Ex Parte Mao et al

Patent Trial and Appeal Board

Aug 4, 2017

12194508 (P.T.A.B. Aug. 4, 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.
12/194,508 08/19/2008 Jimmy Jian-min Mao VIOPP043 6758
51111 7590
AKA CHAN LLP
Melvin Chan
900 LAFAYETTE STREET
SUITE 710
SANTA CLARA, CA 95050
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
PTO-INBOX@AKACHANLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIMMY JIAN-MIN MAO AND ROBERT E. LASH1
Appeal 2016-004767
Application 12/194,508
Technology Center 3700
Before JOHN G. NEW, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEW, Administrative Patent Judge.
1 Appellants state the real party-in-interest is ViOptix, Inc. App. Br. 3.
Appeal 2016-004767
Application 12/194,508
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Appellants’ claims 1—19 and 27-44.2
Specifically, claims 1—2, 4—15, 18—19, 29—31, 34, and 41—43 stand rejected
as unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Gade (US 4,945,896, August 7, 1990) (“Gade”) and
Chappuis (US 5,769,781, June 23, 1998) (“Chappuis”).
Claim 3 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Gade, Chappuis, and Evans et al. (US
6,322,499 Bl, November 27, 2001) (“Evans”).
Claims 16 and 17 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Gade, Chappuis, and
Jacoby et al. (US 5,230,621, July 27, 1993) (“Jacoby”).
Claims 27 and 28 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Gade, Chappuis, and
Sinnreich (US 4,190,042, February 26, 1998) (“Sinnreich”).
Claims 32 and 33 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Gade, Chappuis, and
Tschupp et al. (US 2002/0062070 Al, May 23, 2002) (“Tschupp”).
Claims 35, 38-40, and 44 stand rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over the combination of Gade, Chappuis,
and Evans.
2 The Examiner also rejected claims 1—19 and 27-44 as unpatentable under
35 U.S.C. §112, second paragraph, as being indefinite. Final Act. 2. The
Examiner has withdrawn this rejection. Ans. 2.
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Claims 36 and 37 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Gade, Chappuis, Evans,
and Tschupp.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a surgical elevator with an
oximeter sensor at its tip, which allows measuring of oxygen saturation of a
tissue. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A device comprising:
a handle, wherein the handle comprises an axis;
a blade, coupled to the handle, comprising a first
blade portion and a second blade portion,
wherein the first blade portion is angled by a first
angle in a first rotation direction relative to the handle’s
axis, and the second blade portion is angled by a second
angle in a second rotation direction relative to the first
blade portion, where the second rotation direction is
opposite of the first rotation direction,
the second blade portion is between the first blade
portion and the handle, the first blade portion comprises a
first side and a second side, wherein a first opening passes
from the first side to the second side of the blade, and a
second opening passes from the first side to the second
side of the first blade portion;
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a first optical fiber coupled to the first opening;
a second optical fiber coupled to the second
opening; and
an epoxy, covering the first and second optical
fibers and the first and second openings on the first side,
wherein the first and second openings are
unconcealed on the second side and a distal end of
the blade is rounded.
App. Br. 25.
ISSUES AND ANALYSES
Except as otherwise indicated herein, we agree with and adopt the
Examiner’s findings of fact and conclusions that the appealed claims are
anticipated by, or obvious over, the combined cited prior art under 103(a).
We address the arguments raised by Appellants below.
A. Rejection of claims 1—2, 4—15, 18—19, 29—31, 34, and 41—43 as
obvious over Gade and Chappuis
Issue 1: Claims 1, 2, 4—10, 12, 14, and 41—43
The Examiner finds, inter alia, that Gade teaches a blade coupled to a
handle and comprising a first blade portion and a second blade portion, the
first blade portion being between the second blade portion and the handle.
Final Act. 3. The Examiner finds the second blade portion comprises a first
side and a second side, in which a first opening passes from the first side to
the second side of the blade, and a second opening passes from the first side
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to the second side of the second blade portion, a first optical fiber coupled to
the first opening, a fiber coupled to the second opening. Id.
