Ex Parte Shackelford

Board of Patent Appeals and Interferences

Dec 18, 2008

10920084 (B.P.A.I. Dec. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD L. SHACKELFORD, SR.
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Appeal 2008-4770
Application 10/920,084
Technology Center 3700
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Decided: December 18, 2008
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Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 2, 11,
12, 14-16, and 18-21. Jurisdiction is under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-4770
Application 10/920,084

STATEMENT OF THE CASE
The claims are directed to a jacket for a scalpel. According to the
Specification, the “use of disposable scalpels is increasing in many hospitals.
The disposable scalpel is, typically, made from plastic, which forms a body
having a channel portion and often having a handle portion” (Spec. 1: 9-11).
“A blade is disposed on a slider in the channel portion” (id. at 1: 11-12).
The disadvantage to such scalpels is that disposable
scalpels lack heft. That is, traditional metal scalpels, which
were typically made from stainless steel, had a certain weight
and balance. Physicians who have been trained with traditional
metal scalpels tend to dislike the lighter disposable scalpels.
Additionally, even users who have been trained using
disposable scalpels prefer a scalpel with more heft as such
scalpels provide, in a subjective sense, more control and
feedback.
(Id. at 1: 17-22.) “There is, therefore, a need for a jacket structured to be
coupled to a disposable scalpel and structured to add heft” (id. at 1: 30-31).
The Specification describes a jacket for a disposable scalpel (id. at 2: 7-8).
The Examiner finally rejects claims 1, 2, 11, 12, 14-16, and 18-21,
which are all the pending claims, under 35 U.S.C. § 102(b) as anticipated by
Cohn (US 5,941,892, Aug. 24, 1999) (Ans. 3). We select claims 1 and 20 as
representative of the appeal subject matter. Claims 1 and 20 read as follows:
1. A jacket for a scalpel, said scalpel having an elongated body
with a base wall and two sidewalls forming a scalpel channel,
and a blade assembly having a blade coupled to a slider, said
slider structured to move said blade between a first, retracted
position and second, extended position, said jacket comprising:
a body having an elongated base wall and two sidewalls;
each sidewall extending generally perpendicular to said
jacket base wall, thereby defining a jacket channel;
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said jacket sidewalls spaced apart a sufficient distance so
that said scalpel may be disposed between said jacket sidewalls;
and
a trap structured to hold said scalpel in said jacket
channel.

20. A scalpel assembly comprising:
a scalpel having an elongated body with a base wall and
two sidewalls forming a scalpel channel, a blade assembly
having a blade coupled to a slider, said slider structured to
move said blade between a first, retracted position and second,
extended position, and a handle portion;
said scalpel handle portion having a scalpel trap portion;
a jacket having a body with an elongated base wall and
two sidewalls, each sidewall extending generally perpendicular
to said jacket base wall, thereby defining a jacket channel, said
jacket sidewalls spaced apart a sufficient distance so that said
scalpel may be disposed between said jacket sidewalls, and a
handle portion;
said jacket handle portion having a jacket trap portion;
and
said scalpel trap portion structured to engage said jacket
trap portion to secure said scalpel in said jacket.

