Ex Parte Efinger et al

Patent Trial and Appeal Board

Dec 17, 2012

11232300 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREAS EFINGER and RAINER HERMLE
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Appeal 2010-012327
Application 11/232,300
Technology Center 3700
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Before: STEVEN D. A. McCARTHY, PATRICK R. SCANLON, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/232,300

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1 and 3-13. Claim 2 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a spreadable medical instrument. Claim 1
is the sole independent claim and is reproduced below:
1. A spreadable medical instrument for endoscopic
interventions having a base body, a handle positioned
on the base body, and at least two spatula blades that are
connected with the handle and can be displaced into
different positions between a closed starting position
and at least one working position parallel and/or at an
angle to one another by means of an adjustment
mechanism, wherein the adjustment mechanism
includes an adjusting screw for parallel displacement of
at least one of the spatula blades as well as an adjusting
screw to displace at least one of the blades by tipping,
wherein the adjustment mechanism is configured as a
continuously adjustable screw-in mechanism for
displacing the at least two spatula blades into all
positions between the closed starting position and the
working position, distinguished in that the adjustment
screw for parallel displacement and the adjustment
screw for tipping of at least one of the spatula blades are
positioned close to one another on the handle to
simultaneously grip the handle and activate one or both
adjustment screws with one hand only, and wherein
activation of one or both of the adjustment screws
causes displacement of at least one of the spatula blades
into a working position.

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REJECTIONS
1. Claims 1 and 3-13 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement;
2. Claims 1 and 3-13 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the enablement requirement;
3. Claims 1, 3-7, 9-11, and 13 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Yang (US 2003/0176772 A1; pub. Sept. 18, 2003);
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Yang and Stihl (US 2002/0165433 A1; pub. Nov. 7, 2002); and
5. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yang and Mayes (US 5,460,165; iss. Oct. 24, 1995).

OPINION
Section 112, First Paragraph – Claims 1 and 3-13
Claim 1 recites that “the adjustment screw for parallel displacement
and the adjustment screw for tipping of at least one of the spatula blades are
positioned close to one another on the handle to simultaneously grip the
handle and activate one or both adjustment screws with one hand only.” The
Examiner asserts that
There is no support for an instrument that allows someone to
“simultaneously grip the handle and activate ... both adjustment
screws” with a single hand when adjustment screws 6 and 7 are
individually independent of each other as shown in Figs. 1-3
and as claimed in claim 1; and thus such recitation is considered
to be new matter.
Ans. 3. We disagree.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
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artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). The claimed invention need not be recited in haec verba in the
original specification to satisfy the written description requirement. Id. at
1352. “[T]he written description requirement is satisfied by the patentee's
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Appellants’ Figures 1-3 show each of the locking screws 6, 7
positioned on the handle 1 at a location allowing activation of the locking
screws 6, 7 with the same hand holding the handle 1. Appellants’
Specification describes, with reference to Figures 1-3, that “the adjustment
mechanism 5 . . . consists of two separate, continuous displaceable locking
screws 6 and 7,” (Spec. 7, para. [00030]) and that “it is possible to grip the
handle 1 and to activate the adjustment mechanism 5 simultaneously with
the same hand” (Spec., para. [00032]).
The Examiner asserts that “the specification indicates that unless
locking screws 6 and 7 are combined into a single locking screw, adjustment
of both screws 6 and 7 would not occur simultaneously but would require
successive steps (paragraph 31).” Ans. 3. We disagree. Paragraph [00031]
discusses an alternate embodiment having the locking screws 6, 7 combined
into a single screw and does not require the embodiment including
individual screws 6, 7 to be arranged in a manner precluding simultaneous
activation of the screws 6, 7.
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Based on the proximity of the locking screws 6, 7 to one another on
the handle in Figures 1-3, one of ordinary skill in the art would have
appreciated that both locking screws 6, 7 could be activated simultaneously
while holding the handle with the same hand. For example, and as explained
by Appellants, “the operator fixes the handle between the thenar and three
fingers and uses the thumb for activating adjustment screw 7 and the
remaining forefinger for activating adjustment screw 6.” App. Br. 6. Thus,
Appellants’ Specification and Figures 1-3 are sufficient to provide written
descriptive support and enablement for two adjustable screws positioned
close enough to one another on a handle to allow the screws to be
simultaneously activated with the same hand that is holding the handle.
As such, we disagree with the Examiner’s determination that the
original disclosure fails to provide written description and enablement for
the subject matter of claims 1 and 3-13 including the two locking screws
“positioned close to one another on the handle to simultaneously grip the
handle and activate one or both adjustment screws with one hand only.”
Accordingly, we cannot sustain the rejections of claims 1 and 3-13 under 35
U.S.C. §112, first paragraph, as failing to comply with the written
description requirement and as failing to comply with the enablement
requirement.

