2020004228 (P.T.A.B. Jun. 24, 2021)

Ioan Cosmescu

Patent Trials and Appeals BoardJun 24, 2021

2020004228 (P.T.A.B. Jun. 24, 2021)

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. 14/028,270 09/16/2013 Ioan Cosmescu 30359.1517 2476 95996 7590 06/24/2021 Zeman-Mullen & Ford, LLP 233 White Spar Road Prescott, AZ 86303 EXAMINER GRAY, PHILLIP A ART UNIT PAPER NUMBER 3783 NOTIFICATION DATE DELIVERY MODE 06/24/2021 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): ktopolewski@zmfiplaw.com lzemanmullen@zmfiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IOAN COSMESCU Appeal 2020-004228 Application 14/028,2701 Technology Center 3700 Before FRANCISCO C. PRATS, RACHEL H. TOWNSEND, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). 1 This application is a continuation of application 11/164,712, filed December 2, 2005. Spec. ¶ 1. Application 11/164,712 was before this Board in Appeal 2012-00423 (decision entered July 15, 2013). Appeal Br. 2. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as I.C. Medical, Inc. Appeal Br. 2. Appeal 2020-004228 Application 14/028,270 2 For the reasons discussed below, pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph,3 for indefiniteness. Because we determine that Appellant’s claims are indefinite, we reverse the Examiner’s rejections on the merits, pro forma. CLAIMED SUBJECT MATTER “The use of ESU [electrosurgery unit] pencils for cutting tissue and coagulating blood vessels in surgical procedures is well known. When an ESU pencil is used for cutting or coagulation, smoke is produced.” Spec. ¶ 3. Appellant’s invention is directed to an electrosurgery pencil with integrated smoke evacuation capability and a rotating member coupled to the pencil. See Spec. ¶ 6. The rotating member provides an integrated swivel capability that allows an attached vacuum tube to rotate without twisting the pencil. See id. Claims 1, 6, 11, 16, and 17 are the independent claims on appeal. See Appeal Br. 21–24. Claim 1 is illustrative and reads as follows: 1. An electrosurgery pencil with integrated smoke evacuation and swivel capability comprising: an electrosurgery handpiece having a first open end, a second open end, and a smoke evacuation channel contained within an interior of the handpiece between the first and second open ends of the handpiece; an electrode connected near the first open end of the electrosurgery handpiece; 3 As noted above, this application is a continuation of application 11/164,712, filed December 2, 2005. Spec. ¶ 1. Accordingly, the pre-AIA version of § 112 applies to the claims on appeal. See Leahy-Smith America Invents Act (“AIA”), Public Law 112-29, § 4(e), 125 Stat. 297. Appeal 2020-004228 Application 14/028,270 3 a fixed member completely incorporated within, and permanently built into, an interior of the second open end of the electrosurgery handpiece such that it forms a continuous one piece handpiece wherein the fixed member has an open end that is the same as, and has a same diameter as, the second open end of the handpiece; and a rotating member coupled to the fixed member. Appeal Br. 21 (emphasis added to claim limitations at issue). REJECTIONS As a preliminary matter, we note that the Examiner objected to the drawings under 37 C.F.R. § 1.83(a). See Final Act. 2–3. 4 We will not review the Examiner’s objection to the drawings. See MPEP § 706.01 (“The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO.”) (emphasis added). The following rejections are before us for review: (1) Claims 1–17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement (Final Act. 3–4); (2) Claims 1–5 under 35 U.S.C. § 103(a), as being unpatentable over Kuriloff,5 Abramson,6 and Morrison7 (Final Act. 4–8); and 4 Final Office Action entered Nov. 21, 2018. 5 US 5,318,565 (issued June 7, 1994). 6 US 4,152,017 (issued May 1, 1979). 7 US 3,828,780 (issued Aug. 13, 1974). Appeal 2020-004228 Application 14/028,270 4 (3) Claims 1–17 under 35 U.S.C. § 103(a), as being unpatentable over Olsen,8 Abramson, and Morrison (Final Act. 8–11). NEW GROUND OF REJECTION—INDEFINITENESS For the reasons that follow, we reject claims 1–17 as being indefinite under 35 U.S.C. § 112, second paragraph. The second paragraph of § 112 states that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. The Supreme Court has stated that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig, Insts., Inc., 572 U.S. 898, 901 (2014) (internal quotations omitted); see also id. at 910 (“The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”). Thus, as our reviewing court has explained, a claim does not comply with 35 U.S.C. § 112, second paragraph, “when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d at 1307, 1310 (Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e).); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). 