The Examiner further finds Gade does not teach or suggest the first
blade portion is angled by a first angle in a first rotation direction relative to
the handle’s axis, and the second blade portion is angled by a second angle
in a second rotation direction relative to the first blade portion, where the
second rotation direction is opposite of the first rotation direction. Final Act.
4. However, the Examiner finds Chappuis teaches a device in which a first
blade portion is angled by a first angle in a first rotation direction relative to
the handle’s axis (see Chappuis Fig. 2B, the direction being an upwardly
angled direction relative to the handle axis) and a second blade portion
angled by a second rotational direction relative to the first blade portion,
wherein the second rotation direction is opposite of the first rotation
direction. Id. The Examiner finds the first blade portion is between the
second blade portion and the handle. Id.
The Examiner concludes that it would have been obvious to one
having ordinary skill in the art at the time of the invention to modify Gade
with the angled blade taught by Chappuis in order to allow the user to more
easily hold the device out of the way of the surgical site. Final Act. 4.
Appellants argue the Examiner erred in combining Gade and
Chappuis because the references describe very different devices used for
different applications. App. Br. 11.
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Analysis
Appellants argue that Gade teaches a surgical retractor for retracting
soft brain tissue, and having a flat blade. App. Br. 11 (citing Gade col. 2,11.
28—35). Appellants acknowledge that Gade teaches that different sensors
can be mounted and removed from a pair of apertures in the blade and that
Gade teaches that its retractor blade has a flat shape. Id.
Appellants assert that Chappuis teaches a spinal cord retractor having
“a head with a sidewise, U-shaped, curvilinear, contact surface.” App. Br.
10 (quoting Chappuis col. 2,11. 15—19). According to Appellants, Chappuis
teaches that the head extends around the spinal cord and pulls the cord
sideways for retraction. Id. (citing Chappuis col. 4,11. 56—60). Appellants
contend that Chappuis teaches that the head includes a strain gauge 50 that
covers the entire contact surface of the head and that a rounded convex tip of
the head is designed to “extend partially around and grasp increments of
spinal cord S and retract sidewise a portion of the spinal cord S.” Id. (citing
Chappuis col. 4,11. 56—65).
Appellants argue that “Gade and Chappuis are very different and
ought not to be combined.” App. Br. 10. Appellants assert that Gade
teaches a flat blade underside surface so that its sensors will have good
contact with the underlying soft brain tissue. Id. Appellants argue Gade
would not add Chappuis’ curved head, with convex tip, since this would
interfere with the blade having direct contact with underlying brain tissue to
make measurements. Id. If so modified, Appellants argue, Gade’s sensors
would likely not be able to make accurate measurements of tissue because
Chappuis’ curved head would prevent an underside of Gade’s blade from
having good contact with brain tissue. Id. at 11-12.
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Furthermore, Appellants contend, Gade does not teach or suggest an
angled head with a convex tip for its blade, as this would likely cause
“undesirable forces” to be applied to the soft brain tissue. App. Br. 11. By
way of example, Appellants suggest that the angled portions of the blade
would likely dig into brain tissue, resulting in unintended trauma to the brain
tissue. Id.
Appellants also argue that modifying Gade’s blade with Chappuis’
head would likely result in the blocking of Gade’s sensors by Chappuis’
strain gauge. Id. at 12. According to Appellants, Chappuis’ strain gauge
covers the entire contact surface of the head and, therefore, Gade’s blade
would not operate as intended. Id.
The Examiner responds that that Gade’s flat blade containing sensors
is not being modified by the teachings of Chappuis to incorporate a blade
that is rounded and not flat. Ans. 3. Rather, the Examiner finds that the flat
blade of Gade could be modified by Chappuis so that the portion extending
between the sensors and handle incorporates an angle between the two
surfaces so that the retractor is out of the way during use. Id.
