Ex parte Schulze

Board of Patent Appeals and Interferences

Feb 26, 1999

08306856 (B.P.A.I. Feb. 26, 1999)

Application for patent filed September 15, 1994. 1
According to appellant, the application is a continuation of
Application 08/092,734, filed July 14, 1993, now abandoned.
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not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DALE SCHULZE
__________
Appeal No. 96-2192
Application 08/306,8561
__________
ON BRIEF
__________
Before THOMAS, BARRETT, and FLEMING, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 2 through 4, 30 and 31, which
constitute all the claims remaining in the application.
Appeal No. 96-2192
Application 08/306,856
2
Representative claim 30 is reproduced below:
30. A device for monitoring the number of times a
sterilization has been performed comprising:
a temperature sensitive mechanical element which
transforms from a first spatial state to a second spatial
state at a predetermined temperature; and
a blocking element coupled to said mechanical element
movable from a retracted position to an extended blocking
position when the number of heatings of said temperature
sensitive mechanical element beyond a predetermined
temperature exceed a predetermined number of such heatings;
and
said monitoring device capable of blocking operation of a
surgical instrument when said blocking element is in said
extended position.
There are no references relied on by the examiner.
Claims 2 through 4, 30 and 31 appear to be rejected on
the basis of the written description as well as enablement
portions of 35 U.S.C. § 112, first paragraph, according to a
liberal interpretation of the position advocated by the
examiner in the Answer. Only claims 2 through 4 stand
rejected under the second paragraph of 35 U.S.C. § 112.
Appeal No. 96-2192
Application 08/306,856
3
Rather than repeat the positions of the appellant and the
examiner, reference is made to the Briefs and the Answer for
the respective details thereof.
OPINION
Turning first to the rejection of claims 2 through 4
under the second paragraph of 35 U.S.C. § 112, we reverse this
rejection. Although the rejection of these claims was
included in the third page of the Final Rejection, Paper No.
15, dated April 28, 1995 for the version of claims 2 through 4
pending at that time, an Amendment accompanying the Reply
Brief dated October 19, 1995 amended these claims to remove
the questioned antecedent basis language of a "surgical
instrument." This Amendment bears an approved for entry
indication by the examiner in the uppermost left portion of
the Amendment on file. The subsequent communication from the
examiner dated November 29, 1995, notes and permits entry of
the Reply Brief but is silent with respect to its accompanying
Appeal No. 96-2192
Application 08/306,856
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Amendment to claims 2 through 4. Since the file record does
reveal the entry of that Amendment even though it has not been
specified by the examiner in this latest communication, we
must reverse the rejection because it is clearly apparent that
the basis of the rejection is no longer present in pending
claims 2 through 4 on appeal.
Turning next to the rejection of claims 2 through 4, 30
and 31 under the first paragraph of 35 U.S.C. § 112, we
reverse this rejection as well. Independent claims 30 and 31
contain identical subject matter, with claim 31 including an
additional limitation relating to a display device, which
latter feature is not the subject of any issue raised by the
examiner in the rejection of the claims under the first
paragraph of 35 U.S.C.
§ 112. As such and because appellant indicates at the top of
page 2 of the principal Brief on appeal that the issues as to
this rejection are the same for both independent claims, we
take as a representative claim independent claim 30.
The examiner’s position makes reference to the written
description portion of 35 U.S.C. § 112, first paragraph, at
Appeal No. 96-2192
Application 08/306,856
5
the top of page 4 of the Answer as well making reference to
the claims not having adequate support in the disclosed
invention in the paragraph bridging pages 6 and 7 of the
Answer.
The examiner’s reasoning for lack of "support" for the
claimed invention implicitly refers to the written description
requirement of 35 U.S.C. § 112, first paragraph. In re
Higbee, 527 F.2d 1405, 1406, 188 USPQ 488, 489 (CCPA 1976).
The test to be applied under the written description
portion of 35 U.S.C. § 112, first paragraph, is whether the
disclosure of the application as originally filed reasonably
conveys to the artisan that the inventors had possession at
that time of later claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117, reh’g
denied (Fed. Cir.
July 8, 1991) and reh’g en banc denied (Fed. Cir. July 29,
1991).
The present independent claims 30 and 31 were not
initially filed claims. We do, however, observe that
originally filed claim 17 related the blocking element to a
Appeal No. 96-2192
Application 08/306,856
6
surgical device. Therefore, the concept of a claimed blocking
element or device being a part of a surgical device was
clearly set forth in original claim 17. See In re Anderson,
471 F.2d 1237, 1244,
176 USPQ 331, 336 (CCPA 1973).
As to the present version of the invention set forth in
independent claims 30 and 31, there is no dispute that the
record reveals that a blocking element was disclosed in each
of Figures 1 and 2 set forth in the specification as the
respective first and second embodiments. These include
specific discussions with respect to element 40 in Figure 1
and element 74 in Figure 2 functioning as blocking elements in
these respective embodiments.
On the other hand, the examiner asserts at the top of
page 6 of the Answer that the structure of the overall device
in the Figure 3 or third embodiment does not include a
blocking element per se to inhibit future use of the surgical
instrument specifically disclosed in Figure 3f. Appellant’s
Brief may be read such as to infer the same and our study of
