Ex Parte Intoccia et alDownload PDFPatent Trial and Appeal BoardJun 16, 201612127261 (P.T.A.B. Jun. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/127,261 05/27/2008 109610 7590 06/20/2016 Bookoff McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20037 FIRST NAMED INVENTOR Alfred P. Intoccia 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. 11219.0078-00000 8147 EXAMINER KASZTEJNA, MATTHEW JOHN ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 06/20/2016 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 ALFRED P. INTOCCIA, JON T. MCINTYRE, and JOZEF SLANDA Appeal2014-007234 Application 12/127,261 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL 1 This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4--12, 21, 23, 25, 26, and 28-33 (App. Br. 1 ). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as Boston Scientific Scimed Inc. (App. Br. 2.) Appeal2014-007234 Application 12/127,261 STATEMENT OF THE CASE Appellants' invention "relates to flexible medical devices that are bendable and steerable in order to negotiate and access various areas within a patient" (Spec. i-f 2). Independent claims 1, 21, and 25 are representative and reproduced in the Claims Appendix of Appellants' Appeal Brief. Claims 1, 4--7, 10, 21, 23, 25, 26, and 28-33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination ofKonstorum2 and Dirusso. 3 Claims 8, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Konstorum, Dirusso, and Mc Weeney. 4 Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Konstorum, Dirusso, and Singh. 5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) We adopt Examiner's findings concerning the scope and content of the prior art (Final Act. 2-8), and repeat the following findings for emphasis. 2 Konstorum et al., US 6,749,560 Bl, issued June 15, 2004. 3 Dirusso et al., US 2006/0041188 Al, published Feb. 23, 2006. 4 McWeeney et al., US 2005/0272975 Al, published Dec. 8, 2005. 5 Singh, US 6,599,237 Bl, issued July 29, 2003. 2 Appeal2014-007234 Application 12/127,261 FF 1. Konstormn suggests An endoscope comprising a control section and a shaft extending from the control section. The shaft has a frame with a one-piece tube along a majority of a length of the shaft. The tube comprises a superelastic alloy and slots into the tube along at least one-section of the tube. Superelastic properties of the superelastic alloy allow the tube to bend proximate the slots without substantial permanent deformation of the tube. (Konstorum Abstract; see also Final Act. 2-3.) FF 2. Konstorum's Figure 3 is reproduced below: Figure 3 shows The tube 40 has a center channel 42 with open front and rear ends 44, 45, and slots 46 along at least part of its length. In this embodiment the slots have different patterns along different sections or lengths of the tube. More specifically, in this embodiment the slots 46, are configured into three sections 52,[]54, 56. Each section has a different pattern of the slots 46. The pattern( s) of the slots 46 can be configured based upon, for example, the following variables: distance or spacing between adjacent slots; direction(s) of the slots into the tube 40; depth of the slots into the tube; width of the slots; shape of the slots; and intermixing of different directions of the slots along a length of the tube. 3 Appeal2014-007234 Application 12/127,261 In alternate embodiments the tube 40 could have more or less than three sections of different slot patterns, such as only one or two. In addition, rather than abrupt transitions between sections of different slot patterns, the tube could be provided with gradual or intermixed slot transition zones between sections. In this embodiment the tube 40 also has two sections 58, 59 which do not have slots therein. (Konstorum 3:29--51; see also Final Act. 2-3.) FF 3. Konstorum suggests that "[t]he first section could have slots in only one direction for limited increased flexibility in only one direction or slots in four or more directions for four-way or omni-directional increased flexibility" (Konstorum 4:7-10; see also Final Act. 2-3.) FF 4. Konstorum suggests that the second section 54 is provided along the length of the passive deflection section 16 .... The slots 46a, 46b, 46c, 46d are arranged in series in a repeating pattern, but any suitable intermixing of the pattern of the slots 46a, 46b, 46c, 46d could be provided. . . . Also in this embodiment the depth Y' of the slots 46a; 46b; 46c and 46d in the second section 54 are less than depth Yin the first section 52. In this embodiment the depth Y' is about 1/2 the diameter of the tube 40 and the depth Y is about 2/3 the diameter of the tube 40. However, Y and Y' could have any suitable depths. (Konstorum 4:11-30; see also Final Act. 2-3.) FF 5. Dirusso suggests An endoscope including a handle; and a shaft extending from the handle. The shaft has a front end with a first active deflection section and a second active deflection section. The first active deflection section is limited to deflection in a first plane and the second active deflection section is limited to deflection in a second different plane. The first plane is angled to the second plane. (Dirusso Abstract; see also Final Act. 3--4.) 