Ex Parte Nishiki

Patent Trial and Appeal Board

Aug 29, 2014

10687748 (P.T.A.B. Aug. 29, 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.
10/687,748 10/20/2003 Abe Nishiki 9269
7590 09/02/2014
Clyde I. Coughenour
16607 Sutton Place
Woodbridge, VA 22191
EXAMINER
OBU, KENDRA NNEAMAKA
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
09/02/2014 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 ABE NISHIKI
____________

Appeal 2012-002333
Application1 10/687,748
Technology Center 3700
____________

Before TONI R. SCHEINER, ERIC B. GRIMES, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
phimosis curer. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification describes “a phimosis curer with which a phimosis
patient can cure phimosis by himself.” (Spec. 2, ll. 1-2.) The procedure
requires that “[t]he handle grips have to be held for as long as 30 minutes

1 Appellant identifies Abe Nishiki as the Real Party in Interest. (App. Br. 5.)
Appeal 2012-002333
Application 10/687,748

2
each use, and they need to be used twice a day continuously for 2~3 weeks.
Hand holding the grips becomes tiresome.” (Spec. 2, ll. 6-7.)
Claims 1-5 and 11-16 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. The Examiner has withdrawn the enablement
rejection under 35 U.S.C. § 112, first paragraph of claims 3-8 and 12
(Ans. 4). The Examiner has withdrawn the rejections under 35 U.S.C.
§ 103(a) of claims 6-8, 9, and 10 (Ans. 4).

The following grounds of rejection remain before us for review:
I. claims 1, 2, and 11 under 35 U.S.C. § 102(e) as unpatentable
over Chang;2
II. claims 3, 5, and 12-16 are rejected under 35 U.S.C. § 103(a)
over Chang in view of Ramamurti;3 and
III. claim 4 under 35 U.S.C. § 103(a) as unpatentable over Chang in
view of Ramamurti and Seber.4

I. The Issue: Anticipation by Chang
The Examiner takes the position that Chang’s surgical retractor meets
all the structural limitations of the claims (Ans. 5-7). Does the evidence of
record support the Examiner’s finding that Chang anticipates the claimed
phimosis curer?

2 Chang, US 6,663,562 B2, issued Dec. 16, 2003.
3 Ramamurti et al., US 6,635,072 B1, issued Oct. 21, 2003.
4 Seber et al., US 6,748,829 B2, issued June 15, 2004.
App
App

Find

open
pawl
Abst

(Cha

close
eal 2012-0
lication 10
ings of Fa
FF1. Ch
ed and clo
allowing
ract). Fig
FIG. 1,
together
compris
16 inclu
of the de
connecti
portions
W
mechani
position
ng col. 5,
FF2. Fi
d position
02333
/687,748
ct
ang discl
sed using
the arms to
. 1, reprod
retractor 1
at a comm
es a handle
de handle
vice. Lev
on 14 such
18 open.
ith referen
sm 30 is p
from unw
ll. 1-8; see
g. 2 of Ch
:
osed a surg
handles ha
be locke
uced below
0 comprise
on pivota
16 and ar
loops 20 fo
ers 12 are
that . . . w

ce again t
rovided to
anted or un
also Ans.
ang, repro
3
ical retrac
ving a loc
d in any op
, shows th
s a pair of
l connectio
m portion
r more co
angled ou
hen hand
o FIG. 1,
prevent h
timely reo
5)
duced belo
tor having
king ratch
en positio
e surgical
levers 12
n 14. Eac
18. Prefe
nvenient m
twardly at
les 16 are
a locking r
andles 16
pening.
w, shows
arms that
et mechan
n.” (Chan
retractor:

, joined
h lever
rably, han
anipulati
pivot
closed, arm
achet
in any clos
the handle
“are
ism and
g,

dles
on

ed
s in a
App
App

(Cha

abov
the s
pivo

mean
Figu
sides
anno
eal 2012-0
lication 10
Referrin
compris
As hand
rachet 32
rachet te
by teeth
16 at paw
rachet 32
18 to clo
ng col. 5,
FF3. Th
e in Fig. 1
econd han
ted relativ
FF4. Th
s. “The b
re 7 A) wh
such that
tated copy
02333
/687,748
g to FIG. 2
es a conve
les 16 are
. A sprin
eth 36 suc
36 catchin
l pivot 38
, thereby
se.
ll. 11-19; s
e Examin
& 2 as “a
dle grip so
e to the sec
e Examin
lades com
erein the h
the tip sid
of Figure
, a lockin
ntional rac
closed, paw
g (not illus
h that any
g in pawl
, allowing
allowing h
ee also An
er identifi
fulcrum p
that the fi
ond handl
er finds th
prise hook
ook mean
es and rea
7 A.” (An
4
g rachet m
het 32 and
l 34 slide
trated) ho
reversal o
34. Pawl
pawl 34 t
andles 16
s. 5)
es the pivo
in 14 attac
rst handle
e grip and
at Fig. 7A
means (e
s compris
r sides pro
s. 5.)
echanism
spring-lo
s across te
lds pawl 3
f moveme
34 is moun
o be pulle
to open an
tal connec
hing the f
grip [and]
the secon
of Chang
nlarged pa
e tip sides
trude as sh

preferably
aded pawl
eth 36 of
4 against
nt is preve
ted to han
d away fro
d, hence,
tion 14 as
irst handle
the first j
d jaw.” (A
provides a
ddles show
, front side
own in th