ISSUE ON APPEAL
Does Cohn describe a jacket for a scalpel and a scalpel that meets the
limitations of claims 1 and 20?
PRINCIPLES OF LAW
During examination, “claims … are to be given their
broadest reasonable interpretation consistent with the
specification, and … claim language should be read in light of
the specification as it would be interpreted by one of ordinary
skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990);
accord Bass, 314 F.3d at 577 (“[T]he PTO must apply the
broadest reasonable meaning to the claim language, taking into
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account any definitions presented in the specification.”); In re
Cortright, 165 F.3d 1353, 1358 (Fed.Cir.1999) (“Although the
PTO must give claims their broadest reasonable interpretation,
this interpretation must be consistent with the one that those
skilled in the art would reach.”); Hyatt, 211 F.3d at 1372. . . .
Giving claims their broadest reasonable construction “serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified.”
Yamamoto, 740 F.2d at 1571; accord Hyatt, 211 F.3d at 1372;
In re Zletz, 893 F.2d 319, 322 (Fed.Cir.1989) (“An essential
purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible,
during the administrative process.”).
In re American Academy Of Science Tech Center, 367 F.3d 1359, 1365 (Fed.
Cir. 2004).
Terms appearing in a preamble may be deemed limitations of a claim
when they “give meaning to the claim and properly define the invention.”
Gerber Garment Technology, Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688
(Fed. Cir. 1990) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732
F.2d 888, 896 (Fed. Cir. 1984), cert. denied, 469 U.S. 857 (1984)).
It is well settled that “[i]f the body of the claim sets out the
complete invention, and the preamble is not necessary to give
‘life, meaning and vitality’ to the claim, ‘then the preamble is of
no significance to claim construction because it cannot be said
to constitute or explain a claim limitation.’” Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1373-74, .
. . (Fed.Cir.2001) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 . . . (Fed. Cir. 1999)).
Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002).
Preamble language that merely states the purpose or intended use of
an invention is generally not treated as limiting the scope of the claim. See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
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1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997).
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001).
CLAIM INTERPRETATION
The dispute in this rejection involves the proper interpretation of the
term “scalpel” as recited in claims 1 and 20. Appellant contends that a
“scalpel” would be understood by persons of skill in the art “to be a very
precise tool having a handle and a blade coupled together in an exact
relationship. That is, a scalpel blade cannot be loosely attached to the
handle” (Shackelford, Jr. Aff. ¶ 4). The Examiner rejects this interpretation
as too narrow (Ans. 5), construing it more broadly to read on a scalpel blade
with a handle portion, irrespective of how they are coupled (Ans. 4: 12-13).
During patent examination, claims must be given their broadest
reasonable interpretation in light of the specification as they would be
understood by persons of ordinary skill in the art. In re American Academy
of Science Tech Center, 367 F.3d at 1365. As explained in Zletz: “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d at 322.
The term “scalpel” is not explicitly defined in the Specification.
However, the Specification states a “disposable scalpel is, typically, made
from plastic, which forms a body having a channel portion and often having
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a handle portion” (Spec. 1: 9-11). The disposable scalpels are for use in
hospitals by physicians for surgical procedures (id. at 1: 9, 19-20, 26-27; at
8: 20-21). A disposable scalpel is described in the Specification as having a
“slider” in the channel for moving the blade into different positions (id. at 1:
11-14). In the description of its own embodiments, the Specification states
that the “scalpel . . . generally includes an elongated body . . . and a blade
assembly” (id. at 3: 24). In sum, the Specification characterizes a scalpel as
having an elongated body and handle, and typically a slider for moving the
blade.
Appellant’s interpretation of the term “scalpel” is not its broadest
reasonable interpretation for the purposes of patent examination. The
Specification does not define it, as does Appellant, to require an “exact
relationship” between the blade and handle that would exclude these parts
from “loosely” fitting together. There are also no terms in the claim that
would require persons of ordinary skill in the art to read the term “scalpel”
so narrowly.
While we acknowledge the affidavit of Dr. Shackelford, Jr. stating
that persons of skill in the art would understand the term “scalpel” to have a
precise meaning, we do not agree that this is the only reasonable
interpretation possible. The Specification does not describe the claimed
scalpel in such a way that would exclude a loose fitting between the blade
and handle. Nor does the Specification restrict the claimed scalpel to a
particular use or procedure that would require such arrangement. For these
reasons, we decline to read the term “scalpel” as recited in the claims to have
the narrow meaning proffered by Appellant’s in this appeal.