the Figure 3 embodiment leads us to agree with the examiner’s
Appeal No. 96-2192
Application 08/306,856
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statement. However, as noted by appellant in the Brief, the
discussion at the top of page 15 of the original
specification, lines 1 through 7, indicates a general teaching
that a counter device-blocking element according to the
invention may be included in a surgical instrument. This
broad or generalized statement at this page of the
specification may be interpreted to include the concept of
applying it to the Figure 3 embodiment. Therefore, to the
extent the examiner's position in the Answer is based upon the
written description portion of 35 U.S.C. § 112, the rejection
must be reversed. To the extent recited in independent claims
30 and 31 on appeal of a monitoring device being “capable of
blocking operation of a surgical instrument,” each of the
respective embodiments 1 through 3 of the disclosed invention
either expressly or by inference taught the concept of a
blocking element of some kind functioning in association with
a surgical device.
On the other hand, it appears that the examiner's basic
underlying issue with respect to the present claims on appeal
relates to a surgical instrument being inadequately disclosed
Appeal No. 96-2192
Application 08/306,856
8
with respect to a blocking element in the three embodiments
disclosed, with emphasis on the Figure 3 embodiment. The
reasoning in the answer repeatedly asks in different contexts
basic “how” questions.
Generally speaking, “[t]he test of enablement is whether
one reasonably skilled in the art could make or [sic and] use
the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.”
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988), citing Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
94 (Fed. Cir. 1986).
The following portions of the written description portion
of the specification as filed relate to a surgical device or
instrument: page 2, lines 10 through 24; page 3, line 28
through page 4, line 9; Figure 1, embodiment 1, page 7, line
26 through page 8, line 8; Figure 2, the second embodiment,
page 9, line 29 through page 10, line 8; and Figure 3f, part
of the third
Appeal No. 96-2192
Application 08/306,856
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embodiment, page 5, lines 8 through 10 and page 14, lines 18
through 32, as well as the general assessment at page 15,
lines
1 through 7.
From the examiner's perspective, each independent claim
recites positively a blocking element. There is, however,
only
a passive recitation of the overall monitoring device of
independent claims 30 and 31 being merely “capable of blocking
operation of a surgical instrument.” The examiner's position
as to the enablement issue appears to be based upon the
concern that while on the one hand, the Figures 1 and 2
embodiments appear to specifically teach blocking elements,
they only passively teach or suggest their application to a
surgical device or instrument, while the Figure 3 embodiment,
and specifically the Figure 3f embodiment, specifically
relates the counting device of this figure to a surgical
instrument or device at the same time it contains no explicit
teachings or showings of having the capability of a blocking
element.
Appeal No. 96-2192
Application 08/306,856
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In the context of the appropriate judicial standard for
review of enablement issues being whether the claimed
invention would have required the artisan to exercise undue
experimentation to make and use the claimed invention, we
conclude that no such undue experimentation would have been
necessary for the artisan to have either implemented a
specific type of surgical instrument with respect to the
Figure 1 and 2 embodiments or a specific type of blocking
element to the specific type of surgical device set forth in
the Figure 3 embodiment. Stated differently, we are of the
view that from an artisan's perspective only a reasonable
degree of experimentation would have been necessary to have
enabled him or her to make and use the claimed invention.
For example, the blocking element is set forth in the
summary of the invention in the paragraph bridging pages 3 and
4 of the specification as filed as blocking or inhibiting the
use of a whole surgical instrument such as blocking an
actuation knob thereof. With respect to the Figure 1
embodiment, the discussion in the paragraph bridging pages 7
and 8 makes specific reference to blocking or locking an
Appeal No. 96-2192
Application 08/306,856
11
actuation knob of a surgical instrument. Furthermore, in the
context of the Figure 3 embodiment as well as the Figure 1 and
2 embodiments, the discussion at the top of page 15 is
telling. It appears that this discussion may be read to
enhance or modify any and all of the three embodiments in such
a manner as to indicate that a counter device or monitoring
device of the disclosure may be included in a handle of a
surgical instrument and may in any event perform a blocking
and counting function by “meeting with the recycled moving
shaft of a surgical instrument, as described above.” We are
of the view that the artisan would have been required to
exercise only a reasonable or routine degree of
experimentation to have applied the teachings and showings of
the Figures 1 and 2 embodiments to the laparoscopic device
shown in Figure 3f of the disclosed invention.
In view of the foregoing, we have reversed the rejection
of claims 2 through 4 under the second paragraph of 35 U.S.C.
§ 112. We have also reversed the rejection of claims 2
through 4, 30 and 31 under the first paragraph of 35 U.S.C. §
112. Therefore, the decision of the examiner is reversed.
Appeal No. 96-2192
Application 08/306,856
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REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JDT/cam
Appeal No. 96-2192
Application 08/306,856
13
Audley A. Ciamporcero, Jr.
JOHNSON & JOHNSON
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003