Ex Parte Milliman et al

Patent Trial and Appeal Board

Oct 14, 2014

12877476 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEITH L. MILLIMAN and RUSSELL HEINRICH
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Appeal 2012-008071
Application 12/877,476
Technology Center 3700
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Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4–7, 9, 10, and 12–15.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate that affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

The claims are directed to a surgical stapling device. Claim 1,
reproduced below, with emphasis added, is illustrative of the claimed subject
matter:

1 The Examiner withdrew the rejection of claims 8 and 16. Ans. 4.
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1. An insertion handle for delivery of an anvil assembly
within a tubular organ section, the anvil assembly including an
anvil head assembly secured to an anvil center rod, the insertion
handle comprising:
an elongated shaft dimensioned to be positioned within a
hollow tubular organ, the elongated shaft including a proximal
end and a distal end;
an attachment portion disposed adjacent the distal end of
the elongated shaft, the attachment portion comprising structure
for releasably locking the insertion handle to a portion of an
anvil assembly; and
a gripping member supported on the proximal end of the
elongated shaft;
wherein a portion of the attachment portion is configured
and dimensioned for positioning within a bore of the anvil
center rod of the anvil assembly.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bilotti US 5,292,053 Mar. 8, 1994

REJECTION
Claims 1, 2, 4–7, 9, 10, and 12–15 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bilotti. Ans. 4.

OPINION
The main issue in this appeal involves Appellants’ contention that
“[t]he ‘proximal end’ is the extreme end and does not encompass a central
portion or a portion between the proximal end and the central portion as
suggested by the Examiner.” Reply Br. 2. Based on this claim construction,
Appellants conclude that Bilotti’s finger grips 183 are not “on the proximal
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Application 12/877,476
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end” of Bilotti’s detachable trocar 180 (181–188), interpreted by the
Examiner as the recited “shaft.”
The PTO applies to 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, 1054–55 (Fed. Cir. 1997). The challenge in construing a
claim “in light of the specification” is to use the specification to interpret the
meaning of limitations expressly recited in the claim without importing
limitations from the specification that have no express basis in the claim. In
re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969).
The ordinary meaning of end refers to a boundary.2 Additionally,
Bilotti uses the term “proximal end” to refer to the location of the trocar tip
182 and not the finger grips 183. Both of these facts support Appellants’
proposed claim interpretation. See, e.g., In re Trans Texas Holdings Corp.,
498 F.3d 1290, 1299 (Fed. Cir. 2007) (citations omitted) (In addition to the
specification, dictionary definitions are also pertinent in construing claims);
In re Cortright, 165 F. 3d 1353, 1358 (Fed. Cir. 1999) (“Prior art references
may be ‘indicative of what all those skilled in the art generally believe a
certain term means ... [and] can often help to demonstrate how a disputed
term is used by those skilled in the art.’ . . . Accordingly, the PTO’s
interpretation of claim terms should not be so broad that it conflicts with the
meaning given to identical terms in other patents from analogous art.”).

2 “End” 2011, in The American Heritage dictionary of the English language,
Houghton Mifflin, Boston, USA. Accessed: 14 October 2014, from Credo
Reference.
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Application 12/877,476
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On the other hand, claims must be construed in light of the
specification to which they belong. So, dictionary definitions and the use of
identical terms in other patents are not necessarily controlling where those
sources are inconsistent with that specification. Brookhill-Wilk 1, LLC. v.
Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (“Where there
are several common meanings for a claim term, the patent disclosure serves
to point away from the improper meanings and toward the proper
meanings.”) (citations omitted); In re Neugebauer, 330 F.2d 353, 358 n.4
(CCPA 1964) (“In the construction of words, not the mere words, but the
thing and the meaning, are to be inquired after.”).
As can be gleaned from the figures, the preferred embodiment of the
claimed invention does include a gripping knob 722, a “gripping member,”
at the “extreme end” of a shaft 7243, at least in the sense that the shaft
appears to extend through, but not proximally beyond, knob 722. Spec. 36;
Figs. 93–95. In describing this arrangement, Appellants never use the term
“end.” Id. As the shaft 724 extends through the knob 722, it is clear that the
knob is “supported on” a region as opposed to a boundary. Thus, “end,” in
this instance, is not used to refer to the ultimate boundary of the shaft.
Rather, “end” can refer to a region of the shaft (i.e., “grasp the end”).
In a slightly different context, Appellants do employ the term
“distal[4] end,” to describe the location of the holes 730 formed in the anvil
center rod 686. Id. As can be seen from Figure 87, holes 730 are not at the

