Ex parte Machida

Board of Patent Appeals and Interferences

Feb 17, 2000

08598687 (B.P.A.I. Feb. 17, 2000)

Application for patent filed February 8, 1996.1
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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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EIICHI MACHIDA
________________
Appeal No. 1998-2826
Application No. 08/598,6871
________________
ON BRIEF
________________
Before STAAB, MCQUADE and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-2826
Application No. 08/598,687
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This is a decision on an appeal from the examiner's final
rejection of claims 3 through 6, which are all of the claims
pending in this application.
We REVERSE.
Appellant’s invention relates to
an ingrown nail correcting device including an elongated
plate member that is adhesively bonded to the surface of
an ingrown nail. The plate member is made of a material
having a curved shape at room temperature that deforms to
a memorized flat shape when heated above room
temperature. (Brief, pages 2 and 3)
Claim 3, the only independent claim, is illustrative of
the subject matter on appeal and is reproduced below:
3. An ingrown nail correcting device comprising an
elongated plate member [10] adhesively bonded to a
surface of a nail shell [12] with an adhesive agent [13],
said plate member [10] having a curved shape bent to
match a curvature of said nail shell [12] at room
temperature, and said plate member [10] is made of a
material having said curved shape at room temperature and
deforming to a memorized flat shape when heated above
room temperature. (Reference numerals added)
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Appeal No. 1998-2826
Application No. 08/598,687
The rejection of claims 3 through 6 under 35 U.S.C. § 112, second2
paragraph, made in the final rejection has been withdrawn. See Paper No. 9.
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Chikama 4,601,283 Jul. 22, 1986
McCoy 4,944,727 Jul. 31, 1990
Claims 3 through 6 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Chikama in view of McCoy.2
The full text of the examiner's rejection and the
responses to the arguments presented by appellant appear in
the final rejection (Paper No. 6, mailed July 9, 1997) and the
answer (Paper No. 12, mailed March 16, 1998), while the
complete statement of appellant’s arguments can be found in
the brief (Paper No. 10, filed February 9, 1998).
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 references, and to the
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Application No. 08/598,687
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respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is
our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to independent claim 3. Accordingly, we will not
sustain the examiner's rejection of claim 3, and claims 4
through 6 dependent thereon, under 35 U.S.C. § 103. Our
reasoning for this determination follows.
Chikama discloses:
an endoscope having a long flexible image guide,
such as a colon endoscope, in which a shape memory
alloy [26] is built in a flexible tube [22] in which
the image guide is inserted. When the flexible tube
is inserted in the deep portion of a complicatedly
bent organ such as the colon, the flexible tube
which is partially bent according to the bending of
the colon or the like is straightened by utilizing
the restoring property of the shape memory alloy to
straighten the correspondingly bent portion of the
colon or the like, whereby the flexible tube can
easily be inserted in the complicatedly bent portion
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Application No. 08/598,687
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of the colon or the like while straightening this
portion. (Abstract, references numerals added).
McCoy discloses a guide apparatus, probe, and the like
that is steerable through body cavities having a plurality of
temperature activated memory elements (20, Fig. 3) formed of a
mechanical memory metal, e.g., nickel titanium alloy (col. 5,
lines 31 and 32). McCoy specifically teaches that the
elements (20) may be in the form of wires or flat strips (col.
5, lines 28 and 29). As McCoy explains it
[e]ach temperature-activated memory element 20 is
originally annealed into its preset shape (represented by
the broken lines in FIG. 3). Memory elements 20 are
cooled and straightened to their second shape
(represented by the solid lines in FIG. 3) before
incorporation into the distal end 16 of the tubular
member 12. When the elements 20 are again heated to a
predetermined transitional temperature they return to
their preset shape. By applying an opposing force to an
element 20 that has moved to assume its preset shape
it can be moved to its second shape (represented by the
solid lines in FIG. 3). In the illustrative embodiment,
the predetermined transitional temperature is any
temperature above body temperature. For example, the
predetermined transitional temperature may be in the
range of 100E to 150E F. (Col. 5, lines 46-61).
The examiner has concluded that
it would have been obvious to one of ordinary skill in
the art at the time of [appellant’s] invention to provide
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the memory allow [sic, alloy] of Chikama in the form of
an elongated plate [as taught by McCoy] in order to allow
the memory alloy to maneuver its way into and through
parts of the human body. (Final rejection, pages 3 and 4)
In applying the prior art to claim 3, the examiner has
taken the position that the claim language requiring the
elongated plate to be “adhesively bonded to a surface of a
nail shell with an adhesive” is “mere intended use and is
considered to have no limiting effect” (answer, page 3) and
that the claim does not include either a nail shell or an
adhesive agent (id. at 4).
Appellant, on the other hand, argues (brief, pages 7-9)
that claim 3 positively requires that the elongated plate be
adhesively bonded to a surface of a nail shell with an
adhesive agent and that neither of the applied references
teaches nor suggests such a combination. We agree.
In order to establish the prima facie obviousness of a
claimed invention, all the claim limitations must be taught or
suggested by the prior art. In re Royka, 490 F.2d 981, 985,
180 USPQ 580, 583 (CCPA 1974). Every limitation positively
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recited in a claim must be given effect in order to determine
what subject matter that claim defines. In re Wilder, 429
F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). The language
“an elongated plate member adhesively bonded to a surface of a
nail shell with an adhesive agent” in claim 3 is not a
statement of intended use, but a positive limitation which
cannot be ignored in applying prior art.
The examiner is of the opinion that the recitation of a
“nail shell” can be ignored in applying the prior art because
a “nail shell” is a part of the human body, thus non-statutory
subject matter (answer, pages 4 and 5). This approach is
untenable as explained in In re Miller, 418 F.2d 1392, 1396,
164 USPQ 46 (CCPA 1969). The Miller case involved a rejection
of claims to the combination of a measuring device, indicia
specifying a given volume and a legend specifying the ratio of
the given volume to the actual volume of the measuring device.
As in this case, the examiner in the Miller case refused to
give any patentable weight to what the examiner considered to
be non-statutory subject matter, that is, the printed matter
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provided on the measuring device. The court clearly rejected
the examiner’s approach. As stated by the court in Miller,
418 F.2d at 1396, 164 USPQ at 49, "[t]he fact that printed
matter by itself is not patentable subject matter, because
non-statutory, is no reason for ignoring it when the claim is
directed to a combination.” We believe the same rationale
applies in this case, that is, the recitation of a “nail
shell” in claim 3 cannot be ignored in the appealed claims
simply because the examiner considers a “nail shell”, per se,
to be non-statutory subject matter.
Since all the limitations of appellant’s claim 3 are not
found in the applied prior art or obvious therefrom, it
follows that the examiner's rejection of claim 3 under 35
U.S.C. § 103 will not be sustained.
Claims 4 through 6 are dependent on claim 3 and contain
all of the limitations of that claim. Therefore, we will also
not sustain the standing 35 U.S.C. § 103 rejection of claims 4
through 6.
CONCLUSION
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To summarize, the rejection of claims 3 through 6 under
35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )

rk/vsh
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Application No. 08/598,687
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