Ex Parte Malinowski et al

Patent Trial and Appeal Board

Jun 23, 2014

12058623 (P.T.A.B. Jun. 23, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/058,623 03/28/2008 Zdzislaw B. Malinowski 05-00558-02 3539
23410 7590 06/24/2014
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
HELLER, TAMMIE K
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
06/24/2014 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 ZDZISLAW B. MALINOWSKI
and SALOMO SIILAS MURTONEN
____________

Appeal 2012-001002
Application 12/058,623
Technology Center 3700
____________

Before NEAL E. ABRAMS, CHARLES N. GREENHUT,
and JAMES P. CALVE, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Zdzislaw B. Malinowski, and Salomo Siilas Murtonen (Appellants)
seek our review under 35 U.S.C. § 134 from the Examiner’s decision
rejecting claims 21, 22, 26, 27, 29 and 30. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-001002
Application 12/058,623

2
THE INVENTION
The claimed invention is directed to a system for locating a
stimulation site within a brain.
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.

21. A system for locating a stimulation site within a brain,
said system comprising:
a main cannula having a longitudinal axis, and a
lumen extending therethrough;
a guiding cannula configured to be positioned
within said lumen of said main cannula, said guiding
cannula having a lumen and a distal end portion that is
pre-shaped to bend, such that a longitudinal angle is
formed between a line perpendicular to, and extending
through, said longitudinal axis, and said bent distal end
portion when projected within a plane that includes said
line;
a microelectrode configured to be inserted within
said lumen of said guiding cannula to locate said
stimulation site within said brain; and
a longitudinal angle adjustment device for adjusting
said longitudinal angle, wherein said longitudinal angle
adjustment device is coupled to said main cannula and
configured to rotate about said longitudinal axis.

Appeal 2012-001002
Application 12/058,623

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THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Dubach US 5,788,713 Aug. 4, 1998

THE REJECTIONS1
Claims 21, 22, 26, 27, 29 and 30 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as their
invention.
Claims 21, 22, 26, 27, 29 and 30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dubach.
Claims 21, 22, 26, 27, 29 and 30 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–22 of US 7,369,899.

OPINION
Indefiniteness
According to the Examiner, there is “insufficient antecedent basis” for
the limitation “said bent distal end portion” recited in independent claim 21.
Ans. 4. The Examiner further explains that “[t]he language ‘a distal end
portion that is pre-shed [sic pre-shaped] to bend’ does not necessarily
translate into the distal end portion being bent, but rather indicates . . . that it
is capable of bending or will bend at some point.” Ans. 9.

1 A rejection of claims 21, 22, 26, 27, 29 and 30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, has
been withdrawn by the Examiner. Ans. 4.
Appeal 2012-001002
Application 12/058,623

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Appellants argue that “‘a distal end portion that is pre-shaped to bend’
provides sufficient antecedent basis for ‘said bent distal end portion.’” App.
Br. 6. They also assert that “although claim 21 does not provide explicit
antecedent basis for ‘said bent distal end portion,’ Appellants submit that the
scope of claim 21 can be reasonably ascertained by those skilled in the art
. . . especially when read in light of the specification,” which “teaches that
the distal end portion of the guiding cannula is in the bent configuration
when . . . deployed from the main cannula.” Reply Br. 2, 3.
The extent of the structural and functional relationships between the
two cannulas recited in claim 21 is only that there is “a main cannula having
. . . a lumen extending therethrough,” and “a guiding cannula configured to
be positioned within said lumen of said main cannula” and “having a distal
end portion that is pre-shaped to bend.” There is no dispute that the claim
fails to provide explicit antecedent basis for “said bent distal end portion,”
and we are not persuaded by Appellants’ conclusory statement that this
deficiency is cured simply because the claim recites that the guiding cannula
has a distal end portion that is pre-shaped to bend. Reply Br. 2, 3. In
addition, Appellants have not directed us to specific passages in the
Specification that support their contention that the scope of the claim would
be apparent to one of ordinary skill in the art, notwithstanding the lack of
antecedent basis for “said bent distal end portion.” However, even
assuming, arguendo, that the Specification sets forth sufficient structural and
functional relationships between the main cannula and the guiding cannula
to establish that projecting the pre-bent portion of the guiding cannula
beyond the end of the main cannula results in the creation of a bent distal
end portion, these relationships are not set forth in the claim. In this regard,
Appeal 2012-001002
Application 12/058,623

