Ex Parte Bonadio et al

Patent Trial and Appeal Board

Jul 18, 2016

11523618 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111523,618 0912012006
108449 7590 07/20/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Frank Bonadio
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08203.0006-04000 6423
EXAMINER
RAMAN A, ANURADHA
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
usptomail@bookoffmcandrews.com
KRoss@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK BONADIO,
SHANE JOSEPH McNALL Y,
RONAN BERNARD McMANUS,
DEREK WILLIAM YOUNG,
and ALAN REID
Appeal2014-002296
Application 11/523,618
Technology Center 3700
Before KEN B. BARRETT, JAMES P. CALVE, and WILLIAM A. CAPP,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 51-56, 59---64, 67-72, 76-78, and 80-83. Appeal Br. 4. Claims 1-
50, 58, 66, 73, and 75 are cancelled. Id. Claims 79 and 84 are withdrawn
from consideration. Id. Claims 57, 65, and 74 are objected to. Id. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-002296
Application 11/523,618
CLAIMED SUBJECT MATTER
Claims 51, 59, 67, and 80 are independent. Claim 51 is shown below.
51. A method of retracting and sealing a patient opening with
a device including a distal ring, a proximal ring, a retracting
sleeve extending between the distal ring and the proximal ring
and coupled to both the distal ring and proximal ring,
compnsmg:
inserting the distal ring through the patient opening such
that the retracting sleeve extends through the patient opening
and the proximal ring is located outside of the patient opening;
manipulating the retracting sleeve from an insertion
configuration to a retracting configuration by shortening a
length of sleeve between the distal ring and the proximal ring to
retract the patient opening and form a retracted access opening
through the retracting sleeve; and
sealing a proximal portion of the retracted access opening
formed by the retracting sleeve with a seal assembly having a
passageway when in use, the passageway extending through the
seal assembly and allowing an instrument to pass through and
exit the seal assembly.
REJECTION1
Claims 51-56, 59---64, 67---69, 71, 72, 76-78, and 80-83 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Crook (US 5,524,644, iss.
June 11, 1996) and de la Torre (US 5,672,168, iss. Sept. 30, 1997).
ANALYSIS
Appellant argues claims 51-56, 59-64, 67---69, 71, 72, 76-78, and 80-
83 as a group. See Appeal Br. 11-16. We select claim 51 as representative.
37 C.F.R. § 41.37(c)(l)(iv). The other claims stand or fall with claim 51.
1 The Examiner withdrew an obviousness-type double patenting rejection of
claims 67-72, 78, and 80-83 after Appellants filed a Terminal Disclaimer on
October 22, 2012, to overcome that rejection. Ans. 2; see Appeal Br. 11.
2
Appeal2014-002296
Application 11/523,618
The Examiner found that Crook teaches an adjustable retractor and
method of using the same, as recited in independent claims 51, 59, 67,
and 80, including a distal ring (0-ring 20), proximal ring (0-ring 18), and a
retracting sleeve 12 extending therebetween wherein retracting sleeve 12 can
be manipulated and wrapped around proximal ring 18. Final Act. 2-3. The
Examiner found that de la Torre discloses a seal 200 friction fit to an inner
surface of a proximal end of a sleeve to maintain a sealed closure around an
instrument. Id. at 3. The Examiner determined that a skilled artisan would
have used the proximal seal from de la Torre on Crook's device as a known
technique to yield the predictable result of sealing to prevent the escape of
insufflation gases during abdominal surgery. Id.; Ans. 2-3, 5.
Appellants argue that a skilled artisan would not have been motivated
to combine de la Torre's removable seal with Crook's retractor because de la
Torre discloses that the envelope 184 must be clamped closed by a surgical
clamp to maintain insufflation pressure in the body cavity when removable
seal 200 is used, and a skilled artisan would recognize that the stiffness of
the proximal portion of Crook's device would be difficult to clamp. Appeal
Br. 15. Appellants also argue that clamping the proximal ring of Crook
would render Crook unsatisfactory for its intended purpose of retracting by
reducing the anchoring of the proximal ring. Id. Appellants further argue
that clamping Crook's device would detrimentally affect the seal around the
perimeter of the sleeve and such potential leakage would be inconsistent
with the purpose of clamping the envelope in the first place. Id. at 15-16.
Appellants also argue that the modification would hinder or prevent further
adjustment of Crook's retractor, which is a critical feature. Reply Br. 2-3.
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Appeal2014-002296
Application 11/523,618
Appellants' arguments are not persuasive for the following reasons.
First, claim 51 recites a method of retracting and sealing a patient opening
with a device having a distal and proximal ring and retracting sleeve. The
Examiner has explained how the teachings of Crook and de la Torre render
obvious this claimed subject matter and why a skilled artisan would have
combined the teachings of Crook and de la Torre in such a manner. The
proposed rationale is supported by rationale underpinning as de la Torre
teaches that seal 200 functions as a valve to seal closed around an instrument
or a surgeon's hand during surgery and closes center opening 202 when the
instrument or surgeon's hand is removed to maintain insufflation pressure in
the body cavity. de la Torre, 10:32-50. de la Torre also discloses that valve
seal 200 may be friction fit in and removable from an interior of envelope
sleeve 198. Id. at 10:45--47, Fig. 24. The Examiner proposes to modify
Crook's device and sleeve 12 in a similar manner. See Final Act. 3; Ans. 4.
Second, Appellants' attorney arguments regarding the difficulty in
clamping Crook's retractor are not evidence and are not persuasive because
de la Torre requires clamping of a retractor envelope 184 if valve seal 200 is
removed from the interior of sleeve 198 during surgery. de la Torre, 10:45-
56. Otherwise, de la Torre teaches that seal 200 "closes the center opening
202 of the valve when the instrument or hand is removed" to maintain
insufflation pressure during surgery. Id. at 10:33--42, 6:9-22, Fig. 25. Thus,
de la Torre teaches clamping of envelope sleeve 198 only when seal 200 is
removed during a surgical procedure. Id. at 10:51---63; Ans. 4. The claims
do not require such repositioning or changing of an outer seal or envelope
during a surgery. Thus, Crook's perceived inability to permit such a change
without clamping does not render the claims non-obvious.
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Appeal2014-002296
Application 11/523,618
A skilled artisan would have been able to assess any advantages and
disadvantages of the proposed combination and conclude that the advantages
of the Examiner's proposed modification outweigh any disadvantages that
may result therefrom. Thus, if a surgeon does not need to change valve seals
during surgery, the modified Crook retractor maintains insufflation pressure
without a need to clamp the sleeve. de la Torre teaches that a seal may be
used with an access port (collar 2, collar 4, envelope 6) like Crook's sleeve
in lieu of clamping. See de la Torre, 6: 1-8, Fig. 1. de la Torre also teaches
that collar 2 may be inserted into an incision (Fig. 2) or may be secured to
body tissue by adhesive tape (Fig. 24), and a seal may be used with either
arrangement. See id. at 5:31--44, 6: 1-23, 10:32--42 Moreover, we are not
persuaded that Crook's sleeve 18 could not be lengthened and clamped to
change a seal during a surgery because Crook teaches adjustability in place.
See Crook, 5:31-37. Thus, we sustain the rejection of claim 51 and claims
52-56, 59---64, 67---69, 71, 72, 76-78, and 80-83, which fall therewith.
DECISION
We AFFIRM the rejection of claims 51-56, 59---64, 67---69, 71, 72, 76-
78, and 80-83.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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