Ex Parte RyanDownload PDFPatent Trial and Appeal BoardJun 7, 201612639573 (P.T.A.B. Jun. 7, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/639,573 12/16/2009 Shawn Ryan 10121/08602 7128 30636 7590 06/07/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER BOSQUES, EDELMIRA ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 06/07/2016 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 SHAWN RYAN ____________________ Appeal 2014-007491 Application 12/639,573 Technology Center 3700 ____________________ Before WILLIAM A. CAPP, MICHAEL L. WOODS, and AMANDA F. WIEKER, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Shawn Ryan (“Appellant”) seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–16. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2014-007491 Application 12/639,573 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a biopsy needle that has reflecting depressions along its length to improve the echogenicity (i.e., the visibility of the needle under ultrasound). See Spec. ¶¶ 1, 3. Claims 1 and 16 are independent and claim 1 is reproduced below with indenting added to improve clarity and italicized emphasis added to highlight particular limitations addressed in this Decision. 1. A needle, comprising: a surface with a plurality of first ultrasound reflecting depressions formed therein, the first depressions being distributed along at least a portion of a length of the needle separated from one another by intervening sections, each of the first depressions extending along a longitudinal axis of the needle and including a curve having a longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end, at each of the first ends the steep slope gradually transitions to extend substantially perpendicular to the longitudinal axis of the needle, and the first and second ends of each of the first depressions are adjacent to corresponding ones of the intervening sections with troughs at which surfaces of each of the first depressions most closely approach the longitudinal axis of the needle being offset toward the first ends of each of the first depressions. Appeal Br. 14, Claims App. THE REJECTIONS I. Claims 1–3, 6–8, and 16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Fulton (US 6,053,870, issued Apr. 25, 2000), and alternatively under 35 U.S.C. § 103(a) as obvious over Fulton. Final Act. 2. Appeal 2014-007491 Application 12/639,573 3 II. Claims 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as obvious over Fulton and Hoyns (US 5,759,154, issued June 2, 1998). Final Act. 5. III. Claims 1–5, 7, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as obvious over Fulton and Davis (US 5,490,521, issued Feb. 13, 1996). Final Act. 7. IV. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over Fulton, Davis, and Naghavi (US 6,451,044 B1, issued Sept. 17, 2002). Final Act. 11. ANALYSIS Summary of Appellant’s Needle Appellant’s “invention is directed to a needle comprising a surface with a plurality of first ultrasound reflecting depressions formed therein.” Spec. ¶ 3. Figures 1 and 2 of Appellant’s Specification are reproduced below: Appeal 2014-007491 Application 12/639,573 4 Figure 1 depicts an exemplary embodiment of Appellant’s needle 100, with Figure 2 depicting an enlarged side view of needle 100 with depressions 106 transitioning from a shallow portion (not numbered) to steep portion 112, with trough 114 closer to steep portion 112 than the shallow portion. Spec. ¶¶ 4, 8. Rejection I: Anticipated and, Alternatively, Obvious over Fulton (claims 1–3, 6–8, and 16) Under Rejection I, the Examiner relies on Figure 4 of Fulton for disclosing a needle having a plurality of “first ultrasound reflecting depressions,” as recited in independent claims 1 and 16. Final Act. 3. In support of this finding, the Examiner provides an annotated copy of Fulton’s Figure 4, which we reproduce below: Appeal 2014-007491 Application 12/639,573 5 As explained by the Examiner, the above figure depicts Fulton’s needle with first depressions 26. Id. We also reproduce Figure 3 of Fulton below: Figure 3 of Fulton is a longitudinal view of the needle shown in Figure 4 and reproduced supra. Fulton, 3:4–6. In particular, Figure 3 depicts Fulton’s notches 26 that are cut to provide first notch wall 28 and second notch wall 30. Id. at 3:37–40. In addressing the claimed “first depressions extending along a longitudinal axis of the needle and including a curve having a longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end” and where “the steep slope gradually transitions to extend substantially perpendicular to the longitudinal axis of the needle,” the Examiner provides two alternative positions, which we address separately, below. Appeal 2014-007491 Application 12/639,573 6 First, the Examiner maintains that Fulton anticipates the claims, because Fulton’s curve—as pointed out in Fulton’s Figure 4—is a “longitudinally varying curvature between a steep slope (30) at a first end (distal end) and a shallow slope (28 . . .) at a second end (proximal end)” and that the “steep slope gradually transitions to extend substantially perpendicular,” as recited in the claims. See Final Act. 3–4 (citing Fulton, 3:37–40). In contesting the Examiner’s first