Shawn Fojtik

Patent Trials and Appeals Board

Jun 2, 2020

2019006598 (P.T.A.B. Jun. 2, 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.
29/361,552 05/12/2010 Shawn P. Fojtik 27154-2000US01 7047
128128 7590 06/02/2020
Durham Jones & Pinegar, P.C.
Intellectual Property Law Group
3301 N. Thanksgiving Way, Suite 400
Lehi, UT 84043
EXAMINER
ELAND, BRIDGET L
ART UNIT PAPER NUMBER
2916
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
apower@djplaw.com
ipmail@djplaw.com
sboren@djplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHAWN P. FOJTIK
____________________

Appeal 2019-006598
Application 29/361,552
Technology Center 2900
____________________

Before JOHN C. KERINS, JILL D. HILL, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject the single design claim pending in this
appeal.1 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 CIRCA Scientific, LLC. as the real party in
interest. Appeal Br. 2.
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BACKGROUND
Appellant’s invention relates to a design for a medical device. The
claim on appeal is “[t]he ornamental design for an apparatus for
manipulating hollow organs, as shown and described.”
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cox US 2004/0133273 A1 July 8, 2004
Burnes US 2009/0275956 A1 Nov. 5, 2009

REJECTIONS
I. The claim stands rejected under 35 U.S.C. § 102(b) as
anticipated by Cox.
II. The claim stands rejected under 35 U.S.C. § 102(a) as
anticipated by Burnes.
OPINION
Rejection I
The Examiner finds that “[t]he shape and appearance of the design in
FIG. 59A [of Cox] is substantially the same as . . . the claimed design.”
Final Act. 3.
Appellant argues that the Examiner’s finding is in error, because the
Examiner mistakenly “focused on an image from Cox (FIG. 59A) that Cox
acknowledges does not provide an accurate representation of the device.”
Appeal Br. 6. According to Appellant, Figure 59A of Cox, considered in
light of Figures 59B and 59C and paragraph 242 describing the figures,
informs a skilled artisan that “[w]hen the design shown in Cox is considered
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as a whole, it is apparent that it is not flat.” Id. Rather, “in addition to
comprising a sinusoidal curve along its length, the sinusoidal curve design of
Cox is also curved from top to bottom, as illustrated by FIGs. 59B and 59C
of Cox, and along its length, as depicted by FIG. 59C of Cox.” Id. Thus,
Appellant contends, it is apparent that Cox’s design is not flat like the
claimed design. Id. Thus, Appellant argues, “Cox does not anticipate the
claimed design ‘in all material respects,’” and “[a]n ordinary observer would
not consider the design shown in Cox and the claimed design to be
substantially the same.” Id. at 6–7.
The Examiner responds that the ordinary observer test “does not
require the designs for comparison be from analogous arts” and “does not
require that, while shopping for the article embodying the claimed design, a
person would reasonably encounter the article illustrated in the reference.”
Ans. 6. The Examiner contends that Cox discloses that a flat sinusoidal
shape in Figure 59A is one possible shape for its spine. Id. at 7 (citing Cox
¶ 241 (“The spring-like spine 906 is not restricted to a sinusoidal shape, but
may also take on . . .” (emphasis added))). The Examiner finds that “[o]ne
could further conclude or interpret then that FIG. 59B and FIG. 59C were
transformed from FIG. 59A.” Id. The Examiner further finds that, because
the spine of Figure 59A is not restricted to a sinusoidal shape, “in order for
the design of FIG. 59B to be transformed to the ‘C’ shape at the end view
wherein it is ‘[w]rapped around the x-axis . . .’ it must first be a substantially
straight line in the FIG. 59A view.” Id. at 8 (emphasis omitted). The
Examiner summarizes that the flat spring-like spine in a pure sinusoidal
shape in Figure 59A is a form of the spine, which may be transformed by the
process of wrapping around a cylindrical tube and wrapping around the
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y-axis to circumscribe a particular arc, as shown in Figures 59B and 59C
respectively. Therefore, in the Examiner’s view, the initial design shown in
Figure 59A anticipates the claimed design herein. Id.
Appellant replies that an ordinary observer considers the design as a
whole and, while Appellant’s design is flat, “an ordinary observer giving
such attention as a purchaser usually gives would see that the design of Cox”
includes “an arcuate, or semi-annular shape that is also concavely curved
around its circumference.” Reply Br. 5.
Appellant has the better argument. Considering the disclosure of Cox
in its entirety, and focusing on Figure 59A, considered in light of Figures
59B and 59C and paragraph 242 describing the figures, a skilled artisan
would understand that Cox’s spine is not flat. Cox discloses that “FIG. 59A
represents the spring-like spine 906 as if it were flattened onto the plane of
