Ex parte INBAE YOON

Board of Patent Appeals and Interferences

Dec 11, 1997

08177616 (B.P.A.I. Dec. 11, 1997)

Application for patent filed January 4, 1994. 1
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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte INBAE YOON
____________
Appeal No. 96-2631
Application No. 08/177,6161
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, 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 through 27, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 96-2631
Application No. 08/177,616
2
BACKGROUND
The appellant's invention relates to a safety penetrating
instrument. Claims 1, 6, 14 and 22 are representative of the
subject matter on appeal and a copy of those claims is attached
to this decision.
The prior art reference of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 is:
Allen et al. 5,312,354 May 17, 1994
(Allen) (filed Nov. 4, 1991)
Claims 1 through 27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Allen.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the examiner's first office action (Paper No.
5, mailed November 1, 1994), the final rejection (Paper No. 7,
mailed April 4, 1995) and the examiner's answer (Paper No. 12,
mailed November 17, 1995) for the examiner's complete reasoning
in support of the rejection, and to the appellant's brief (Paper
No. 11, filed August 29, 1995) and reply brief (Paper No. 13,
Appeal No. 96-2631
Application No. 08/177,616
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filed December 14, 1995) for the appellant's arguments
thereagainst.
OPINION
Initially we note that on pages 7-8 of the brief the
appellant seeks our review of the decision by the examiner (Paper
No. 9) refusing entry of the amendment (Paper No. 8) after final
filed May 25, 1995. However, the refusal by the examiner to
enter appellant's amendment after final rejection relates to a
petitionable matter and not to an appealable matter. See In re
Schneider, 481 F.2d 1350, 1356-57, 179 USPQ 46, 51 (CCPA 1973)
and In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA
1967). See also Manual of Patent Examining Procedure (MPEP)
§ 1002(c), item 4(b) and § 1201. Thus, the relief sought by the
appellant would have been properly presented by a petition to the
Commissioner under 37 CFR §§ 1.127 and 1.181 instead of by appeal
to this Board. Accordingly, we will not further consider this
issue.
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the respective
Appeal No. 96-2631
Application No. 08/177,616
4
positions articulated by the appellant and the examiner. It is
our conclusion that Allen is insufficient to establish
obviousness with respect to claims 1 through 27. Accordingly, we
will not sustain the examiner's rejection of claims 1 through 27
under 35 U.S.C. § 103. Our reasoning for this determination
follows.
Before addressing the examiner's rejection based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. §§ 102 and 103
begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the prior
art. Claim interpretation must begin with the language of the
claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.
Cir. 1988). Furthermore, it is axiomatic that, in proceedings
before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light of
the specification as it would be interpreted by one of ordinary
skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
Appeal No. 96-2631
Application No. 08/177,616
5
385, 388 (Fed. Cir. 1983). Accordingly, we will initially direct
our attention to claims 1, 6, 14 and 22 to derive an
understanding of the scope and content thereof.
Claim 1 includes the limitation that the predetermined
proximal distance "corresponds" to the thickness of the
anatomical cavity wall. Claim 6 includes the limitation that the
predetermined distance is "corresponding" to the thickness of the
anatomical cavity wall. Claim 14 includes the limitation that
the trigger member is movable proximally a proximal distance
"corresponding" to the thickness of the anatomical cavity wall.
The American Hertigage Dictionary, Second College Edition
(1982), defines "corresponding" as "1. Agreeing or conforming, as
in degree or kind, consistent. 2. Analogous or equivalent" and
defines "correspond" as "1. To be in agreement, harmony, or
conformity; . . . 2. To be similar, parallel, equivalent, or
equal in character, quantity, origin, structure, or function."
Our review of the specification (e.g., pp. 5, 7, 16-17, 18),
as originally filed, and the dictionary definitions lead us to
conclude that one of ordinary skill in the art would understand
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Application No. 08/177,616
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the terminology "corresponds" or "corresponding" as recited in
claim 1, 6 or 14 to mean "equal to or slightly greater than" such
that the predetermined distance must be equal to or slightly
greater than the thickness of the anatomical cavity wall.
