Ex Parte Temple

Board of Patent Appeals and Interferences

Mar 16, 2009

10827493 (B.P.A.I. Mar. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN TEMPLE
__________

Appeal 2009-00121
Application 10/827,493
Technology Center 3700
__________

Decided:2 March 16, 2009
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and FRANCISCO C.
PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 John Temple is the real party in interest (App. Br. 1 (Appeal Brief filed
February 1, 2007)).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for warming an endoscope, laparoscope, or similar instruments. The
Examiner has rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“In minimally invasive surgical (MIS) procedures, elongated
illuminators and viewers, i.e., laparoscopes and endoscopes, are inserted
through small incisions in the abdominal wall or elsewhere. The viewer is
typically coupled to a video camera that shows the operating field on a
monitor” (Spec. 1). Because the devices are initially at room temperature
and are then placed in a warm, moist body cavity, “[a] common problem is
that the lens on the viewer becomes fogged” (id.).
The Specification discloses “a system and associated method for
warming an endoscope, laparoscope, or other such instrument to minimize
fogging” (id. at 2). The preferred embodiment includes “a pad for wrapping
around an instrument, including a one or more substances operative to
generate heat through an exothermic reaction; and an activation disc located
around the periphery of the pad to provide for convenient user access” (id. at
3).
Claims 1-4 are pending and on appeal (App. Br. 1). Claims 1 and 3
are representative of the rejected subject matter and read as follows:
1. A system for warming an endoscope, laparoscope,
or other such instrument to minimize fogging, comprising:
a flexible pad having a length, a width and a periphery
for wrapping around the instrument, the pad including a
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mixture of water and sodium acetate to generate heat through an
exothermic reaction;
an activation disc located around the periphery of the
pad; and
one or more elongate partitions running lengthwise along
the pad to establish fold line, each partition including a gap to
facilitate fluid transfer of the mixture.

3. The system of claim 1, further including a housing
to contain the pad in sleeve form into which the instrument is
inserted.

The Examiner cites the following documents as evidence of
unpatentability:
Morgan US 5,910,106 Jun. 8, 1999
Beane US 2002/0022762 A1 Feb. 21, 2002

The following rejections are before us for review:3
Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Morgan (Ans. 4-5).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Morgan and Beane (Ans. 5).
ANTICIPATION
ISSUE
The Examiner finds that Morgan anticipates claim 1 because it
discloses a laparoscope or endoscope warming system having the following
features:

3 The Examiner has withdrawn an obviousness rejection of claims 1, 2, and 4
over Morgan and Meckstroth (U.S. Patent No. 5,651,757 (filed February 15,
1996)), and an obviousness rejection of claim 3 over Morgan, Beane, and
Meckstroth (Ans. 4).
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“[A] flexible pad 21 having a length, a width and a
periphery for wrapping around the instrument, the pad
including a mixture of water and sodium acetate to generate
heat through an exothermic reaction ([s]ee Col. 4, Lines 52-62),
an activation disc 41 located around the periphery of the pad
and one or more elongate partitions running lengthwise along
the pad to establish fold line, each partition including a gap to
facilitate fluid transfer of the mixture (see Figs 2-3).

(Ans. 4-5).
Appellant contends that in finding Morgan’s device to be anticipatory,
the Examiner failed to interpret claim 1 in a manner consistent with the
Specification (App. Br. 3-4). Thus, Appellant argues, Morgan fails to meet
all of the limitations in claim 1 because it “does not teach or suggest ‘a
flexible pad . . . for wrapping around the instrument.’ Nor does Morgan
teach or suggest ‘one or more elongated partitions running lengthwise along
the pad to establish fold lines, each partition including a gap to facilitate
fluid transfer of the mixture.’” (App. Br. 4).
In view of the respective positions advanced by Appellant and the
Examiner, the issue with respect to this rejection is whether the Examiner
erred in finding that Morgan meets the limitations in claim 1 requiring the
endoscope warming system to include a pad, wherein the pad has one or
more elongate partitions running lengthwise along the pad to establish fold
lines, each partition including a gap to facilitate fluid transfer of the mixture.
FINDINGS OF FACT (“FF”)
1. Claim 1 recites a system for warming an endoscope, laparoscope, or
other such instrument to minimize fogging. The device has a flexible pad
for wrapping around the instrument, the pad including a mixture of water
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and sodium acetate to generate heat through an exothermic reaction. The
pad also has an activation disc located around the periphery of the pad.
Claim 1 also recites that the pad has “one or more elongate partitions
running lengthwise along the pad to establish fold line[s], each partition
including a gap to facilitate fluid transfer of the mixture.”
2. Appellant’s Figure 6 (Replacement Drawing Sheet filed May 17,
2005) is reproduced below:

The Specification describes Figure 6 as follows:
Figure 6 is a plan view of a preferred heating pad 160
according to the invention. The pad contains a mixture of
sodium acetate and water, and, unique to the invention, a
particular spot 152 is provided, including a stainless steel disc
to initiate the chemical reaction. . . . [T]his disc is placed on the
pad so that when rolled into [a] housing, the area 152 is easily
accessible when the hinged lid . . . is opened. Note that the pad
160 is also otherwise partitioned along lines 164 and 166 to
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conveniently provide fold areas for easier placement into the
housing . . . . Gaps 168, 170 facilitate fluid transfer of the
mixture.

(Spec. 4 (as amended May 17, 2005) (emphasis added).)
3. Appellant’s Figure 1 (Drawings filed September 2, 2004) is
reproduced below:

According to the Specification, “Figure 1 is an oblique representation
showing the way in which pad 102 is placed into a housing 104 without a lid
or hinged access panel” (Spec. 4). Figure 1 shows pad 102 being folded into
housing 104 along fold lines (not designated by reference numerals 164 and
166 shown in Figure 6).
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4. Morgan discloses “an instrument heater for heating an optical scope
used in laparoscopic surgery” (Morgan, col., 3, ll. 6-7). The instrument
heater is essentially a sheath that surrounds the instrument, with “an inner
wall forming a bore for receiving the instrument and an outer wall forming a
void between the inner wall and the outer wall” (id. at col. 3, ll. 10-12). The
sheath is open at the end that receives the instrument, and closed at the other
end (see id., at col. 3, ll. 15-29; see also Figure 2).
5. Between its inner and outer walls, Morgan’s sheath has a chemical
solution, “such as food grade sodium acetate and water, which is reactive to
a chemical substance for generating heat” (Morgan, col. 3, ll. 12-15). The
closed-ended tip of the sheath has an activator disk with a substance, for
example garnet powder, attached to the disk (id. at col. 3, ll. 15-18). Morgan
discloses that “[w]hen the activator disk is flexed, the chemical substance is
ejected from the activator disk which mixes with the chemical solution. The
interaction of the chemical solution and the chemical substance results in an
exothermic reaction which generates heat within the sheath” (id. at col. 3, ll.
18-22).
6. Figure 2 of Morgan, reproduced below, is a perspective view of
Morgan’s instrument heater 21:

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Morgan’s Figure 2 shows:
The instrument heater 21 includes a sheath 23. The sheath 23
has an inner wall 25 and an outer wall 27 running across the
entire length of the sheath 23. The inner wall 25 and the outer
wall 27 form an essentially circular bore (not shown in FIG. 1)
through the center of the sheath 23. At one end of the sheath 23
is an opening 29 which serves as the beginning of the bore. At
an opposite end of the sheath 23 is a tip 31. The tip 31 is
closed-ended and essentially dome-shaped.

(Morgan, col. 4, ll. 35-43.)
7. Referring to Figure 2, Morgan further discloses:
The inner wall 25 and the outer wall 27 are constructed
of a flexible nonporous material allowing for the insulation of
heat. In the disclosed embodiment, the material is chip board
which is a thin cardboard type material which insulates the heat
within the interior of the sheath 23. However, any flexible and
nonporous material capable of being sterilized may be used.
Between the inner wall 25 and the outer wall 27 is a
chemical solution used in forming an exothermic reaction to
create heat. In the disclosed invention, a food grade sodium
acetate and water solution is utilized. Other chemical solutions
may be used such as calcium chloride and water to produce the
desired heat. The mixed chemical solution runs between the
inner wall 25 and the outer wall 27 across the entire length of
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the sheath 23. Additionally, the chemical solution is present at
the tip 31. The inner wall 25 and the outer wall 27 retain the
chemical solution within the sheath 23.

(Morgan, col. 4, ll. 45-62.)
8. Figure 3 of Morgan, reproduced below “is a cut-away perspective
view of the instrument heater 21” (Morgan, col. 4, ll. 63-64):

Figure 3 shows “activator disk 41 . . . located between inner wall 25
and the outer wall 27 at the tip 31 and surrounded by the chemical solution”
(Morgan, col. 5, ll. 1-3).
9. Figure 6 of Morgan is reproduced below:
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Morgan’s Figure 6 shows “a perspective view of the instrument heater
21 positioned on the optical scope 1 according to the teachings of the present
invention” (Morgan, col. 5, ll. 37-39). Specifically, Figure 6 shows heater
21 “placed over the probe 3, covering several inches (approximately 4 to 6
inches) of the probe 3 as well as the lens 5. Upon flexing the activator disk
41, the activator disk 41 releases metal nodules which react with the sodium
acetate to cause an exothermic reaction” (id. at col. 5, ll. 47-52).
Morgan discloses that the “sheath 23 may be massaged to induce a
faster reaction by mixing more metal nodules into the chemical solution
throughout the length of the sheath 23” (id. at col. 5, ll. 55-57).
10. In support of the position that Morgan’s device meets the limitation in
claim 1 requiring the device to have one or more elongate partitions running
lengthwise along the pad to establish fold lines, with each partition including
a gap to facilitate fluid transfer of the mixture, the Examiner provides an
annotated version of Morgan’s Figure 2, reproduced below (Ans. 6):
.

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The Examiner’s annotated version of Morgan’s Figure 2 shows the
lengthwise-running vertices of the hexagonally-shaped sheath as being the
elongated partitions recited in Appellant’s claim 1, and the gap between the
inner wall 25 and outer wall 27 as being the “Gap Facilitating Fluid
Transfer” (id.)
PRINCIPLES OF LAW
It is well settled that, for a reference to anticipate a claim “[e]very
element of the claimed invention must be literally present, arranged as in
the claim.” Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236
(Fed. Cir. 1989) (emphasis added).
It is also well settled that “[i]nherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939)) (emphasis in original)).

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During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Examiner must therefore “determine[] the scope of 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.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.Cir.2005) (emphasis
added) (quoting In re American Academy of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004).
In addition to the Specification, Appellant’s drawings may be
consulted to determine the meaning of claim terms. See Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d. 1294, 1294, 1298 (Fed. Cir. 2003)
(“The ordinary and customary meaning of a claim term may be determined
by reviewing a variety of sources. Some of these sources include the claims
themselves; dictionaries and treatises; and the written description, the
drawings, and the prosecution history.” (citations omitted, emphasis added)).
We note the well settled principle that, “while ‘the specification
[should be used] to interpret the meaning of a claim,’ courts must not
‘import[ ] limitations from the specification into the claim.’ . . . [I]t is
improper to ‘confin[e] the claims to th[e] embodiments’ found in the
specification . . . .” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007) (quoting Phillips, 415 F.3d at 1323 (citations omitted,
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bracketed text in internal quotes in original); see also Sjolund v. Musland,
847 F.2d 1573, 1581 (Fed. Cir. 1988) (“[W]hile it is true that claims are to
be interpreted in light of the specification and with a view to ascertaining the
invention, it does not follow that limitations from the specification may be
read into the claims.”); In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004)
(“[A]bsent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification . . . when [it] expressly disclaims
the broader definition.”).
Ultimately, however, “[c]laims are not to be read in a vacuum[;] while
it is true they are to be given the broadest reasonable interpretation during
prosecution, their terms still have to be given the meaning called for by the
specification of which they form a part.” In re Royka, 490 F.2d 981, 984
(CCPA 1974).
For example, in In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007), our
reviewing court concluded that it was unreasonable to broadly interpret a
claim to encompass a prior art product based on the literal language of the
claim where the specification and claims had “specifically state[d]” that the
claims required a particular product, and where “a person of ordinary skill in
the field” would have recognized that the two products were different.
ANALYSIS
We agree with Appellant that the Examiner erred in finding that
Morgan meets the limitations in claim 1 requiring the endoscope warming
system to include a pad, wherein the pad has one or more elongate partitions
running lengthwise along the pad to establish fold lines, each partition
including a gap to facilitate fluid transfer of the mixture.
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We note Morgan’s disclosure that its sheath is made of flexible
material, including one embodiment that uses “chip board which is a thin
cardboard type material which insulates the heat within the interior of the
sheath” (Morgan, col. 4, ll. 47-49 (FF 7)). We also note, as the Examiner
argues, that a person of ordinary skill in the art could consider a pad to be a
“thin, cushionlike mass of soft material used to fill, to give shape, or to
protect against jarring, scraping, or other injury” (Ans. 6).
However, the Examiner has not explained, and we do not see, how or
why Morgan’s sheath can be considered to be a soft cushionlike mass as
required in the Examiner’s proffered definition of “pad.” As noted above,
“[i]nherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Oelrich, 666 F.2d at 581.
We also note, as the Examiner argues, that the six vertices of
Morgan’s hexagon-shaped shape sheath 21 run lengthwise along the outer
surface of the device (see FF 10; see also FF 6, 8, and 9). However, we do
not agree with the Examiner that a person of ordinary skill would interpret
the partitions recited in claim 1 as encompassing those structures.
Specifically, as seen in Appellant’s Figure 6, the partitions 164 and
166 in the pad are located between fluid-containing portions of the device,
and act to “partition” the fluid-containing portion of the pad into distinct
sections (FF 2). In contrast, the vertices of Morgan’s hexagonal sheath do
not separate the fluid-containing inner portion of the sheath into distinct
sections (see FF 6, 8).
Moreover, claim 1 requires each partition to establish a “fold line.”
As seen in Appellant’s Figure 1, the pad can be folded along the partitions to
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be placed in a housing (FF 3). While it may be true that Morgan’s sheath is
hexagonally shaped (see FF 6, 8), the Examiner does not explain how or
where Morgan discloses that the sheath can, or should, be folded along the
vertices of the hexagon. We do not agree with the Examiner that a
hexagonal shape necessarily creates a fold line. For example, the hexagonal
head of a metal bolt could not, as a practical matter, be folded. Thus, we do
not agree with the Examiner that Morgan meets the limitation requiring the
partitions to establish fold lines in a pad.
In sum, for the reasons discussed above, we do not agree with the
Examiner that Morgan meets the limitations in claim 1 requiring the
endoscope warming system to include a pad, wherein the pad has one or
more elongate partitions running lengthwise along the pad to establish fold
lines, each partition including a gap to facilitate fluid transfer of the mixture.
We therefore reverse the Examiner’s rejection of claim 1, and its dependent
claims 2 and 4, as anticipated by Morgan.
OBVIOUSNESS
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of Morgan and Beane (Ans. 5). The Examiner concedes that Morgan
does not disclose a housing that contains the heating pad, as recited in claim
3, and cites Beane as disclosing the claimed housing (id.).
Claim 3 depends from claim 1, and includes all of the limitations of
claim 1. As discussed above, Morgan fails to meet all of the limitations of
claim 1. Because the Examiner has not explained, and we do not see, how
Beane remedies the deficiencies of Morgan, we also reverse the Examiner’s
rejection of claim 3 as being obvious over Morgan and Beane.
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SUMMARY
We reverse the Examiner’s rejection of claims 1, 2, and 4 under 35
U.S.C. § 102(b) as being anticipated by Morgan.
We also reverse the Examiner’s rejection of claim 3 under 35 U.S.C. §
103(a) as being obvious in view of Morgan and Beane.

REVERSED

dm

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