34.
nted
dle
m
arms
shown
grip and
aw may be
ns. 6.)
hook
n in
s and rear
e followin

g
App
App

The
notin

Prin

Hew
Cir.

the c
perfo
946
1473

eal 2012-0
lication 10
Examiner’
g the tip s
ciple of La
“[A]ppa
lett-Packa
1990).
Function
orrespond
rming the
F.2d 821,
, 1478 (Fe
02333
/687,748
s annotate
ide, front
w
ratus claim
rd Co. v. B
al recitatio
ing prior a
recited fu
832 (Fed.
d. Cir. 199
d copy of
side and re
s cover w
ausch & L
ns in an a
rt structur
nction. Se
Cir. 1991)
7).
5
Chang’s F
ar side of
hat a devic
omb Inc.,
pparatus c
es must po
e Intel Co
. Also see

ig. 7A is r
the blade (
e is, not w
909 F.2d
laim are g
ssess the c
rp. v. U.S.
In re Schr
eproduced
Ans. 6 &
hat a devi
1464, 146
iven weigh
apability o
Int’l Trad
eiber, 128
above,
11).
ce does.”
8 (Fed.
t in that
f
e Comm’n
F.3d

,
Appeal 2012-002333
Application 10/687,748

6
Analysis
Appellant contends that Chang does not meet all the claim limitations.
Specifically, the claim “requires the blades to extend upward for insertion
into a foreskin. The blades of Chang do not extend into any particular
direction.” (App. Br. 17.)
We are not persuaded by Appellant’s contentions. Although Figures
1 & 2 of Chang show the retractor blades pointing down in the drawings, the
blades are attached with a swiveling knee joint (FF2). Chang disclosed that
“[a]t a distal end of each arm portion 18 of levers 12 is provided a swiveling
knee joint 50.” (Chang col. 5, ll. 20-21.) As shown in Chang’s Figure 2,
this swiveling knee joint would allow the retractor blades 78 to be in any
position around the rotational axis, thus, they could easily be pointing up.
Alternately, the surgical retractor shown in Figures 1 & 2 could merely be
turned over so that the retractor blades 78 would point up. Accordingly, we
agree with the Examiner that the disclosure of Chang meets the “upward”
limitation as recited in claim 1.
Appellant challenges the Examiner’s interpretation of the phrase
“ratchet means pivots between said first handle grip and said second handle
grip” as recited in claim 1, arguing that the “[t]here is no pivotal movement
of the ratchet means 30 of Chang between the first and second handle grips.”
(App. Br. 17.)
It is the Examiner’s position that “claim 1 does not require that the
ratchet means pivots relative to the handle grips.” (Ans. 5; see also Ans. 9.)
The Examiner notes that “claim 1 merely requires that the ratchet means
pivots within a space between the handle grips.” (Ans. 10) The Examiner’s
position is “[t]he ratchet means pivots about pivot point 14 as the handle
Appeal 2012-002333
Application 10/687,748

7
grips are moved, and since the ratchet means is disposed between the handle
grips, the ratchet means is fairly considered to pivot between the handle
grips as claimed” (Ans. 5; see also FF1-3)
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). We first turn to the Specification to
determine whether the meaning of the phrase “ratchet means pivots between
said first handle grip and said second handle grip” can be discerned.
The Specification provides that
Ratchet mechanism 6 is equipped with a pawl 7,
pivotably held by a second pivot pin on one handle grip 2R, and
a rack 8, attached to the other handle grip. The rack 8 is
designed to engage with the pawl 7 when the grips 2R and 2L
move away from each other.
The curved rack 8 having an upper surface, a lower
surface, first end, second end, first and second side, is pivotably
supported at its first end on the handle grip 2L by a first pivot
pin 9, that receives a force or bias from a spring 10.
(Spec. 6: ll. 8-14.)
Here, the Specification provides that a pawl can be pivotally engaged
with the rack or the rack itself can be pivotally engaged with a pawl.
Accordingly, the Specification provides at least two alternate configurations
for the ratchet means, one with the pawl pivoting and the other with the rack
pivoting. The Examiner’s claim interpretation suggest yet a third alternative
configuration that the pivoting of either a fixed rack (or the pawl) around
pivot point 14 would also meet the limitation that the ratchet means pivots
between the handles (Ans. 10; see also FF3). “[T]he ratchet 32 pivots about
Appeal 2012-002333
Application 10/687,748