Anticipation – Claims 1, 3-7, 9-11, and 13
The Examiner finds that Yang discloses “ a spreadable medical
instrument including . . . an adjustment mechanism 54 and/or 65” having “an
adjustment screw 65/43/41 for parallel displacement of at least one of the
spatula blades as well as an adjusting screw 54/63/61 to displace at least one
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of the blades by tipping.” Ans. 4. The Examiner determined that the
adjustment screws are “positioned close to one another on the handle [so]
that the user is capable of simultaneously gripping the handle 4 and
activat[ing] one of the two adjustment screws 65 and 54 with one hand
only.” Ans. 4-5.
Appellants argue that “because the distance between both adjusting
screws of Yang is so large, a user would not be capable of holding the
instrument with one hand and activating these screws simultaneously with
the same hand.” Reply Br. 3-4. Appellants further argue that “it is not
possible to ‘activate’ the adjustment mechanism of Yang with one hand,
such that at least one of the spatula blades is displaced into a working
position as required by claim 1” (Reply Br. 4) and “even if it were possible
to activate the adjustment mechanism with one hand . . . it is not possible to
fix the adjustment mechanism via the respective screws in the required
working position by using one hand only as required by the Claims” (App.
Br. 8). Appellants explain that “[m]erely activating one or both of the
adjustment screws 43, 53 alone does not cause displacement of at least one
of the spatula blades into a working position as required by claim 1.” App.
Br. 9.
Appellants’ argument directed to the distance between the adjusting
screws in Yang does not apprise us of Examiner error because claim 1 only
requires one adjusting screw to be activated while a user is holding the
handle. Claim 1 does not limit the distance between the adjustment screws.
Similarly, Appellants’ argument directed to fixing the adjustment
mechanism with one hand does not apprise us of Examiner error because
this feature is not recited in the claim. Claim 1 only requires that activation
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of one of the adjustment screws causes displacement of a spatula blade into a
working position. In response to Appellants’ assertion that “the adjustment
screws 43, 53 [in Yang] alone does not cause displacement of the spatula
blades,” (Id.) we note that claim 1 recites that “activation of one or both of
the adjustment screws causes displacement of at least one of the spatula
blades into a working position” and does not require that the adjustment
screws alone cause the displacement.
The limitation “simultaneously grip . . . and activate . . . with one hand
only” in claim 1 is a functional limitation only requiring that the prior art be
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). Appellants’ argument that Yang does not
disclose a device that is inherently capable of having a user hold the device
and activate an adjusting screw with the same hand is not persuasive without
some evidence or explanation as to why the Examiner’s determination is
erroneous. While Appellants explain how the device of Yang can be
operated and assert that “it would not be possible to ‘activate’ the
arrangement of the screws of Yang so as to displace of at least one of the
spatula blades into a working position with one hand,” there is no further
discussion regarding why it would not be possible to activate the adjustment
screw and hold the handle with the same hand. Reply Br. 4. Where, as here,
the Patent Office has reason to believe that a functional limitation is an
inherent characteristic of the prior art, Appellants have the burden to show
that the prior art does not possess that characteristic. See In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210,
212-13 (CCPA 1971). For the reasons set forth above, Appellants have not
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shown that the device of Yang is incapable of being activated in the manner
recited in claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1. Claims
3-7, 9-11, and 13 depend from claim 1 and are not argued separately.
Therefore, we also sustain the rejection of claims 3-7, 9-11, and 13 for the
reasons set forth above.

Obviousness – Claim 8
Appellants’ sole argument regarding the rejection of claim 8 is that
Stihl fails to remedy perceived deficiencies in the disclosure of Yang. As
discussed earlier, the Examiner correctly found that there were no such
deficiencies. Therefore, Appellants’ arguments do not apprise us of
Examiner error and we sustain the rejection of claim 8.

Obviousness – Claim 12
Appellants’ sole argument regarding the rejection of claim 12 is that
Mayes fails to remedy perceived deficiencies in the disclosure of Yang. As
discussed earlier, the Examiner correctly found that there were no such
deficiencies. Therefore, Appellants’ arguments do not apprise us of
Examiner error and we sustain the rejection of claim 12.

DECISION
We REVERSE the Examiner’s decision to reject claims 1 and 3-13
under 35 U.S.C. §112, first paragraph, as failing to comply with the written
description requirement.
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We REVERSE the Examiner’s decision to reject claims 1 and 3-13
under 35 U.S.C. §112, first paragraph, as failing to comply with the
enablement requirement.
We AFFIRM the Examiner’s decision to reject claims 1, 3-7, 9-11,
and 13 under 35 U.S.C. § 102(b).
We AFFIRM the Examiner’s decision to reject claim 8 under 35
U.S.C. § 103(a).
We AFFIRM the Examiner’s decision to reject claim 12 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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