Ex Parte Bonadio et alDownload PDFPatent Trial and Appeal BoardJul 18, 201611523618 (P.T.A.B. Jul. 18, 2016) Copy Citation 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 Claims 79 and 84 are withdrawn from consideration.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. 3 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. 4 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 5 Copy with citationCopy as parenthetical citation