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although claims are interpreted in the light of the specification, limitations
from the specification are not read into the claims. In re Geuns, 998 F.2d
181, 1184 (Fed. Cir. 1993). This being the case, it is our view that the
presence of the phrase “said bent distal portion,” unsupported by antecedent
basis, causes the metes and bounds of claim 21 not to be determinable, and
therefore the claim is indefinite.
This rejection of independent claim 1 and dependent claims 22, 26,
27, 29 and 30 is sustained.
Anticipation
Appellants’ arguments are directed only to whether Dubach discloses
“‘longitudinal angle adjustment device’ . . . coupled to the main cannula and
is configured to rotate about [said] longitudinal axis,” as required by claim
21. Reply Br. 3–5, See also App. Br. 8, 9. With regard to this limitation, the
Examiner has set forth primary and alternative positions. In the primary
position, the Examiner states that “[t]he entire Kopf apparatus is considered
the ‘longitudinal angle adjustment device’ because this device adjusts the
angle of the nitrol tubing leaving the main cannula of Dubach,” and “can at
any time prior to insertion of the main cannula and connection to a patient be
rotated in any position.” Ans. 10. Appellants argue that “[w]hile the Kopf
stereotactic apparatus . . . may be configured to adjust the longitudinal angle
of the guiding cannula, Dubach does not teach or suggest that the entire
Kopf stereotactic apparatus is configured to rotate about the longitudinal
axis of a main cannula.” App. Br. 8, 9. Appellants also assert that the Kopf
apparatus is disclosed as being “in a fixed position,” “is most likely mounted
to a fixed object,” and “cannot properly be construed as the claimed
‘longitudinal angle adjustment device’ that is ‘coupled to the main cannula
Appeal 2012-001002
Application 12/058,623

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and configured to rotate about said longitudinal axis’ of said main cannula.”
Reply Br. 4.
The Examiner’s alternative position is that collar mounts 12, 14 and
16 of device 10 can be considered to be the “longitudinal angle adjustment
device,” and that “[p]rior to insertion of device 10 into a patient’s brain”
they “may be rotated about said longitudinal axis of main cannula 20.” Ans.
11. Appellants’ response is that the collar mounts are configured to slide
along guide rails 18a and 18b, but are not configured to rotate about the
longitudinal axis of the main cannula, as required by the claim. Reply Br. 5.
Dubach discloses a tool 10 for percutaneous localization of a foreign
object in a body. Dubach, col. 3, ll. 10, 11. The tool comprises a main
cannula 20 having a lumen through which a guide cannula 28 and a nitinol
wire 24 can be extended. Guide cannula 28 and nitinol wire 24 are attached
to a series of collar mounts 12, 14 and 16, so that they can be manipulated
separately. Id. col. 5, l. 65—Col. 6, l. 26, Figs. 1A–1C. To position tool 10
for use with respect to a patient’s cranium, it is mounted on a Kopf
stereotactic device 100, which allows tool 10 to be moved in several planes
to position main cannula 20 at a predetermined point. Id. col. 27, ll. 14–48;
Fig. 4. Dubach teaches that the Kopf device is “mounted in the imaging
field in a fixed position . . . . to place the cranium’s midline sagittal plane in
the center of the imaging field” (col. 9, ll. 51–57), and that the patient’s
cranium “is fixed through the use of an earbar 180 and eyebars 140” (col.
27, ll. 23–24). Dubach further states that “tool 10 is fixed to the device 100
by inserting the guide-tube cannula 20 into a block 15 mounted on a rod held
by the horizontal slide 195.” Id. col. 27, ll. 25–27.
Appeal 2012-001002
Application 12/058,623

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An anticipating reference must disclose every claim limitation, either
expressly or inherently. E.g. Atofina v. Great Lakes Chem. Corp., 441 F.3d
991, 999 (Fed. Cir. 2006). The common definition of “configured” is
“designed, arranged, set up, or shaped with a view to specific applications or
uses.”2 Claim 21 requires not only that the longitudinal angle adjustment
device be coupled to the main cannula, but also that it be “configured to”
rotate about the longitudinal axis thereof. Although the Examiner has
concluded that the Kopf device and Dubach’s tool 100 each meet this
limitation, no explanation has been provided as to where Dubach discloses,
either expressly or inherently, how the entire Kopf device, or tool 10, are
designed, arranged, set up or shaped to rotate about the longitudinal axis of
the main cannula. Absent persuasive evidence or explanation that this
limitation in taught by Dubach, the rejection of independent claim 21 is not
sustained.
It follows that the like rejection of claims 22, 26, 27, 29 and 30, which
depend from claim 21, also is not sustained.
Double Patenting
The Examiner entered a rejection on the basis of nonstatutory
obviousness-type double patenting in a non-final Office Action (09/30,
2010; pages 9, 10). In response, Appellants stated that they “do not
concede” that the rejection is proper, and requested that the Examiner “hold
the double patenting rejection in abeyance until no other rejections are
pending,” after which they “will submit a Terminal Disclaimer with respect
to U.S. Patent No. 7,369,899” (11/11/2010; page 8). However, although the
Examiner repeated this rejection in the Final Rejection (page 6) and in the

2 See, for example, www.thefreedictionary.com/configured.
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Application 12/058,623

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Answer (pages 8, 9), Appellants have not acknowledged the continuing
presence of this rejection in the Grounds of Rejection to be Reviewed on
Appeal (see App. Br. 4), nor have they provided arguments in response
thereto.
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.” MPEP
1205.02. The Examiner did not withdraw the rejection. Appellants have not
challenged it. Therefore, the rejection is sustained.

DECISION
The rejection of claims 21, 22, 26, 27, 29 and 30 under 35 U.S.C.
§ 112, second paragraph, is sustained.
The rejection of claims 21, 22, 26, 27, 29 and 30 as being anticipated
by Dubach is not sustained.
The rejection of claims 21, 22, 26, 27, 29 and 30 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–22 of U.S. Patent No. 7,369,899 is sustained.
A rejection of each of the claims on appeal having been sustained, the
decision of the Examiner is affirmed. 37 C.F.R. § 41.50.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
rvb