position, Appellant argues that Fulton discloses “two notch walls that intersect at an angle” (Appeal Br. 5), and that Fulton’s “notch 26 does not include a longitudinally varying curvature between the notch walls 28, 30, as required by the recited claim” (id. at 6). Appellant points out that the Examiner’s reference to Figure 4 illustrates curves that are “not a depression but, rather, is entirely on the surface of the needle” 100. Id. Appellant explains that the claimed “curve must extend into the depression.” See id. Appellant’s argument is persuasive. The USPTO applies to the 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 an applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In the present case, a person of ordinary skill in the art would understand that the claimed “longitudinally varying curvature” of the “first depressions” is the curve that extends into the depression, as illustrated in Figures 2–5 of the Specification. Further, and as illustrated in Fulton’s Appeal 2014-007491 Application 12/639,573 7 Figure 3, notch walls 28 and 30 intersect at an angle, and cannot reasonably be construed as satisfying the claimed “longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end.” Second, the Examiner explains that if Fulton does not disclose this limitation, it would have been obvious “to modify the angle of the steep slope as taught by Fulton to be perpendicular to the longitudinal axis of the needle depending on the application of the invention” (Final Act. 4) and further explains that Fulton teaches that “the notches can get cut to provide a curved oblique notch,” satisfying presumably the claimed “longitudinally varying curvature” (see Ans. 12 (citing Fulton, 4:48–52)).1 In contesting this second position, Appellant argues, inter alia, that even if Fulton’s walls 28, 30 are modified to be curved, “no curvature exists between the two notch walls 28, 30.” Reply Br. 4 (citing Fulton, 3:50–56). Appellant’s argument is persuasive. Here, Fulton’s walls 28, 30 intersect at an angle (see Fulton, Fig. 3, 3:37–56), and, as discussed above, the claims require a “longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end.” Further, contrary to the Examiner’s assertion, Fulton does not teach that “the notches can get cut to provide a curved oblique notch.” See Ans. 12 (citing Fulton, 4:48–52). Rather, the portion of Fulton cited by the Examiner discloses that “[i]t may even be desirable to cut the notch with a laser beam so as to provide a somewhat curved obliquely positioned notch in the sidewall with an optimum trade-off of as much reflective surface area as possible with as little needle strength compromised as possible.” Fulton, 1 The 15-page Answer misnumbers each page as “Page 2.” For clarity, our citations to the Answer correspond to their respective pages 1–15. Appeal 2014-007491 Application 12/639,573 8 4:48–52. Fulton also discloses, however, that “[i]t could well be that a curved notch wall would be effective providing that the surface of the curvature defined by the notch wall intersects the axis of the lumen at an acute angle.” Fulton, 3:50–53 (emphasis added). In other words, the Examiner’s assertion that this disclosure somehow teaches replacing Fulton’s angled intersection (between walls 28, 30) with that of a curved one is not persuasive because Fulton requires that, even if walls 28, 30 are made to be curved, they must still be defined by an acute angle between them. Fulton, 3:50–53. Accordingly, we are not persuaded that two surfaces (Fulton’s walls 28, 30) that intersect at an angle satisfy the “longitudinally varying curvature.” In addition, the Examiner has not provided a sufficient rationale to explain how or why a person of ordinary skill in the art would have found it obvious to replace Fulton’s angled intersection with a “curved oblique notch.” For the foregoing reasons, we do not sustain the rejection of claims 1– 3, 6–8, and 16 as anticipated by or, in the alternative, as obvious over Fulton. Rejection II: Obvious over Fulton & Hoyns (claims 9, 11, and 12) Rejection II relies on the same unsupportable determinations relied on by the Examiner in rejecting independent claim 1 under Rejection I. See Final Act. 5–7. Accordingly, for the same reasons we do not sustain Rejection I, we do not sustain the rejection of dependent claims 9, 11, and 12 as obvious over Fulton and Hoyns. Appeal 2014-007491 Application 12/639,573 9 Rejection III: Obvious over Fulton & Davis (claims 1–5, 7, 10, and 13) As with Rejection I, the Examiner relies on Fulton for disclosing a needle “with a plurality of first ultrasound reflecting depressions” (Final Act. 8 (citation omitted)), but acknowledges that Fulton “fails to explicitly teach each of the first depressions extending along a longitudinal axis of the needle and including a curve having a longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end” (id.). In satisfying this limitation, the Examiner relies on Davis for teaching ultrasound reflecting depressions 28 as “having a longitudinally varying curvature between a steep slope at a first end and a shallow slope at a second end.” Id. at 9 (citing Davis, Fig. 9). In combining Fulton with Davis, the Examiner reasons that