Ex Parte Wengreen et alDownload PDFPatent Trial and Appeal BoardSep 7, 201612250670 (P.T.A.B. Sep. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/250,670 10/14/2008 27581 7590 09/09/2016 Medtronic, Inc. (CRDM) 710 MEDTRONIC PARKWAY NE MS: LC340 Legal Patents MINNEAPOLIS, MN 55432-9924 FIRST NAMED INVENTOR Eric J. Wengreen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P0026642.00/LG10126 4192 EXAMINER THOMAS, JR, BRADLEY G ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/09/2016 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): medtronic_crdm_docketing@cardinal-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC J. WENGREEN, JOHN E. LOVINS, RANDY S. ROLES, and ROBERT J. NEHLS Appeal2014-008296 Application 12/250,670 Technology Center 3700 Before DONALD E. ADAMS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. § 134 involving claims to a subcutaneous implantation tool. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Medtronic, Inc. (see App. Br. 1). Appeal2014-008296 Application 12/250,670 Statement of the Case Background Appellants' invention relates to "subcutaneous implantation tools and methods of implanting a subcutaneous micro-device" in which the "subcutaneous implantation tools includ[ e] a syringe body, a dissection body, and a delivery assembly" (Spec. i-f 3). The Claims Claims 1-20 and 22-37 are on appeal. Independent claim 1 is representative and reads as follows (emphasis added): 1. A subcutaneous implantation tool comprising: a syringe body having a hollow bore of a first shape extending along a longitudinal axis; a dissection body at a distal end of the syringe body having a substantially non-circular hollow bore having a second shape different than the first shape extending along the longitudinal axis and configured to receive a subcutaneous implantation micro-device, wherein the hollow bore 1s substantially non-circular at a distal end of the tool; and a delivery assembly including a plunger fitting within at least a portion of the syringe body bore and a first end piece attached to a distal end of the plunger, the plunger including first and second portions, the second portion attached to a distal end of the first portion, wherein at least a portion of the first portion fits within the hollow bore of the syringe body and the second portion being narrower than the first portion and the first end piece. 2 Appeal2014-008296 Application 12/250,670 The Issues A. The Examiner rejected claims 1-6, 11, 13, 19, 25, 26, 28-32, 34, 35, and 37 under 35 U.S.C. § 103(a) as obvious over Bardy2 and Shippert3 (Final Act. 2---6). B. The Examiner rejected claims 7, 8, 11, and 12 under 35 U.S.C. § 103(a) as obvious over Bardy, Shippert, and Gall4 (Final Act. 6-7). C. The Examiner rejected claims 9, 10, 14--18, 20, 22-24, 27, 33 and 36 under 35 U.S.C. § 103(a) as obvious over Bardy, Shippert, and Roper5 (Final Act. 7-11). Because the same issue is dispositive for all three rejections, we consider them together. The Examiner finds that Bardy teaches a dissection body (11, 24) at a distal end of the syringe body having a substantially non-circular hollow bore having a second shape different than the first shape (Bardy discloses in an alternate embodiment (Fig. []2B) that dissection body 24 has a second shape different than the first shape of 15) extending along the longitudinal axis (i-10015, 0040, 0042) (Fig. I, 2B) and configured to receive a subcutaneous implantation micro-device (28) (Fig. []3), wherein the hollow bore is substantially non- circular at a distal end of the tool (Fig. 1 ). (Final Act. 2; see also Final Act. 4, 9.) The issue with respect to these rejections is: Does the evidence of record support the Examiner's finding that Bardy teaches "a dissection body at a distal end of the syringe body having a substantially non-circular hollow 2 Bardy, US 2006/0253065 Al, published Nov. 9, 2006. 3 Shippert, US 6, 786,883 B2, issued Sept. 7, 2004. 4 Gall et al., US 4,871,094, issued Oct. 3, 1989. 5 Roper et al., US 5,681,279, issued Oct. 28, 1997. 3 Appeal2014-008296 Application I2/250,670 bore having a second shape different than the first shape extending along the longitudinal axis" as required by claims I, 20, 25, and 26. Findings of Fact 1. Figures IA and IB of the Specification is reproduced below: Figures IA and IB show that "[t]he syringe body IO has a hollow bore I5 extending along a longitudinal axis. The syringe body I 0 may include various configurations, for example, different lengths, widths, thicknesses, and shapes (e.g., substantially circular as shown)," (Spec. i-f 26), and that "[t]he dissection body 20 has a substantially non-circular hollow bore extending along the same longitudinal axis as the syringe body IO" (id. at ,-r 27). 4 Appeal2014-008296 Application 12/250,670 2. Bardy's Figure 2B is reproduced below: Flg.2-B Figure 2B shows I ~13 16- a longitudinal cross-sectional view of the implantation instrument with a curved incising shaft 24. The curved incising shaft 24, as well as the syringe body 15 and related components, are shaped into a substantially continuous curve along the ventral side. The curvature helps regulate the penetration depth of the incising shaft and, in the described embodiment, has an arc of approximately 20 degrees. (Bardy i-f 42; see also Final Act. 2, 4, 9.) Principles of Law "The protocol of giving claims their broadest reasonable interpretation during examination does not include giving claims a legally incorrect interpretation. This protocol is solely an examination expedient, not a rule of claim construction." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009). "[C]laims are interpreted with an eye toward giving effect to all terms in the claim." Bicon, Inc. v. Straumann Co., 441 F.3d. 945, 950 (Fed. Circ. 2006). 5 Appeal2014-008296 Application 12/250,670 Analysis We begin with claim interpretation, since before a claim is properly interpreted, its scope cannot be compared to the prior art. The limitation in dispute is the requirement for "a dissection body at a distal end of the syringe body having a substantially non-circular hollow bore having a second shape different than the first shape extending along the longitudinal axis" as required by claims 1, 20, 25, and 26. Appellants contend that this claimed limitation is shown in Figures 1 A-1 B of the Specification, in which the syringe body 10 has a hollow bore 15 of a circular shape extending along a longitudinal axis of the tool 100. Further, as shown therein, the dissection body 20 at a distal end of the syringe body 10 has a more flat hollow bore (e.g., a substantially non-circular hollow bore) which is of a shape different than the circular shape of the hollow bore of the syringe body 10. In other words, the cross-sectional circular shape of the hollow bore of the syringe body 10 along the longitudinal axis of tool l 0 is different than the hollov,r bore of the dissection body 20 which has a noncircular cross-sectional shape. (App. Br. 7; see also App. Br. 12.) The Examiner responds that "the shape of the bores are [] limitations [of] claims 1, 25 and 26 and not the cross-section; thus the limitation requires that the shape be different when comparing the two portions of the device. The shape can include any structural portions of the device" (Ans. 2). We find that Appellants have the better position. We observe that in describing Figures IA and IB, the Specification teaches that "[t]he syringe body 10 has a hollow bore 15 extending along a longitudinal axis. The 6 Appeal2014-008296 Application 12/250,670 syringe body 10 may include various configurations, for example, different lengths, widths, thicknesses, and shapes (e.g., substantially circular as shown)," and that "[t]he dissection body 20 has a substantially non-circular hollow bore extending along the same longitudinal axis as the syringe body 1 O" (FF 1 (emphasis added)). As Appellants point out, the claim language indicates that the syringe body has a hollow bore of a first shape extending along a longitudinal axis and the dissection body at a distal end of the syringe body has a substantially non-circular hollow bore having a second shape different than the first shape extending along the longitudinal axis. The bore of the syringe body and the bore of the dissection body are both openings defined by their orthogonal cross-sectional shapes along the longitudinal axis. There is no other way of interpreting what shape is being referred to in the claims when talking about a bore extending along a longitudinal axis; the cross-sectional shape is the only shape that defines a bore that extends along a longitudinal axis. (Reply Br. 4.) Those claim terms are consistent with what is described in the Specification (FF 1 ). Because the claims recite "along the longitudinal axis," we conclude that the "shape" must be "the orthogonal cross-sectional shape of the bore along its longitudinal axis," and cannot be interpreted as "the shape of any structural portion of the device." To do otherwise would effectively disregard the "along the longitudinal axis" claim language, and is not consistent with the Specification. See In re Skvorecz, 580 F.3d at 1267. See also Bicon, Inc. v. Straumann Co., 441 F.3d. at 950. We, therefore, conclude that the broadest reasonable interpretation of the term "shape," is that it is "the orthogonal cross-sectional shape of the bore along its longitudinal axis." Accordingly, we are not persuaded by the Examiner's assertion that 7 Appeal2014-008296 Application 12/250,670 Bardy discloses a dissection body (24) at the distal end of the syringe body having a non-circular shape (22) and the shape is different relative to the shape of the syringe body ( 15) (emphasis added). The shape of the dissection body at the distal end has a non-circular shape as shown in Fig. []2B; the dissection body is slightly curved and has a slanted edge at its end making dissection body (24) have a different shape than the shape of the syringe body ( 15). (Ans. 2; Cf FF 1-2.) Conclusion of Law The evidence of record does not support the Examiner's finding that Bardy teaches "a dissection body at a distal end of the syringe body having a substantially non-circular hollow bore having a second shape different than the first shape extending along the longitudinal axis" as required by claims 1, 20, 25, and 26. Because they depend from these claims, the rejections of claims 2-19, 21-24, and 27-37 are also reversed. SUMMARY In summary, we reverse the rejection of claims 1, 25, and 26 under 35 U.S.C. § 103(a) as obvious over Bardy and Shippert. Claims 2---6, 11, 13, 19, 30---32, 34, 35, and 37 fall with claim 1, and claims 28 and 29 fall with claim 26. We reverse the rejection of claims 7, 8, 11, and 12 under 35 U.S.C. § 103(a) as obvious over Bardy, Shippert, and Gall. 8 Appeal2014-008296 Application 12/250,670 We reverse the rejection of claims 9, 10, 14--18, 20, 27, and 33 under 35 U.S.C. § 103(a) as obvious over Bardy, Shippert, and Roper. Claims 22- 24 and 36 fall with claim 20. REVERSED 9 Copy with citationCopy as parenthetical citation