Ex Parte Ghannoum et al

Patent Trial and Appeal Board

Sep 28, 2012

10641947 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ZIAD R. GHANNOUM, SEAN C. MADDEN,
GLENN SUSSMAN and JOHN R. UNDERWOOD
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Appeal 2010-009333
Application 10/641,947
Technology Center 3700
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Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge REIMERS.

Opinion Concurring filed by Administrative Patent Judge McCARTHY.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Ziad Ghannoum et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision to reject claims 1, 3, 5 and 6 under 35 U.S.C. § 112,
second paragraph, as being indefinite.1,2,3 Claim 2, 4 and 7-9 have been
cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention relates to a tip assembly for use in cataract
surgery. Spec. 1, ll. 3-4 and the sole figure.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A tip assembly, comprising:
a) a generally hollow outer cap;
b) an inner connector that is received and retained
in the outer cap so as to allow rotational movement of the
inner connector within the outer cap, the inner connector
having an alignment tab, a generally planar exterior

1 Dependent claims 3, 5 and 6 do not appear in the stated grounds of
rejection. Ans. 3. We consider the omission of claims 3, 5 and 6 from the
stated grounds of rejection to be a typographical error on the part of the
Examiner.
2 The Examiner has withdrawn the rejection of claims 1, 3, 5 and 6 under 35
U.S.C. § 102(b) as being anticipated by Gordon (US 5,669,923, issued Sep.
23, 1997). Ans. 3.
3 The Examiner also presents objections to the drawing under 37 C.F.R.
§ 1.83(a). Ans. 4-5. An objection is a petitionable matter and not an
appealable matter and is not within the jurisdiction of the Board. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 1002.02(c)(4) and
1201. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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surface, a first bore, and a second bore, the first bore in
fluid communication with the second bore, the first and
second bores both terminating on the a generally planar
exterior surface of a proximal end of the inner connector;
c) an outer tube received in the first bore in the
inner connector and sealed within the inner connector by
a plug located at the proximal end of the outer tube, the
outer tube terminating at the connector, an interior of the
outer tube in fluid communication with the second bore;
and
d) an inner tube telescopically received in the outer
tube, the inner tube sealed against the plug.

OPINION
The Examiner takes the position that “the first bore in fluid
communication with the second bore,” as required by independent claim 1
(see Br., Claims Appendix), “is not described in the specification and
drawings as to allow and disclose the operation and design of the device.”
Ans. 3-4. See also, Br. 11.
It is well established that the test for definiteness under 35 U.S.C.
§ 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
In this case, Appellants’ Specification specifically discloses, “[t]hird
bore 36 in connector 14 fluidly communicates with second bore 28.” Spec.
3, ll. 7-8. In addition, we agree with Appellants that “[s]ince only two bores
are recited in the pending claims, they are properly referred to as ‘first bore’
[28] and ‘second bore’ [36] [in independent claim 1].” Br. 12. See also, Br.
7. As such, since Appellants’ Specification discloses that bore 36 (i.e., the
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second bore) fluidly communicates with bore 28 (i.e., the first bore), we
conclude that the claim language, when read in light of the Specification, is
not indefinite.
Accordingly, for the foregoing reasons, the rejection of claims 1, 3, 5
and 6 under 35 U.S.C. § 112, second paragraph, as being indefinite cannot
be sustained.

DECISION
The decision of the Examiner is reversed as to claims 1, 3, 5 and 6.

REVERSED

Appeal 2010-009333
Application 10/641,947

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McCARTHY, Administrative Patent Judge, concurring.
The Examiner’s express reason for rejecting appealed claim 1 under
35 U.S.C. § 112, second paragraph, is that the “‘first bore in fluid
communication with the second bore’ is not described in the [S]pecification
and drawings as to allow and disclose the operation and design of the device.
The embodiments described in the [S]pecification and drawings do not show
a device with the ‘first bore in fluid communication with the second bore.’”
(Ans. 3-4). When challenged in the Appeal Brief (see App. Br. 12), the
Examiner responded that the “Examiner is unsure how bore 36 fluidly
communicates with bore 28. Although the [S]pecification states 36 bore
‘fluidly communicates’ with 28 bore, [E]xaminer is unable to tell from the
figures and [sic, an?] enablement of the device in the [S]pecification.” (Ans.
5).
A claim is subject to rejection under the second paragraph of § 112
only if the claim fails to “particularly [point] out and distinctly [claim] the
subject matter which the [Appellants regard] as [the] invention.” The
second paragraph of § 112 does not require the claim to describe the
invention. Orthokinetics, Inc. v. Safety Travel Chair, Inc., 806 F.2d 1565,
1575 (Fed. Cir. 1986). Description is the role of the Specification, not the
claims.
In the present appeal, the Examiner does not conclude that one of
ordinary skill in the art would have any difficulty understanding the term
“the first bore in fluid communication with the second bore.” Even
assuming for purposes of this concurring opinion only that there may be
some deficiency in the disclosure of the embodiment described in the
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Specification, that deficiency would not imply that claim 1 is indefinite. I
join my colleagues in not sustaining the rejection of claim 1.

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