Ex Parte Tani

Patent Trial and Appeal Board

Nov 21, 2017

13376381 (P.T.A.B. Nov. 21, 2017)

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.
13/376,381 12/05/2011 Tohru Tani YN-000300US 1002
68514 7590
Don D. Cha
12640 W. Cedar Drive
Suite 1
Lakewood, CO 80228
EXAMINER
HEFFNER, NED T
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
11/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DCHA @ HDCIPLAW.COM
kmcinnish@hdciplaw.com
matthew.hdc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOHRU TANI
Appeal 2016-002284
Application 13/376,381
Technology Center 3700
Before WILLIAM V. SAINDON, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Tohru Tani, appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 12—29 and 32. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-002284
Application 13/376,381
CLAIMED SUBJECT MATTER
The claims are directed to “a surgical aspiration cannula that aspirates
and removes blood, exuding body fluid, exfoliated small tissues and
cleansing liquid during a surgical operation.” Spec. 11. Claims 12 and 28
are the independent claims pending in this case. Claim 12, reproduced
below, is illustrative of the claimed subject matter:
12. A surgical aspiration cannula, comprising:
a tip opening that is capable of aspirating a
clot; and
a flexible aspiration structure comprising a
plurality of extended bristles arranged in a coaxial
direction of a cannula from the tip opening and
having capillary action.
Appeal Br. 14 (Claims App.).
EVIDENCE RELIED ON BY THE EXAMINER
DiVito US 4,672,953
Abela US 5,895,400
Mitchell US 6,074,208
Weihrauch US 7,036,179 B1
June 16, 1987
Apr. 20, 1999
June 13, 2000
May 2, 2006
REJECTIONS
The Examiner made the following rejections:
I. Claim 32 stands rejected under 35U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
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II. Claims 12—18, 20, 22—25, 27, and 32 stand rejected under
35 U.S.C. § 102(b) over DiVito, with extrinsic evidence by way of
Weihrauch.1
III. Claims 28 and 29 stand rejected under 35 U.S.C. § 102(b) over
Abela.
IV. Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as
over DiVito, with extrinsic evidence by way of Weihrauch.
V. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over DiVito and Mitchell, with extrinsic evidence by way of
Weihrauch.
OPINION
Rejection I
The Examiner rejects claim 32 as indefinite for failing to particularly
point out and distinctly claim the subject matter of the invention. Final Act.
7—8. In particular, the Examiner determines that the phrase “sweeping as in
a broom” is unclear. Id. Further, the Examiner explains that “[f]rom a plain
meaning of the phrase it is unclear if it is intended that the structure is to be
capable of sweeping in the manner of a broom, or as inside of a broom.” Id.
Appellant does not address the Examiner’s rejection and in failing to do so,
fails to identify any reversible error. See Appeal Br. 3—13. We therefore
1 Although the Examiner does not list claim 32 in the lead paragraph
for Rejection I (Final Act. 8), the Examiner does discuss claim 32 in the
body of the Rejection {id. at 11). As such, we consider the absence of claim
32 from the lead paragraph as a typographical error.
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Application 13/376,381
summarily sustain this rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (explaining that summary affirmance without consideration
of the substantive merits is appropriate where an appellant fails to contest a
ground of rejection).
Rejection II
Appellant argues for the patentability of claims 12—18, 20, 22—25, 27
and 32 as a group. Appeal Br. 5—7.
Claim 12
The Examiner finds that the invention taught by DiVito discloses all
of the limitations of claim 12 including that the “flexible aspiration structure
of DiVito will necessarily have appreciable capillary action.” Final Act. 8—
9.
Appellant argues that the Examiner has erroneously construed the
term “cannula.” Appeal Br. 6. Specifically, Appellant, quoting multiple
sources, offers the following definition of cannula:
a tube that can be inserted into the body, often for the delivery
or removal of fluid; a small tube for insertion into a body
cavity or into a duct or vessel; A flexible tube . . . that is
inserted into a bodily cavity, duct or vessel to drain fluid or
administer a substance such as a medication.