Claim 1 includes the limitation that the protection means is
triggered to place the safety penetrating instrument in the
protected state "upon" the trigger means moving proximally a
predetermined distance. Claim 6 includes the limitation that
"upon" introduction of the cannula distal end in the anatomical
cavity the trigger member triggers the release of the locking
means permitting the retracting means to move the penetrating
member from the extended position to the retracted position.
Claim 14 includes the limitation that the safety penetrating
instrument is triggered to move to the protective state "when"
the trigger member has moved the proximal distance. Claim 22
includes the limitation that the safety penetrating instrument is
triggered to move the safety penetrating instrument to a
protective state "as soon as" a trigger member of the safety
penetrating instrument has moved proximally a distance
Appeal No. 96-2631
Application No. 08/177,616
The American Hertigage Dictionary, Second College Edition2
(1982), provides that one definition of "on" is "Used to
indicate: Occurrence at a given time."
7
corresponding to a desired predetermined depth of penetration by
the safety penetrating instrument into the tissue.
The American Hertigage Dictionary, Second College Edition
(1982), defines "upon" as "On" and defines "when" as "1. At the2
time that; 2. As soon as."
Our review of the specification (e.g., pp. 4, 5, 6, 17-18,
26-27, 32-33), as originally filed, and the dictionary
definitions lead us to conclude that one of ordinary skill in the
art would understand the terminology "upon," "when" and "as soon
as" as recited in claim 1, 6, 14 or 22 to mean "at essentially
the same time."
With regard to the question of obviousness, we find no
teaching in Allen that would have suggested to one of ordinary
skill in the art at the time of the appellant's invention that
Allen's disclosed safety trocar instrument be modified in such a
manner as to meet the limitations of independent claims 1, 6, 14
and 22. In that regard, we see no teaching in Allen that would
Appeal No. 96-2631
Application No. 08/177,616
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have suggested any of the following limitations: (1) "trigger
means proximally movable during penetration of the anatomical
cavity wall for triggering said protection means to place said
safety penetrating instrument in said protected state upon said
trigger means moving proximally a predetermined distance whereby,
when said predetermined proximal distance corresponds to the
thickness of the anatomical cavity wall, said safety penetrating
instrument will be placed is said protected state when said
portal sleeve [sic, cannula] distal end enters the anatomical
cavity" as recited in claim 1, (2) "a trigger member movable a
predetermined proximal distance during penetration of the
anatomical cavity wall for triggering release of said locking
means to permit said retracting means to move said penetrating
member from said extended position to said retracted position,
said predetermined distance corresponding to the thickness of the
anatomical cavity wall to allow said penetrating member to be
moved to said retracted position upon introduction of said
cannula distal end in the anatomical cavity" as recited in claim
6, (3) "a trigger member movable proximally a proximal distance
corresponding to the thickness of the anatomical cavity wall; and
triggering the safety penetrating instrument to move to the
protective state when the trigger member has moved the proximal
Appeal No. 96-2631
Application No. 08/177,616
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distance" as recited in claim 14, and (4) "triggering the safety
penetrating instrument to move the safety penetrating instrument
to a protective state where the penetrating member is protected
as soon as a trigger member of the safety penetrating instrument
has moved proximally a distance corresponding to a desired
predetermined depth of penetration by the safety penetrating
instrument into the tissue" as recited in claim 22. We agree
with the appellant's argument that while the trigger sleeve 20 of
Allen is movable a proximal distance from the position shown in
Figure 3-C to the position shown in Figure 3-D, such proximal
distance does not correspond to the thickness of the anatomical
cavity wall as recited in claims 1, 6 and 14. We also agree with
the appellant's argument that the retraction of Allen's
penetrating member 24 does not occur when/upon/as soon as the
trigger sleeve 20 of Allen is moved the proximal distance from
the position shown in Figure 3-C to the position shown in Figure
3-D as recited in claims 1, 6, 14 and 22. We therefore conclude
that claims 1, 6, 14 and 22 would not have been obvious over
Allen.