The Examiner refers to Figure 1 of Gade, which illustrates that, when
in use, the handle of the retractor protrudes into the air and is in the way of
the surgeon. Ans. 3. Therefore, the Examiner concludes, it would have
been obvious to a person of ordinary skill in the art to modify the straight
retractor taught by Gade with an angled portion taught by Chappuis so that
in use, the sensors can be placed against the tissue, whereas the handle
portion would be placed out of the surgeon’s way. Id. (citing Gade Figs 1—
28).
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With respect to Appellants’ argument that the modification of Gade’s
head with Chappuis’ head would result in blocking of Gade’s sensors by the
strain gauges of Chappuis, the Examiner points out that the proposed
combination of references does not require that the sensor taught by Gade is
modified by the sensor of Chappuis. Ans. 3. Rather, the Examiner finds,
Chappuis is being used to teach angled blade portions. Id.
We are not persuaded by Appellants’ arguments. As an initial matter,
both Gade and Chappuis teach soft tissue (including neural tissue) surgical
retractors. See Gade col. 2,11. 28—33; Chappuis col. 2,11. 14—23. Because
both references are directed to the same field of endeavor, we find that they
are analogous art and therefore capable of being combined by a person of
ordinary skill in that art. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
The Examiner concludes that it would have been obvious to modify
the straight blade containing sensor apertures taught by Gade to incorporate
the angled blade portions taught by Chappuis. See Ans. 3. Contrary to the
foundation of Appellants’ argument, it is not necessary that all of the
physical features of retractor taught by Chappuis must be incorporated into
the physical design taught by Gade. Rather,
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). In the instant appeal,
Appellants argue that the retractor blade taught by Gade has an underside
surface so that its sensors will have good contact with the underlying soft
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brain tissue, which is incompatible with the curved head and convex tip of
Chappuis, as the latter would interfere with the blade having direct contact
with underlying brain tissue to make measurements. See App. Br. 11.
However, the Examiner cites Chappuis as supplying the limitation of claim 1
reciting:
[A] first blade portion and a second blade portion, wherein the
first blade portion is angled by a first angle in a first rotation
direction relative to the handle’s axis, and the second blade
portion is angled by a second angle in a second rotation direction
relative to the first blade portion, where the second rotation
direction is opposite of the first rotation direction.
Appellants do not dispute that Chappuis teaches this limitation.
Furthermore, we find that Appellants misread the teachings of
Chappuis. Chappuis teaches that the blade of its retractor is U-shaped.
Chappuis col. 2,11. 15—18. However, Chappuis also teaches:
According to the present invention, the inner surface of the
U-shaped bill 40 has, adhered thereto, a thin foamed rubber or
synthetic rubber cushion or liner 41 which, in turn, carries,
adhered thereto, a generally rectangular, flexible, 20 deformable,
generally flat, thin, impact sensor or hydrostatic sensor or strain
gauge 50 which is bent to conform to the contour of the cushion
41 and the surface of the head 40 which forms a sidewise opening
bill 40.
Chappuis col. 4,11. 16—23 (emphasis added). We interpret this to mean that
the surface to which the sensor is attached, and which is adjacent to the
retracted tissue, is itself flat, similar to the blade taught by Gade. See also
Chappuis Figs. 4, 5.
Similarly, we are not persuaded by Appellants’ argument that the
strain sensor taught by Chappuis would obstruct the function of the sensors
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of the blade taught by Gade. Again, Chappuis is not cited for this feature,
nor is it required that all of the physical features of Chappuis be incorporated
into the retractor of Gade for the Examiner to establish a prima facie case of
obviousness. Rather, the Examiner has relied upon Chappuis as teaching the
limitation reciting the angled first and second blade portions. See Final Act.
4. We consequently affirm the Examiner’s rejection of the claims.
Issue 2: Claim 11
Appellants argue claim 11 separately. App. Br. 12. Claim 11 recites:
“The device of claim 1 wherein a first thickness from the first opening at the
second side to an epoxy surface covering the first opening is thinner than a
second thickness from the second opening at the second side to an epoxy
surface covering the second opening.” Id. at 27. Appellants argue the
Examiner erred because the combined references fail to teach or suggest the
limitation of claim 11. Id. at 12.
