Ex Parte Manrique et al

Patent Trial and Appeal Board

May 8, 2017

11772969 (P.T.A.B. May. 8, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/772,969 07/03/2007 Lisette Manrique COD5170USNP 1483
27777 7590 05/10/2017
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
05/10/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISETTE MANRIQUE and JOHN BUONANNO1
Appeal 2015-001471
Application 11/772,969
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
SEAN P. O’HANLON, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lisette Manrique and John Buonanno (“Appellants”) appeal under
35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—24.2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is DePuy Synthes
Products, LLC. Appeal Br. 1 (filed June 10, 2014).
2 Claims 25—30 have been withdrawn. Id. at 10-12 (Claims App.).
Appeal 2015-001471
Application 11/772,969
CLAIMED SUBJECT MATTER
The invention concerns “electro-surgical bipolar forceps that have
replaceable tip assemblies.” Spec. 1:11. Claim 1 is illustrative of the
subject matter on appeal, and recites:
1. A tip for use with an electro-surgical medical
device, said tip comprising:
a body having a distal end and a proximal end, said body
having a first groove proximate said proximal end, said first
groove having a substantially planar base, said body having a
substantially planar face proximate said distal end, said body
having a recess spaced from said proximal end; and
wherein said base and said planar face define planes that
are approximately perpendicular with respect to each other, said
first groove being disposed between said recess and said planar
face.
Appeal Br. 7 (Claims App.) (emphasis added). Independent claim 10 also
recites a “body having a recess spaced from said proximal end.” Id. at 8
(Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claims 1—20, 23, and 24 under 35 U.S.C. § 102(b) as
anticipated by Battles (US 6,860,882 B2, iss. Mar. 1, 2005).
II. Claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable
over Battles.
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Appeal 2015-001471
Application 11/772,969
ANALYSIS
Rejection I—Anticipation by Battles
Claims 1—20, 23, and 24
Appellants argue claims 1—20, 23, and 24 as a group. Appeal Br. 4—5.
We select claim 1 as representative, and claims 2—20, 23, and 24 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Battles discloses a tip as required by claim 1.
Final Act. 2—3 (claim 1) (mailed Jan. 10, 2014). Specifically, the Examiner
finds that Battles discloses “a body (30/32) having a distal end and a
proximal end.” Id. at 2. The Examiner explains that “the proximal-most end
of the body can readily be considered the ‘proximal end’ of the body with
any other portion placed distal to the proximal-most portion then being
spaced distally to some extent from the proximal end.” Ans. 4 (mailed Sept.
16, 2014). The Examiner also finds that Battles’s “reduced diameter portion
at 62” is a recess “spaced from the proximal-most end of the respective body
30/32 defined by the tapered and cross-hatched section in figure [4A] by
some distance.” Final Act. 2—3.3 The Examiner explains that “the reduced
diameter section . . . can properly be characterized as a recess given that it is
indeed a setback portion or indent when taken with respect to larger outer
diameter of the majority of the remainder of the body.” Ans. 4.
3 The Examiner’s reference to Figure 5 appears to be a typographical error,
in light of the Examiner’s findings, which concern structure at the tip’s
proximal end. Compare Final Act. 2—3 (describing structure at the proximal
end of the tip), with Battles, Fig. 4 A (showing the proximal end of the tip);
but cf. Battles, Fig. 5 (showing the opposite, distal end of the tip, with
structure not referenced by the Examiner); see also Ans. 3 (referencing
Figure 4A).
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Appeal 2015-001471
Application 11/772,969
Appellants contend that “[t]he Examiner is interpreting extreme
end 62 as being the recess and this is clearly at the proximal end, not spaced
from the proximal end as required by the claims.” Appeal Br. 5. However,
Appellants’ argument misstates the Examiner’s position. Namely, the
Examiner found that the “reduced diameter portion at 62,” e.g., the portion
of structure to which lead line 62 points, is the claimed recess. Final Act. 2—
3 (italics added); Ans. 3^4. The Examiner did not find, as Appellants argue,
that the entire end 62 is the claimed recess. Appeal Br. 5. Accordingly, we
agree with the Examiner that this portion, e.g., the “reduced diameter portion
at 62,” is spaced from the proximal end of the tip, which the Examiner
identifies at the “proximal-most end of the respective body 30/32.” Final
Act. 2—3. Indeed, the identified proximal end is spaced from the identified
recess by the length of the tapered, cross-hatched section, as shown in the
annotated version of Battles’s Figure 4A, reproduced below.
The annotated version of Figure 4A depicts, with a broken line, the proximal
end of the body and depicts, with an arrow, the recess, as both structures are
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Appeal 2015-001471
Application 11/772,969
identified by the Examiner. The tapered cross-hatched section is between
those structures, such that the recess is “spaced from” the proximal end.
Accordingly, Appellants have not persuaded us of error in the
Examiner’s rejection of claim 1. We sustain the Examiner’s rejection of
claim 1 and claims 2—20, 23, and 24, which are grouped with claim 1.
Rejection II— Obviousness over Battles
Claims 21 and 22
Appellants do not present separate argument regarding this rejection,
but instead rely on the argument presented with respect to Rejection I. See
Appeal Br. 5. Accordingly, Appellants have waived any additional
argument as to that claim and we sustain the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential).
DECISION
The Examiner’s decision to reject claims 1—24 is AFFIRMED.
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
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