        NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
               __________________________

                  (Serial No. 11/014,909)
       IN RE RICHARD F. SCHWEMBERGER
             __________________________

                       2010-1127
               __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
               ___________________________

                Decided: October 13, 2010
              ___________________________

   HOWARD N. FLAXMAN, Welsh & Flaxman LLC, of Al-
exandria, Virginia, for appellant.

    RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for the Director of the United States Patent
and Trademark Office. With him on the brief were
SYDNEY O. JOHNSON, JR. and FRANCES N. LYNCH, Associ-
ate Solicitors.
                __________________________
IN RE SCHWEMBERGER                                       2


    Before BRYSON, DYK, and MOORE, Circuit Judges.
PER CURIAM.
    Richard T. Schwemberger appeals from a final deci-
sion of the United States Patent and Trademark Office,
Board of Patent Appeals and Interferences (Board), which
found claims 1-30 of Application Serial No. 11/014,909
(the ’909 application) unpatentable as obvious. See Ex
parte Schwemberger, No. 2009-1229 (B.P.A.I. Aug. 12,
2009) (Initial Decision); see also Ex parte Schwemberger,
No. 2009-1229 (B.P.A.I. Sept. 18, 2009) (Final Decision).
For the following reasons, we affirm.
                      BACKGROUND
     Mr. Schwemberger is one of the named inventors of
the ’909 application, which is entitled “Curved Cutter
Stapler with Aligned Tissue Retention Feature.” The ’909
application is directed to a surgical stapling instrument
that applies staples to body tissue. The stapling instru-
ment of the ’909 application includes a support frame
with a handle at one end and an “end effector” at the
other. The end effector supports an anvil and a cartridge
housing that carries a plurality of staples. The anvil and
cartridge housing are moveable relative to each other,
such that tissue can be clamped between the two, and a
“tissue retention feature” maintains the tissue within the
end effector during a procedure. Once the tissue is in
place, a firing mechanism is used to drive staples from the
cartridge into contact with the anvil, thus suturing the
tissue together. Figure 1 illustrates a preferred embodi-
ment of the stapling instrument disclosed by the ’909
application:
3                                       IN RE SCHWEMBERGER




    The ’909 application discloses that prior art surgical
stapling instruments used tissue retention features (such
as retaining pins and cartridge guides) that were located
outside the rows of staple lines on a cartridge. For exam-
ple, Figure 41 of the ’909 application illustrates a prior art
staple line configuration in which the tissue retention
features 12 are located outside the staple lines 10:
IN RE SCHWEMBERGER                                       4


This configuration creates a gap between the end of the
staple line and the tissue retention feature where the
tissue is not sutured closed. The ’909 application states
that this may contribute to problems such as bleeding or
leakage of fluids out of the cut tissue. Thus, the ’909
application discloses that it would be desirable to elimi-
nate the gaps between the tissue retention devices and
staple lines by extending the staple lines beyond the
tissue retention features.
    Claim 9, which is representative of the appealed
claims, reads as follows:
   9. A surgical instrument adapted for applying a
   plurality of surgical fasteners to body tissue, the
   surgical instrument comprising:
   a frame having a proximal end and a distal end,
   with a handle positioned at the proximal end and
   an end effector positioned at the distal end;
   the end effector being shaped and dimensioned for
   supporting a cartridge housing and an anvil, the
   cartridge housing and anvil structure being rela-
   tively movable between a first spaced apart posi-
   tion and a second position in close approximation
   with one another;
   a firing mechanism associated with the end effec-
   tor and the cartridge housing for selective and
   substantially simultaneous actuation of the fas-
   tening elements; and
   a tissue retention feature associated with the car-
   tridge housing and anvil, the tissue retention fea-
   ture maintaining tissue within the end effector
   during treatment and including
       a top tissue retention member extending
       between the cartridge housing and the an-
5                                       IN RE SCHWEMBERGER



