Peter Troesch

Patent Trials and Appeals Board

Aug 18, 2020

13918641 - (D) (P.T.A.B. Aug. 18, 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.
13/918,641 06/14/2013 Peter Troesch P614 4175
23586 7590 08/18/2020
ROBERT E MALM
16624 PEQUENO PLACE
PACIFIC PALISADES, CA 90272
EXAMINER
VU, QUYNH-NHU HOANG
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
08/18/2020 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 PETER TROESCH
____________

Appeal 2019-006483
Application 13/918,641
Technology Center 3700
____________

Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Avid Identification
Systems Inc. Appeal Br. 4.
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THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A cannula adapted to receive an implant object into its interior
at the proximal end, the cannula being attachable to an
implantation device having a push-rod which enters the cannula
at its proximal end, an operator utilizing the implantation device
to make an incision in a body with the cutting edge of a bevel at
the distal end of the cannula, the operator completing the
implantation process by pushing on the push-bar thereby causing
a force to be applied to the implant object resulting in the implant
object moving from a position within the cannula out through the
distal end and into the body, a structural impediment being
incorporated in the bevel region of the cannula which prevents
the implant object from falling out of the cannula at the distal end
as a result of changes in cannula orientation prior to the execution
of the implantation process, the structural impediment being
automatically circumvented during the execution of the
implantation process.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Grimm US 5,669,890 Sept. 23, 1997
Schmidt US 6,569,077 B2 May 27, 2003
REJECTIONS2
I. Claims 1–4 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Non-Final Act. 5–6.