the page.” Cox ¶ 241. The language “if it were flattened” would indicate to
a skilled artisan that the spine in the actual article is not, in fact, flattened.
Further, comparing the way the spine would look “if it were flattened” to the
claimed design is not comparing something that exists to the claimed design
— it is more akin to comparing a schematic to the claimed design — which
we decline to do. Cox also discloses that the spine 906 disclosed in Figures
59A to 59C is the same spine, not alternative embodiments of the same
spine. Therefore, a skilled artisan would understand that the sinusoidal
shape represented in Cox’s Figure 59A, which shows the spine 906 “as if it
were flattened into the plane of the page” would more likely inform a skilled
artisan that Cox’s spine is never actually flat. For this reason, we do not
sustain Rejection I.
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Rejection II
The Examiner finds that “[t]he shape and appearance of the design in
FIG. 14D [of Burnes] is substantially the same as . . . the claimed design.”
Final Act. 5.
Appellant argues that Burnes “clearly indicates that the illustrated
design is not flat,” and “[t]he ordinary observer would recognize that the
design of Burnes has a coiled, or corkscrew, shape.” Reply Br. 6, 7.
According to Appellant, Burnes discloses an anchor or “‘helical fixation
member’” that can be wedged into a jugular vein to receive a lead
therethrough, and Burnes’ anchor/fixation member “could not receive a lead
‘therethrough’ if it had a flat design.” Id. (citing Burnes ¶¶ 92, 118–120,
152). Further, Burnes explicitly states that its anchor is “‘formed in a
spiral.’” Id. (citing Burnes ¶¶ 157, 158 (indicating that anchors with the
design shown in FIG. 14D are “helical coils”)). Burnes notes that “[a]n
anchor with such a design may be twisted into a vein.” Id. (citing Burnes
¶ 118 (emphasis added)).
The Examiner responds that “[w]hile suggested as possible
embodiment forms, there is no language in the text of [Burnes] that indicates
FIG. 14D must have a spiral or helical form,” and there is no language
supporting Appellant’s analysis “that the design shown in FIG. 14D is not
shown as a whole.” Ans. 10. We understand the Examiner to be saying that
Burnes includes no explicit language that the anchor/fixation member of its
Figure 14D has an additional curvature aspect into and/or out of the page.
Appellant replies, inter alia, that “[w]hile the front elevational view
provided by FIG. 14D of Burnes may have the appearance of a sinusoidal
curve, an ordinary observer giving such attention as a purchaser usually
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gives would have considered the design of Burnes in its entirety,” the
entirety indicating that “the illustrated design is not flat.” Reply Br. 6–7.
Considering Burnes’ disclosure in its entirety, Appellant again has the
better argument. The only method disclosed by Burnes for fixing its
anchor/fixation member to the vein wall is twisting. See Burnes ¶¶ 105, 118,
119, 151. From this disclosure, a skilled artisan would not understand
Burnes’ fixation member to be flat and sinusoidal, because twisting would
not facilitate insertion of a flat, sinusoidal anchor/fixation member. Further,
Burnes discloses that its “[f]ixation member 274 may have a variety of
lengths and helical pitches” (Burnes ¶ 120), but does not disclose any flat
shape options therefor. Specifically regarding Figures 14A–14J, Burnes
discloses that “[t]he anchors illustrated in FIGS. 14A-14J” can be employed
“in a manner as described with reference to anchor portion 230A of
guidewire 230 and/or barbs 231 in FIG. 9.” Burnes ¶ 121. According to
Burnes, the “harpoon shapes of FIGS. 14B and 14C” would be employed as
barbs. Id.
The best evidence supporting the Examiner’s position that the
anchor/fixation member shown in Burnes’ Figure 14D is flat and sinusoidal
comes from Burnes’ statement that “a portion of lead 29 may be shaped as
shown in FIGS. 14A, 14D, or 14F and wedged into jugular vein 158 to
anchor the lead and electrode 228 within the vein.” Id. While a portion of
lead 29 could be shaped as shown in Figure 14D and “wedged,” rather than
twisted, in the vein, the entirety of the disclosure of Burnes weighs toward
the structure shown in Figure 14D being helical. Weighing the entirety of
Burnes’ teachings against the single sentence using the term “wedging,” we
determine that the Examiner’s finding of Figure 14D being flat in the plane
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of the paper is speculative. Further, the Examiner does not discuss the term
“wedging,” or explain what a skilled artisan would understand therefrom.
Still further, it can be said Burnes’ disclosure treats Figure 14D as a
“schematic” representation that may not be proper evidence to establish
anticipation of the claimed design. For these reasons, we do not sustain the
pending rejection.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1 102(b) Cox 1
1 102(a) Burnes 1

REVERSED