Accordingly, we cannot sustain the examiner's rejection of
appealed claims 1, 6, 14 and 22, or claims 2 through 5, 7 through
Appeal No. 96-2631
Application No. 08/177,616
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13, 15 through 21 and 23 through 27 which depend therefrom, under
35 U.S.C. § 103 as being unpatentable over Allen.
Appeal No. 96-2631
Application No. 08/177,616
11
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 through 27 under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-2631
Application No. 08/177,616
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EPSTEIN, EDELL & RETZER
1901 RESEARCH BLVD., STE. 220
ROCKVILLE, MD 20850-3164
Appeal No. 96-2631
Application No. 08/177,616
1
APPENDIX
1. A safety penetrating instrument for penetrating an
anatomical cavity wall to gain access to an anatomical cavity
comprising
a cannula having a distal end for introduction in the
anatomical cavity, a proximal end for being disposed externally
of the anatomical cavity and a lumen between said distal and
proximal ends of said cannula;
a penetrating member disposed in said lumen of said cannula
and having a distal end for penetrating the anatomical cavity
wall;
protection means for placing said safety penetrating
instrument in a protected state where said distal end of said
penetrating member is in a protected, non-exposed position; and
trigger means proximally movable during penetration of the
anatomical cavity wall for triggering said protection means to
place said safety penetrating instrument in said protected state
upon said trigger means moving proximally a predetermined
distance whereby, when said predetermined proximal distance
corresponds to the thickness of the anatomical cavity wall, said
safety penetrating instrument will be placed is said protected
state when said portal sleeve [sic, cannula] distal end enters
the anatomical cavity.
Appeal No. 96-2631
Application No. 08/177,616
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6. A safety penetrating instrument for penetrating an
anatomical cavity wall to gain access to an anatomical cavity
comprising
a cannula having a distal end for introduction in the
anatomical cavity, a proximal end and a lumen between said distal
and proximal ends of said cannula;
a penetrating member disposed in said lumen of said cannula
and having a distal end for penetrating the anatomical cavity
wall;
retracting means for moving said penetrating member
proximally from an extended position where said penetrating
member distal end is disposed distally of said cannula distal end
to a retracted position where said penetrating member distal end
is disposed within said cannula distal end;
locking means for locking said penetrating member in said
extended position; and
a trigger member movable a predetermined proximal distance
during penetration of the anatomical cavity wall for triggering
release of said locking means to permit said retracting means to
move said penetrating member from said extended position to said
retracted position, said predetermined distance corresponding to
the thickness of the anatomical cavity wall to allow said
penetrating member to be moved to said retracted position upon
introduction of said cannula distal end in the anatomical cavity.
Appeal No. 96-2631
Application No. 08/177,616
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14. A method of forming a portal in the wall of an
anatomical cavity comprising the steps of
penetrating the anatomical cavity wall with a penetrating
member of a safety penetrating instrument having a protective
state where the penetrating member is protected and a trigger
member movable proximally a proximal distance corresponding to
the thickness of the anatomical cavity wall; and
triggering the safety penetrating instrument to move to the
protective state when the trigger member has moved the proximal
distance.
22. A method of penetrating tissue comprising the steps of
penetrating the tissue with the distal end of a penetrating
member of a safety penetrating instrument including a cannula
receiving the penetrating member and adapted to remain in the
tissue after the penetrating member is withdrawn from the
cannula; and
triggering the safety penetrating instrument to move the
safety penetrating instrument to a protective state where the
penetrating member is protected as soon as a trigger member of
the safety penetrating instrument has moved proximally a distance
corresponding to a desired predetermined depth of penetration by
the safety penetrating instrument into the tissue.
APPEAL NO. 96-2631 - JUDGE NASE
APPLICATION NO. 08/177,616
APJ NASE
APJ FRANKFORT
APJ STAAB
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 19 Nov 97
1st Rev. 02 Dec 97
FINAL TYPED: