Ex Parte Vankov

Patent Trial and Appeal Board

Aug 9, 2017

13284662 (P.T.A.B. Aug. 9, 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.
13/284,662 10/28/2011 Alexander B. VANKOV C00003449.USU 1 1010
132100 7590
IPLM Group, P.A.
685 Linwood Avenue
Saint Paul, MN 55105
08/09/2017 EXAMINER
FAIRCHILD, MALLIKA DIPAYAN
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
08/09/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER B. VANKOV
Appeal 2016-0043601
Application 13/284,662
Technology Center 3700
Before FRANCISCO C. PRATS, TAWEN CHANG, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to an electrode
for electrosurgery. The Examiner rejected the claims for anticipation and
obviousness, alternatively.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 8—12 under 35 U.S.C. § 102(b) as anticipated by Moaddeb,2 or
alternatively, under 35 U.S.C. § 103(a), for obviousness over Moaddeb and
1 Appellant states that the real party in interest “is Medtronic Advanced
Energy LLC.” Br. 3.
2 US 6,475,214 B1 (issued Nov. 5, 2002).
Appeal 2016-004360
Application 13/284,662
Heim.3 Final Act 6—7.
Claim 8 is representative and reads as follows (Br. 9 (indentations and
emphasis added)):
8. An electrode for electrosurgery, comprising:
an electrically conductive substrate adapted for use as an
electro surgery electrode;
an electrically insulative layer on a portion of a surface of
the electrode, but not on a tip or edge portion thereof; and
a coating on the tip or edge portion thereof, the coating
comprises carbon or graphite and a protein or denatured
protein material.
DISCUSSION
In rejecting claim 8 as anticipated by Moaddeb, the Examiner found
that the tip of Moaddeb’s electrode is covered with a coating composed of a
layer of carbon, and a layer of protein. Final Action 6—7; see also Moaddeb
at 4:13—22 (“The tip electrode 30 is provided with a porous layer . . . made
of. . . carbon . . . .”); Moaddeb at 7:33—35 (“If desired, a hydrogel layer can
be applied over the porous layer on the tip electrode. The hydrogel layer can
be made from a polymeric material or a protein.”).
Appellant contends that the Examiner erred in interpreting the term
“coating” in claim 8 as encompassing Moaddeb’s multi-layer coating. Br.
6—7 (citing Lindemann Maschinenfabrik GMBHv. Am. Hoist & Derrick Co.,
730 F.2d 1452 (Fed. Cir. 1984) and (Phillips v. AWHCorp., 415 F.3d 1303
(Fed. Cir. 2005)). Appellant contends, in particular, that the Examiner’s
interpretation of “coating” is erroneous because the Specification
“establishes that the term coating describes the combination of carbon or
3 US 2007/0005055 A1 (published Jan. 4, 2007).
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Application 13/284,662
graphite with protein or denatured protein and not individual and distinct
layers of those materials.” Br. 6 (citing Spec. Tflf 11, 16, and 17).
Appellant does not persuade us, however, that the Examiner erred by
interpreting the term “coating” in claim 8 as encompassing Moaddeb’s
multi-layer coating.
It is well settled that 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).
Under that standard, “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 ‘confm[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 (Fed.Cir.2005) (citations omitted, bracketed text in internal
quotes in original)).
“Although an inventor is indeed free to define the specific terms used
to describe his or her invention, this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). That is, “[w]here an inventor chooses to be his own lexicographer
and to give terms uncommon meanings, he must set out his uncommon
definition in some manner within the patent disclosure so as to give one of
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Application 13/284,662
ordinary skill in the art notice of the change.” Id. (internal quotations
omitted).
In the present case, Appellant does not identify in the Specification an
express definition for the term at issue, “coating,” that would place an
ordinary artisan on notice that the term was intended to exclude multi-layer
coatings, such as that described in Moaddeb. Paragraph 11 of the
Specification, cited by Appellant (Br. 6), states: “[i]n accordance with the
present invention, the electrode tip coating is formed of carbon or graphite
together with a collagen or other similar bio-compatible material, referred to
here as a ‘protein. ’ For instance, this coating is carbon or graphite with a
protein material (albumin or collagen or gelatin) binder.” Spec. 111
(emphasis added).
Thus, rather than providing an express definition of “coating” that
might distinguish the inventive coating from a Moaddeb’s multi-layer
coating, the Specification simply states that the coating is formed of
graphite/carbon “together with” a protein, and provides an example of how
the ingredients may be combined. Id. In addition to not providing an
express definition, Appellant does not explain sufficiently why the phrase
“together with” excludes a combination of distinct layers containing,
respectively, graphite/carbon and a protein.
We acknowledge the Specification’s disclosure of an embodiment,
cited by Appellant (Br. 6), in which a combination of graphite/carbon
powder and a protein binder is coated onto the electrode tip by dipping,
painting, or smearing. Spec. Tflf 16—17. As seen above, however, rather than
providing an express definition of “coating” that would limit the term to that
embodiment, the Specification describes that embodiment as merely
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Application 13/284,662
exemplary, by stating that “///or instance, this coating is carbon or graphite
with a protein material (albumin or collagen or gelatin) binder.” Id. 111
(emphasis added). As noted above, moreover, it is improper to confine the
claims to specific embodiments described in the Specification. In re Trans
Texas Holdings, 498 F.3d at 1299.
Indeed, rather than suggesting that it intends to limit the claims to the
embodiments described therein, Appellant’s Specification states expressly
that “[t]his disclosure is illustrative and not limiting. Further modifications
to the embodiments disclosed here will be apparent to those skilled in the art
in light of this disclosure, and are intended to fall within the scope of the
appended claims.” Spec. 119.
Lastly, we note, in the embodiment of the invention cited by
Appellant, the Specification states that “the coating and drying steps can be
performed more than once, to form multiple layers of the protein on the
electrode.” Id. at 1 17 (emphasis added). Thus, rather than supporting
Appellant’s argument that the term “coating” in claim 8 excludes multi­
layered coatings, such as that described in Moaddeb, the Specification
supports the Examiner’s position that claim 8 encompasses Moaddeb’s
multi-layer coating.
In sum, for the reasons discussed, given the absence of specific
qualifying language in the claim, and the absence of a specific definition in
the Specification, Appellant does not persuade us that the term “coating”
fails to encompass the coating described in Moaddeb. As the Federal Circuit
has noted, “during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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Because Appellant does not persuade us that the Examiner erred in
finding that Moaddeb describes an electrode having all of the elements
required by claim 8, we affirm the Examiner’s rejection of claim 8 as
anticipated by Moaddeb. Because they were not argued separately, claims
9-12 fall with claim 8. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm the Examiner’s rejection of
claims 8—12 under 35 U.S.C. § 102(b) as anticipated by Moaddeb.
Because it was advanced as an alternative rejection (see Final Act 6—
7), we do not reach the merits of the Examiner’s rejection of claims 8—12
under 35 U.S.C. § 103(a) for obviousness over Moaddeb and Heim.
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
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