Ex parte Hussman

Board of Patent Appeals and Interferences

May 17, 2000

08423077 (B.P.A.I. May. 17, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KARL L. HUSSMAN
____________
Appeal No. 1999-2030
Application No. 08/423,077
____________
HEARD: May 4, 2000
____________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 22, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 1999-2030 Page 2
Application No. 08/423,077
The appellant's invention relates generally to
preoperative tissue localization apparatus (specification, p.
1). A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
The prior art of record relied upon by the examiner in
rejecting the appealed claims are:
Kolff 5,370,640 Dec. 6,
1994
(filed July 1, 1993)
The prior art as described in pages 1-3 of the appellant's
specification (Admitted Prior Art).
Claims 1 to 3, 5 to 8, 10 to 13 and 15 to 20 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by
Kolff.
Claims 4, 9 and 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kolff.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kolff in view of Admitted Prior Art.
Appeal No. 1999-2030 Page 3
Application No. 08/423,077
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 15,
mailed February 1, 1999) for the examiner's complete reasoning
in support of the rejections, and to the substitute brief
(Paper No. 14, filed September 21, 1998) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
The anticipation rejection
We will not sustain the rejection of claims 1 to 3, 5 to
8, 10 to 13 and 15 to 20 under 35 U.S.C. § 102(e).
Appeal No. 1999-2030 Page 4
Application No. 08/423,077
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Independent claim 1 is directed to an optical
localization fiber comprising, inter alia, an optical fiber
for connecting to a light source; and means for retaining the
tip of the optical fiber proximate to a chosen location within
tissue. Claims 2, 3, 5 to 8, 10 to 13, 15 and 16 depend from
claim 1. Independent claim 17 is directed to an optical fiber
Appeal No. 1999-2030 Page 5
Application No. 08/423,077
localization system comprising, inter alia, a light source; an
optical fiber having a tip; a connector for connecting the
optical fiber to the light source; and means for retaining the
tip of the optical fiber within tissue. Claims 18 to 20
depend from claim 17.
The examiner determined (answer, p. 3) that independent
claims 1 and 17 are "clearly anticipated by Kolff." In
response to the appellant's argument, the examiner states
(answer, p. 4) that Kolff teaches an optical fiber which is
inserted in a catheter which includes a balloon which can be
considered a retaining means.
The appellant argues (substitute brief, pp. 10-16) that
Kolff does not teach the claimed retaining means. We agree.
In that regard, we note that the claimed retaining means is
expressed in means-plus-function format. As explained in In
re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848-49
(Fed. Cir. 1994), the PTO is not exempt from following the
statutory mandate of 35 U.S.C. § 112, paragraph 6, which
reads:
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Application No. 08/423,077
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
Per Donaldson, the "broadest reasonable interpretation" that
an examiner may give means-plus-function language is that
statutorily mandated in paragraph six. Accordingly, the PTO
may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability
determination. Thus, in order to meet a "means-plus-function"
limitation, the prior art must (1) perform the identical
function recited in the means limitation and (2) perform that
function using the structure disclosed in the specification or
an equivalent structure. Cf. Carroll Touch Inc. v. Electro
Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840
(Fed. Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg. Co., 983
F.2d 1039, 1042, 25 USPQ2d 1451, 1454 (Fed. Cir. 1993);
Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382,
1386 (Fed. Cir. 1989).
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Application No. 08/423,077
In this case, the corresponding structure described in
the specification for performing the claimed function of the
"means for retaining" are the various hooks (28, 54, 62, 72,
84, 92, 109, 114, 128) shown in Figures 1-10 and the helix
(162) shown in Figure 14. Clearly, Kolff's balloon 46 on
catheter 40 does not correspond to the structure disclosed by
the appellant.
While there is no litmus test for an "equivalent" that
can be applied with absolute certainty and predictability,
there are several indicia that are sufficient to support a
conclusion that one element is or is not an "equivalent" of a
different element in the context of 35 U.S.C. § 112, sixth
paragraph. Among the indicia that will support a conclusion
that one element is or is not an equivalent of another are:
(A) Whether the prior art element(s) performs the
function specified in the claim in substantially the same
way, and produces substantially the same results as the
corresponding element(s) disclosed in the specification.
Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267,
51 USPQ2d 1225, 1229-30 (Fed. Cir. 1999);
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Application No. 08/423,077
(B) Whether a person of ordinary skill in the art
would have recognized the interchangeability of the
element(s) shown in the prior art for the corresponding
element(s) disclosed in the specification. Al-Site Corp.
v. VSI International Inc., 174 F.3d 1308, 1316, 50 USPQ2d
1161, 1165 (Fed. Cir. 1999); Chiuminatta Concrete
Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303,
1309, 46 USPQ2d 1752, 1757 (Fed. Cir. 1998);
(C) Whether the prior art element(s) is a structural
equivalent of the corresponding element(s) disclosed in
the specification. In re Bond, 910 F.2d 831, 833, 15
USPQ2d 1566, 1568 (Fed. Cir. 1990);
(D) Whether there are insubstantial differences
between the prior art element(s) and the corresponding
element(s) disclosed in the specification. IMS
Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422,
1436, 54 USPQ2d 1129, 1138-39 (Fed. Cir. 2000); Valmont
Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043, 25
USPQ2d 1451, 1455 (Fed. Cir. 1993).
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Application No. 08/423,077