2 The rejections of claims 1–4 (i) under 35 U.S.C. § 112(b) as being
incomplete for omitting essential structural cooperative relationships and
(ii) under 35 U.S.C. § 102(a)(1) as applying Yoakum (US 5,484,403, iss.
Jan. 16, 1996) and Cafferata (US 6,689,121 B1, iss. Feb. 10, 2004) have
been withdrawn and are not before us on appeal. Non-Final Act. 2.
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II. Claims 1–4 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Id. at 6–7.
III. Claims 1–4 stand rejected under 35 U.S.C. § 101 as being
directed to or encompassing a human organism. Id. at 7.
IV. Claims 1–4 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative under 35 U.S.C. § 103 as obvious
over, Schmidt. Id. at 8–11.
V. Claims 1–4 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative under 35 U.S.C. § 103 as obvious
over, Grimm. Id. at 11–13.
OPINION
Claim Construction
Claim 1 recites that a structural impediment is “incorporated in the
bevel region of the cannula.” Appeal Br. 57 (Claims App.). The Examiner
and Appellant disagree upon the proper interpretation to be accorded to this
claim limitation. The Examiner takes the position that Appellant “does not
define what is considered to be ‘the bevel region.’” Non-Final Act. 9, 11
(emphasis omitted). The Examiner interprets the claimed “bevel region” as
“the area around the bevel.” Id. (emphasis omitted). Appellant counters that
“bevel region” is more specific in that “[t]he Specification makes clear that
the . . . ‘bevel region’ as used in both the Specification and Claims . . . is the
region of the cannula containing the bevel which is the ground angled distal
end of the metal tube which constitutes the cannula.” Appeal Br. 14.
We give claim terms “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. Of
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Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted).
According to the Federal Circuit:
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is not whether the
specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an
interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an
interpretation that is “consistent with the specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and
internal quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017).
The Specification does not provide a lexicographic definition for the
term “bevel region.” The Specification, however, illustrates (i) a first
structural impediment (i.e., elongated distal end 41 of cannula as illustrated
in Figures 5A–B) that begins at a proximal end of bevel 35 and continues to
a distal end of the bevel (Spec. 8, Figs. 5A–B); and (ii) a second structural
impediment (i.e., dimples 49, 51 as illustrated in Figs. 6A–B) that are in a
region of the cannula between a proximal and distal end of bevel 45 and are
specifically referred to as being “in the bevel region” (id. at 9; Figs. 6A–B).
In connection with the first embodiment, the Specification describes that
“[a]s a result of the bevel 35[,] there is a gap 55 in the wall of the cannula
33” and that “[a]s the force exerted by the push-rod increases, implant object
37 forces the sides of the elongated portion of cannula 33 apart, gap 55
increases, and the structural impediment to the passage of implant object 37
out of the distal end of cannula 33 is circumvented.” Id. at 8. In connection
with the second embodiment, the Specification describes that “[t]he gap 53
in the cannula wall resulting from bevel 45 increases as the forces on the
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dimples increase” and “[t]he two sides of the cannula spread apart, and
ultimately the spread is sufficient for the implant object to pass by the
dimples and out of the distal end of the cannula.” Id. at 9. The Specification
continues that “the structural impediment blocking the exit of the implant
object from the distal end of the cannula is circumvented by the execution of
the implantation process.” Id.
Appellant explains that “[t]he reason for locating the structural
impediment in the bevel region is that the presence of the bevel provides an
extended opening into the distal end of the cannula that makes it easier to
circumvent the structural impediment in executing the implantation
process.” Appeal Br. 14; see also id. at 18 (“It is easier to push the walls of
the cannula apart where there is a gap, i.e.[,] in the bevel region.”). The
Specification explains that the bevel results in a gap in the wall of the
cannula, and that the gap resulting from the bevel increases as the forces on
the structural impediment increases. Spec. 8–9. Thus, in the context of the
Specification, the term “bevel region” relates to a portion of the cannula that
has the gap resulting from the bevel, i.e., the region of the tubular cannula
that has a portion thereof removed to define the bevel and the sharp point.
Given the specific location of the structural impediments in the two
embodiments contemplated by the Specification and the corresponding
description of the circumvention of these structural impediments (Spec. 8–
9), we agree with Appellant that the broadest reasonable claim construction
for “bevel region” is the portion of the cannula containing the bevel so as to
result in a gap in the cannula wall. See Appeal Br. 14. An interpretation of
“bevel region” that is so broad so as to encompass an area around and/or
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near the bevel that is not in a portion of the cannula containing the bevel, so
as to result in a gap in the cannula wall, is unreasonable.
Rejection I
The Examiner rejects claims 1–4 as failing to comply with the
enablement requirement. Non-Final Act. 5–6. In particular, the Examiner
first takes issue with the limitation reciting “an operator utilizing the
implantation device to make an incision in a body with the cutting edge of a
bevel at the distal end of the cannula,” noting that “an action [of] using the
push rod of the implantation device (before making the incision of the
body)” will result in “an implant object . . . falling out . . . at the distal end of
the cannula” and that “a combination of using the implantation device . . .
and the cutting edge of the cannula” is not required to make an incision. Id.
at 5. The Examiner also notes that “the limitation ‘push-bar’ lacks
antecedent basis.” Id.
The Examiner secondly states that “[t]he limitation ‘the bevel region
of the cannula’ [is] not describe[d] in the original specification in such a way
as to enable one skilled in the art to recognize a boundary of the bevel
