Ex Parte Jacobs et al

Board of Patent Appeals and Interferences

Feb 22, 2011

09816641 (B.P.A.I. Feb. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/816,641 03/22/2001 Daniel Jacobs 01440222PC 6872
30743 7590 02/22/2011
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
WOO, JULIAN W
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
02/22/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL JACOBS, ROBERT JAMES ELSON, and
JUDE V. PAGANELLI
____________________

Appeal 2009-011078
Application 09/816,641
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011078
Application 09/816,641
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 8, 11-13, 16, 21, 24-26, 46-50 and 54-58. We have jurisdiction under 35
U.S.C. § 6(b). We reverse and enter a new ground of rejection.
The claims are directed to a multi-point tissue tension distribution
device, a combined orbital rim repair and suspension variation, and a method
of tissue approximation using the device. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An implantable tissue approximation device
comprising:
a supportive backing having a front side, a back side, and
at least one through-hole formed therethrough; and
at least one attachment point extending from the front
side of said backing in a non-orthogonal manner.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Duncan
Goble
Tschakaloff
Talpade
US 4,548,202
US 5,352,229
US 5,779,706
US 6,110,100
Oct. 22, 1985
Oct. 4, 1994
Jul. 14, 1998
Aug. 29, 2000

REJECTIONS
Claims 1, 2, 13, 16, 21, 24-26, and 54 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Goble. Ans. 4.1
Claims 8, 11, 12, 46, 47 and 49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goble and Duncan. Ans. 6.

1 The Examiner included claim 18 in the Grounds of Rejection, but not in the
discussion of the claims. Ans. 4-5. However, claim 18 was cancelled in the
Response to Office Action entered on October 25, 2004. Thus claim 18 is
not pending before us on appeal.
Appeal 2009-011078
Application 09/816,641
3
Claims 8, 46, 47 and 49 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goble and Tschakaloff. Ans. 7.
Claims 48 and 50 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goble. Ans. 7.
Claims 55-582 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goble and Talpade. Ans. 8.
OPINION
“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. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987) (citations omitted). “[T]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Appellants contend that the Examiner erred by rejecting independent
claim 1 as being anticipated by Goble because it was unreasonable for the
Examiner to read Goble’s spikes 35 that “extend at right angles” from the
plate 31 as the claimed “attachment point extending from the front side of
said backing in a non-orthogonal manner.” App. Br. 6. We agree.
The Examiner contends that “[t]he attachment point 35 extends from
the backing 31 in a non-orthogonal manner, since the sides of the extension

2 The Examiner does not appear to rely on Tschakaloff to support the
rejection of claims 55-58, as was done for claims 8, 46, 47, and 49. See Ans.
8.
Appeal 2009-011078
Application 09/816,641
4
to which attachment point 35 is connected; on the contrary, the angle is
approximately 45°, which would make the ‘at least one attachment point 35
extending from front side backing 31 in a non-orthogonal manner.’” Ans.
10. It is not clear what the Examiner means by “since the sides of the
extension to which attachment point 35 is connected; on the contrary, the
angle is approximately 45°.” Ans. 10. If the Examiner is interpreting Goble’s
corners 32a extending beyond the staple legs as the “extension to which the
attachment point 35 is connected,” the Examiner’s interpretation of the
disclosure of Goble is unreasonable. Corners 32a form part of plate 31, read
as the claimed “backing.” See Ans. 4. The corners 32a do not alter the way
spikes 35 extend from the backing 31 itself. If the Examiner is interpreting
the points of Goble’s spikes 35 as the attachment point, the Examiner’s
interpretation is also unreasonable because those points do not extend from
plate 31. See Reply Br. 4.
One of ordinary skill in the art would have understood claim 1 to
require attachment points, such as Goble’s spikes, to extend from a backing,
such as Goble’s plate, such that if the attachment points were straight they
would not extend along an axis normal to the plane of the backing. See, e.g.,
Spec. Figs. 2C, 4B. One of ordinary skill in the art would also have
understood this term to include canted tines. See, e.g., Spec. Figs. 2A, 2D,
2E. Since Goble’s spikes do not meet either of these requirements, the
rejection of claims 1, 2, 13, 16, 21, 24-26, and 54 as being anticipated by
Goble cannot be sustained.
The Examiner has not articulated any reasoning with a rational
underpinning to account for the deficiencies of Goble regarding why the
claimed subject matter would have been obvious. Accordingly, the rejections
Appeal 2009-011078
Application 09/816,641
5
of claims 8, 11, 12, 46-50 and 55-58 also cannot be sustained. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner correctly recognizes that claim 16 depends from claim
1 and that dependent claims must further limit the claims from which they
depend. The Examiner also correctly recognizes that Markush language is
employed in claim 16. A structure may be expressed as one of several
alternatives if those alternatives present no uncertainty or ambiguity with
respect to the question of scope or clarity of the claims. 35 U.S.C. §112, 2nd
paragraph; see also In re Harnisch, 631 F.2d 716, 724 (CCPA 1980). The
mere fact that components are claimed as members of a Markush group
cannot be relied upon to establish the equivalency of these components. In re
Ruff, 256 F.2d 590, 592 (CCPA 1958).
One of ordinary skill in the art would understand claim 16 to mean
that the at least one attachment point set forth in claim 1 can include a shape
and direction selected from any one of the delineated shapes and directions,
including “erect tines.” The Specification uses the term “erect” to describe
only the tines 208 and 504 depicted in Figures 2B and 5B. See Spec. 22:1-2,
24:10, 25:2. Thus, when read in light of the Specification, one of ordinary
skill in the art would understand the term “erect” in claim 16 to mean tines
extending orthogonally from the backing. As discussed above, one of
ordinary skill in the art would also understand claim 1 to exclude a structure
of the type described as “erect” and depicted in Figures 2B and 5B.
Appellants apparently recognize that while the other recited configurations
may be considered within the scope of the term “non-orthogonal,” as recited
in parent claim 1, “erect tines” cannot possibly be considered to extend in a
“non-orthogonal” direction. See Reply Br. 3. Since claim 16 recites a
limitation that is in conflict with a limitation in its parent claim 1, one of
Appeal 2009-011078
Application 09/816,641
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ordinary skill in the art would not understand what is claimed when the
claim is read in light of the Specification. Pursuant to our authority under 37
C.F.R. § 41.50(b), we therefore enter a new ground of rejection of claim 16
under 35 U.S.C. § 112, second paragraph as being indefinite. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted).
DECISION
For the above reasons, the Examiner’s rejections of claims 1, 2, 8, 11-
13, 16, 21, 24-26, 46-50 and 54-58 are reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 16 under 35 U.S.C. § 112, second paragraph as
being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Appeal 2009-011078
Application 09/816,641
7

REVERSED; 37 C.F.R. § 41.50(b)

nlk

WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON VA 20190