From our review of the record in the application, the
examiner never specifically found that the structure of Kolff
(e.g., the balloon 46) corresponding to the recited means
(i.e., "means for retaining . . .") was equivalent to the
structure disclosed by the appellant (i.e., the various hooks
shown in Figures 1-10 and the helix shown in Figure 14).
Moreover, the examiner never applied any of the above-noted
indicia to support a conclusion that the structure of Kolff
(e.g., the balloon 46) is or is not an "equivalent" of the
structure disclosed by the appellant in the context of 35
U.S.C. § 112, sixth paragraph. Thus, it is our view that the
examiner has not met the burden of establishing a case of
anticipation since the examiner has not established the
structure of Kolff (e.g., the balloon 46) is an "equivalent"
of the structure disclosed by the appellant.
In any event, in applying the above-noted tests for
determining equivalence under the sixth paragraph of 35 U.S.C.
§ 112 to ascertain whether the structure of Kolff (e.g., the
balloon 46) is or is not an "equivalent" of the structure
disclosed by the appellant, we conclude that the structure of
Appeal No. 1999-2030 Page 10
Application No. 08/423,077
Kolff is not an "equivalent" of the structure disclosed by the
appellant. In that regard, it is clear to us that the
structure of Kolff does not perform the function specified in
the claim in substantially the same way, and does not produce
substantially the same result as the corresponding element
disclosed by the appellant. Furthermore, it is our view that
a person of ordinary skill in the art would not have
recognized the interchangeability of the element shown in the
prior art for the corresponding element disclosed in the
appellant's specification. Based upon the above
determinations, we conclude that there are substantial
differences between the structure of Kolff and the structure
disclosed by the appellant. Accordingly, under the above-
noted tests for determining equivalence under the sixth
paragraph of
35 U.S.C. § 112 we conclude that the structure of Kolff is not
equivalent to the structure disclosed by the appellant.
For the reasons stated above, the decision of the
examiner to reject independent claims 1 and 17, and claims 2,
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Application No. 08/423,077
3, 5 to 8, 10 to 13, 15, 16 and 18 to 20 dependent thereon,
under 35 U.S.C. § 102(e) is reversed.
The obviousness rejection of claims 4, 9 and 14
We will not sustain the rejection of claims 4, 9 and 14
under 35 U.S.C. § 103 as being unpatentable over Kolff.
In the answer (p. 3), the examiner determined the added
subject matter recited in dependent claims 4, 9 and 14 would
have been obvious at the time the invention was made to a
person having ordinary skill in the art. However, for the
reasons set forth above with respect to parent claim 1, the
claimed "means for retaining" is not taught by Kolff. Thus,
the examiner has not established that the claimed subject
matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the
art. Accordingly, the decision of the examiner to reject
claims 4, 9 and 14 under 35 U.S.C. § 103 is reversed.
The obviousness rejection of claims 21 and 22
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Application No. 08/423,077
We will not sustain the rejection of claims 21 and 22
under
35 U.S.C. § 103 as being unpatentable over Kolff in view of
Admitted Prior Art.
Independent claim 21 is directed to a method for
preoperative localization of a lesion in tissue within a body
part comprising, inter alia, the steps of (1) providing an
optical fiber having a fiber tip; (2) providing retention
means to retain the optical fiber within the body part; (3)
imaging the lesion within the body part; (4) providing a
medical instrument having an instrument tip; (5) positioning
the instrument tip proximate to the lesion; (6) inserting the
optical fiber and the retention means through the medical
instrument to position the fiber tip proximate to the lesion;
(7) withdrawing the medical instrument allowing the retention
means to retain the fiber tip within the body part; (8)
providing a light source; (9) attaching the optical fiber to
the light source causing a light at the fiber tip; and (10)
viewing the light radiating through the body part from the
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Application No. 08/423,077
fiber tip to determine the approximate location of the lesion.
Claim 22 depends from claim 21.
In the answer (pp. 3-4), the examiner determined that it
would have been obvious to the artisan of ordinary skill to
employ an illuminated instrument such as the fiber optical
stylet of Kolff in the prior art method (i.e., hookwire
localization). The appellant argues (substitute brief, pp.
19-20) that the method set forth in claim 21 is not suggested
by the applied prior art. We agree with the appellant.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the applied
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Application No. 08/423,077
prior art contains none. Instead, it appears to us that the
examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "To
imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim
to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). It is essential that "the decisionmaker forget what
he or she has been taught at trial about the claimed invention
and cast the mind back to the time the invention was made . .
. to occupy the mind of one skilled in the art who is
presented only with the references, and who is normally guided
by the then-accepted wisdom in the art." Id.
For the reasons set forth above, the decision of the
examiner to reject claims 21 and 22 under 35 U.S.C. § 103 is
reversed.
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Application No. 08/423,077
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3, 5 to 8, 10 to 13 and 15 to 20 under 35 U.S.C. §
102(e) is reversed and the decision of the examiner to reject
claims 4, 9, 14, 21 and 22 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-2030 Page 16
Application No. 08/423,077
TIMOTHY T. TYSON
FREILICH HORNBAKER & ROSEN
SUITE 1434
10960 WILSHIRE BOULEVARD
LOS ANGELES, CA 90024
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