Analysis
Appellants argue that the blade taught by Gade does not show that a
first thickness from the first opening at the second side to a surface covering
the first opening is thinner than a second thickness from the second opening
at the second side to an epoxy surface covering the second opening. App.
Br. 12—13 (citing Gade Figs. 8, 9). Rather, argue Appellants, Gade’s blade
72 shows a uniform thickness for its blade. Id. at 13.
Appellants argue that the feature recited in claim 11 can facilitate
insertion of the blade between tissues, and also measuring of tissues. App.
Br. 13. Appellants contend Gade’s retractor is not intended for such use,
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and would not be able to measure the distance of thickness of a gap between
a nerve and other tissue. Id.
The Examiner responds that the limitation of claim 11 requiring
changing the thickness of the openings in the blade with respect to each
other is a matter of design choice, because a change in size is generally
recognized as being within the level of ordinary skill in the art. Ans. 4
(citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984)).
With respect to Appellants’ argument that the different thicknesses
can be used as a thickness gauge, the Examiner finds that the blade of Gade
can also be used as a thickness gauge: the constant thickness of the blade
can be used to gauge the thickness of a space. Ans. 4. The Examiner further
finds that, with respect to Appellants’ argument that the method of use of the
gauge with respect to the tapering thickness, Appellants are only claiming
the device and not the method of use; therefore, Appellants’ arguments with
respect to how the device is used are moot. Id.
We are persuaded by Appellants’ arguments. The Examiner
concludes that it would have been an obvious matter of design choice to a
person of ordinary skill in the art to modify the thickness of the coating
between the first and second apertures taught by Gade so that there is a
difference. See Final Act. 8. Gade expressly states that the blade of its
disclosed retractor is “generally flat” and does not suggest that it be tapered.
See, e.g., Gade Abstr., col. 2,11. 33—35. We are not persuaded by the
Examiner’s conclusion because the Examiner has failed to articulate a
reason as to why such a difference in thicknesses would be an obvious
design choice to a person of ordinary skill. See, e.g., Ex Parte Nizar Lahoui,
Appeal 2016-006912, 2017 WL 818785, at *2 (PTAB, February 27, 2017)
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(stating that a particular placement of an element is a design choice does not
make it obvious; a reason must be offered as to why a skilled artisan would
have made the specific design choice). We consequently reverse the
Examiner’s rejection of claim 11.
NEW GROUND OF REJECTION
Claim 11 is newly rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over the combination of Gade, Chappuis, and Evans.
As discussed fully, infra, the Examiner has rejected claim 3 as being
obvious over this same combination of references, finding that Evans
teaches: “a device wherein a thickness between the first side and second
side of the blade is tapered, decreasing in thickness from a proximal end of
the blade to the distal end of the blade.” Final Act. 9 (citing Evans Fig. 2,
col. 10,11. 22—25). Because claims 3 and 11 recite similar subject matter, we
adopt and apply the Examiner’s reasoning and conclusions with respect to
the obviousness of claim 3 (see infra) in newly rejecting claim 11 as
obvious.
Issue 3: Claim 13
Appellants argue claim 13 separately. App. Br. 13. Claim 13 recites:
“The device of claim 1 wherein the first side of the first blade portion faces
toward the handle and the second side of the first blade portion faces away
from the handle.” Id. at 27. Appellants argue the Examiner erred because
the combined references fail to teach to suggest the limitation of claim 13.
Id. at 13.
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Analysis
Appellants argue the Examiner finds that Gade’s coating 92 coats the
blade on the first side (i.e., a side facing away from tissue when the tool is
used), while the first and second openings are unconcealed on the second
side of the blade (i.e., the tissue-facing side of the blade in use). App. Br.