        vil, wherein the top tissue retention mem-
        ber is capable of selective distal movement
        or proximal retraction, and
        a bottom tissue retention member extend-
        ing between the cartridge housing and the
        anvil;
    the cartridge housing includes at least one staple
    line along a face of the cartridge housing defining
    the longitudinal extent of the surgical fasteners
    being applied, the staple line includes a top and a
    bottom; and
    the top of the staple line is above the top tissue re-
    tention member or the bottom of the staple line is
    below the bottom tissue retention member.
Initial Decision, slip op. at 2-3 (emphases added).
    The examiner rejected claims 1-30 under 35 U.S.C. §
103(a) as being obvious over U.S. Patent No. 4,930,503
(Pruitt) in view of U.S. Patent No. 5,673,841 (Schulze).
Pruitt discloses a surgical stapler with a proximal end
that includes handle 15 and a distal end that includes
anvil 17 and cartridge holder 20. Cartridge holder 20
supports staple cartridge 19. Pruitt col.6 ll.21-27. Fig-
ures 8 and 12 of Pruitt depict frontal views of the dis-
closed stapler and anvil, respectively:
IN RE SCHWEMBERGER                                        6




Staple cartridge 19 can be advanced and retracted with
respect to anvil 17 using knob 24. Id. col.6 ll.35-42.
Guide bar 38, which is fixed between anvil 17 and car-
tridge holder 20 inside arm 18, ensures that the cartridge
and anvil remain correctly positioned relative to each
other. Id. col.7 ll.37-39, 49-51. Pruitt’s stapler also
includes positioning rod 21, which is moveable between
staple cartridge 19 and anvil 17. Id. col.6 ll.29-34. When
the anvil and cartridge are positioned against the tissue
to be stapled, rod 21 can be advanced to pierce the tissue
and hold the tissue in position during the stapling proce-
dure. Id. col.6 ll.48-53. The closing of trigger 30 actuates
a plunger mechanism that forces staples 10 out of car-
tridge 19 into the grooves of anvil 17. Id. col.6 ll.54-58.
    The examiner found that Pruitt discloses all limita-
tions of claim 9 except for the final limitation, which
recites that “the top of the staple line is above the top
tissue retention member or the bottom of the staple line is
7                                      IN RE SCHWEMBERGER



below the bottom tissue retention member.” However, the
examiner found that Figure 18a of Schulze teaches this
limitation. Schulze discloses a surgical stapling and
cutting instrument. Figures 18 and 18a, reproduced
below, depict the top and side views of a staple cartridge
used in Schulze’s instrument:




As shown in Figure 18a, the staple lines 92 of Schulze’s
cartridge extend beyond pin 61. The examiner found that
it would have been obvious to one of ordinary skill in the
art at the time of the invention of the ’909 application to
modify the staple lines of Pruitt according to the design of
Schulze “for the purpose of ensuring complete closure of
the tissue.” J.A. 243.
    Mr. Schwemberger appealed to the Board, which af-
firmed the examiner’s rejection. The Board found that
Pruitt discloses all of the limitations of claim 9 except the
final limitation. With respect to the limitation of a “bot-
tom tissue retention member extending between the
cartridge housing and the anvil,” the Board noted that the
specification did not provide any definition of the term
“bottom tissue retention member.” The Board concluded
that the ordinary meaning of the term applied and that
IN RE SCHWEMBERGER                                       8