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FINDINGS OF FACT
The Cohn patent
Figure 34
1. Cohn describes a scalpel having a handle 512 and a shield 526 (Cohn,
Figs. 34-38).
2. The shield 526 releasably retains blade cartridge 524 comprising a
slidable blade (Cohn, at col. 9, ll. 8-9, 12; Figs. 34-38).
3. The shield 526 has protuberances 540 (Cohn, at col. 9, l. 33).
4. The handle 512 has sidewalls 518 and an upper wall (see handle portion
between 512 and distal end 516) that forms a channel or open cavity 520
(Cohn, at col. 9, ll. 1-6).
5. The handle 512 has openings 522 (Cohn, col. 9, l. 26; Fig. 34).
6. The shield 526 and blade cartridge fit into cavity 520 of handle 512
(Cohn, at col. 9, ll. 6-9, 12-16).
7. The protuberances 540 on shield engage in each of the openings 522 of
the handle 512 to engage the shield 526 in the handle cavity 520 (Cohn, at
col. 9, ll. 23-35).
Figure 16
8. Cohn describes another embodiment of a scalpel having an elongate
handle 412 and a shield 430 (Cohn, at col. 6, ll. 7-23; Fig. 16).
9. The shield 430 is shown in Figure 16 as elongated and terminating in
proximal protuberance 432 (Cohn, at col. 6, ll. 15-16), having sidewalls (see
walls between 462 and 461), and a base wall that forms a channel (extending
from element 432).
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10. A blade holder 438 has a blade 446 that fits within shield 430 (Cohn, at
col. 6, ll. 33-39). The blade holder 438 and shield 430 are also referred to as
cartridge 428 (id. at col. 6, ll. 12-22).
11. The blade holder can be slid into different positions within the shield
(Cohn, at col. 7, ll. 41-42).
12. The handle 412 has “a proximal end 414, a[n] open distal end 416 and
sidewalls 418 that define an upwardly open cavity 420 with a bottom 422
having an open void 424 therein” (Cohn, at col. 6, ll. 7-11: Fig. 16).
13. “Sidewalls 418 each hav[e] an elongate channel 426 therein” (Cohn, at
col. 6, ll. 11-12).
14. “Cartridge 428 is releasably retained in cavity 420 by a proximal
protuberance 432 on shield 430 that is sized and shaped to engage an inward
dimple 434 in at least one, preferably both sidewalls 418 of handle 412”
(Cohn, at col. 6, ll. 15-18).
Claim 1
15. Claim 1 is directed to a jacket for a scalpel.
16. The jacket comprises:
17. (1) a body having a base wall, sidewalls, and a jacket channel defined
by the base and sidewalls; and
18. (2) “a trap structured to hold said scalpel in said jacket channel.”
19. The claim preamble recites the structure of the scalpel which is intended
to fit into the claimed jacket, but the body of the claim does not require the
presence of a scalpel.
20. It is not disputed by Appellant that the handle 512 described by Cohn
having sidewalls 518 and an upper wall that forms a channel or open cavity
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520 (FF4) meets the limitations of claim 1 of a jacket body having sidewalls,
a base wall, and jacket channel (FF15-17).
21. It is not disputed by Appellant that the openings 522 of the handle 512,
which engage the protuberances 540 located on the shield 526 (FF4-7), meet
the limitation of a claim 1 of a “trap” (FF18).
Claim 20
22. Claim 20 is directed to a scalpel assembly comprising:
23. (1) a scalpel and (2) a jacket which holds the scalpel.
24. The scalpel is recited in the claim to have the following characteristics:
25. • an elongated body with a base wall and two sidewalls forming a
scalpel channel;
26. • a blade assembly having a blade and a slide that is structured to move
the blade into different positions;
27. • a handle portion; and
28. • a scalpel trap portion.
29. The jacket is recited to have the following characteristics:
30. • an elongated body with a base wall and two sidewalls forming a jacket
channel;
31. • a jacket handle:
32. • a jacket trap portion.
33. The scalpel trap portion is “structured to engage said jacket trap portion
to secure said scalpel in said jacket.”
34. Cohn describes a cartridge 428 that comprises a shield 430, blade holder
438, and a blade 446 that (FF10) that corresponds to the scalpel recited in
claim 20 (FF23, 24, 26).
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35. The shield 430 has an elongated body and a channel formed by walls