Id. (citations omitted). Appellant argues that given the definition of cannula
above, “[t]o equate the oral hygiene apparatus disclosed in the DiVito Patent
as a ‘cannula’ that is capable of use in surgery is not only unfathomable, but
defies all definitions of logic.” Id., Reply Br. 3. Further, Appellant argues
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Application 13/376,381
that although “the preamble is generally not given any weight, in the present
instance, the term ‘cannula’ ... is clearly limiting,” and “has a clear and
definitive meaning and does NOT include an oral hygiene device.” Appeal
Br. 6, Reply Br. 2—3.
Appellant also argues that “[i]t is abundantly clear that the apparatus
disclosed in the DiVito Patent is directed to use in oral hygiene or in the
field of dentistry to, in essence, clean one’s teeth.” Appeal Br. 7. Thus,
Appellant concludes that “[cjlearly the device disclosed in the DiVito Patent
is NOT a ‘surgical cannula.’” Id. (emphasis in original).
In the Examiner’s Answer, the Examiner “acknowledges that
Appellant presents reasonable definitions for a cannula.” Ans. 10. The
Examiner “maintains that the apparatus of DiVito is a cannula in the sense of
the definitions presented by Appellant.” Id. The Examiner finds that DiVito
teaches “an appreciably small tube able to be inserted into a body cavity (the
oral cavity) and by being expressly disposed to deliver and remove fluid,”
the device of DiVito “is capable of use in surgery,” and “is intended for use
in a clinical setting, thus [it] is not merely a toothbrush.” Id. at 10. Further,
the Examiner finds that “the apparatus of DiVito remains configured for use
in a body cavity, for use by a clinician and is a tube with lumens for fluid
delivery and withdrawal and a hose connection for fluid delivery and
withdrawal.” Id. at 12.
Discussion
The Examiner’s positions as to the recited “surgical aspiration
cannula” is unsupported by credible fact or reasoning.
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The Examiner’s basis for finding that “the apparatus of DiVito is
capable of use in surgery” lacks support in the record. DiVito describes an
“oral hygiene apparatus . . . used much in the same manner as a conventional
tooth brush.” DiVito, 2:6—18. The disclosed apparatus is effectively a
toothbrush that uses a vacuum to remove waste material while brushing. Id.
at 2:8—21. The Examiner states that “the apparatus of DiVito is capable of
use in surgery in the sense of being used for oral hygiene thus for treatment
with an instrument.” Ans. 10. The definition of “surgery” applied by the
Examiner—“treatment with an instrument”—encompasses more than what a
person of ordinary skill in the art would include in the scope of “surgical” in
the preamble of claim 12, when considering that language in view of the
Specification. The Examiner’s definition would encompass, for example,
most everyday grooming activities (brushing teeth, trimming nails, cutting
hair, etc.), which is clearly not the direction given by the Specification.
The Specification explains to a person of ordinary skill in the art that a
surgical aspiration cannula is one that provides aspiration during a surgical
operation. See, e.g., Spec. ]Hf 1—7 (describing various surgical procedures
using a surgical aspiration cannula). The term “surgical” is given a narrower
meaning in the Specification, which describes not just any treatments with
an instrument, but invasive treatments with an instrument. See, e.g., Spec. 1
9 (discussing suction of blood and controlling bleeding, for example, in
brain surgery). Although not limiting, these examples help explain to a
person of ordinary skill in the art what a surgical aspiration device is—e.g.,
a device capable of assisting in surgeries within the body where bleeding is
involved and blood, blood clots, body fluid, and cleansing liquid must be
removed from the surgical site. This is the reading of “surgical” that is
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Application 13/376,381
consistent with the specification. In re Smith Inti, Inc., 871 F.3d 1375,
1382—83 (Fed. Cir. 2017) (the broadest reasonable interpretation is “an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is ‘consistent with
the specification’”).