this ordinary meaning was broad enough to cover “a
bottom member [that] retains tissue.” Initial Decision,
slip op. at 9. The Board observed that Pruitt’s guide bar
38 retains tissue and is located below positioning rod 21
(which the Board found satisfied the claimed “top tissue
retention member”). Id. at 6, 9. Therefore, the Board
found that guide bar 38 satisfied the “bottom tissue
retention member” limitation. Id. at 9.
    The Board also determined that it would have been
obvious to modify Pruitt’s stapling instrument by incorpo-
rating the staple line configuration disclosed by Schulze.
The Board noted that Schulze’s gap spacing pin 61 was a
“similar device” to Pruitt’s positioning rod 21: Schulze’s
pin and Pruitt’s rod both functioned to maintain the anvil
in a position parallel to the staple cartridge during sta-
pling and, in doing so, both components penetrated the
tissue trapped between the anvil and the cartridge. Id.
Because Schulze’s pin and Pruitt’s rod were functionally
and structurally similar, the Board found that “it would
have been obvious to improve Pruitt’s positioning rod 21
in the same manner that Schulze improved the stapler of
Schulze’s Figures 18 and 18a, namely, by moving the
positioning rod 21 down below the top of the lines of
staples 6, 7 and by moving Pruitt’s guide bar 38 above the
bottom of the line of staples.” Id. at 10. Mr. Schwember-
ger filed a request for rehearing, and the Board denied the
request.
    Mr. Schwemberger timely appealed, and we have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §
141.
                       DISCUSSION
    We review the Board's legal conclusions without def-
erence and its findings of fact for substantial evidence.
See In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
9                                      IN RE SCHWEMBERGER



2000) Claims are given their "broadest reasonable inter-
pretation" during prosecution, and we review the Board’s
interpretation of disputed claim language to determine
whether it is reasonable in light of the specification. See
In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).
Whether an invention would have been obvious is a legal
question based on underlying findings of fact, including
(1) the scope and content of the prior art; (2) the level of
ordinary skill in the prior art; (3) the differences between
the claimed invention and the prior art; and (4) objective
evidence of nonobviousness. Gartside, 203 F.3d at 1319.
    Mr. Schwemberger first asserts that the Board erred
by construing “bottom tissue retention feature” to read on
Pruitt’s guide bar 38, arguing that the inventors of the
’909 application acted as their own lexicographer with
respect to the term. It is true that a “claim term will not
receive its ordinary meaning if the patentee acted as his
own lexicographer and clearly set forth a definition of the
disputed claim term in either the specification or prosecu-
tion history.” CCS Fitness v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002). However, Mr. Schwemberger
points to no clear definition of the term “bottom tissue
retention member” in the specification, and we are unable
to discern one. Given that the specification sets forth no
clear definition of the disputed claim term, the Board
correctly determined that the term should be given its
broadest reasonable interpretation. See In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination
proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.”). The
Board’s interpretation of “bottom tissue retention mem-
ber” as having its ordinary meaning—that is, a bottom
member that retains tissue—is not unreasonable.
    Under this interpretation, substantial evidence sup-
ports the Board’s finding that Pruitt’s guide bar 38 meets
IN RE SCHWEMBERGER                                      10


the “bottom tissue retention member” limitation. Figures
8 and 12 of Pruitt depict guide bar 38 as being located
below positioning rod 21, and Mr. Schwemberger does not
dispute that rod 21 meets the “top tissue retention mem-
ber” limitation. Further, Pruitt’s figures show that the
guide bar 38 defines the lower boundary of the channel
between the anvil and the cartridge. In this sense, guide
bar 38 necessarily operates to retain tissue within the
channel. Mr. Schwemberger argues that Pruitt’s guide
bar 38 cannot be a “tissue retention” member because it
does not come into contact with any tissue. However,
Pruitt does not teach that guide bar 38 cannot come into
contact with tissue; to the contrary, Figure 12 appears to
depict the top of guide bar 38 as being exposed, making
actual contact with tissue possible. More fundamentally,
claim 9 requires only retention of tissue, not actual con-
tact, and substantial evidence supports the Board’s find-
ing that guide bar 38 functions to retain tissue by
defining a lower limit of the channel between the anvil
and cartridge.
    Next, Mr. Schwemberger claims that the Board im-
properly found that Schulze’s gap spacing pin 61 meets
the limitation of “a top tissue retention member extending
between the cartridge housing and the anvil, wherein the
top tissue retention member is capable of selective distal
movement or proximal retraction.” Mr. Schwemberger
argues, correctly, that Schulze does not disclose that the
gap spacing pin is capable of “distal movement or proxi-
mal retraction.” Therefore, Mr. Schwemberger is correct
that the gap spacing pin does not meet the “top tissue
retention member” limitation. However, the Board did
not find that it did. To the contrary, the Board found only
that Schulze’s pin “acts as a tissue retention feature in
th[e] sense that the action of the gap spacing pin 61
retains the tissue between the anvil portion 40 and the
11                                     IN RE SCHWEMBERGER