4 Appeal2014-007234 Application 12/127,261 FF 6. Dirusso's Figure 2 is reproduced below: P/d.2 Figure 2 shows The flexible shaft 14 behind the front end 18 could comprise any suitable type of flexible shaft, .... The front end 18 comprises a first active deflection section 34 and a second active deflection section 36. Referring also to FIG. 2, in this embodiment the second active deflection section 36 is limited to deflection in a single plane relative to the handle 12 and the first active deflection section 34 is limited to deflection in a single different plane relative to the second active deflection section 36. In particular, the two planes are substantially orthogonal to each other such as at an angle of about 75° to about 85°, but could be as much as 90°. The second active deflection section 36 can bend in right and left directions and the first active deflection section 34 can bend in upward and downward directions. In alternate embodiments, the first and/or second active deflection sections could each be more or less than two way deflectable. (Dirusso i-f 44; see also Final Act. 3--4.) 5 Appeal2014-007234 Application 12/127,261 ANALYSIS The combination of Konstorum and Dirusso: Appellants' independent claim 1, requires, inter alia, "a first series of slots and a second series of slots which allow controlled bending of the distal portion by movement of one or more of the pull wires," and wherein each of the first series of slots and the second series of slots includes slots located on directly opposite sides of the flexible shaft at a same axial position, and the slots in the first series of slots on one side of the flexible shaft do not circumferentially overlap with the slots in the first series of slots on the opposite side of the flexible shaft; wherein the second series of slots is offset from the first series of slots by approximately 90° to allow controlled bending of the distal portion in a first plane and a second plane. (See Appellants' claim 1.) Appellants' independent claims 21 and 25, similarly require, inter alia, "the first series of slots on one side of the flexible shaft do not circumferentially overlap with the slots in the first series of slots on the opposite side of the flexible shaft" (see Appellants' claims 21 and 25). Based on the combination of Konstorum and Dirusso, Examiner concludes that, at the time of Appellants' invention was made, it would have been obvious to provide the second flexible section 54 of Konstorum et al. with a series of slots offset by 90 degrees from the first series of slots to provide two actively controlled deflecting sections, wherein each section is limited to deflection in a single plane and each plane is angled with respect to the other as taught by Dirusso et al. (Final Act. 4.) We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 2-8; Ans. 2---6; FF 1---6) and 6 Appeal2014-007234 Application 12/127,261 agree that the claims are obvious over Konstorum and Dirusso. We address Appellants' arguments below. We recognize, but are not persuaded by Appellants' contention that Konstorum instead teaches only one actively-controlled section near the distal tip, with two more proximally-located, passively- deflectable sections. None of those sections include slots at a same axial position. None of those sections include slots that do not circumferentially overlap .... The second section 54 is part of the passive deflection section 16. (App. Br. 21; see also App. Br. 22-23; Reply Br. 2.) Appellants also contend In stating that the "distance or spacing between adjacent slots" is variable in the slot pattern, Konstorum implies that a spacing exists between adjacent slots. There is no teaching of no spacing between slots, so as to meet the claim language of slots "at a same axial position." The Konstorum teaching is the opposite of the present claims in which the slots are positioned on directly opposite sides of the shaft at the same axial position. (Reply Br. 3.) As Examiner explains, First, with respect to slots that do not "overlap" one another, Konstorum et al. explicitly teach[ es] that the depth of depth Y' of the various slots may be about 1/2 the diameter of the tube (which as broadly as claimed would read upon the instant claims), and further that the depth Y and Y' of the various slots could have any suitable length[]. (Ans. 2; FF 4.) While the depth Y and Y' might be described in the embodiment in which "[ t ]he second section 54 is part of the passive deflection section 16" as Appellants contend, as Examiner explains, The pattern( s) of the slots 46 for each section can be configured based upon, for example, the following variables: distance or spacing between adjacent slots; direction(s) of the slots into the tube 40; depth of the slots into the tube; width of the slots; shape of the slots; and intermixing of different directions of the 7 Appeal2014-007234 Application 12/127,261 slots along a length of the tube (See Col. 3, Lines 35-51). Thus, Konstormn et al. clearly teach[ es] that the distance or spacing between adjacent slots may be varied as desired and is not limited to the Figures which only show spatially offset slots. . . . In other words, Konstorum et al. does NOT teach away from axially aligned slots