Ex Parte Dicarlo et al

Board of Patent Appeals and Interferences

Feb 15, 2012

10728248 (B.P.A.I. Feb. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL DICARLO and DAVID COOKE
____________

Appeal 2010-010129
Application 10/728,248
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN
WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1 and 4-33. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a medical instrument, e.g., a biopsy needle
(claims 1, 4-14, and 22-33) and a method of using the instrument (claims 15-
21). Claim 1 is representative and is reproduced in Appellants‟ “Appendix
of Claims” (App. Br. 16).
Appeal 2010-010129
Application 10/728,248

2
Claims 1, 4-11, 15, and 20-30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Clement,
1
Kornberg,
2
Sher,
3
and
Hagga ‟98.
4,5

Claims 12, 14, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Kass.
6

Claims 13 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Haaga „95.
7

Claims 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clement, Kornberg, Sher, Hagga ‟98, and Burbank.
8

Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clement, Kornberg, Sher, Hagga ‟98, and Ritchart.
9

We affirm.

1
Clement et al., US 5,368,045, issued November 29, 1994.
2
Kornberg et al., US 5,197,484, issued March 30, 1993.
3
Sher, US 5,467,684, issued November 21, 1995.
4
Hagga, US 5,718,237, issued February 17, 1998.
5
We recognize that Examiner failed to include Hagga ‟98 in the statement of
the rejections (see Ans. 3). Examiner, however, relied on this reference in
the November 4, 2008 Non-final Office Action (see, e.g., 5) and the May 21,
2009 Final Office Action (see, e.g., 5). Therefore, we find that Appellants
had notice of Examiner‟s reliance on the reference and that the omission of
the reference in the statement of the rejections represents a typographical
error.
6
Kass, US 5,921,943, issued July 13, 1999.
7
Haaga, US 5,394,887, issued March 7, 1995.
8
Burbank et al., US 6,331,166 B1, issued December 18, 2001.
9
Ritchart et al., US 5,649,547, issued July 22, 1997.
Appeal 2010-010129
Application 10/728,248

3
The combination of Clement, Kornberg, Sher, and Hagga ’98:
ISSUE
Does the preponderance of evidence on this record support a
conclusion that the prior art relied upon by Examiner suggests the elements
of the stylet block set forth in Appellants‟ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. For clarity Appellants‟ figure 2 is reproduced below:

Appellants‟ “Fig. 2 is a perspective view of a stylet attached to a stylet
block”, wherein the “[s]tylet block 22 includes a first, outer part 26 and a
second, inner part 28. . . . Inner part 28 is connected to stylet 18 and can
rotate within outer part 26, about the longitudinal axis 58 of the stylet”
(Spec. 3: 1 and 3: 30 - 4: 1).
FF 2. Clement suggests a biopsy needle instrument (Clement, Title).
FF 3. For clarity Clement‟s figure 2 is reproduced below:

Fig. 2 is a cross-sectional view of Clement‟s biopsy needle instrument
(Clement, col. 2, ll. 18-19).
FF 4. Clement suggests “a stylet block 36 attached to a proximal end of the
stylet 18 . . .; wherein the stylet block 36 comprises . . . [a] first part being
moveable between an extended position and a retracted position” (Ans. 4).
Appeal 2010-010129
Application 10/728,248

4
FF 5. Clement fails to suggest “a stylet configured to rotate” (Ans. 5
(emphasis removed)).
FF 6. Kornberg suggests a biopsy device (Kornberg, col. 1, ll. 10-12).
FF 7. For clarity Kornberg‟s figures 16 and 22 are reproduced below:

“FIG. 16 shows a partially cut away, perspective view of the components in .
. . [Kornberg‟s stylet and cannula forming parts] in an assembled state” and
“FIG. 22 shows a perspective view of the cam cylinder which forms a part of
. . . [Kornberg‟s] invention” (Kornberg, col. 5, ll. 55-57 and col. 6, ll. 1-2).
FF 8. Kornberg suggests “a biopsy medical system including a cannula 54
having a projection 94 in contact with a track 158 . . .; wherein the track 158
is configured to provide unidirectional rotation to the cannula 54” (Ans. 5).
FF 9. Sher suggests “that it is known to . . . simultaneously impart linear
and rotational motion onto a piston using a projection and track mechanism”
(id.).
FF 10. For clarity Sher‟s figure 2 is reproduced below:

“FIG. 2 is a view in perspective and partial section of” Sher‟s “rotary piston
driving mechanism” (Sher, col. 2, ll. 64-67).
FF 11. Sher suggests “fixed projections 9 and moveable track 8 attached to
a piston such th[at] track 8 allows a piston to simultaneously rotate while it
is linearly pushed forward” (Ans. 16).
Appeal 2010-010129
Application 10/728,248

5
FF 12. Examiner finds that the second part of Appellants‟ stylet block “can
broadly and reasonably be construed as a projection that is „attached to the
proximal end of the stylet‟. . . and arranged so as to be fully capable of
cooperating with a track to axially rotate itself and the attached stylet when
the stylet is moved between” an extended and retracted position (Ans. 12).
FF 13. Examiner finds that the first part of Appellants‟ stylet block “can be
broadly and reasonably construed as „the part or element that directly carries
the stylet‟ such that the second part (or projection) is rotatably engaged with
the first part . . . and [is] able to rotate relative to an axis of the stylet” (Ans.
12-13).
FF 14. Examiner relies on Haaga ‟98, as an evidentiary reference, to suggest
that it was “known to advance and rotate a stylet during a biopsy procedure
in order to sever tissue” (Ans. 6; see also Fin. Rej. 5).
ANALYSIS
Based on the combination of Clement, Kornberg, Sher, and Hagga
‟98, Examiner concludes that since it was known
[T]o advance and rotate a stylet during a biopsy procedure in
order to sever tissue . . . it would have been obvious to one of
ordinary skill in the art at the time Applicant‟s [sic] invention
was made to provide the system of Clement . . . as modified by
Kornberg and Sher . . . with a driving mechanism such that
linear displacement of the stylet causes rotational motion of the
stylet . . . in order to automatically simultaneously rotate and
advance the stylet through the tissue.

(Ans. 6-7.) Examiner also concludes that “Appellants‟ motion mechanism is
a mere reversal of [Sher‟s] parts” (Ans. 16; see FF 10-11). Examiner
summarizes and illustrates the proposed modification of Clement‟s device,
wherein stylet block 36 of Clement‟s device is modified to include
Appeal 2010-010129
Application 10/728,248

6
Kornberg‟s projection 94, thus providing for a second part of a stylet block
(Ans. 14; see FF 3, 4, and 12). Clement‟s stylet block 36 modified to
include Kornberg‟s projection 94 is then rotatably engaged with Kornberg‟s
track 158 such that movement of the track or the stylet from an extended to a
retracted position causes rotation of the stylet, thus providing for a first part
of a stylet block (Ans. 14; see FF 3, 4, 7, 8, 12, and 13).

Claim 1:
For the foregoing reasons we are not persuaded by Appellants‟
intimation that the combination of references relied upon by Examiner fails
to suggest a second part of a stylet block “rotatably attached [to] another part
of the block” (App. Br. 9). Appellants contend that if Clement was modified
as proposed by Examiner “Clement‟s device would no longer require its
original stylet block” (App. Br. 9 (emphasis added)). We agree; Clement‟s
stylet block would be modified as suggested by the combination of
references. Appellants provide no persuasive evidence or reasoning to
suggest that the modified style block suggested by the combination of
references relied upon by Examiner would not include all the elements,
engaged, and moveable as required by Appellants‟ claim 1 (Cf. Ap. Br. 9).
We are not persuaded by Appellants‟ contention that Examiner relied
upon hindsight reconstruction (App. Br. 9). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).