13. However, argue Appellants, this interpretation contradicts the recited
claim where the first side faces toward the handle and the second side faces
away from the handle. Id.
We are not persuaded. The Examiner finds Chappuis teaches:
[A] device wherein a first blade portion 31 is angled by a first
angle in a first rotation direction relative to the handle’s axis (see
fig. 28, the direction being an upwardly angled direction relative
to the handle axis) and a second blade portion 40b is angled by a
second rotational direction relative to the first blade portion,
wherein the second rotation direction is opposite of the first
rotation direction (the second direction being a downward angled
direction relative to the handle axis[)].
Final Act. 4 (citing Chappuis Figs. 2B, 5). Appellants do not dispute this
finding. Because Chappuis expressly teaches “a first blade portion ...
angled by a first angle in a first rotation direction relative to the handle’s
axis,” necessarily one side of the first blade portion must face toward the
handle and the other face away from the handle.
Furthermore, claim 1, from which claim 13 depends, recites, in
relevant part, “a first optical fiber coupled to the first opening; a second
optical fiber coupled to the second opening; and an epoxy, covering the first
and second optical fibers and the first and second openings on the first side.”
Claim 1, and by extension claim 13, therefore, requires only that the optical
fibers and their epoxy coating are coupled to the openings, which are on
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both sides of the first portion of the blade (i.e., [the] “opening passes from
the first side to the second side of the blade’). Consequently, because we see
no contradiction between the teachings of Chappuis and claims 1 and 13, we
are not persuaded by Appellants’ argument and we affirm the rejection of
claim 13.
Issue 4: Claims 18 and 19
Appellants argue these claims together. App. Br. 14. Independent
claim 18 is representative of the pair and recites, in relevant part: “a resin,
covering the first and second optical fibers and the first and second openings
on the first side,” and “wherein the first side of the first blade portion faces
toward the handle and the second side of the first blade portion faces away
from the handle.” Id. Appellants argue the Examiner erred because Gade
does not teach or suggest any opening being covered with a resin. Id.
Analysis
According to Appellants, Gade is very specific in indicating a
polymeric material coats blade 52, but teaches nothing more. App. Br. 14
(citing Gade col. 6,11. 5—8). Appellants contend the Examiner incorrectly
interpreted Gade’s disclosure as meaning that the polymeric material also
covers the opening, but Appellants assert that Gade neither teaches nor
suggests this. Id.
Appellants argue the Examiner has not shown that the coating feature
found to be taught by Gade is technically feasible. App. Br. 14. By way of
example, Appellants assert that the polymeric material of Gade is similar to
a fluoropolymer coating used to coat cookware or other metal to give a
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nonstick surface. Id. Appellants contend Gade teaches that the coating “will
not adhere to the soft brain tissue,” to indicate its nonstick properties. Id. at
13 (citing Gade col. 6,11. 7—8).
Appellants argue further that such a coating (e.g., Teflon) is typically
a black, dark gray, or silver, and opaque. App. Br. 15. Appellants contend
that the Examiner has not made a prima facie showing that light can
penetrate such a coating, which would be required to take measurements
with an optical sensor. Id.
Furthermore, argue Appellants, the combination of Gade and
Chappuis neither teaches nor suggests the limitation of claim 18 reciting:
the first blade portion comprises a first side and a second
side, wherein a first opening passes from the first side to the
second side of the blade, a second opening passes from the first
side to the second side of the blade, and a first length of the first
opening is less than a second length of the second opening.
App. Br. 15. Appellants point to Figure 8 of Gade, in which apertures 80
and 82 do not have lengths where a first length of the first opening is less
than a second length of the second opening. Rather, the lengths of the
apertures appear to be the same. Id.