8 US 5,055,100 (issued Oct. 8, 1991). Appeal 2020-004228 Application 14/028,270 5 That is, “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” Packard, 751 F.3d at 1313. In the present case, we determine that Appellant’s claims do not inform skilled artisans about the scope of the claimed invention with reasonable certainty. In particular, as to claim 1 for example, it is not clear how the fixed member is structurally different from the handpiece recited in the claim. As presently recited, the claimed fixed member has no structural feature that is distinct from the structural features of the handpiece. In fact, the only recited “structural” feature is an open end. But that open end is said to be “the same as . . . the second open end of the handpiece.” The additional language of the claimed fixed member is also stated in such a way so as to render it indistinguishable from the handpiece. That is, the language does not describe what the fixed member actually is, in structural terms, just its positional relationship to the handpiece. Specifically, claim 1 recites an ESU pencil with four distinct components, a handpiece, an electrode, a fixed member, and a rotating member. Appeal Br. 21. Claim 1 recites that the fixed member is “completely incorporated within, and permanently built into, an interior of the second open end of the electrosurgery handpiece such that it forms a continuous one piece handpiece.” Id. Thus, although claim 1 recites the fixed member as a distinct component of the claimed ESU pencil, the only structural feature recited in relation to the fixed member is a feature that is also part of a different component, the handpiece. Because the fixed member is completely incorporated within and permanently built into the interior of the handpiece, and because the open end of the fixed member is the same as the open end of Appeal 2020-004228 Application 14/028,270 6 the handpiece, and has the same open end diameter as the handpiece, it is unclear what features or components, other than the handpiece itself, must make up the fixed member. This ambiguity and lack of clarity are further reinforced by the fact that Appellant’s Figure 4C, which Appellant cites as support for the fixed member (see Appeal Br. 4), shows the fixed member 412 as a distinct diagonally cross-hatched component in relation to the handpiece 416, shown in Figure 4A. See Figs. 4A, 4C. Indeed, we note that the Specification discloses that “FIG. 4C is a side view of the ESU pencil shown in FIG. 4A” (Spec. ¶ 24), and Figure 4A shows the fixed member 412 as a distinct component from handpiece 416, like Figure 4C. See Figs. 4A, 4C. Thus, on one hand, claim 1 recites the fixed member as a distinct component of the claimed ESU pencil consistent with the disclosure in Appellant’s Figures 4A and 4C. On the other hand, however, claim 1 recites the fixed member as being “completely incorporated within” and “permanently built into the interior” of the handpiece, with the same open end as the handpiece, and with the open end of the fixed member having the same diameter as the open end of the handpiece, thus making it unclear as to what features or components, other than those of the handpiece itself, are features of the fixed member. In addition, it is unclear how the fixed member can be “built into[] an interior of . . . the handpiece . . . such that it forms a continuous one piece handpiece” as recited in claim 1. Appeal Br. 21. It is confusing, and therefore unclear, how one component can be inside of a second component, yet also form an integral part of the second component while remaining a distinguishable, separate component, particularly where the claim does not Appeal 2020-004228 Application 14/028,270 7 provide any terms to differentiate the two components. Indeed, it is not clear from the present claim language where the fixed member begins and ends in relation to the handpiece, and how those components are different from each other, or if they are in fact different components. Given the ambiguities discussed above in the current language of claim 1, we determine that claim 1 does not clearly inform skilled artisans about the scope of the claimed invention with reasonable certainty. We therefore reject claim 1, and its dependent claims, as indefinite under 35 U.S.C. § 112, second paragraph. Appellant’s other independent claims are indefinite for similar reasons. Like claim 1, claim 6 recites that the fixed member is “completely and permanently incorporated within an interior of an open end of an electrosurgery pencil with integrated smoke evacuation contained within the electrosurgery pencil such that it forms a continuous one piece electrosurgery pencil,” and also that “the fixed member has an open end that is the same as, and has a same diameter as, the open end of the electrosurgery pencil.” Appeal Br. 22. Again, because the structural features of claim 6’s fixed member are entirely recited in terms of a distinct component of the claimed apparatus (the pencil), it is not clear how the fixed member is structurally different from the pencil recited in the claim. Similar to claim 1, moreover, because claim 6’s fixed member must be “incorporated within an interior of an open end of an electrosurgery pencil,” yet must also “form[]a continuous one piece electrosurgery pencil” (id.), it is not clear from the present claim language where the fixed member begins and ends in relation to the pencil, Appeal 2020-004228 Application 14/028,270 8 and how those components are different from each other, or if they are in fact different components. Appellant’s claim 11 similarly recites that the fixed member is “completely and permanently incorporated within an interior of an open end of the smoke evacuation shroud attachment such that it forms a continuous one piece smoke evacuation shroud attachment” and also that the fixed member “has an open end that is the same as, and has a same diameter as, the open end of the smoke evacuation shroud attachment.” Appeal Br. 23. Claims 16 and 17 also include