3 Understanding what structure is regarded as the “shaft” is complicated by
the fact that Appellants do not use reference numerals 724 and 725
consistently. Spec. 36. We will refer to shaft 724 having attachment portion
725 because this seems more consistent with Figures 93–95.
4 Appellants appear to have reversed the terms “proximal” and “distal” when
describing the anvil center rod 686.
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“extreme end” of center rod 686. Rather, they are located centrally of
flexible arms 702. Appellants’ usage of the term “end” to describe the
location of holes 730 also tends to demonstrate that one skilled in the art
would understand “end,” in light of Appellants’ Specification, to refer to a
region, as opposed to the most extreme boundary, of a structure. Moreover,
this usage also demonstrates that other structures, such as flexible arms 702,
could be located closer to the distal end while still considering holes 730 “in
the distal end” of the shaft. The differences between the phrases, “in the”
and “supported on the” do not appear to create any distinction insofar as the
linear position on the shaft that is being defined is concerned, i.e.,
Appellants have not apprised us of, nor do we discern, any distinction over
Bilotti introduced by the phrase “supported on.”
Where the “end” is construed consistently with the Specification, as a
region, as was done by the Examiner, the claim would be understood by one
skilled in the art to not only cover an insertion handle according to the
embodiment depicted in Figures 93 and 94, but also to cover an insertion
handle wherein the elongated shaft, or some other structure such as Bilotti’s
trocar, extends at least a small amount through or past the gripping member
on the side opposite the anvil attachment. There is nothing in the
Specification to suggest Appellants intended to disavow such an
arrangement. If Appellants wanted to more precisely define the claimed
subject matter so as to indicate that the handle includes a gripping knob
which defines, or is coextensive with, its proximal end, as depicted in
Figures 93–95, there was language available to do so. Absent such language
in the claim, or a disavowal of other arrangements, we must decline to limit
the claims based on features found only in the preferred embodiments. See
In re Trans Texas Holdings Corp, supra.; see also SuperGuide Corp. v.
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Application 12/877,476
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DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). Claim
terms are given their broadest reasonable interpretation before the PTO so
that the metes and bounds can be explored and clarification can be imposed
when the applicant has an opportunity to amend the claim to avoid
invalidity. Exxon Rsrch and Eng’g Co. v. U.S., 265 F.3d 1371, 1375 (Fed.
Cir. 2001); In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989).
The Examiner’s alternate position, that Bilotti’s trocar tip 182 itself
could also reasonably be considered the “gripping member” (Ans. 7) is
clearly without merit for the reasons argued by Appellants. Reply Br. 3.
The Examiner’s other alternate position, regarding the rearrangement of
parts (Id.; Final Office Action (mailed Sept. 7, 2011) at 4, para. 6), is clearly
not germane to a rejection under 35 U.S.C. § 102, which requires each and
every element to be disclosed in the prior art arranged as in the claim. See In
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Although we have reached the same ultimate conclusion as the
Examiner, we have found additional facts and supplemented the Examiner’s
legal analysis with our own. As such, we designate our affirmance of the
Examiner’s rejection as a “new ground” pursuant to 37 C.F.R. § 41.50(b) so
as to afford Appellants a full and fair opportunity to respond. In re Stephan,
660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation to provide
prior notice to the applicant of all matters of fact and law asserted prior to an
appeal hearing before the Board.)

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DECISION
The Examiner’s rejection of claims 1, 2, 4–7, 9, 10, and 12–15 under
35 U.S.C. § 102(b) as being anticipated by Bilotti is affirmed. This
affirmance is designated as a “new ground” of rejection under 37 C.F.R. §
41.50(b).

FINALITY OF DECISION
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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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