The Examiner does not cite to, nor are we aware of, credible evidence
or reasoning of record that tooth brushing in this form constitutes a
“surgical” procedure in the context of claim 12. The Examiner’s
explanation at pages 10-12 of the Answer does not provide sufficient factual
basis or technical explanation in support of the finding that the device in
DiVito is capable of use in a “surgical” procedure. Because the Examiner
has not shown by a preponderance of the evidence that DiVito describes a
“surgical aspiration cannula,” as properly construed, we do not sustain the
rejection of claim 12.
Claims 13—18, 20, 22—25, 27 and 32 depend from claim 12. The
Examiner relies on the same deficient findings and conclusions with regard
to DiVito as discussed above in our analysis of claim 12. Thus, for the same
reasons discussed above, we also do not sustain the rejection of claims 13—
18,20, 22-25, 27 and 32.
Rejection III
Appellant argues for the patentability of claims 28 and 29 as a group.
Appeal Br. 7—8. We select claim 28 as representative, and claim 29 thus
stands or falls with claim 28.
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Claim 28 requires, among other things, “a flexible aspiration structure
comprising an extended bristle in an axial front direction of a cannula from
the tip opening.” Appeal Br. 16 (Claims App.). The Examiner states that
“the claimed flexible aspiration structure is one with a bristle in a front
direction of an opening, but not necessarily wherein part or all of the flexible
aspiration structure is at the tip opening.” Ans. 13. Appellant’s construction
of claim 28 is as follows: “the flexible aspiration structure is located at the
tip opening.” Appeal Br. 7, Reply Br. 4. In this instance, Appellant has
argued for a different scope of the claim by asserting that the claim requires
that the bristles be “located at the tip opening,” however, claim 28 is not so
limiting. Although the Specification describes and depicts an embodiment
with a flexible aspiration structure located at the tip opening (see Spec. 168;
Fig. 2), “the mere fact that the patent drawings depict a particular
embodiment of the patent does not operate to limit the claims to that specific
configuration.” Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc.,
340 F.3d 1298, 1306-07 (Fed. Cir. 2003).
Under the broadest reasonable interpretation of the language at issue,
claim 28 requires the bristles to extend in an axial direction defined by the
tip opening. In other words, we view the phrase “from the tip opening” as
clarifying the direction that the “extended bristle” extends rather than
limiting the beginning location of the “extended bristle.” The Specification
likewise reflects such a distinction, by discussing separately the direction the
bristles extend versus the location from where they extend. See, e.g.. Spec.
128 (“flexible aspiration structure extending in an axial front direction of a
cannula from the tip opening”) (emphasis added). As set forth above,
Appellant’s interpretation imports limitations from the Specification into the
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claims. Thus, that the prior art does not disclose that alleged limitation does
not apprise us of error in the Examiner’s rejection. See Appeal Br. 8
(arguing that “in the device discussed in the Abela Patent the ‘flexible
aspiration structure’ is NOT located at the tip opening of the surgical
aspiration cannula”). Accordingly, the rejection of claim 28, and dependent
claim 29, is sustained.
Rejection IV
Claims 19 and 21, either directly or indirectly, depend from claim 12.
The Examiner’s reliance on Weihrauch does not cure the deficiencies of
DiVito. Final Act. 12—14. Accordingly, for the reasons set forth supra, we
do not sustain the rejection of claims 19 and 21.
Rejection V
Claim 26 depends from claim 12. The Examiner’s reliance on
Weihrauch and Mitchell does not cure the deficiencies of DiVito. Thus, the
rejection of claim 26 is not sustained.
DECISION
The Examiner’s decision to reject claim 32 under 35U.S.C. § 112,
second paragraph, is affirmed.
The Examiner’s decision to reject claims 12—18, 20, 22—25, 27 and 32
under 35 U.S.C. § 102(b) is reversed.
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Application 13/376,381
The Examiner’s decision to reject claims 28 and 29 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner’s decision to reject claims 19, 21, and 26 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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