8
fulcrum pin 14 as the handle grips are moved together and apart. Since the
ratchet 32 is disposed between the handle grips while it pivots about point
14, the ratchet means is fairly considered to pivot between the first and
second handle grips.” (Ans. 10; see also FF1-2.) Given the totality of the
teaching in the Specification presenting two alternative configurations, we
do not find the Examiner’s third interpretation unreasonably broad.
“[W]hile ‘the specification [should be used] to interpret the meaning of a
claim,’ courts must not ‘import[ ] limitations from the specification into the
claim.’ . . . [I]t is improper to ‘confin[e] the claims to th[e] embodiments’
found in the specification . . . .” In re Trans Texas Holdings Corp., 498 F.3d
1290, 1299 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (citations omitted, bracketed text in internal quotes in
original). The Appellant has the burden of showing that the Examiner’s
claim interpretation was unreasonable under the broadest reasonable
interpretation standard by a preponderance of the evidence.
Even if we were to agree with the Appellant’s position that the
Examiner’s claim interpretation is unreasonably broad, which we do not, we
find that Chang still meets the claim limitation of “ratchet means pivots.”
Specifically, we find that Chang’s surgical retractor uses “a locking ratchet
mechanism [that] preferably comprises a conventional ratchet 32 and spring-
loaded pawl 34” (FF2; see also FF1). “Pawl 34 is mounted to handle 16 at
pawl pivot 38, allowing pawl 34 to be pulled away from ratchet 32, thereby
allowing handles 16 to open and, hence, arms 18 to close.” (Chang col. 5, ll.
16-19.) Accordingly, we agree with the Examiner’s position that Chang
meets this claim limitation.
Appeal 2012-002333
Application 10/687,748

9
Appellant contends that claim 1 requires a hook means, and “Chang
has no such hook means. . . . Claim 1 requires that the enlarged hook means
have tip sides that protrude and rear sides that protrude. The sharp tapered
curved ends of Chang do not meet either this structure or its slippage
prevention or damage prevention.” (App. Br. 17.)
We are not persuaded by Appellant’s contentions. The Examiner has
explained what parts of Chang’s device meet the structural limitations as
recited in the claims (FF4). Functional recitations in an apparatus claim are
given weight in that the corresponding prior art structures must possess the
capability of performing the recited function. See Intel Corp. v. U.S. Int’l
Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). Also see In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellant has not
provided any persuasive evidence that would indicate that Chang’s retractor
blade would not be capable of the functions recited in claim 1.
Appellant’s position is that Chang does not have “the grips and jaws
and blade and hooks to be integral” as recited in claim 11. (App. Br. 18.)
The Examiner’s position is that the “entirety of the device, including the
grips, jaws, blade and hooks, forms an integral unit since all of the elements
work together to form an integrated device.” (Ans. 7) Claims will be given
their plain meaning unless their plain meaning is inconsistent with the
Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here,
Appellant has not directed us to any part of the Specification that imparts a
special meaning to the term integral. Accordingly we agree with the
Examiner that integral refers to being composed of constituent parts
(Ans. 11).
Appeal 2012-002333
Application 10/687,748

10
We conclude that the preponderance of the evidence of record
supports the Examiner’s finding that Chang anticipates the claims.

II. The Issue: Obviousness over Chang and Ramamurti
Appellant does not separately argue the rejection of claims 3, 5, and
12-16 based on obviousness in view of the teachings of Chang and
Ramamurti, instead Appellant contends that these claims are “dependent
from claim 1 and are allowable therewith” (App. Br. 18). Having affirmed
the anticipation rejection of claim 1 based on Chang, we find that further
combination with Ramamurti renders the remaining claims obvious for the
reasons given by the Examiner (see Ans. 7-9, 12). “When the appellant fails
to contest a ground of rejection to the Board, . . . the Board may treat any
argument with respect to that ground of rejection as waived.” Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008).

III. The Issue: Obviousness over Chang, Ramamurti, and Seber
Appellant does not separately argue the rejection of claim 4 based on
obviousness in view of the teachings of Chang, Ramamurti and Seber,
instead Appellant contends that this claim depends “from claim 3 and is
allowable therewith.” (App. Br. 20.). Having affirmed the anticipation
rejection of claim 1 based on Chang, we also find that further combination
with Ramamurti renders claim 3 obvious, we find that the combination with
Seber renders claim 4 for the reasons given by the Examiner (see Ans. 9,
12).

Appeal 2012-002333
Application 10/687,748

11
SUMMARY
We affirm the rejection of claims 1, 2, and 11 under 35 U.S.C.
§ 102(e) over Chang.
We affirm the rejection of claims 3, 5, and 12-16 under 35 U.S.C.
§ 103(a) over Chang in view of Ramamurti.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) over
Chang in view of Ramamurti and Seber.

TIME PERIOD FOR RESPONSE
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
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