Ex Parte Phillips-Hungerford et al

Patent Trial and Appeal Board

Sep 28, 2016

13231524 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/231,524 09/13/2011 Molly Phillips-Hungerford
30636 7590 09/28/2016
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10121113202 1009
EXAMINER
LYNCH, ROBERT A
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
09/28/2016 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 MOLLY PHILLIPS-HUNGERFORD,
MARK WOOD, SHAWN RYAN, and
BENJAMINE. MORRIS
Appeal2014-009830
Application 13/231,524 1
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Molly Phillips-Hungerford et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-5 and 7-17. 2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellants, Boston Scientific Scimed, Inc. is the real
party in interest. Appeal Br. 2 (filed Jan. 22, 2014).
2 Claims 6, 18, and 19 are withdrawn from consideration. Id.
Appeal2014-009830
Application 13/231,524
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants' invention relates to "a release mechanism for a medical
device." Spec. i13.
Claims 1 and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A release mechanism for a medical device, comprising:
a bushing having a proximal end, a distal end and a
channel extending there through, the bushing comprising first
and second arms extending proximally from the distal end, the
first and second arms being biased toward a release
configuration in which engagement surfaces at distal ends
thereof are retracted radially into the channel;
a core pin insertable through the channel, the core pin
being configured to apply a radially expansive pressure to move
the arms radially outward from the release configuration into a
locking configuration; and
a tissue treatment device containing capsule connected to
the bushing by engagement between the engagement surfaces of
the first and second arms and a retaining surface of the capsule,
the retaining surface of the capsule extending at an angle
relative to the engagement surfaces selected so that a first
portion of a force transmitted along an axis of the bushing to
the first and second arms moves the arms radially inward
toward the release configuration before a second portion of the
force transmitted by the first and second arms to the capsule
exceeds a threshold level associated with the removal of a tissue
treatment device from tissue with which it has been engaged.
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Appeal2014-009830
Application 13/231,524
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1--4, 7-10, 12-15, and 17 under 35
U.S.C. § 102(b) as being anticipated by Cohen (US 2008/0306491 Al,
pub. Dec. 11, 2008).
II. The Examiner rejected claims 5, 11, and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Cohen.
NEW GROUND OF REJECTION
Claims 1-5 and 7-17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the invention which applicant regards as the invention.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must make it clear what subject matter the claims encompass. In re
Hammack, 427 F.2d 1378 (CCPA 1970). The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether "those skilled in the art would
understand what is claimed when the claim is read in light of the
[S]pecification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
Each of independent claims 1 and 14 requires, inter alia, that an angle
of engagement between the retaining surface of the capsule and the
engagement surfaces of the first and second arms is:
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Appeal2014-009830
Application 13/231,524
selected so that a first portion of a force transmitted along an axis
of the bushing to the first and second arms moves the arms
radially inward toward the release configuration before a second
portion of the force transmitted by the first and second arms to
the capsule exceeds a threshold level associated with the removal
of a tissue treatment device from tissue with which it has been
engaged.
Appeal Br. 12, 15 (emphasis added). Thus, the claims define the angle of
engagement between the retaining surface of the capsule and the
engagement surfaces of the first and second arms by reference to a
"threshold level [of a force] associated with the removal of a tissue treatment
device from tissue," wherein the "threshold level" has not been specified.
Although the claimed "threshold level" is "associated with the
removal of a tissue treatment device from tissue with which it has been
engaged," nonetheless, Appellants have not identified, nor could we find an
adequate description in the Specification that clearly sets forth the metes and
bounds of the claimed "threshold level." In one example, i\.ppellants'
Specification describes that "the total force required to dislodge the clip 40
from the tissue for an exemplary clip is approximately 0.947 N." Spec. if 14.
However, Appellants' Specification further states that the "force may vary
depending on the type of tissue being clipped, the mechanical strength of the
clip 40 and a plurality of other factors known in the art." Id. As such, it is
not clear whether 0.947 N constitutes the claimed "threshold level" because
an infinite number of tissue and clip combinations can be envisioned, such
that the metes and bounds of the claimed "threshold level," as called for by
independent claims 1 and 14, cannot be determined.
In conclusion, the above noted limitation does not present a structural
limitation on the angle of engagement between the retaining surface of the
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Appeal2014-009830
Application 13/231,524
capsule and the engagement surfaces of the first and second arms. Hence,
the language of independent claims 1 and 14 is not sufficiently definite that
those skilled in the art would understand what is being claimed when the
claims are read in light of the Specification. Ex parte Miyazaki, 89 USPQ2d
1207, 1212 (BPAI 2008) (precedential) (Holding indefinite claims defining
the height of a paper feeding unit relative to a person whose position relative
to the claimed printer was not well-defined in the claim, because the claimed
height of the paper feeding unit did not present a structural limitation on the
height at all.).
In light of the above, we conclude that independent claims 1 and 14,
and dependent claims 2-5, 7-13, and 15-17, are indefinite under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point and distinctly claim
the subject matter which Appellants regard as the invention.
ANALYSIS
In view of our determination that claims 1-5 and 7-17 are indefinite,
it follows that the prior art rejections of claims 1-5 and 7-17 must fall
because they are necessarily based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). It should be understood, however, that our decision in this regard is
proforma and based solely on the indefiniteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejections.
SUMMARY
The Examiner's decision to reject claims 1-5 and 7-17 is reversed.
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Appeal2014-009830
Application 13/231,524
We enter a new ground of rejection of claims 1-5 and 7-17 under 35
U.S.C. § 112, second paragraph, as being indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellants,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 [E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [E]xaminer; overcomes the new ground of rejection
designated in the decision. Should the [E]xaminer reject the
claims, appellants may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Application 13/231,524
REVERSED; 37 C.F.R. § 41.50(b)
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