The Examiner responds that Gade expressly teaches that the blade
includes a coating on the sensors. Ans. 5 (citing Gade col. 6,11. 5—8, 20-24,
45—48, Figs. 7, 8). The Examiner finds, contrary to Appellants’ assertion
that Gade teaches only a polymeric coating such as Teflon, that the prior art
teaches the sensors can be coated with a membrane that is different than the
polymer coating. Id. The Examiner finds that Gade does not teach that the
sensor covering is a resin, however, but rather teaches that the coating may
be a material that allows measurements to take place. Id. The Examiner
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therefore concludes that it would have been obvious to a person of ordinary
skill in the art to modify the material of the coating taught by Gade as a
matter of design choice because it is generally within the skill of an artisan
to select a known material on the basis of its suitability for the intended use.
Id. (citing In re Leshin, 277 F.2d 197, 199 (C.C.P.A. I960)).
We are not persuaded by Appellants’ arguments. Gade teaches,
generally: “[t]he blade 52 is then coated with a polymeric material 66 such
as Teflon or other similar material that will not adhere to the soft brain
tissue.” Gade col. 6,11. 5—8. We agree with the Examiner that the term
“polymeric material” reasonably includes a resin (i.e., a natural or synthetic
plastic).
However Gade also teaches that, in certain embodiments, and with
reference to the sensors in the blade:
The sensor 56 embedded in the blade 52 may be one of a
variety of designs as discussed above with reference to the first
embodiment. For example the sensor 56 may be a Clark
electrode for monitoring the surface oxygen tension of the
underlying tissue. In this case, an oxygen permeable membrane
would be positioned between the face of the sensor 56 and the
tissue underlying the retractor blade 52. Alternatively, an optic
fiber sensor could be utilized with or without an optically
transparent membrane over the sensor face to transmit a light
signal utilized in the laser Doppler velocimeter or in the NADH
fluorescence spectrometry methods also described above.
Gade col. 6,11. 16—29. Gade further teaches:
A third embodiment of the present invention is illustrated
in FIGS. 8 and 9. In this embodiment, the surgical retractor 70
includes a malleable flat blade 72, handle 74, and a pair of
sensors 76 and 78 mounted in a pair of apertures 80 and 82
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respectively. A pair of bores 84 and 86 provide passage for the
lead wires 88 and 90 longitudinally through the blade 72.
In this embodiment, the surgical retractor 70 can have
embedded therein a Clark electrode for monitoring oxygen
content directly in the underlying tissue and a different electrode,
for example, an NADH fluorescence device in the other aperture.
In this case, the leads 88 would be electrical wires and the leads
90 would be glass fiber bundles passing providing the required
signals to and from the sensors.
As in the previous embodiments, the blade 72 is provided
with a coating or cover 92 of Teflon or other polymeric material
to prevent adherence of the metal to the soft brain tissue. The
coating or cover 92 is absent from the face of the sensors 76 and
78 against the underlying tissue. In place of the coating 92 over
the exposed surface of the sensors 76 and 78 is either an optically
transparent film over the double wave length laser Doppler
velocimeter or the NADH fluorometer for measuring blood flow
and cell metabolism respectively or an oxygen permeable
membrane if a Clark oxygen sensor is embedded within one of
the apertures 80 or 82 in the blade 72.
Id. at 11. 30-57 (emphasis added). Thus, contrary to Appellants’ assertion,
Gade does not teach that the sensors in the apertures/openings of the blade
must be covered with an opaque, Teflon-like polymer, but rather, expressly
teaches a film or membrane over the sensor to permit its optical interaction
with the adjacent tissue. We agree with the Examiner that, although Gade
does not explicitly teach “a resin, covering the first and second optical fibers
and the first and second openings on the first side,” a person of ordinary skill
in the art would realize that Gade teaches a covering layer over the sensors,
permitting their interaction with the tissue, and would accordingly select an
appropriate covering material, including a resin, if appropriate.
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Furthermore, we are not persuaded by Appellants’ argument that Gade
neither teaches nor suggests “a first length of the first opening is less than a
second length of the second opening.” See App. Br. 14. Although Gade
does not expressly teach the size of the apertures, Gade teaches the use of
different sensors in the blade (see passages quoted supra) and we find that a
person of ordinary skill in the art would realize that the apertures should be
of such a size and shape as to fit the respective sensors embedded therein
and would find it obvious to adjust their sizes and shapes accordingly. We
therefor affirm the Examiner’s rejection of claims 18 and 19.