cartridge assembly 50.” Initial Decision, slip op. at 7
(emphasis added). The Board found that Pruitt’s position-
ing rod 21 meets the “top tissue retention member” limi-
tation, and Mr. Schwemberger does not dispute this
finding.
     Finally, Mr. Schwemberger argues that the Board
failed to articulate an appropriate rationale for combining
Schulze’s staple line configuration with the surgical
stapler of Pruitt. Mr. Schwemberger asserts that the
examiner’s motivation for combining Schulze and Pruitt,
which the Board sustained—to “ensur[e] complete closure
of the tissue”—does not come from either Pruitt or
Schulze, but from the ’909 application itself. Therefore,
he contends, the rationale is based on improper hindsight.
    The Supreme Court has cautioned that although it
may be valuable to identify a particular reason to combine
two references, the obviousness analysis is not limited to
this inquiry. See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418-19 (2007). Rather, “[i]f a person of ordinary skill
can implement a predictable variation [of a work], § 103
likely bars its patentability.” Id. at 417. Similarly, “if a
technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is be-
yond his or her skill.” Id. In evaluating obviousness,
therefore, “a court must ask whether the improvement is
more than the predictable use of prior art elements ac-
cording to their established functions.” Id.
    The specification of the ’909 application discloses a
known problem associated with surgical stapling proce-
dures: when a section of cut tissue is not sutured fully
closed, problems such as bleeding and leakage of fluids
may arise. The apparent solution to this known problem
IN RE SCHWEMBERGER                                        12


is to extend the sutures to a point beyond the cut section
of tissue, thus ensuring that the tissue is fully closed. The
particular manner in which the inventors of the ’909
application chose to implement this solution—by extend-
ing the lines of staples beyond the “tissue retention mem-
bers” that mark the boundaries of the cut portion of
tissue—is plainly disclosed by Schulze’s Figure 18a.
Thus, and particularly in view of the similarities between
the surgical instruments of Pruitt and Schulze, modifying
Pruitt’s staple line configuration in accordance with the
configuration disclosed by Schulze is no more than “the
combination of familiar elements according to known
methods . . . [with] predictable results.” See KSR, 550
U.S. at 416; see also id. at 421 (“When there is a design
need or market pressure to solve a problem and there are
a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the
known options within his or her technical grasp.”). There-
fore, the Board correctly determined that claim 9 is obvi-
ous over the combination of Pruitt and Schulze.
    Mr. Schwemberger argues that a person of skill in the
art would not have had a reasonable expectation of suc-
cess in combining Pruitt’s surgical stapler with Schulze’s
staple line configuration. Mr. Schwemberger asserts that
there is no physical space above or below Pruitt’s rod 21
and guide bar 38 to allow a complete staple to form;
therefore, Mr. Schwemberger contends, the proposed
combination would have resulted in an inoperable in-
strument. However, the Board found that a person of
ordinary skill in the relevant art would have known how
to move rod 21 below the top of the staple line or to move
bar 38 above the bottom of the staple line. Initial Deci-
sion, slip op. at 10. Mr. Schwemberger points to no con-
trary evidence showing that this relatively minor design
change would be outside the scope of ordinary skill.
13                                   IN RE SCHWEMBERGER



     Because the Board did not err in determining that
claim 9 is obvious in view of Pruitt over Schulze, we
affirm the Board’s decision rejecting claims 1-30 under 35
U.S.C. § 103(a).
                      AFFIRMED


                         COSTS
     No costs.
