Ex Parte Sun

Board of Patent Appeals and Interferences

Jul 8, 2008

10729973 (B.P.A.I. Jul. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM Y. SUN
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Appeal 2007-0692
Application 10/729,973
Technology Center 3700
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Decided: July 8, 2008
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Before WILLIAM F. PATE, III, DEMETRA J. MILLS, LORA M. GREEN,
LINDA E. HORNER, and RICHARD M. LEBOVITZ, Administrative
Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Technology Center 3700 requests rehearing under 37 C.F.R. § 41.52
of the Board Decision entered March 8, 2007 (“Decision”) in which the
Examiner’s final rejection of independent claim 1 and dependent claim 8
over prior art was reversed.

Appeal 2007-0692
Application 10/729,973

ISSUE
Claim 1 is drawn to a “tongue stabilizer for a laryngoscope blade” that
comprises three elements: 1) a “tongue-engaging plate;” 2) a “foam strip
support” attached to the plate; and 3) a “pressure-sensitive adhesive”
attached to the foam support. In our Decision entered March 8, 2007, we
reversed the Examiner’s rejection of claim 1 (and dependent claim 8) as
anticipated under 35 U.S.C. § 102(b) by Panduit (Product Bulletin,
“ABM112 Adhesive Backed Cable Tie Mount,” pp. 28-29, 1999).
Technology Center 3700 (“Tech Center”) requests rehearing and
reconsideration1 of this decision to reverse the anticipation rejection. The
Tech Center contends that the Board erred in reversing the rejection by
improperly “reading a limitation” from the Specification into the “tongue-
engaging plate” of claim 1 (Req. Reh’g 4).
DISCUSSION
Claim interpretation is at the heart of patent examination, because
until a claim is properly interpreted it cannot be compared to the prior art.
This case involves the interpretation of the term “tongue-engaging plate.” In
our Decision, we interpreted “tongue-engaging plate” to mean “a structure
which, when attached to a laryngoscope blade and in contact with the
tongue, must be capable of confining and holding the tongue on its surface”
(Decision 4). The Tech Center contends that our interpretation is improper
because we imported structural limitations into it from the Specification.

1 The Request for Rehearing was filed by the Tech Center on March 20,
2008, a little over one year from the date of the Decision. It is regrettable
that over a year elapsed until the Tech Center filed the Request for
Rehearing.
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Appeal 2007-0692
Application 10/729,973

The “tongue-engaging plate” is a structural element of the claimed
“tongue stabilizer.” The claim, however, does not explicitly recite the
structural features which enable it to perform the “tongue-engaging”
function. Claims terms, however, are given their broadest reasonable
meaning in “light” of the specification. In re Crish, 393 F.3d 1253, 1257
(Fed. Cir. 2004). Thus, we are to refer to the Specification to take into
account how the term has been used by the inventors and whether it has been
given any special meaning. In this case, the term “tongue-engaging plate” is
not explicitly defined in the Specification. However, as we explained in our
Decision, the Specification teaches that
[w]hen in contact with the tongue, the plate is used “to confine
the tongue and prevent it from slipping and obstructing and/or
obscuring the throat passage.” (Specification 5: 3-5.) This
contact is necessary to “support” (Id. at 4:16) and “confine” the
tongue during an intubation procedure (Id. at 5: 3-5; 6: 4-7).
In addition to confining the tongue, the tongue-engaging
plate also “holds” the tongue. As pointed out in the
“Description of Related Art,” prior art laryngoscopes “are
narrow and can hold only approximately half of the tongue, so
that it is very hard to make the tongue stay on the laryngoscope
blade with any degree of stability.” (Id. at 1: 13-15.) To solve
this problem, Appellant provides a tongue-engaging plate
which, when attached to the laryngoscope, holds the tongue on
its surface so it does not slip off and obscure the throat passage
(Id. at 5). Preferred shapes are that of a spoon or a concave
upper surface “to cradle the tongue.” (Id. at 4: 16-17.)
(Decision 4).
To sum up, we understood from the Specification that the “tongue-
engaging plate” is the structure in a laryngoscope blade that, when used
during an intubation procedure, confines and holds the tongue. Thus, the
claimed tongue-engaging plate has a purpose or intended use. In the context
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Application 10/729,973