Appeal 2010-010129
Application 10/728,248

7
Claims 5 and 24:
Appellants contend that claims 5 and 24 “clarify that the housing with
associated track is in contact with the second part of the stylet block rather
than being part of the stylet block” (Ans. 11). Appellants‟ contention,
however, fails to identify an error in Examiner‟s prima facie case as
discussed above.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
that the prior art relied upon by Examiner suggests the elements of the stylet
block set forth in Appellants‟ claimed invention. The rejection of claims 1,
5, and 24 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Clement, Kornberg, Sher, and Hagga ‟98 is affirmed. Because they are not
separately argued claims 4, 6-11, 15, 20-24, and 26-30 fall together with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

The combination of Clement, Kornberg, Sher, Hagga ’98, and Kass:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 15. Examiner relies on Clement, Kornberg, Sher, and Hagga ‟98 as
discussed above (Ans. 7).
FF 16. Examiner relies on Kass to suggest “a stylet including two openings
for a notch . . . for receiving tissue that has been cut by [the] cutting
cannula” (id.).
Appeal 2010-010129
Application 10/728,248

8
ANALYSIS
Appellants contend that “Kass does not cure the deficiencies of the
proposed combination of Clement, Kornberg, and Sher” with Haaga ‟98
(App. Br. 12). Having found no deficiency in Examiner‟s combination of
Clement, Kornberg, Sher, and Haaga ‟98, we are not persuaded by
Appellants‟ contention to the contrary.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Kass is affirmed. Because they are not separately argued claims 14, 31,
and 33 fall together with claim 12. 37 C.F.R. § 41.37(c)(1)(vii).

The combination of Clement, Kornberg, Sher, Hagga ’98, and Haaga ’95:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 17. Examiner relies on Clement, Kornberg, Sher, and Hagga ‟98 as
discussed above (Ans. 8).
FF 18. Examiner relies on Haaga „95 to suggest “a stylet with [a] notch
having a ramped surface” (id.).
ANALYSIS
Appellants contend that “Haaga does not cure the deficiencies of the
proposed combination of Clement and Kornberg” with Sher and Haaga ‟98
(App. Br. 12). Having found no deficiency in Examiner‟s combination of
Appeal 2010-010129
Application 10/728,248

9
Clement, Kornberg, Sher, and Haaga ‟98, we are not persuaded by
Appellants‟ contention to the contrary.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Hagga „95 is affirmed. Because they are not separately argued claim 32
falls together with claim 13. 37 C.F.R. § 41.37(c)(1)(vii).

The combination of Clement, Kornberg, Sher, Hagga ’98, and Burbank:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 19. Examiner relies on Clement, Kornberg, Sher, Hagga ‟98 as discussed
above (Ans. 8).
FF 20. Examiner relies on Burbank to suggest “a system further comprising
oscillating the stylet 18 along the axis” (id.).
ANALYSIS
Appellants contend that “Burbank does not cure the deficiencies of the
proposed combination of Clement, Kornberg, and Sher” with Haaga ‟98
(App. Br. 13). Having found no deficiency in Examiner‟s combination of
Clement, Kornberg, Sher, and Haaga ‟98, we are not persuaded by
Appellants‟ contention to the contrary.
Appeal 2010-010129
Application 10/728,248

10
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Burbank is affirmed.

The combination of Clement, Kornberg, Sher, Hagga ’98, and Ritchart:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 21. Examiner relies on Clement, Kornberg, Sher, Hagga ‟98 as discussed
above (Ans. 9).
FF 22. Examiner relies on Ritchart to suggest “a system comprising the step
of collecting a sample in a notch . . . of a stylet; wherein the system further
comprises removing the sample from the notch . . . by inserting an object . . .
through an opening located in the notch” (id.).
ANALYSIS
Appellants contend that “Ritchart does not cure the deficiencies of the
proposed combination of Clement, Kornberg and Sher” with Haaga ‟98
(App. Br. 14). Having found no deficiency in Examiner‟s combination of
Clement, Kornberg, Sher, and Haaga ‟98, we are not persuaded by
Appellants‟ contention to the contrary.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 17 under 35 U.S.C. § 103(a) as
Appeal 2010-010129
Application 10/728,248

11
unpatentable over the combination of Clement, Kornberg, Sher, Hagga ‟98,
and Ritchart is affirmed. Because they are not separately argued claims 18
and 19 fall together with claim 17. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

alw