Nico Corporation

Patent Trials and Appeals Board

Mar 19, 2020

15070739 - (D) (P.T.A.B. Mar. 19, 2020)

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.
15/070,739 03/15/2016 Joseph L. MARK 267259/
NICO0153PUS/445880
8972
44200 7590 03/19/2020
HONIGMAN LLP
650 Trade Centre Way
Suite 200
Kalamazoo, MI 49002-0402
EXAMINER
PLIONIS, NICHOLAS J
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/19/2020 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 JOSEPH L. MARK, BRIAN C. DOUGHERTY, and
CHAD LAMAR

__________

Appeal 2019-004370
Application 15/070,739
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 29. See Final Act. 1. Claims
11–28 have been withdrawn from consideration. See id. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nico
Corporation. Appeal Br. 1.
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Application 15/070,739

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STATEMENT OF THE CASE
The claims are directed to a holding assembly for a surgical access
assembly having a rotation brake that selectively locks an engagement barrel
against rotation. Claim 1, reproduced below, is the sole independent claim
before us:
1. A selectively lockable holding assembly for a surgical
access assembly, comprising:
a body portion;
an engagement barrel;
a retaining member at a distal end of the body portion;
wherein the engagement barrel is positioned on a proximal
end of the body portion and configured to be selectively rotated
about the body portion; and
a rotation brake mounted on the body portion, wherein the
rotation brake is selectively operable to lock the engagement
barrel against rotation with respect to the body portion.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bonvallet US 2003/0225416 A1 Dec. 4, 2003
Way US 2007/0299459 A1 Dec. 27, 2007
Rasmussen US 2009/0043310 A1 Feb. 12, 2009