(FF8-9) which meet the corresponding limitations of the claimed scalpel
(FF25).
36. The shield 430 further comprises a blade holder 438 having blade 446
which can be slid into different positions within the shield, satisfying the
requirement of claim 20 of “a blade assembly having a blade coupled to a
slider” in which the slider moves the blade into different positions (FF10-
11).
37. The shield 430 also has the claimed handle portion (FF27) – an
elongated end which terminates in proximal protuberance 432 (FF9).
38. Cohn also teaches a handle 412 which engages the shield 430 – and thus
is the same structure as the jacket of claim 20 (FF23, 33).
39. The handle 412 is elongated and has a channel and walls (FF12-13) as
does the jacket of claim 20 (FF30).
40. The handle 412 has an inward dimple that engages the protuberance 432
on shield 430 which corresponds to the jacket trap portion and scalpel trap
portion, respectively, of the claimed scalpel assembly (FF28, 32, 33).
ANALYSIS
Claim 1
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d at 1383. The
Examiner finds (Ans. 3), and we agree, that Cohn describes and depicts a
handle 512 with an open cavity 520 and openings 522 (FF1, 4, and 5) which
meets all the limitations of the claimed “jacket for a scalpel,” including the
“jacket channel” (cavity 520) and “trap structured to hold” a scalpel
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(openings 522) (FF20-21). We thus conclude that there is sufficient
evidence to establish that every element of the claimed “jacket for a scalpel”
is found in Cohn, anticipating it.
Appellant contends that Cohn “splits the handle into two components,
a reusable handle portion and a disposable shield. Neither of these elements,
however, may be coupled to the blade/slider in a manner to form a complete
‘scalpel’” (App. Br. 6).
This argument is not persuasive. As established by the Examiner, the
handle 512 described by Cohn and depicted in Figure 34 meets all the
structural limitations of the claimed “jacket for a scalpel” (FF20-21; Ans. 3).
Appellant has not identified a structure recited in claim 1 which is absent
from Cohn’s handle 512. Appellant’s statement that Cohn’s handle 512 is
“split” into a handle and shield (526) does not structurally distinguish the
claimed jacket from the disclosed handle 512. The claim language does not
exclude additional elements from being present within the jacket, such as the
shield 526 described in Cohn (FF1-3). Nor does the claim language require
the scalpel to be formed of a single piece.
Appellant also argues that the claim sets forth “a jacket that is
structured to be disposed about a disposable scalpel” (Reply Br. 6). The
teachings of the prior art “against which patentability is to measured is not a
scalpel handle having a cartridge, but a scalpel handle suitable for use as a
jacket in combination with disposable scalpels” (id.)
This argument is not convincing. A claim is anticipated when each of
its elements is described in the prior art. In this case, claim 1 is directed to a
“jacket for a scalpel” having several specific structural limitations which are
met by Cohn’s handle 512. Appellant has not identified a deficiency in
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these findings, but rather appears distinguish the claimed scalpel jacket
based on its intended use. Preamble language that merely states the purpose
or intended use of an invention is generally not treated as limiting the scope
of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d at 1345; Rowe v. Dror, 112 F.3d at 478.
The claim further characterizes the scalpel in its preamble as having
an elongated body and blade assembly. We agree with Appellant that the
terms appearing in a preamble may be deemed limitations of a claim when
they “give meaning to the claim and properly define the invention.” Gerber
Garment Technology, Inc. v. Lectra Sys., Inc., 916 F.2d at 688. However, in
this case, the complete structure of the jacket is set forth in the claim body
and satisfied by Cohn’s handle 512. See Schumer v. Lab. Computer Sys.,
Inc., 308 F.3d at 1310. Moreover, Cohn’s handle is structured to
