Ex Parte Kissel et al

Patent Trial and Appeal Board

Feb 11, 2013

10837281 (P.T.A.B. Feb. 11, 2013)

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.
10/837,281 04/30/2004 Christian Kissel K 218 2349
7590 02/12/2013
KLAUS J. BACH & ASSOCIATES
4407 TWIN OAKS DRIVE
MURRYSVILLE, PA 15668
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
02/12/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHRISTIAN KISSEL and HARALD FISCHER
__________

Appeal 2011-006292
Application 10/837,281
Technology Center 3700
__________

Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
clip. The Examiner has rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

App
App

plate
centr
side
tong
oppo
of th
prese
appe
eal 2011-0
lication 10
Appellan
let (1) of a
al H-shap
frame mem
ues (3) sur
site and fr
e Specific
Figure 1
nt inventi
Claims 1
al, is repre
1. A me
bio-com
central
structure
member
frame st
06292
/837,281
ST
ts’ invent
n elastic b
ed cut so a
bers (5'')
rounded b
ame memb
ation is rep
“shows a
on (Id. at 3
-8 are on
sentative
dical clip
patible m
H-shaped
(5) havi
s (5') with
ructure (5
ATEMEN
ion relates
io-compat
s to from i
and end fr
y the fram
ers (5') to
roduced b
platelet w
, l. 12).
appeal. C
and reads a
comprisin
aterial, sa
cut so as
ng side fr
flat plate-
) and exte
2
T OF TH
to a “a me
ible mater
n the plate
ame memb
e structure
ward each
elow.
ith an H-sh
laim 1, the
s follows
g a single
id platelet
to form
ame mem
like tongu
nding from
E CASE
dical clip
ial which
let a fram
ers (5') w
(5) and ex
other” (A
aped cut-o
only inde
(emphasis
platelet (
being pr
in the pl
bers 5" a
es (3) sur
the oppo
comprisin
is provided
e structure
ith flat pla
tending f
pp. Br. 2)

ut” accor
pendent cl
added):
1) of an el
ovided w
atelet a f
nd end f
rounded b
site end f
g a single
with a
(5) havin
te-like
rom the
. Figure 1
ding to the
aim on
astic
ith a
rame
rame
y the
rame

g

Appeal 2011-006292
Application 10/837,281

3
members (5') toward each other and having adjacent front edges
(4) said side frame members (5") being curved in oriented
generally along straight parallel lines thereby forming grasping
elements, and the area between the opposite end frame
members (5') about an axis extending parallel to the front edges
(4) of the tongues (3) and elastically biasing said front edges (4)
of said plate-like tongues toward each other.

The rejections before us for review are the Examiner’s rejection of
claims 1-4 under 35 U.S.C. 102(b) as being anticipated by Durgin, 1 as well
as the rejection of claims 5-8 under 35 U.S.C. 103(a) as being obvious over
Durgin in view of Durgin, Nash,2 and Hogendijk3 or Hart.4
I.
Issue
The Examiner finds that Durgin discloses a clip having each element
of claim 1, including an H-shaped cutout (Ans. 3-4; citing Fig. 18 of
Durgin).
Appellants contend that the “introduction of the H in Fig. 18 of
Durgin et al. by the Examiner is clearly a feature introduced by hindsight”
(App. Br. 5).
The issue presented is: Does the evidence of record support the
Examiner’s findings that Durgin anticipates claim 1?

1 Durgin et al., US 6,428,548, issued Aug. 6, 2002.
2 Nash et al., US 5,242,456, issued Sept. 7, 1993.
3 Hogendijk et al., US 6,051,007, issued Apr. 18, 2000.
4 Hart et al., US 6,579,304, issued June 17, 2003.
App
App

prep
surfa
docu
limit
cann
antic
545
plain
F.2d
eal 2011-0
lication 10
The follo
onderance
FF1. Fi
Figure 1
ces forme
“[U]nle
ment not o
ations arra
ot be said
ipate unde
F.3d 1359
The wor
meaning
319, 321
06292
/837,281
wing find
of the evi
gure 18 of
8 of Durgi
d as straig
ss a refere
nly all of
nged or co
to prove p
r 35 U.S.C
, 1371 (Fe
ds of the c
is inconsis
(Fed. Cir.
Find
ings of fac
dence of re
Durgin is
n shows a
ht member
Princ
nce disclos
the limitat
mbined in
rior invent
. § 102. ”
d. Cir. 200
laim must
tent with t
1989). We
4
ings of Fac
t (“FF”) a
cord.
reproduce
“surgical
s” (Durgin
iples of La
es within
ions claim
the same
ion of the
Net Mone
8).
be given t
he specific
determin
t
re support
d below.
clip with t
col. 4, ll.
w
the four co
ed but als
way as re
thing claim
yIN, Inc.
heir plain
ation. Se
e the scop
ed by a

he tissue g
20-22).
rners of th
o all of the
cited in the
ed and, t
v. Verisign
meaning u
e In re Zle
e of the cla
rasping
e

claim, it
hus, canno
, Inc.,
nless the
tz, 893
ims not

t
Appeal 2011-006292
Application 10/837,281

5
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969). In this regard, “claims are not to be read in a
vacuum, and limitations therein are to be interpreted in light of the
specification in giving them their ‘broadest reasonable interpretation.”’ In re
Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (quoting In re Okuzawa, 537
F.2d 545, 548 (CCPA 1976) (emphasis by Marosi). This is the standard for
claim interpretation in both original examination and re-examination. In re
Yamamoto, 740 F.2d 1569, 1571-73 (Fed. Cir. 1984).
Analysis
We agree with Appellants. As explained by Appellants, Figure 18 of
Durgin shows a surgical clip where the cuts located in the middle of the clip
“represent tooth structures of an engagement clip” and that “[i]t may rather
be said that the teeth of the clip engagement area of Durgin et al. are formed
by a wave-shaped cut which produces the teeth” (App. Br. 5). The
Examiner’s finding that a person of ordinary skill in the art would have
interpreted the teeth formation of the Durgin clip to represent an “H” is not
supported by a preponderance of the evidence. We therefore do not sustain
the Examiner’s anticipation rejection of independent claim 1, nor claims 2-4,
which depend on claim 1 and likewise require the “central H-shaped cut”
element.
Appeal 2011-006292
Application 10/837,281

6
Conclusion of Law
Because Durgin fails to teach all elements of the claim, we reverse the
rejection of claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Durgin.
II.
The Examiner also rejects dependent claims 5-8 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Durgin, Nash, and
Hogendijk or Hart (Office action mailed May 24, 2010, at 4).5
The obviousness rejection relies upon the underlying reasoning in the
anticipation rejection based on Durgin. Having reversed the anticipation
rejection above, we reverse the obviousness rejection that relies on Durgin
for the same teaching of the “central H-shaped cut” element. None of the
additional references cited for the obviousness rejection cure the deficiency
of Durgin in this regard.
SUMMARY
We reverse the rejection of claims 1-4 under 35 U.S.C. 102(b) as
being anticipated by Durgin. We also reverse the rejection of claims 5-8
under 35 U.S.C. § 103(a) as obvious over the combination of Durgin, Nash,
and Hogendijk or Hart.

5 The Examiner stated in the Answer that “[e]very ground of rejection set
forth in the Office action from which the appeal is taken (as modified by any
advisory actions) is being maintained by the examiner except for the grounds
of rejection (if any) listed under the subheading ‘WITHDRAWN
REJECTIONS’” (Ans. 3). The Answer does not include a section with the
subheading “WITHDRAWN REJECTIONS.”
Appeal 2011-006292
Application 10/837,281

7

REVERSED

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