2020000423 (P.T.A.B. Dec. 2, 2020)

Yoshio Okano et al.

Patent Trials and Appeals BoardDec 2, 2020

2020000423 (P.T.A.B. Dec. 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. 13/266,622 10/27/2011 Yoshio Okano P22649US00 8493 38834 7590 12/02/2020 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER GEBREMICHAEL, BRUK A ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 12/02/2020 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOSHIO OKANO and HIROSHIGE SASAKI ____________ Appeal 2020-000423 Application 13/266,622 Technology Center 3700 ____________ Before EDWARD A. BROWN, LYNNE H. BROWNE, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–7 and 16–23. Appeal Br. 3; Final Act. 1. Claims 8–15 have been withdrawn as being directed to a non-elected invention. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on October 22, 2020. We REVERSE and ENTER A NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as YUUGENGAISHA SEIWADENTAL. Appeal Br. 2. Appeal 2020-000423 Application 13/266,622 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates to an organ model,” such as “an organ model which can be suitably used for exercising an operation such as incision, cutting or suture of a human body and the like.” Spec. ¶ 1. Claims 1 and 16, reproduced below with line breaks added for clarity, are the independent claims and are representative of the subject matter on appeal. 1. An organ model for use in exercising an operation comprising[:] (a) an aqueous crosslinked gel made of a polyvinyl alcohol having an average degree of polymerization of 300 to 3500 and a degree of saponification of not less than 90 % by mole, and (b) silica particles. 16. An organ model for use in exercising an operation having[:] at least a surface layer comprising[:] an aqueous crosslinked gel made of a polyvinyl alcohol having an average degree of polymerization of 300 to 3500 and a degree of saponification of not less than 90 % by mole, and silica particles. Appeal 2020-000423 Application 13/266,622 3 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Sueoka US 4,279,752 July 21, 1981 Tanabe US 4,734,097 Mar. 29, 1988 Jerath US 5,061,187 Oct. 29, 1991 Ozasa US 2005/0202229 A1 Sept. 15, 2005 Ma US 2007/0036844 A1 Feb. 15, 2007 Lang US 2008/0243127 A1 Oct. 2, 2008 REJECTIONS The following rejections are before us for review:2 I. Claims 1–5 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Sueoka. Ans. 4–6. II. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sueoka. Id. at 6–7. III. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sueoka and Ozasa. Id. at 7–8. IV. Claims 16, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanabe and Sueoka. Id. at 8–10. 2 We note that rejections of claims 1–7 and 16–23 under 35 U.S.C. § 101 for eligibility and under 35 U.S.C. § 112, second paragraph, for indefiniteness (both relating to the claims being considered to be directed to multiple statutory categories), have been withdrawn by the Examiner and thus are not before us for review as part of the instant appeal. Ans. 3; see Final Act. 2–8. Appeal 2020-000423 Application 13/266,622 4 V. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanabe, Sueoka, and Jerath. Id. at 11. VI. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Tanabe, Sueoka, and Lang. Id. at 12. ANALYSIS New Ground of Rejection Claims 1–7 and 16–23 as Indefinite All the claims recite, in relevant part, an “organ model for use in exercising an operation” that comprises just two components: (a) an aqueous crosslinked gel made of a polyvinyl alcohol with particular degrees of polymerization and saponification and (b) silica particles. See Appeal Br., Claims App. According to Appellant’s disclosure, the claimed organ model can be used for exercising or practicing an operation such as incision, cutting, or suture of a human body or the like. See Spec. ¶ 1. Focusing on independent claim 1, the Examiner makes sufficiently supported findings that Sueoka discloses an object (membrane / model) that comprises the same two constituent components as recited. See, e.g., Ans. 4–5. The Examiner also explains that the object of Sueoka can be formed into different shapes and that nothing more than an anatomical shape of a three-dimensional object is required for an object to be considered an organ model. See id. at 4; compare Fig. 2, with Sueoka, Fig. 4 (both showing objects having generally tubular shapes). Appellant argues that Sueoka, which is relied on for all the current rejections, is insufficient to disclose or suggest an organ model as claimed. See Reply Br. 4–5. Underlying Appellant’s position is an assertion that a Appeal 2020-000423 Application 13/266,622 5 person of ordinary skill in the art would understand that an organ model would have properties to mimic those of an organ, such as water wettability, incision feel, flexibility, stickiness, and tensile strength. See, e.g., Appeal Br. 5. But none of these properties are recited in the claim.3 And the extreme breadth of “organ model” as covering a model of any animal organ, different ones of which would presumably have at least some differences in these identified properties, only adds to the confusion of what an object (such as Sueoka’s membrane) would need (other than the two recited constituent components) to be covered by the claim. Thus, a critical issue identified by Appellant’s position centers on what specific structural features or properties, if any, would be required for an object to be functionally considered an organ model. Resolution of this issue, however, is not possible on the record before us because Appellant does not identify what specific structural features or properties (apart from including the two recited constituent components) would be required to achieve the asserted properties of an organ model. Although it may be possible that some of these properties may imply some structural requirements of the recited organ model, the problem here is that Appellant does not direct us to anything in the record, let alone in the claims 3 Further, Appellant neither defines specific values, ranges, or limits for any of these properties, nor identifies whether characteristics of such properties would result from the presence of the silica particles alone (see Record of Oral Hearing, p. 2. l. 18 – p. 3, l. 3), the combination of the polyvinyl alcohol gel and the silica particles together (see id., p. 3, ll. 10–16), or an implication from the recitation of an organ model (see id., p. 