Ex parte HILDWEIN et al.

Board of Patent Appeals and Interferences

May 15, 1998

08179419 (B.P.A.I. May. 15, 1998)

Application for patent filed January 10, 1994. According to1
applicants, this application is a division of Application 07/906,774,
filed June 30, 1992.
1
Paper No. 14
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROGER L. HILDWEIN,
ROBERT C. USCHOLD, J.D. STALEY, JR.,
PAUL RIESTENBERG, LAURA GALLAGHER
AND REX NAGAO
______________
Appeal No. 95-3582
Application 08/179,4191
_______________
ON BRIEF
_______________
Before MEISTER, McQUADE and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 21-
34, the only claims remaining in the application.
Appeal No. 95-3582
Application 08/179,419
2
We REVERSE.
The appellants’ invention pertains to a surgical port for
insertion through a body wall. Independent claim 21 is
further illustrative of the appealed subject matter and a copy
thereof may be found in the appendix to the appellants’ brief.
The references relied on by the examiner are:
Wismer 1,074,077 Sept. 23, 1913
Honkanen et al. (Honkanen) 4,655,752 Apr. 7, 1987
Raiken 5,073,169 Dec. 17, 1991
Horie et al. (Horie) 5,281,204 Jan. 25, 1994
Claims 21 and 26 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Wismer.
Claims 22-25, 27-29 and 31-34 stand rejected under 35
U.S.C. § 103 as being unpatentable over Wismer.
Claims 21-25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Horie in view of Honkanen.
Claims 26-34 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Horie in view of Honkanen and Raiken.
The examiner’s rejections are explained on pages 3-5 of
the answer. The arguments of the appellants and examiner in
Appeal No. 95-3582
Application 08/179,419
3
support of their respective positions may be found on pages 3-
5 of the brief and pages 5 and 6 of the answer.
Considering first the rejections of claims 21 and 26
under
35 U.S.C. § 102(b) as being anticipated by Wismer and claims
22-25, 27-29 and 31-34 under 35 U.S.C. § 103 as being
unpatent-able over Wismer, both of these rejections are based
on the examiner’s view that
the portions of spurs 6 of Wismer which extend
vertically as seen in fig. 2 and which extend
between plate 3 and the portions of spurs 6 which
are bent over plate 2 form a “hollow tubular body”
as claimed with slits or gaps running vertically
along the tubular body between the spurs 6. The
claims do not require the tubular body to be free of
any slits or gaps. [Answer, page 5.]
We will not support the examiner’s position. While it is
true that the claims in a patent application are to be given
their broadest reasonable interpretation consistent with
specification (In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989)) and limitations from a pending
Appeal No. 95-3582
Application 08/179,419
4
application's specification will not be read into the claims
during prosecution of a patent application (Sjolund v.
Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed.
Cir. 1988), it is also well settled that terms in a claim
should be construed in a manner consistent with the
specification and construed as those skilled in the art would
construe them (see In re Bond, 910 F.2d 831, 833, 15 USPQ2d
1566, 1567 (Fed. Cir. 1990), Specialty Composites v. Cabot
Corp., 845 F.2d 981, 986, 6 USPQ2d 1601, 1604 (Fed. Cir. 1988)
and In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983)). Here, the examiner has expanded the meaning to
be given to the claimed “hollow tubular body” beyond all
reason. The alleged hollow tubular body in Wismer is in
reality four spike-like fingers or spurs 6 that project from a
washer-like plate 3, the ends of which have been bent over a
second washer-like plate 2 so as to retain the plates on
opposite sides of a button hole. We can think of no
circumstances under which the artisan, consistent with the
appellants’ specification, would construe these fingers or
spurs to correspond to the claimed hollow tubular body. This
Appeal No. 95-3582
Application 08/179,419
5
being the case, we will not sustain either the rejection of
(1) claims 21 and 26 under
35 U.S.C. § 102(b) or (2) claims 22-25, 27-29 and 31-34 under
35 U.S.C. § 103 based on the reference to Wismer.
Turning to the rejections under 35 U.S.C. § 103 of claims
21-25 as being unpatentable over Horie in view of Honkanen and
claims 26-34 as being unpatentable over Horie in view of
Honkanen and Raiken, each of these rejections is bottomed on
the examiner’s view that to include
the Honkanen et al. annular flange 35 on the Horie
et al. tubular body (T or 1) in order to hold the
tubular body more securely in place as described in
col 4, lines 26-31 of Honkanen et al. would have
been obvious. The Honkanen et al. annular flange 35
is broadly considered to be disc-shaped. Assuming
arguendo that it is not disc-shaped, it would have
been obvious to simply make the flange (which is
described as a rib or ridge) thinner in order to be
better secured in the body. [Answer, pages 3 and 4.]
We cannot agree with the examiner that the undulating
thickened portions 35 on the wall of Honkanen’s cannula (which
are stated in line 36 of column 3 to be circumferential ribs
or ridges) can fairly be construed to a “disc-shaped annular
Appeal No. 95-3582
Application 08/179,419
The American Heritage Dictionary, Second College Edition, 1982,2
Houghton Mifflin Company, Boston, MA defines a “disk” or “disc” as being --
A thin, flat circular plate --.
It is well settled that an “adapted to . . .” clause sets forth a3
function which the article or apparatus must be structurally capable of
performing (see, e.g., In re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52
(CCPA 1976)) and such a functional statement must be given full weight and may
not be disregarded in evaluating the patentability of the claims (see, e.g.,
Ex parte Bylund, 217 USPQ 492, 498 (Bd. App. 1981)).
6
flange” as the examiner asserts. Moreover, there is2
absolutely nothing to indicate that these undulating ridges or
ribs (which are depicted in Fig. 2 as being extremely thick
relative to the extent of radial projection) have the
capability of flexing relative to the tubular body in the
manner set forth in the last three lines of independent claims
21 and 26.3
As to the examiner’s contention that it would have been
obvious to make the ribs or ridges of Honkanen disc-shaped “in
order to be better secured in the body,” we must point out
that obviousness under § 103 is a legal conclusion based on
factual evidence (In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988)) and the mere fact that such a
result would occur does not serve as a proper basis for
concluding that such
Appeal No. 95-3582
Application 08/179,419
7
a modification would have been obvious. Instead, it is well
settled that in order to establish a prima facie case of
obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). The examiner, however, has provided no factual
basis whatsoever for concluding that the modification proposed
would have been obvious. See, e.g., In re GPAC Inc, 57 F.3d
1573, 1582,
35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968).
As the examiner apparently recognizes, there is nothing
in Wismer or Raiken (additionally relied on in the rejection
of claims 26-34) which would overcome the deficiencies of
Honkanen.
Appeal No. 95-3582
Application 08/179,419
8
In view of the foregoing, we will not sustain the rejec-
tions
under 35 U.S.C. § 103 of (1) claims 21-25 based on the com-
bined teachings of Horie and Honkanen and (2) claims 26-34
based on the combined teachings of Horie, Honkanen and Raiken.
The examiner’s rejections are all reversed.
REVERSED

JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Appeal No. 95-3582
Application 08/179,419
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Administrative Patent Judge )

Appeal No. 95-3582
Application 08/179,419
10
Audley A. Ciamporcero, Jr.
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