 13/748,520
than claim 1. And claim 3 narrows the intended-use language further in
indicating the clamp is configured to be fixed to a Caspar-type pin distractor.
What is missing in the claims (and Appellant’s arguments) is any specific
structural difference between McGowan’s clamp and the claimed clamp. As
explained above, the Examiner provided findings and gave a reasoned basis
for believing that McGowan’s clamp is structurally capable of being
attached to a fixed location relative to a surgical site — including on a
mechanical device attached to a patient or a Caspar-pin distractor like shown
in Fig. 3 of the Specification. Appellant does not show otherwise.
Appellant invokes “claim differentiation” in asserting that claim 2
covers more embodiments than claim 3. (App. Br. 22; see also Reply Br. 3—
4 (“Claim 1 includes limitations in generic form, and that dependent Claims
2 and 3 recite species of those generic limitations”).) Regardless of this
claim interpretation doctrine,4 claims 1, 2, and 3 are different in scope. As
explained above, the difference is that claims 2 and 3 use narrower language
to describe how the clamp of claim 1 is intended to be used. If, as the
Examiner finds, McGowan’s clamp is structurally capable of providing the
broad and the narrower intended use, then the claims read on the art.
In Appellant’s Reply Brief, Appellant argues “[i]f the Examiner
assigns patentable weight to the species limitations in Claims 2 and 3, then it
is difficult to understand how the more general recitation of Claim 1 is taken
simply as an intended use.” (Reply Br. 4; see also id. at 6.) Appellant
appears to have misinterpreted the Examiner’s explanation in support of the
4 Appellant does not direct us to authority holding that a presumption of
claim differentiation applies to non-issued claims undergoing prosecution.
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Application 13/748,520
rejection. We agree with the Examiner that, “appropriate patentable weight
was given to each and every limitation throughout all the claims, even claim
2.” (Ans. 6.) That is not to say the claims are patentable over McGowan;
the Examiner merely confirmed that all the limitations were considered, with
none ignored in the analysis. Once again, the issue is that the language of
claims 1, 2, and 3 cited by Appellant as distinguishing over McGowan is
functional language or reflects an intended use of the claimed clamp.
Intended-use language in a claim cannot be disregarded — and the Examiner
did not do so. But neither does the language distinguish an apparatus claim
over a prior-art structure capable of the intended use. As already explained,
the Examiner determined that McGowan’s clamp is capable of satisfying the
intended-use language recited in Appellant’s apparatus claims.
Conclusion
The preponderance of the evidence supports the Examiner’s finding
that McGowan anticipates claims 1—3. Claims 4, 5, and 9-12 have not been
argued separately and fall with claims 1—3. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1—5 and 9—12 under § 102(b).
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).
AFFIRMED
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