Ex Parte Shimura

Board of Patent Appeals and Interferences

Jun 3, 2008

10389897 (B.P.A.I. Jun. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUO SHIMURA
____________

Appeal 2007-3857
Application 10/389,897
Technology Center 3700
____________

Decided: June 3, 2008
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

Opinion by MOHANTY, Administrative Patent Judge.

Concurring Opinion by FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-7, 9-17. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). A hearing was held and arguments heard on May 20, 2008. We
AFFIRM.
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THE INVENTION
The Appellant’s claimed invention is directed to an operation aid
system which includes a template selection means which selects a template
of artificial bone to be used in an operation, an input means through which
operating plan information is input, and an image display means which
displays the selected template and the operating plan information as an
image. (Specification 3:9-18). Claim 1, reproduced below, is representative
of the subject matter of appeal.

1. An operation aid system comprising
a template selection means which selects a
template of artificial bone to be used in an
operation among a plurality of different templates
of artificial bone and inputs the selected template
of artificial bone,
an input means through which operating
plan information is input, and
an image display means which displays the
template selected by the template selection means
and the operating plan information input through
the input means as an image.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Tanaka US 6,692,488 Feb. 17, 2004

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The following rejections are before us for review1:
1. Claims 1, 3-7, 9-17 are rejected under 35 U.S.C. § 102(e) as
anticipated by Tanaka.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence2:
1. Tanaka discloses that the display means 40 displays the selected
template of the artificial bone (or the thumbnail images thereof). The
template may be selected by inputting the number of the template through
the keyboard 91. (Col. 8:56-64).
2. The display means image of the template of the artificial bone is
superimposed over the image of the bone by a drag and drop procedure with
the computer mouse 93. (Col. 8:64-9:11).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior

1 We note that the rejection of claims 1-17 under 35 U.S.C. § 102(b) as
anticipated by Kennedy has been withdrawn by the Examiner in the Answer
mailed 2-26-07 at page 2.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
With regard to claim 1, the Appellant argues that the phrase “an image
display means which displays the template selected by the template selection
means and the operating plan information input through the input means as
an image” is consistent with the claiming requirements of 35 U.S.C. § 112
6th paragraph (Br. 10-11). The Examiner in contrast argues that this phrase
does not invoke § 112, 6th paragraph (Ans. 6). The Appellant also argues
that claim 1 requires that the image display means displays the “operating
plan information” and that “[a]t no point is operating plan information
displayed in the device of Tanaka” (Br. 9) and that therefore Tanaka fails to
anticipate the claim.
Initially, we agree with the Appellant that the phrase “an image
display means which displays the template selected by the template selection
means and the operating plan information input through the input means as
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an image” does invoke 35 U.S.C. § 112, 6th paragraph since the word
“means” is actually used. “A claim limitation that actually uses the word
“means” will invoke a rebuttable presumption that § 112, 6th applies” CCS
Fitness, Inc. v. Brunswick Corp. 288 F.3d 1359, 1369. However, we hold
that the phrase “operating plan information input through the input means as
an image” is nonfunctional descriptive material which does not alter or
reconfigure the claimed “image display means”. Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability). The content of the
“operating plan information” cannot control patentability because it has no
functionality with respect to the display. The Appellant has not challenged
other elements of claim 1 and Tanaka thus anticipates claim.
Regardless, Tanaka does disclose an “image display means which
displays … the operating plan information input through the input means as
an image.” Tanaka discloses that the selected template of the artificial bone
is dragged and dropped onto the image of the bone through the computer
mouse (FF 2). Tanaka’s display of the bone template over an image of the
actual bone would clearly be considered part of the “operating plan
information” when given the broadest reasonable interpretation. Further,
Tanaka also discloses inputting the number of the template of the artificial
bone to be selected and inputting this into the keyboard (FF 1) which results
in the display of the template which is also clearly part of the “operating
plan information”.
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For the reasons above, the rejection of claim 1 as anticipated by
Tanaka is sustained.
The Appellant has not argued separately for the patentability of claims
3-7 and 9-17. Accordingly, the rejection of these claims is sustained for the
same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1, 3-7, and 9-17 under 35 U.S.C. § 102(e) as being
anticipated by Tanaka.

DECISON
The Examiner’s rejection of claims 1, 3-7, and 9-17 is sustained. No
time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

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FISCHETTI, Administrative Patent Judge, concurring in result.
It is important to note that in this case there are two different claim
forms used by Appellant to cover the claimed system. One is the means plus
function format used in claim 1, and the other is the functional approach
format used in claim 7. Since we have determined that 35 U.S.C. 112, sixth
paragraph language applies to claim 1, we credit the devices described by
function under this provision of the statute as positive limitations, to the
extent that the function does not require nonfunctional descriptive material.
However, claim 7 recites the same devices of claim 1, namely, “a
template selector”, “an inputter” and an image displayer, all described by
functional language but without the benefit of 35 U.S.C. 112, sixth
paragraph invocation. As such, although the language of claim 7 describes
these devices functionally, we are nevertheless required to give such
language weight to the extent that the prior art is or is not capable of meeting
the functional limitation. See In re Schreiber, 128 F.3d 1473, at 1478-1479
(Fed. Cir. 1995). The Examiner found that “…a monitor clearly has the
ability to perform the function recited in the claim…” (Final 4). At this
point, the burden shifts to Appellant to show that the prior art structure does
not inherently possess the functionally of the claimed apparatus. In re
Schreiber at 1478, citing In re Spada, 911 F.2d at 708 (Fed.Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed.Cir.1986); In re Best, 562 F.2d 1252, 1254-
55 (CCPA 1976). Appellant has not made any showing of why the prior art
structure of the monitor in Tanaka does not inherently possess the
functionality recited in claim 7, and hence Appellant fails to meet its burden
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of rebutting the prima facie case of unpatentability established by the
Examiner.
Finally, Appellant’s Brief seems to imply that the holding in
Schreiber applies only to interpreting language in the preamble. (Appeal Br.
12). However, the court in Schreiber addressed the functional language of
claim 1 as it occurred throughout the entire claim, and hence did not limit its
analysis to only functional language found in the preamble. “The Board's
finding that the scaled-up version of figure 5 of Harz would be capable of
performing all of the functions recited in Schreiber's claim 1 is a factual
finding, which has not been shown to be clearly erroneous. (Emphasis
added) Schrieber at 1479.

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