Ex Parte Hanlon et al

Patent Trial and Appeal Board

Sep 18, 2017

13737686 (P.T.A.B. Sep. 18, 2017)

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
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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.
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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.”).
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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
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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
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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
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