accommodate a blade assembly as required by the preamble of claim 1 and
further comprises a “trap” structure (cavity 520; FF4, 6, 7), as in claim 1, to
engage the blade assembly. In sum, Cohn’s device serves the same function
as the claimed “jacket for a scalpel.”
Appellant asserts that the Cohn’s shield 526 and blade cartridge 524
do not form a “scalpel” as required by claim 1. This argument is not
persuasive. Claim 1 does not require a scalpel. It is drawn to a scalpel
jacket whose intended use is to hold a scalpel.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2, 11, 12, 14-16, 18, and 19 were not argued separately (App. Br. 10) and
thus fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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Claim 20
Claim 20 is directed to a scalpel assembly comprising a scalpel and a
jacket which holds the scalpel (FF22-23). The Examiner finds that all
limitations of the assembly are met by the scalpel described by Cohn and
illustrated in Cohn’s Figure 16 (Ans. 4). As summarized above (FF22-40),
we agree with these findings and conclude that Cohn anticipates the subject
matter of claim 20. Thus, we turn to Appellant’s rebuttal arguments and
evidence.
Appellant contends that cartridge 428 as disclosed by Cohn (see
FF10) does not meet the limitations of a scalpel as required by claim 20
(App. Br. 8). “The reason the ‘cartridge 428’ is never identified [by Cohn]
as a ‘scalpel’ is because those skilled in the art would not consider the
‘cartridge 428’ to be a ‘scalpel.’” (Id.) According to Appellant, the term
“scalpel” would be understood by persons of skill in the art “to be a very
precise tool having a handle and a blade coupled together in an exact
relationship. That is, a scalpel blade cannot be loosely attached to the
handle” (Shackelford, Jr. Aff. ¶ 4). Appellant asserts that the blade/slider
described by Cohn would be disposed loosely in the shield and thus would
not be considered a scalpel by persons of ordinary skill in the art (App. Br.
7-8). Rather, Appellant contends that all three elements described in Cohn –
the shield, blade holder, and handle form a scalpel (id.).
As explained above, we decline to read the term “scalpel” as recited in
claim 20 to have the narrow meaning proffered by Appellant’s in this appeal.
The scalpel of claim 20 has
an elongated body with a base wall and two sidewalls forming a
scalpel channel, a blade assembly having a blade coupled to a
slider, said slider structured to move said blade between a first,
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retracted position and second, extended position, and a handle
portion; said scalpel handle portion having a scalpel trap
portion.
All these elements are met by the cartridge 428 comprising a shield 430 (the
“elongated body” with a “scalpel channel”) and a blade holder 438 (FF34-
36). Appellant has not distinguished the structure of the claimed “scalpel”
other than to assert that the blade is loosely mounted in the shield and
therefore would not be understood to be a scalpel. “[I]t is Appellant’s
position that those skilled in the art, as well as those about to have surgery
performed upon them, would refuse to use the ‘scalpel’ identified by the
Examiner, as that assembly would easily allow the blade/slider to become
disengaged from the ‘handle’” (Reply Br. 4).
The claim does not require the scalpel to be rigidly connected. The
claim also does not limit the scalpel to be used for a particular procedure.
We affirm the rejection of claim 20. Claim 21 falls with claim 20
because separate reasons for its patentability were not provided. 37 C.F.R. §
41.37(c)(1)(vii).

CONCLUSION OF LAW
Cohn describes a jacket for a scalpel and a scalpel that meets the
limitations of claims 1 and 20. We therefore affirm the rejection of claims 1
and 20, and dependent claims 2, 11, 12, 14-16, 18, 19, and 21 as anticipated
by Cohn.

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TIME PERIOD
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

cdc

David C. Jenkins
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh PA 15219
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