Ex Parte DiPaolaDownload PDFPatent Trial and Appeal BoardSep 21, 201713748520 (P.T.A.B. Sep. 21, 2017) Copy Citation 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”). 2 Appeal 2016-008337 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 3 Appeal 2016-008337 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). 4 Appeal 2016-008337 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. 5 Appeal 2016-008337 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 6 Appeal 2016-008337 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, 7 Appeal 2016-008337 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. 8 Appeal 2016-008337 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. 9 Appeal 2016-008337 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. 10 Appeal 2016-008337 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 11 Copy with citationCopy as parenthetical citation