it would have been obvious to modify Fulton’s depressions to include Davis’ curvature “to enhance the echogenicity of [Fulton’s] needle.” Id. In support of this rejection, the Examiner provides an annotated copy of Davis’ Figure 9 (id. at 8), which we reproduce below: According to the Examiner, the above-figure depicts Davis’ “longitudinally varying curvature” between a “steep slope” and a “shallow Appeal 2014-007491 Application 12/639,573 10 slope.” Id. at 9. Davis describes Figure 9 as disclosing biopsy needle 10 including a series of conical beads 52 arranged end-to-end to form elongated stylet 12. Davis, 4:4–6; 5:12–14. In addressing the claim limitation, “the steep slope gradually transitions to extend substantially perpendicular to the longitudinal axis of the needle,” the Examiner explains that “[i]n light of the specification, the examiner is considering the limitation ‘substantially perpendicular’ to be an angle between the ranges of 0 to 90 degrees” (Ans. 13) and that Davis not only discloses the claimed “longitudinally varying curvature,” but “as pointed out in annotated Figure 9, also each of the ends of the steep slope transitions to extend substantially perpendicular to the longitudinal axis of the device” (id. at 14). In support of this broad interpretation of “substantially perpendicular,” the Examiner cites to paragraph 11 of the Specification as providing a range of angles “between 0 and 30° . . . between 30 and 60° . . . [and] between 60 and 90°.” Id. at 13 (citing Spec. ¶ 11). In contesting Rejection III, Appellant argues, inter alia, that Davis’ beads 52 do not disclose a steep slope that “gradually transitions to extend substantially perpendicular to the longitudinal axis of the needle,” as recited in the claims. Appeal Br. 10 (citing Davis, 5:12–14). Appellant’s argument is persuasive. Here, a person of ordinary skill in the art, upon reviewing the Specification, would not interpret “substantially perpendicular” to “be an angle between 0 to 90 degrees,” as determined by the Examiner. Ans. 13 (citing Spec. ¶ 11). Further, the Examiner’s reliance on paragraph 11 of the Specification is misplaced, as the disclosed angle ranges of “between 0 and 30° . . . between 30 and 60° . . . [and] between 60 and 90°” relate to the Appeal 2014-007491 Application 12/639,573 11 angle of the depressions, generally, not the claimed “steep slope” as being “substantially perpendicular.” See Spec. ¶ 11. Rather, a person of ordinary skill in the art would instead look to paragraph 8 of the Specification, which discloses that “steep portion 112 is positioned to reflect waves back to a transducer aimed nearly parallel (close to 0°) to the needle 100 while the shallow portion is oriented to reflect waves back to a transducer positioned substantially perpendicular to the longitudinal axis (close to 90°) of the needle 100.” Based on paragraph 8 of the Specification, a person of ordinary skill in the art would understand that the shallow portion may be oriented parallel (i.e., close to 0°) to the longitudinal axis, in order to reflect waves back to a transducer aimed perpendicular to the needle, and would further understand that the steep portion may be oriented at close to 90° (i.e., perpendicular) to the longitudinal axis, in order to reflect waves from a transducer aimed parallel to the needle. In other words, the Examiner’s determination that the Specification supports an interpretation that the claimed “steep slope . . . extend[s] substantially perpendicular to the longitudinal axis” would include anything between parallel (i.e., 0°) and perpendicular (i.e., 90°) is unreasonably broad and inconsistent with the Specification. Further, in reviewing Figure 9 of Davis, as annotated by the Examiner, the Examiner’s assertion that Davis’ “steep slope” is “substantially perpendicular” to the longitudinal axis of Davis’ device is not persuasive. See Ans. 14. Rather, the “steep portion” of Davis’ Figure 9 appears to be angled relative to the longitudinal axis of needle 10 at about 45°. See Davis, Fig. 9 Appeal 2014-007491 Application 12/639,573 12 For the foregoing reasons, we do not sustain the rejection of claims 1– 5, 7, 10, and 13 as obvious over Fulton and Davis. Rejection IV: Obvious over Fulton, Davis, & Naghavi (claims 14 and 15) Rejection IV relies on the same unsupportable determinations relied on by the Examiner in rejecting independent claim 1 under Rejection III. See Final Act. 11–12. Accordingly, for the same reasons we do not sustain Rejection III, we do not sustain the rejection of dependent claims 14 and 15 as obvious over Fulton, Davis, and Naghavi. SUMMARY The Examiner’s decision to reject claims 1–3, 6–8, and 16 under 35 U.S.C. §§ 102(b), 103(a) as unpatentable over Fulton is reversed. The Examiner’s decision to reject claims 9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over Fulton and Hoyns is reversed. The Examiner’s decision to reject claims 1–5, 7, 10, and 13 under 35 U.S.C. § 103(a) as unpatentable over Fulton and Davis is reversed. The Examiner’s decision to reject claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over Fulton, Davis, and Naghavi is reversed. REVERSED Copy with citationCopy as parenthetical citation