of language in a claim preamble, it has been stated that the “determination of
whether preamble recitations are structural limitations or mere statements of
purpose or use ‘can be resolved only on review of the entirety of the patent
to gain an understanding of what the inventors actually invented and
intended to encompass by the claim.’” Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997) (internal citations omitted) (emphasis added). This same
analysis applies to intended use statements in the body of the claim. See In
re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987) (statements of intended use
often appear in the claim’s preamble, although not necessarily). Thus, under
the relevant legal principles, we are directed to the Specification to properly
interpret the meaning of “tongue-engaging plate.”
As discussed above, review of the Specification reveals that the
“tongue-engaging plate” is a structural limitation that requires it to confine
and hold the tongue. Panduit has no such structure in it. Rather, Panduit
shows a cable mount that has two top surfaces attached to the self-adhesive
form tape: an upper raised platform surface which lies on a wider bottom
surface base, where the two surfaces are connected by downwardly sloping
lines on each corner (Panduit, at p. 28; See Reply Br. 9; Decision 5.) The
raised platform is a bridge that forms an opening through which wires are
inserted (Panduit, at p. 28-29). In reversing the rejection, we agreed with
Appellant that Panduit does not describe a “tongue-engaging plate” because
the cable mount surfaces do not have a structure which would enable them to
confine and hold the tongue during an intubation procedure (Decision 6).
The Tech Center argues that
the Board went too far by requiring “a structure which, when
attached to a laryngoscope blade and in contact with the tongue,
must be capable of confining and holding the tongue on its
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Appeal 2007-0692
Application 10/729,973

surface” (bottom of page 4 of the decision). This function and
the structure for this function are not expressly recited in the
claim. We believe that the Board improperly relied on a portion
of the specification that describes the preferred embodiment
because the Board supported its determination by stating (on
page 6 of the decision) that “the specification describes this
structure generally as an “elongated” plate having preferred
spoon or concave shapes (Specification 4: 14-17) to hold the
tongue in place” (with emphasis added).
(Req. Reh’g 5).
This argument is not persuasive. The Tech Center argues that we
“went too far” in our interpretation of “tongue-engaging plate,” but the only
specific defect they allege is that we improperly relied upon a preferred
embodiment described in the Specification in supporting our definition.
This is not correct. The Decision explicitly acknowledges that a “‘spoon or
concave’” surface is a “preferred” shape described in the Specification to
“‘cradle’” the tongue; we did not limit the plate to these shapes, instead
defining the plate more broadly as “elongated” in accordance with its
description in the Specification (Decision 6). Claim terms are necessarily
read in the context of the Specification to shed light on their meaning. See
Rowe v. Dror, 112 F.3d at 479.
Our interpretation of “tongue-engaging plate” does not refer to the
term “cradle” (as used in the Specification, at 4: 16-17, to characterize the
spoon and concave shapes) nor does it use any language that would indicate
we improperly narrowed its meaning to a preferred embodiment described in
the Specification.
The real question in this case – that the Tech Center does not
address – is whether Panduit’s cable mount could be used as a tongue
stabilizer for a laryngoscope blade as required by claim 1. Appellant has
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Appeal 2007-0692
Application 10/729,973

provided a rebuttal explanation as to why the Panduit structure would be
incapable of holding a tongue: because it is an “irregular” top surface
“shaped to hold cable wires in a permanent position between upstanding
protrusions” (App. Br. 19). However, the Tech Center did not explain in
response how an irregular surface could perform the function required by the
“tongue-engaging plate” of claim 1.
The Tech Center contends that the “Board’s interpretation of ‘tongue-
engaging plate’ would render claim 3 improper under 35 U.S.C. § 112, 4th
paragraph, because claim 3 would have the same limitations as claim 1”
(Req. Reh’g 6). Claim 3,2 which is dependent on claim 1, recites that “said
tongue engaging plate top central area is recessed to provide a tongue-
cradling concavity” (Amendment dated Aug. 8, 2005, at 12). We agree with
the Tech Center that claim 3 is apparently directed to the preferred concave
shape. However, we have not interpreted the plate of claim 1 to be concave,
but rather interpreted it more broadly to have an “elongated” shape which is
capable of holding and confining the tongue (Spec. 4: 14-15; Decision 4).
The Specification explicitly states that “a flat plate can function adequately
to confine the tongue” (Spec. 5: 3-4), consistent with our broader
interpretation of tongue-engaging plate to refer to a structure which can
“confine” the tongue.
Citing In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), the
Tech Center states that “claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function”
(Req. Reh’g 6). In Schreiber, claims to a “dispensing top” having an

2 Claim 3 apparently contains allowable subject matter; it is objected to, but
not rejected (App. Br. 4).
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Appeal 2007-0692
Application 10/729,973

opening to allow “several kernels of popped popcorn to pass through at the
same time” was rejected over prior art having a spout for dispensing oil. In
re Schreiber, 128 F.3d at 1475-76. Schreiber argued that the prior art did
not disclose a structure to dispense popcorn. Id. at 1477. However, the court
held that the “intended use” of the claimed dispensing top did not distinguish
it over the cited prior art because it was deemed to have a structure
completely described in the prior art reference, but for a different purpose.
Id. at 1477. Here, we have concluded that the prior art cable mount surfaces
would not be capable of performing the claimed function; thus, the structure
of the claimed “tongue-engaging plate” is not described in the prior art.
CONCLUSION
We have considered the Tech Center’s Request for Rehearing, but
decline to modify our original Decision entered March 8, 2007.

REHEARING DENIED

Ssc:

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