on opposite sides of the shaft, but rather teaches that a user may manufacture a tube with nearly any imaginable slot configuration so as to control the overall flexibility, column strength, torque resistance, etc. of the insertion tube as desired for the surgical procedure at hand (see Col. 1, Lines 49-62 and Col. 3, Lines 29-51). Thus, it is fully within the scope and teachings of Konstorum et al. to provide a series of slots which do not overlap circumferentially and are along the same axial position. (Ans. 3--4; FF 2.) Therefore, we agree with Examiner that "based on the teaching of Konstorum et al. wherein 'the distance or spacing between adjacent slots may be varied as desired', one of ordinary skill in the art would be [sic] arrive at axially aligned slots without undue experimentation" (Ans. 4; FF 2). See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"). "[T]he discovery of an optimum value of a variable in a known process is usually obvious." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters for prior art result effective variables "flows from the 'normal desire of scientists or artisans to improve upon what is already generally known."' Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).) Appellants do not identify any secondary consideration, such as unexpected results, that would overcome the prima facie case of obviousness based on routine optimization of the slots as disclosed by Konstorum. 8 Appeal2014-007234 Application 12/127,261 We recognize, but are not persuaded by Appellants' contention that there is no motivation to modify the more proximal passively controlled sections 54, 56 to have the same slot arrangement, albeit 90 degrees offset. That is because one of skill in the art would want those more proximal regions to remain four-way deflectable. And one skilled in the art would not be motivated to make these proximal regions (which are distant from the tip and treatment site) actively-deflectable-doing so would require additional parts in an endoscope that needs to minimize space. Thus, the modified Konstorum device still would fail to teach or suggest a configuration having a second series of slots that is offset 90° from a first series of slots, and which allows controlled bending of the distal portion by movement of one or more of the pull wires, as claimed. (App. Br. 23; see also Reply Br. 4.) As Examiner explains, "[t]he claims were rejected as being unpatentable over Konstorum et al. in view of Dirusso et al. First and second actively deflectable sections are clearly taught by Dirusso et al." (Ans. 4--5; FF 5---6.) Examiner further points out that "[i]n fact, Konstorum et al. explicitly states that 'the first section could have slots in only one direction for limited increased flexibility in only one direction or slots in four or more directions for four-way or omni-directional increased flexibility['] (see Col. 4, Lines 7-10)" (Ans. 5---6; FF 3). Therefore, we agree with Examiner that "it is fully within the scope and spirit of Konstorum et al. to provide first and second slot arrangements that are offset with respect to one another by 90 degrees" (Ans. 6), and that it would have been obvious to one skilled in the art at the time the invention was made to provide the second flexible section 54 of Konstorum et al. with a series of slots offset by 90 degrees from the first series of slots to provide two actively controlled deflecting sections, wherein each section is limited to deflection 9 Appeal2014-007234 Application 12/127,261 in a single plane and each plane is angled with respect to the other as taught by Dirusso et al. (Ans. 5.) "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The combination of Konstorum, Dirusso, and Mc Weeney: Regarding the rejection of claims 8, 11, and 12, Appellants contend that Mc Weeney fails to remedy the asserted deficiencies of Konstorum and Dirusso (see App. Br. 24). Having found no deficiency in the combination of Konstorum and Dirusso of as it relates to Appellants' claim 1, we are not persuaded by Appellants' contention to the contrary. The combination of Konstorum, Dirusso, and Singh: Regarding the rejection of claims 8 and 9, Appellants contend that Singh fails to remedy the asserted deficiencies of Konstorum and Dirusso (see App. Br. 24). Having found no deficiency in the combination of Konstorum and Dirusso of as it relates to Appellants' claim 1, we are not persuaded by Appellants' contention to the contrary. CONCLUSION OF LAW The preponderance of the evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claims 1, 21, and 25 under 35 U.S.C. § 103(a) as unpatentable over the combination of Konstorum and Dirusso is affirmed. Because they were not separately argued, claims 4--7 and 10 fall with claim 1, claim 23 falls with claim 21, and claims 26 and 28-33 fall with claim 25. 10 Appeal2014-007234 Application 12/127,261 The rejection of claims 8, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Konstorum, Dirusso, and Mc Weeney is affirmed. The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over the combination of Konstorum, Dirusso, and Singh is affirmed. 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 11 Copy with citationCopy as parenthetical citation