Ex Parte Gresham

Patent Trial and Appeal Board

Mar 18, 2013

10522914 (P.T.A.B. Mar. 18, 2013)

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.
10/522,914 01/28/2005 INV001Richard D. Gresham 2857 (203-3424) 6921
7590 03/19/2013
Covidien
60 Middletown Avenue
North Haven, CT 06473
EXAMINER
MCEVOY, THOMAS M
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte RICHARD D. GRESHAM
____________________

Appeal 2011-000123
Application 10/522,914
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, SCOTT A. DANIELS, and NEIL A.
SMITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000123
Application 10/522,914
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 6-26 and 30-33. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a surgical tool member cover and cover
deployment device. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A surgical instrument comprising:
a body portion;
a tool assembly supported on the distal end of the body
portion;
an elongated cover supported about the body portion of
the instrument, the elongated cover being formed from a
collapsible material and having a substantially tubular
configuration having open proximal and distal ends, the
elongated cover being movable about the body portion of the
instrument from a first position located proximally of the tool
assembly to a second position at least partially encompassing
the tool assembly, wherein when the elongated cover is in the
first position the distal end of the elongated cover is secured to
the instrument adjacent to the tool assembly such that the
elongated cover can be inverted about the tool assembly as the
elongated cover is moved from the first position to the second
position; and
a cover deployment device at least partially disposed
about the body portion between the body portion and the
elongated cover when the elongated cover is in the first
position, the cover deployment device being in releasable
engagement with the cover and being advanceable along the
body portion to move the cover from the first position to the
second position.

Appeal 2011-000123
Application 10/522,914
3
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Green
Bulow
Williamson
US 5,318,221
US 5,665,073
US 6,024,741
Jun. 7, 1994
Sep. 9, 1997
Feb. 15, 2000
Jespersen US 2003/0139767 A1 Jul. 24, 2003

REJECTIONS
Claims 1, 2 and 6-17 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Bulow. Ans. 3.
Claims 1, 2, 11 and 13-17 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Jespersen. Ans. 5.
Claims 30-33 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Green. Ans. 6.
Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulow and Williamson. Ans. 7.
Claims 21, 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jespersen. Ans. 7.
Claims 18-20, 22-24 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jespersen and Williamson. Ans. 9.

OPINION
Regarding the rejection of claims 1, 2 and 6-17 as anticipated by
Bulow, Appellant correctly argues that Bulow fails to disclose a cover that
can be inverted about a tool assembly to which the distal end of the cover is
“secured to the instrument adjacent to.” App. Br. 10. Bulow discloses a
protective sheath 10 having a fabric sleeve 12, interpreted by the Examiner
Appeal 2011-000123
Application 10/522,914
4
as the recited “cover,” for protecting conduits 32, 42, 52 during surgery. The
Examiner interprets camera 38 and probe 48 as the recited “tool assembly.”
Ans. 3. Thus, to meet the claim, Bulow’s sheath 12 must be capable of
inverting about the end proximate drawstring 11 because that end must be
“secured to the instrument.” As stated in Ex parte Skinner, 2 USPQ 2d 1788,
1789 (BPAI 1986):
We are mindful that there is a line of cases represented by In re
Swinehart , 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which
indicates that where an examiner has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, the examiner possesses
the authority to require an applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on. Nevertheless, before an applicant can
be put to this burdensome task, the examiner must provide
some evidence or scientific reasoning to establish the
reasonableness of the examiner's belief that the functional
limitation is an inherent characteristic of the prior art.
See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellant correctly argues that cardboard shield 14 would prevent
Bulow’s sheath from being capable of inverting as required by claim 1. App.
Br. 10; see Bulow col. 5, ll. 34-38. Thus, we cannot agree with the Examiner
that Bulow’s sheath is inherently capable of being inverted as recited in
claim 1. Accordingly, since Bulow fails to disclose each and every element
of claim 1 arranged as in the claim we cannot sustain the Examiner’s
rejection of claim 1 and of claims 2 and 6-17 depending therefrom, as being
anticipated by Bulow.
Turning to the rejection of claims 1, 2, 11 and 13-17 as anticipated by
Jespersen, Appellant correctly argues that Jespersen fails to disclose a cover
deployment device disposed about a body portion of the tool between the
Appeal 2011-000123
Application 10/522,914
5
body portion and the cover as required by claim 1. App. Br. 14. Jespersen
has a goal similar to Appellant—deploying a tool cover to prevent
contamination during tissue extraction. Cf Spec. 11-12 and Jespersen p. 1,
para. [0004]. The Examiner interprets Jespersen’s grasper 44 as the recited
“cover deployment device.” This grasper appears to be entirely separate
from Jespersen’s grasper device 32, interpreted by the Examiner as the
recited “body portion” and jaws 34, 36, interpreted by the Examiner as the
recited “tool assembly” supported thereon. See Ans. 5. The Examiner posits
“the cover deployment device could be placed between the cover and body
in order to grasp the cover from its proximal and [sic, end] when
undeployed.” Ans. 6.
The specific location of the cover deployment device with respect to
the cover and body is positively, as opposed to functionally, recited in claim
1. Thus, even if the Examiner is correct, this is not sufficient to show
anticipation because the cited elements of the prior art are not arranged as in
the claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, we
cannot sustain the rejection of claims 1, 2, 11 and 13-17 as anticipated by
Jespersen.
We turn to the rejection of claims 30-33 as anticipated by Green. The
central aspect of the dispute between Appellant and the Examiner revolves
around whether the recited movement ability of the cover requires a cover
that can entirely cover the shell assembly. However, neither the Examiner
nor Appellant provide an express claim construction of this term to explain
why the limitation should or should not be construed in such a manner.
Appellant concludes that Green does not disclose the recited cover because
Green’s clamping tube 327, interpreted by the Examiner as the recited
“cover,” does not cover the distal end of the structure interpreted by the
Appeal 2011-000123
Application 10/522,914
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Examiner as the recited “shell assembly”—housing 334. App. Br. 15-16
citing Green figs. 15A, B1. Appellant’s conclusion is based on the
assumption that “to cover” must be interpreted to mean to entirely cover, or
to cover the distal end of, the shell assembly. Appellant has not apprised us
of any reason why we should construe the term “to cover” so narrowly when
there is not express language in the claim requiring such an interpretation. It
is well-settled that during prosecution claims are given their broadest
reasonable interpretation in light of the specification. As can be seen in
Figure 15B clamping tube 327 (127) covers a substantial portion of the
housing 334 (134). Thus, we agree with the Examiner that such tube is
“movable . . . to cover” the housing. We therefore affirm the rejection of
claim 30, along with the non-separately argued dependent claims 31-33, as
anticipated by Green. See 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claims 18-20 as being unpatentable over Bulow and
Williamson must be reversed based upon dependency and the fact that
Williamson is not relied upon by the Examiner to cure the deficiencies of the
rejection predicated on Bulow alone, as discussed above. See, e.g., In re
Fine 837 F.2d 1071, 1076 (Fed. Cir. 1988); App. Br. 20.
We turn to the rejection of claims 21, 25 and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Jespersen and claims 18-20, 22-24 and
30 as being unpatentable over Jespersen and Williamson. The rationale set
forth by the Examiner in rejecting independent claim 21 appears to be that

1 While the Examiner applies the embodiment depicted in Figure 17 of
Green, Appellant reproduces and discusses the embodiment depicted in
Figures 15A and 15B of Green since Figures 15A and 15B better illustrate
functionality also present in the embodiment depicted in Figure 17.
Corresponding second and third digits of the reference numerals in each
figure represent corresponding structure, i.e., 127 and 134 in Figures 15A
and 15B correspond to 327 and 334, respectively, in Figure 17.
Appeal 2011-000123
Application 10/522,914
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“it would have been obvious to one of ordinary skill in the art to have
contacted the cover deployment device with the body portion in order to
grasp the proximal end of the cover.” Ans. 8. In rejecting independent claim
30, the Examiner states, “[t]he cover deployment device of Jespersen could
be positioned about the body and a portion of the deployment device would
need to go between the cover and the body in order to grasp the cover.” Ans.
9. It is unclear how the Examiner’s proposed objective of grasping the cover,
a function grasper 44 already performs, is furthered by specifically locating
the deployment device on the body (claim 21) or between the body and
cover (claim 30). We therefore agree with Appellant that the Examiner’s
conclusion that it would have been obvious to modify Jespersen to have the
cover deployment device (grasper 44) “positioned on the body portion”
(claim 21) or “between the elongated body portion and the cover” (claim 30)
lacks any evidentiary support or reasoning with rational underpinnings. See
App. Br. 19; Ans. 8. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)); In re Vaidyanathan, 381 Fed. Appx. 985, 994 (Fed. Cir.
2010) (“ If the examiner is able to render a claim obvious simply by saying it
is so, neither the Board nor this court is capable of reviewing that
determination.”) Thus, we must reverse the rejection of claims 21, 25 and 26
as being unpatentable over Jespersen and the rejection of claim 30 as being
unpatentable over Jespersen and Williamson.

Appeal 2011-000123
Application 10/522,914
8
The rejection of claims 18-20 and 22-24 based on Jespersen and
Williamson must be reversed based on dependency and the fact that
Williamson is not relied upon by the Examiner to cure the deficiencies
discussed above regarding the rejections predicated on Jespersen alone. App.
Br. 20; see Fine, supra.

DECISION
The Examiner’s rejection of claims 1, 2 and 6-17 as anticipated by
Bulow is reversed.
The Examiner’s rejection of claims 1, 2, 11 and 13-17 as anticipated
by Jespersen is reversed.
The Examiner’s rejection of claims 30-33 as anticipated by Green is
affirmed.
The Examiner’s rejection of claims 18-20 as being unpatentable over
Bulow and Williamson is reversed.
The Examiner’s rejection of claims 21, 25 and 26 as being
unpatentable over Jespersen is reversed.
The Examiner’s rejection of claims 18-20, 22-24 and 30 as being
unpatentable over Jespersen and Williamson is reversed.

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).

AFFIRMED-IN-PART

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