region.” Non-Final Act. 5 (underlining omitted). The Examiner takes the
position that “[n]either the drawings nor the original specification defines
specifically . . . the boundary of the ‘bevel region.’” Id. at 5–6. The
Examiner queries whether “the ‘bevel region’ [is] considered only within the
bevel line 45 (in Fig. 6B) or can be located near or outside of the bevel line
45.” Id. at 6.
The test for enablement is whether Appellant’s disclosure is sufficient
for one of ordinary skill in the art to make and use the invention without
undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed Cir. 1988).
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The first part of the rejection explains only how an operator may use the
cannula outside of what is contemplated by Appellant’s disclosure. Non-
Final Act. 5. The second part of the rejection appears to be directed to claim
construction for the term “bevel region.” Id. at 5–6. The rejection, however,
fails to discuss the disclosure in terms of undue experimentation or address
any Wands factors. The Examiner did not articulate sufficient findings or
analysis to show that a person of ordinary skill in the art would have been
unable to make and use the claimed invention without undue
experimentation. See Wands, 858 F.2d at 737. As such, the Examiner has
not met the initial burden to establish a reasonable basis to question
enablement. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (when
rejecting a claim for lack of enablement, the USPTO bears the initial burden
of setting forth a reasonable explanation as to why the scope of the claim is
not adequately enabled by the description provided in the Specification).
Accordingly, we do not sustain the Examiner’s rejection of claims 1–4
under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement.
Rejection II
Appellant does not present arguments contesting the Examiner’s
rejection of claims 1–4 under 35 U.S.C. § 112(b) as being indefinite, with
the exception of addressing the identification by the Examiner of “the
proximal end” having “insufficient antecedent basis.” Non-Final Act. 6–7;
Appeal Br. 25. Consequently, Appellant has waived any argument of error
on any other basis, and we summarily sustain the rejection of claims 1–4
under 35 U.S.C. § 112(b) on all bases (Non-Final Act. 6–7) except for the
purported lack of antecedent basis for “the proximal end” of the cannula,
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which we address below. See, e.g., In re Berger, 279 F.3d 975, 984, 985
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection
under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed.
Cir. 2008) (explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or, more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection.”).
With respect to the purported lack of antecedent basis for “the
proximal end” of the cannula, Appellant argues that “[t]he dictionary
definition of ‘proximal’ is ‘situated toward the point of origin or
attachment’” and “[i]n the case of a cannula[,] the proximal end is the end
that attaches to the hub of the hypodermic syringe” and “[t]here is no basis
for the Examiner’s comment.” Appeal Br. 25. We do not sustain the
rejection on this basis. In particular, we do not view an antecedent recitation
that the cannula has a proximal end and a distal end to be required when the
cannula itself has been recited and a cannula inherently has a proximal end
and a distal end. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed.
Cir. 2001) (quoting MPEP § 2173.05(e) (“Inherent components of elements
recited have antecedent basis in the recitation of the components
themselves.”).
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Rejection III
Appellant does not present arguments contesting the Examiner’s
rejection of claims 1–4 under 35 U.S.C. § 101 as being directed to or
encompassing a human organism. Non-Final Act. 7; see Appeal Br. passim.
Consequently, Appellant has waived any argument of error, and we
summarily sustain the rejection of claims 1–4 under 35 U.S.C. § 101 as
being directed to or encompassing a human organism.
Rejection IV
Claims 1, 2, and 4
The Examiner finds that Schmidt discloses all of the limitations of
independent claim 1. Non-Final Act. 8–10. In particular, the Examiner
finds that Schmidt discloses “a structural impediment 24 being incorporated
in the bevel region . . . of the cannula.” Id. at 9 (citing Schmidt Figs. 5–7).
More particularly, the Examiner finds that
Schmidt discloses that a coined slot 24 is formed in
needle 10 at the proximal end 20 of bevel cut 15, col. 4, lines 23–
25. In other words, the coined slot 24 is being incorporated
(located within or connected to) in the bevel region. Figs. 6–7
show that the coined slot 24 starts being curved at point 20 in
Figs. 6–7 within (or incorporate[d] in) the bevel region. Schmidt
describes in Fig. 5 that the two flaps 24a, 24b (equivalent to
structural impediment) are folded into lumen 16 when coined slot
24 is made. These opposed flaps 24a, 24b provide the detent
means (structur[al] impediment). The flaps 24a, 24b protrude
into the lumen 16 by about the same amount as dimple or dimples
22, col. 4, lines 37–42. Schmidt further discloses that a coined
slot 24 is formed, the slot 24 extends longitudinally from heel 26
(the heel being the proximal end of the opening formed by the
lumen), col. 4, lines 59–62.
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Id.3
Appellant argues that “[c]oined slot 24 is NOT in the bevel region” as
Schmidt describes that “a coined slot 24 is formed in needle 10 at the
proximal end 20 of bevel cut 15.” Appeal Br. 44 (citing Schmidt 4:22–24)
(emphasis omitted). The Examiner responds that “flaps 24a, 24b are located
in or belong [to] . . . the bevel region 18 of the cannula.” Ans. 16. We agree
with the Examiner that at least flaps 24a, 24b are in the “bevel region” even
when construing the “bevel region” in accordance with the broadest
reasonable interpretation as set forth above. Schmidt Fig. 5, 4:37–39;
Ans. 16–17. Appellant does not reply with sufficient particularity to the
findings in the Answer (Ans. 16–17) to identify error in the Examiner’s
finding that Schmidt discloses a structural impediment incorporated in the
bevel region of the cannula.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Schmidt anticipates or render obvious the
subject matter of independent claim 1. We sustain the rejection of claim 1,
and claims 2 and 4 for which Appellant relies on the same arguments and