similarly unclear and ambiguous language. See Appeal Br. 24 (claim 16, reciting that the fixed member is “completely incorporated within, and permanently built into, the smoke evacuation channel located within the handpiece at the second open end of the electrosurgery handpiece such that it forms a continuous one piece handpiece” and also “has an open end that is the same as, and has a same diameter as, the second open end of the electrosurgery handpiece”); see also id. (claim 17, reciting that the fixed member is “completely and permanently incorporated within an interior open end of an electrosurgery pencil with integrated smoke evacuation contained within the handpiece such that it forms a continuous one piece electrosurgery pencil with integrated smoke evacuation” and also “has an open end that is the same as, and has a same diameter as, the interior open end of the electrosurgery pencil with integrated smoke evacuation”). Because each of Appellant’s independent claims 6, 11, 16, and 17 recites the fixed member as being completely incorporated within and permanently built into the interior of a distinct second component of the claimed apparatus, with the same open end as the second component, and Appeal 2020-004228 Application 14/028,270 9 with the open end of the fixed member having the same diameter as the open end of the second component, it is unclear what features are required by the fixed member, other than the features of the second component (e.g., handpiece). Moreover, because the fixed member in each of Appellant’s independent claims must be incorporated within an interior of an open end of a distinct second component, yet must also form a continuous one piece with that distinct second component, it is not clear from the present claim language where the fixed member begins and ends in relation to the second component (e.g., handpiece or pencil), and how those components are different from each other, or if they are in fact different components. Indeed, as noted above, it is confusing, and therefore unclear, how one component can be inside of a second component, yet also form an integral part of the one piece second component. In sum, given the ambiguities discussed above in the current language of Appellant’s independent claims 6, 11, 16, and 17, we determine that claims 6, 11, 16, and 17 do not clearly inform skilled artisans about the scope of the claimed invention with reasonable certainty. We therefore reject claims 6, 11, 16, and 17, and their dependent claims, as indefinite under 35 U.S.C. § 112, second paragraph. THE EXAMINER’S REJECTIONS As noted above, the Examiner entered rejections against claims 1–17 for lack of enablement and for obviousness. See Final Act. 3–11. To evaluate the merits of the Examiner’s rejection for lack of enablement, we must perform a comparison between the claim language at issue, in this instance the language relating to the fixed member discussed above, and the portions of Appellant’s disclosure alleged as providing Appeal 2020-004228 Application 14/028,270 10 support for the claim language at issue. We find, however, for the reasons discussed above in relation to § 112, second paragraph, that the scope of the claimed subject matter is so uncertain that we cannot meaningfully perform the required comparison. See In re Steele, 305 F.2d 859, 863 (CCPA 1962) (obviousness rejection of indefinite claim reversed where claim interpretation required resort to “unsupported speculative assumptions” as to scope of claimed subject matter). Because review of the merits of the appealed enablement rejection of claims 1–17 would require resort to unsupported speculative assumptions as to the scope of the claimed subject matter, we reverse the Examiner’s enablement rejection of claims 1–17 pro forma. See Ex parte Miyazaki, 89 USPQ2d at 1217 (precedential) (reversing rejections pro forma under In re Steele when consideration of merits of rejections requires “speculative assumption as to the meaning of the claims”). Similarly, because of the ambiguities in the claim language discussed above, we conclude that a review of the merits of the Examiner’s obviousness rejections would require resort to unsupported speculative assumptions as to the scope of the claimed subject matter. We, therefore, also reverse the Examiner’s obviousness rejections of claims 1–17 pro forma. See Ex parte Miyazaki, 89 USPQ2d at 1217 (precedential). CONCLUSION For the reasons discussed above, pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph, for indefiniteness as to claims 1–17. Because we determine that Appellant’s claims are indefinite, we reverse the Examiner’s enablement and obviousness rejections of claims 1–17, pro forma, because review of those Appeal 2020-004228 Application 14/028,270 11 rejections would require resort to unsupported speculative assumptions as to the scope of the claimed subject matter. See Ex parte Miyazaki, 89 USPQ2d at 1217 (precedential). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–17 112 Indefiniteness 1–17 1–17 112 Lack of Enablement 1–17 1–5 103(a) Kuriloff, Abramson, Morrison 1–5 1–17 103(a) Olsen, Abramson, Morrison 1–17 Overall Outcome 1–17 1–17 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-004228 Application 14/028,270 12 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019, June 2020). 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)(1)(iv) (2019). REVERSED; 37 C.F.R. § 41.50(b)