Ex parte Ritz et al.

Board of Patent Appeals and Interferences

Sep 22, 1997

08104965 (B.P.A.I. Sep. 22, 1997)

Application for patent filed August 10, 1993.1
1
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES A. RITZ AND BRIAN L. FIDELER
__________
Appeal No. 96-0601
Application 08/104,9651
__________
ON BRIEF
__________
Before LYDDANE, MEISTER and ABRAMS, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
Appeal No.96-0601
Application 08/104,965
Claim 13 has been amended subsequent to final rejection.2
2
DECISION ON APPEAL
James A. Ritz and Brian L. Fideler (the appellants) appeal
from the final rejection of claims 4-7, 9, 10, 12 and 13, the
only claims remaining in the application. We reverse.2
The appellants’ invention pertains to a tool which is used
in the placement of implantable leads during a surgical
procedure. Independent claim 4 is further illustrative of the
appealed subject matter and reads as follows:
4. A tool for use in the placement of implantable leads,
comprising:
a capsule having a forward end, a rearward end and an
internal cavity, said internal cavity open to the rearward end of
said capsule, said capsule comprising first and second
longitudinally extending sections pivotally mounted to one
another at a pivot point, said first section fabricated of a
material which may be deformed manually, said capsule further
provided with latch means spaced from said pivot point for
mechanically latching said first and second sections to one
another and for mechanically unlatching said first and second
sections from one another in response to manual deformation of
said first section between said pivot point and said latch means.
The reference relied on by the examiner is:
Camps et al. (Camps) 5,241,957 Sep. 7, 1993
(filed Nov. 18, 1991)
Appeal No.96-0601
Application 08/104,965
3
Claims 4-7 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Camps.
Claims 9, 10, 12 and 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Camps.
Each of the above-noted rejections is based upon the
examiner’s view that
since the force that can be applied by different people
varies greatly, the examiner is of the opinion that
making the box and lid [of Camps] out of the disclosed
materials would inherently allow the box and lid to be
deformed to some extent by a person. With sufficient
pressure exerted on the box and lid, the examiner
contends that the lid would become removed from the
box. It should also be noted that the claim does not
prohibit the application of some other force at some
other location to assist in the operation of the latch
means. One could manually grasp and flex the box and
lid while additional pressure is exerted directly on
the latches and tabs. In either situation, the claim
limitations are deemed to be met by CAMPS. [Answer,
page 4.]
We will not support the examiner’s position. Independent
claims 4 and 9 each expressly requires a latch means
for mechanically latching said first and second
sections to one another and for mechanically unlatching
said first and second sections from one another in
response to manual deformation of said first section
between said pivot point and said latch means.
[Emphasis ours.]
The examiner concedes that Camps does not specifically teach such
an arrangement but, nevertheless, takes the position that the
Appeal No.96-0601
Application 08/104,965
4
materials disclosed by Camps would “inherently” allow the box to
be deformed to some extent and that with “sufficient pressure”
the lid would become removed. This position is based on
speculation and unfounded assumptions. Even if we were to agree
with the examiner that Camps’ first section could be deformed to
“some extent” with sufficient pressure, there is absolutely
nothing to indicate that this deformation of “some extent” would
have any effect at all on Camps’ latches 31, much less function
to unlatch them. It is well settled that inherency may not be
established by probabilities or possibilities. In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) and In re
Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir.
1993).
As to the examiner’s contention on page 4 of the Answer that
one “could manually grasp and flex the box and lid [of Camps]
while additional pressure is exerted directly on the latches and
tabs,” the plain language of each of the independent claims on
appeal expressly requires a latch means which functions in such a
manner that, upon manual deformation of the first section between
the pivot point and the latch means, the latch means unlatches.
Appeal No.96-0601
Application 08/104,965
5
In short, the claims expressly require that unlatching occur in
response to manual deformation of the first section between the
pivot and the latch means. There is absolutely nothing in Camps
which either teaches or suggests such an arrangement.
The examiner’s rejections of claims 4-7 under 35 U.S.C.
§ 102(e) and claims 9, 10, 12 and 13 under 35 U.S.C. § 103 are
reversed.
REVERSED
WILLIAM E. LYDDANE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No.96-0601
Application 08/104,965
6
)
)
NEIL E. ABRAMS )
Administrative Patent Judge )
Medtronic, Inc.
7000 Central Avenue N.E.
Minneapolis, MN 55432