Ex Parte Hanlon et alDownload PDFPatent Trial and Appeal BoardSep 18, 201713737686 (P.T.A.B. Sep. 18, 2017) Copy Citation 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. 13/737,686 01/09/2013 Matthew A. Hanlon 060210.00650 3143 27305 7590 09/20/2017 HOWARD & HOWARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 EXAMINER DELLA, JAYMI E ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 09/20/2017 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): IPDocket@HowardandHoward.com dtrost @ HowardandHoward. com tmorris @ Howardandhoward. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW A. HANLON and MATTHEW P. LACONTE Appeal 2016-006911 Application 13/737,6861 Technology Center 3700 Before RYAN H. FLAX, TIMOTHY G. MAJORS, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to tissue sticking resistant forceps. The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We reverse. STATEMENT OF THE CASE 1 According to Appellants, the real party in interest is Synergetics, Inc. App. Br. 2. Appeal 2016-006911 Application 13/737,686 Claims 1—23 are on appeal. Claim 1 is illustrative and reads as follows (emphasis added to highlight limitation at issue): 1. A single use, tissue sticking resistant forceps comprising: first and second arms, each of the first and second arms having an elongate length with opposite proximal and distal ends and having opposite inner and outer surfaces that extend the elongate length of each of the first and second arms, the proximal ends of the first and second arms being connected together with the inner surfaces of the first and second arms opposing each other, and the distal ends of the first and second arms being constructed as tissue cauterizing tips; first and second irrigation tubes, each of the first and second irrigation tubes having a length with opposite proximal and distal ends, the first irrigation tube length being secured to the first arm by an adhesive with the first irrigation tube length extending from the first irrigation tube proximal end adjacent the first arm proximal end, across the elongate length of the first arm to the first irrigation tube distal end adjacent the first arm distal end, the first irrigation tube having a cross-section configuration along its length, wherein the cross-section configuration is a substantially circular configuration as the first irrigation tube extends from the first irrigation tube proximal end toward the first irrigation tube distal end and wherein the cross-section configuration changes from the substantially circular configuration to an oblong configuration at a portion of the first irrigation tube length adjacent the first irrigation tube distal end with the cross-section configuration of the first irrigation tube distal end being oblong, where the first irrigation tube distal end being oblong and adjacent the first arm distal end is configured to promote wetting of the inner surface of the first arm distal end by dispersing an irrigation liquid across the inner surface of the first arm distal end thereby enhancing a non-sticking function of the irrigation liquid and avoiding drop formation in the irrigation liquid dispersed from the first irrigation tube distal end, and the second irrigation tube length being secured to the second arm by the adhesive with the second irrigation tube length extending from the second irrigation tube proximal end adjacent the 2 Appeal 2016-006911 Application 13/737,686 second arm proximal end, across the elongate length of the second arm to the second irrigation tube distal end adjacent the second arm distal end, the second irrigation tube having a cross- section configuration along its length, wherein the cross-section configuration is a substantially circular configuration as the second irrigation tube extends from the second irrigation tube proximal end toward the second irrigation tube distal end and wherein the cross-section configuration changes from the substantially circular configuration to an oblong configuration at a portion of the second irrigation tube length adjacent the second irrigation tube distal end with the cross-section configuration of the second irrigation tube distal end being oblong, where the second irrigation tube distal end being oblong and adjacent the second arm distal end is configured to promote wetting of the inner surface of the second arm distal end by dispersing the irrigation liquid across the inner surface of the second arm distal end thereby enhancing the non-sticking function of the irrigation liquid and avoiding drop formation in the irrigation liquid dispersed from the second irrigation tube distal end, and where the first and second irrigation tube distal ends being oblong and adjacent the respective first and second arm distal ends are configured to not interfere with a surgeon squeezing together the first and second arm distal ends and are configured to not obstruct a surgeon’s view of the first and second arm distal ends, and whereby securing the first and second irrigation tubes to the respective first and second arms with the adhesive reduces manufacturing costs for the single use, tissue sticking resistant forceps and enables the single use, tissue sticking resistant forceps for single use. App. Br. 15—16. 3 Appeal 2016-006911 Application 13/737,686 The claims stand rejected as follows: Claims 1—6, 8—15, 17—21, and 23 were rejected under 35 U.S.C. § 103(a) as obvious over the combination of Kirwan2 and Moutafis.3 Claims 7, 16, and 22 were rejected under 35 U.S.C. § 103(a) as obvious over the combination of Kirwan, Moutafis, and Morrison.4 In the September 4, 2015 Advisory Action, the Examiner withdrew the pending rejection of claims 1—23 under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. This issue is thus not a part of this appeal. ANALYSIS The same issue is dispositive with respect to both rejections. Accordingly, we address both rejections together. In rejecting the pending claims as obvious, the Examiner found that Kirwan disclosed all of the limitations of claim 1 with the exception that Kirwan did not disclose irrigation tubes that change configuration in the manner recited in the claim. Final Act. 6—7.5 The Examiner found, however, that Moutafis disclosed “a surgical device (100) having an irrigation tube (230) that can have various cross-sectional shapes at its distal end (236), including oblong.” Id. at 7. Based on the combined disclosures of Kirwan and Moutafis, the Examiner concluded: 2 Kirwan, US Patent Publication No. 2003/0181909 Al, published Sept. 25, 2003 (“Kirwan”). 3 Moutafis et al., US Patent Publication No. 2002/0111579 Al, published Aug. 15, 2002 (“Moutafis”). 4 Morrison et al., US Patent No. 4,041,952, issued Aug. 16, 1977 (“Morrison”). 5 Office Action mailed July 30, 2015 (“Final Act.”). 4 Appeal 2016-006911 Application 13/737,686 [I]t would have been obvious to one of ordinary skill in the art to modify the invention of Kirwan such that the cross-sectional shape of the tubing, and thus the aperture at the distal end is an oblong shape in order to provide the benefit of forming irrigation paths of different shapes for specific desired purposes as taught by Moutafis et al. ([0116]) and since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. Id. Appellants argue, inter alia, that the Specification teaches that the claimed change in the shape of the irrigation tubes is critical. Appellants explain: The application states that the elongate shape of the nozzle promotes wetting of the interior surfaces of the first and second arms, disperses the irrigating liquid across the arm distal end tips, and enhances the non-sticking function of the irrigation liquid. Additionally, the flattened and elongated shape of the nozzle does not interfere with the surgeon squeezing together the forcep arms to grip tissue between the distal ends of the arms and does not obstruct the surgeon’s view of the distal end tips. App. Br. 13. Appellants further argue that Moutafis fails to provide motivation to modify Kirwan’s irrigation tubes in the manner claimed. Reply Br. 3. More specifically, Appellants contend that Moutafis discloses “liquid jet instruments” that “utilize a high pressure liquid stream to cut, drill, bore, perforate, strip, delaminate, liquefy, ablate, shape, or form various tissues, organs, etc. of the body of a patient” while Kirwan’s discloses electro-surgical forceps which “hav[e] the intended purpose of grasping and coagulating or joining tissue together.'1'’ Id. Appellants assert “[t]he ‘specific desired purposes’ described by Moutafis are simply 5 Appeal 2016-006911 Application 13/737,686 incompatible with the device of Kirwan because Kirwan does not utilize irrigation to cut and/or ablate tissue.” Id. at 4. As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): “[T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability.” Appellants have persuaded us that the Examiner has not carried the burden of establishing that the claimed invention would have been obvious over the cited art. Kirwan discloses forceps having grooves that run along most of the length of the blades. Kirwan 117. A length of tubing is placed in the groove that terminates slightly above the termination of the groove “to provide an outlet 50 from the irrigation channel for fluid flowing through the tubing.” Id. Moutafis discloses devices that “utiliz[e] liquid jets for cutting, ablating, sculpting, trimming, etc., tissues and/or materials from the body of a patient.” Moutafis 114. In finding that it would have been obvious to modify the irrigation tube of Kirwan to change shape in the manner claimed, the Examiner relies on paragraph 116 of Moutafis which discloses that “[j]et opening 236 typically has a circular cross-sectional area, but may, in other embodiments, have other cross-sectional shapes, such as rectangular, oval, slit-like, etc., for forming jets having different shapes for specific desired purposes.” Id. 1116; see also Ans. 3 and Final Act. 7 (citing paragraph 116 of Kirwan as providing “clear motivation” to modify Kirwan’s irrigation tubes). While paragraph 116 of Moutafis does disclose water delivering tubes that can take on “different shapes,” the “specific desired purposes” of the different shapes are “for forming jets.” Moutafis 1116. The jets in 6 Appeal 2016-006911 Application 13/737,686 Moutafis are for cutting or ablating. Indeed, the statement regarding “different shapes” of jets in Moutafis is preceded by a discussion of delivering liquid at “high pressure,” with the amount of pressure required depending on “the particular design of nozzle 232 and the hardness/toughness of [the] tissue or material to be cut or ablated.” Id. The Examiner does not identity any teaching in Moutafis that suggests that the shape of high pressure cutting and ablating jets has any application to a low pressure irrigation tube. Nor does the Examiner identity anything that suggests that Moutafis’ teaching that the jets may have different shapes has application to anything other than cutting and ablating. As the Examiner accepts Appellants’ characterization of the shape of the irrigation tubes as a critical element (Ans. 4), and the Examiner has not established a reason to extend Moutafis’ teachings regarding the shape of high pressure jets to low pressure irrigation, the Examiner has not met the initial burden of providing a prima facie case of unpatentability. Accordingly, we reverse the Examiner’s rejection of claims 1—23. SUMMARY For the reasons set forth herein, we reverse the Examiner’s rejection of claims 1—6, 8—15, 17—21, and 23 as obvious over the combination of Kirwan and Moutafis and the Examiner’s rejection of claims 7, 16, and 22 as obvious over the combination of Kirwan, Moutafis, and Morrison. REVERSED 7 Copy with citationCopy as parenthetical citation