3 The Examiner alternatively rejects independent claim 1 based on “Schmidt
disclos[ing] that [a] dimple 22 . . . [can be] positioned anywhere about the
circumference of the needle.” Non-Final Act. 8 (citing Schmidt 4:7–8); Ans.
16 (citing Schmidt 4:6–12). Dimples 22, as illustrated in Figure 4 of
Schmidt, are not located in the claimed “bevel region” when the term “bevel
region” is given its broadest reasonable interpretation in which the bevel
region is limited to that portion of the cannula containing the bevel so as to
result in a gap in the cannula wall. To the extent the Examiner’s rejection is
based on the obviousness of locating dimples 22 in the claimed “bevel
region” in accordance with the above claim construction, we do not address
such an obviousness rejection, as we affirm the Examiner’s rejection based
on other findings by the Examiner.
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reasoning (Appeal Br. 48, 50) under 35 U.S.C. § 102(a)(1) as anticipated by,
or in the alternative under 35 U.S.C. § 103 as obvious over, Schmidt.
Claim 3
Claim 3 recites “the structural impediment being a change in cross-
sectional shape of the cannula.” Appeal Br. 57 (Claims App.). The
Examiner finds that in Schmidt, the structural impediment is a change in
cross-sectional shape of the cannula because “the detent means 24 deforms
the shape to allow the implant object 30/31 passing through.” Final Act. 10
(citing Schmidt 5:21–25). Appellant argues that “[n]either a ‘dimple’ nor a
‘coined slot’ results in a ‘change in cross-sectional shape of a cannula.”
Appeal Br. 49. The Examiner responds that “Fig. 5 shows that the flaps 24a,
24b are being slit (e.g.[,] being changed in cross-sectional shape of the
cannula) to expand the lumen for allowing the implantable object to fall out
of the cannula.” Ans. 17. Appellant does not reply with sufficient
particularity to the findings in the Answer (id.) to identify error in the
Examiner’s finding that flaps 24a, 24b changes the cross-sectional shape of
the cannula. See Schmidt Fig. 5; 4:37–39 (“FIG. 5 indicates how two
opposed flaps 24a, 24b are folded into lumen 16 when coined slot 24 is
made. These opposed flaps provide the detent means.”).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Schmidt anticipates or render obvious the
subject matter of dependent claim 3. We sustain the rejection of claim 3
under 35 U.S.C. § 102(a)(1) as anticipated by, or in the alternative under
35 U.S.C. § 103 as obvious over, Schmidt.
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Rejection V
The Examiner finds that Grimm discloses all of the limitations of
independent claim 1. Final Act. 11–12. In particular, the Examiner finds that
Grimm discloses
a structural impediment (e.g.[,] tab 64 alone or the combination
of grooves 53, 54 and tab 64) being incorporated (e.g.[,] located
in/at a boundary of the bevel region 62, the tab 64 and grooves
53, 54 located at the phantom line, bevel region 62) in the bevel
region 62 of the cannula which prevents the implant object 74
from falling out of the cannula at the distal end as a result of
changes in cannula orientation prior to the execution of the
implantation process.
Id. at 11. Appellant argues that “Grimm’s structural impediment (tabs 64) is
not in the bevel region” when considering Appellant’s proffered
interpretation of “bevel region” as “the region of the cannula containing the
bevel.” Appeal Br. 14, 40. The Examiner responds that “‘the bevel region’
is not limited by only the bevel/diagonal line[,] but the bevel region can be
interpreted as the area around the bevel.” Ans. 15. The Examiner finds that
“Grimm shows in Fig. 6 that the tab 64 is located at the bevel surface 62”
and “[t]herefore, the structur[al] impediment (tab 64) is incorporated in the
bevel region.” Id.
The Examiner’s finding that Grimm discloses “a structural
impediment being incorporated in the bevel region of the cannula” as
claimed is not adequately supported by the reference when the term is given
its broadest reasonable interpretation in which a “bevel region” is limited to
that portion of the cannula containing the bevel. As illustrated in Figure 6 of
Grimm, the Examiner-identified structural impediment of tab 64 and
grooves 53, 54 is located proximally of a proximal end of the bevel/diagonal
line. Thus, the Examiner-identified structural impediment of tab 64 and
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grooves 53, 54 is not in the region of the cannula containing the bevel, but is
instead in the region of the cannula that is proximal of the bevel. In
accordance with the above claim construction, such a region cannot be the
claimed “bevel region.”
For the foregoing reasons, Appellant apprises us of error in the
Examiner’s determination that Grimm anticipates or render obvious the
subject matter of claim 1, the obviousness rejection being based on an
erroneous finding. We do not sustain the rejection of claim 1, and claims 2–
4 depending therefrom, under 35 U.S.C. § 102(a)(1) as anticipated by, or in
the alternative under 35 U.S.C. § 103 as obvious over, Grimm

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4 112(a) Enablement 1–4
1–4 112(b) Indefiniteness 1–4
1–4 101 Patent Eligibility 1–4
1–4 102(a)(1),
103
Schmidt 1–4
1–4 102(a)(1),
103
Grimm 1–4
Overall
Outcome
1–4

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).
AFFIRMED