REJECTIONS
Claims 1–4 and 7–10 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Way. Final Act. 2.
Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Way and Rasmussen. Final Act. 4.
Claim 29 is rejected under 35 U.S.C. § 103 as being unpatentable over
Way and Bonvallet. Final Act. 5.
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OPINION
Independent claim 1 requires, among other things, “a retaining
member at a distal end of the body portion” and “an engagement barrel,”
“wherein the engagement barrel is positioned on a proximal end of the body
portion” (emphasis added). Appellant argues that the Examiner incorrectly
finds Way’s handle 20 corresponds to the claimed retaining member and
Way’s cannula 70 corresponds to the claimed engagement barrel (see Final
Act. 2 (citing Way Figs. 1–2)) because “the Examiner divorced claim 1 from
the specification and has ignored what a person of ordinary skill in the art
would understand concerning the accepted meanings of distal and
proximal.” Appeal Br. 3, 6. According to Appellant, contrary to the
Examiner’s characterization, Way’s “handle 20 is not at a distal end of the
claimed body portion. Just the opposite – the handle 20 is located at the
proximal end of the elongated member 30, opposite the distally located free
end 30b.” Id. at 4. The Examiner responds by annotating Way’s Figure 2 to
show that if a user were to stand on the right side of Way’s device, handle 20
would be considered distal to the user, and elongate member 30 would be
considered proximal to the user. See Ans. 10.
Thus, in the context of a surgical instrument, Appellant argues that the
distal end is the operational end whereas the Examiner takes the position that
Appellant’s interpretation is overly narrow and is contrary to the broadest
reasonable interpretation. See Ans. 7; Appeal Br. 5 (discussing “in
operation”), Reply Br. 4 (arguing that “the Examiner attempts to recast the
express teachings of Way and the operation of the device”). This issue is
relevant to both the anticipation and obviousness inquiries. See Key Pharm.
v. Hereon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations
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omitted) (claim construction is the first step in both anticipation and
obviousness).
As an initial matter, we agree with the Examiner that Appellant’s
Exhibit A submitted during prosecution on June 28, 2018 (see Appeal Br. 4–
5) is not pertinent to the claimed subject matter because Exhibit A is
“concerned with ‘terms used by healthcare professionals and biomedical
engineers to describe the anatomical positions and relative locations of
muscles, organs, bones, and other structures in the human body’” but the
claimed subject matter “is not directed to muscles, organs, bones, and other
structures in the human body; it is directed to a holding assembly.” See Ans.
9.
However, there are two reasons Appellant has the better position. We
first note that the Specification does not appear to disclose a special
definition for the terms “distal” and “proximal.” See Spec., passim.
However, as Appellant points out, the Specification discloses that the
retaining member of the claimed selectively lockable holding assembly is
positioned at the distal end of its body portion. See Appeal Br. 3, 5 (citing
Spec. ¶ 133). Notably, the Specification discloses that “[r]etaining section
732 terminates at its distal end 738 in retaining member 726.” Spec. ¶ 133.
Thus, the usage of the terms “distal” and “proximal” in the Specification is
consistent with the position taken by Appellant. The Examiner does not
articulate a reasonable basis for interpreting the terms “distal” and
“proximal” in a manner different from the way those terms are used in
Appellant’s Specification. “[T]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
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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) (emphasis added); see also In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969) (“‘[R]eading a claim in light of the specification,’ to thereby
interpret limitations explicitly recited in the claim, is a quite different thing
from ‘reading limitations of the specification into a claim,’ to thereby
narrow the scope of the claim by implicitly adding disclosed limitations
which have no express basis in the claim.”). “[When giving claim] terms
their broadest reasonable construction, the construction cannot be divorced
from the specification.” In re NTP, 654 F. 3d 1279, 1288 (Fed. Cir. 2011).
Further, the Examiner’s annotation showing a user positioned on the
right side of Way’s device (see Ans. 10) is unreasonable. First, this depiction
appears contrary to normal operation of Way’s device. Way discloses “[a]
surgical device for percutaneously accessing a tissue of interest.” Way
Abstr. It seems to us that normal operation of the Way’s device would
require the user being positioned on the left side, rather than the right side, in
order to hold the handle 20, and body tissue is positioned on the right side,
so that cannula 70 can access the tissue. Second, the Examiner’s posited
usage of Way’s device in this manner does not rebut Appellant’s contention
that “the Examiner. . .has ignored what a person of ordinary skill in the art
would understand concerning the accepted meanings of distal and proximal”
in regard to the operation of a surgical instrument. Appeal Br. 6. As
Appellant points out, Way’s own use of the term “distal” with respect to its
device is contrary to the Examiner’s construction. Appeal Br. 3, 6 (citing
Way ¶¶ 41, 44). Notably, Way discloses “[t]he distal face of handle 20
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includes an axial annular groove 24 that defines an axial cylindrical post 25”
(Way ¶ 41; emphasis added) and “[e]longate member 30 has a fixed end 30a
coupled to handle 20 and a free end 30b that is distal to handle 20” (id. at ¶
44; emphasis added). See also id. at Fig. 2. We thus think that the skilled
artisan would understand Way’s handle 20 as the “proximal” end. The
Examiner does not provide evidence to show that an ordinary artisan would
consider a handle of a surgical device, rather than its operation end, as a
“distal” end. Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). “Prior art references may be ‘indicative of what all those skilled
in the art generally believe a certain term means . . . [ and] can often help to
demonstrate how a disputed term is used by those skilled in the art.’
Accordingly, the PTO’s interpretation of claim terms should not be so broad
that it conflicts with the meaning given to identical terms in other patents
from analogous art.” Id. (Citations omitted).
As all of the Examiner’s rejections presently before us are predicated
on a construction of “distal” and “proximal” that extends beyond the ambit
of reasonableness, we reverse the Examiner’s rejections on the record
presently before us.

CONCLUSION
The Examiner’s rejections are reversed.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–4, 7–10 102(a)(1) Way 1–4, 7–10
5, 6 103(a) Way, Rasmussen 5, 6
29 103(a) Way, Bonvallet 29
Overall
Outcome
1–10, 29

REVERSED