4, l. 16 – p. 5, l. 3). Appeal 2020-000423 Application 13/266,622 6 themselves, that would specifically identify what these structural features might be. See, e.g., Record of Oral Hearing, p. 5, l. 20 – p. 6, l. 2. Stated another way, even if we agree with Appellant that such a recitation in the preamble is a positive limitation on the claim, because we are unable to determine the scope of what specific structures might be implied by the recitation of an organ model (again, apart from the two recited constituent components, which the prior art discloses), the claims are indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. This inability to concretely determine the claim scope pervades all the claims. Accordingly, we enter a new ground of rejection for claims 1–7 and 16–23 pursuant to 37 C.F.R. § 41.50(b). Claims 1–7 and 16–23 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. The essence of the requirement under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is that the language of the claims must provide clarity to those skilled in the art regarding the scope of the subject matter which the claims encompass. See In re Hammack, 427 F.2d 1378 (CCPA 1970). A claim is indefinite when it contains words or phrases whose meaning is unclear to a person of ordinary skill in the art. Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2–6 (PTAB Aug. 25, 2017) (precedential); Ex parte Miyazaki, Appeal No. 2007-3300, 2008 WL 5105055, at *4 (BPAI Nov. 19, 2008) (precedential) (“[t]he test for definiteness under 35 U.S.C. § 112, second paragraph, is whether ‘those skilled in the art would understand what is claimed when the claim is read in light of the specification’”) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)). Appeal 2020-000423 Application 13/266,622 7 Notwithstanding the permissible instances of including functional recitations in a claim for a composition (at a basic level, identifying an object as an “organ model” essentially gives a function to that object), the use of functional recitations may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim,” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Such is the case here. When a claim merely recites a function or result to be achieved by the underlying recited structural elements—here, the ability of an object to serve as an organ model—the boundaries of the claim scope may be unclear. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court has explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Here, Appellant repeatedly urges that some structural distinction between the claimed organ model and the known object from Sueoka must be present, as not all such objects would include the asserted properties listed above, but Appellant does not identify with clarity what such properties would necessarily be or why Sueoka’s object may not have them. Although Appellant asserts that some of these properties would be key features of an organ model, any such details (again, apart from including the two recited constituent components, which Sueoka discloses) are conspicuously absent from the claims themselves. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well established that limitations Appeal 2020-000423 Application 13/266,622 8 not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). To the extent that Appellant endeavors to rely on some structural distinction based on the nature of an organ model itself that would be implied by the functional use of the object, it is only fair—both to the Examiner and to the public—that Appellant clearly delineates, either by express language in the claims themselves or by citation to evidence in the record, the precise scope encompassed by the claims. Appellant does not direct us to any such delineation; absent which, we are not in a position to speculate as to what specific structural features or properties of the object may be imparted by the functional designation of it as an organ model (particularly, beyond what the Examiner has already indicated is known in the art). Unless and until a person of ordinary skill in the art reading the claim is able to ascertain with reasonable certainty what the asserted structural features or properties of an organ model may be, the scope of the claims is unclear because it lacks sufficient precision to permit one endeavoring to practice the invention to adequately determine the metes and bounds thereof. In light of the above, we conclude that claims 1–7 and 16–23 are indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Appeal 2020-000423 Application 13/266,622 9 Rejections I–VI – Anticipation or Obviousness over the Cited Art We do not sustain the Examiner’s rejections of claims 1–7 and 16–23 under 35 U.S.C. § 102(b) or § 103(a). For the reasons explained in detail above, the claims are indefinite. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Therefore, since the claims fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the prior art rejections because they necessarily are based on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims). We emphasize, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. As discussed above, the Examiner has cited prior art that discloses an object including the recited two constituent components, which is all that is required in the body of the independent claims. At least with respect to the independent claims, Appellant’s arguments do not apprise us of error in the Examiner’s findings or determinations. Appeal 2020-000423 Application 13/266,622 10 DECISION We ENTER A NEW GROUND OF REJECTION of claims 1–7 and 16–23 under 35 U.S.C. § 112, second paragraph, as being indefinite. We REVERSE, pro forma, the Examiner’s prior art rejections as discussed above. FINALITY OF DECISION 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 that “[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 Appellants, 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: (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. 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). Appeal 2020-000423 Application 13/266,622 11 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–7, 16–23 112 ¶ 2 Indefiniteness 1–7, 16–23 1–5 102(b) Sueoka 1–5 1–5 103(a) Sueoka 1–5 22, 23 103(a) Sueoka 22, 23 6, 7 103(a) Sueoka, Ozasa 6, 7 16, 20, 21 103(a) Tanabe, Sueoka 16, 20, 21 17, 18 103(a) Tanabe, Sueoka, Jerath 17, 18 19 103(a) Tanabe, Sueoka, Lang 19 Overall Outcome 1–7, 16–23 1–7, 16–23 REVERSED; 37 C.F.R. § 41.50(b)