Issue 5: Claims 29—31 and 34
Appellants argue these claims together. App. Br. 15—16. Claim 29 is
representative and recites, in relevant part: “an epoxy covering the first and
second optical fibers and the first and second opening on the first side” and
wherein the first side of the first blade portion faces toward the handle and
the second side of the first blade portion faces away from the handle.” Id.
Appellants essentially repeat their arguments with respect to claims 18
and 19, discussed supra, substituting the claim term “epoxy” for “resin.”
App. Br. 15. For the reasons we have set forth supra, we adopt the
Examiner’s findings and conclusion that the claims are obvious over the
combined cited prior art references and we affirm the Examiner’s rejection
of the claims.
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B. Rejection of claim 3 as obvious over Gade, Chappuis, and Evans
Issue
Claim 3 recites: “The device of claim 1 wherein a thickness between
the first side and second side of the blade is tapered, decreasing in thickness
from a proximal end of the blade to the distal end of the blade.” App. Br.
25. Appellants argue the Examiner erred because the combined cited prior
art references neither teach nor suggest the limitation recited in claim 3. Id.
at 16. As indicated above, the discussion of claim 3 is relevant to the new
grounds of rejection of claim 11.
Analysis
The Examiner finds, in addition to his findings with respect to Gade
and Chappuis related supra, that Evans teaches a device in which the
thickness between the first side and second side of the blade is tapered,
decreasing in thickness from the proximal end of the blade to the distal end
of the blade. Final Act. 9 (citing Evans Fig. 2, col. 10,11. 22—25). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art to modify the device taught by Gade/Chappuis by the tapering
the blade, as taught by Evans, in order to reduce the insertion force and
trauma to the tissue. Id.
Appellants argue that Gade and Evans describe very different devices
used for different applications. App. Br. 16. According to Appellants,
Evans teaches a vein retractor with a shroud member having serrations to
dissect a vein from surrounding tissue. Id. (citing Evans Fig. 1). Appellants
argue Evans teaches that: “The upper and proximal surface of the shroud
member is preferably tapered and oriented at an angle of about forty-five
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degrees with respect to the first elongate section to provide a low profile
extension that assists in the dissection of the tissue.” Id. (quoting Evans col.
5,11. 23-56).
Appellants contend that, whereas Gade teaches a smooth, flat blade,
Evans teaches a bent tip with serrations to dissect a vein from surrounding
tissue. App. Br. 17. Appellants contend Gade would not contemplate
including Evans’ serrated tip to contact brain tissue since this would likely
cut the soft brain tissue as the blade is moved across the tissue. Id.
The Examiner responds that that the serrations on the blade of Evans
are not cited in support of the combined references, but only the tapering of
a blade, which provides the advantage of reducing the insertion force and
trauma to the tissue when using the retractor of Gade/Chappuis. Ans. 6.
The Examiner finds that Gade expressly teaches the retractor for use in brain
surgery, however, the reference also teaches the retractor blade may be used
for retracting and holding soft tissue in other procedures and other soft tissue
around the brain. Id. (citing Evans col. 2,11. 28—32, Fig. 1).
We are not persuaded by Appellants’ arguments. Appellants’
Specification discloses:
The tapering of the tip helps to prevent damage to the
nerve and other tissue during use of the elevator .... As the tip is
inserted between the nerve and other tissue, the tapering helps to
ensure that any movement of the nerve away from the tissue is
gradual.
Spec. 1236. Appellants Specification thus discloses that the reason for
tapering the tip of the blade is essentially identical to that taught by Evans as
a reason for tapering the tip: insertion between the nerve and other tissue to
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ensure that any movement of the nerve away from the tissue is gradual, i.e.,
dissection of the fragile tissue.
We consequently affirm the Examiner’s rejection of claim 3. Our
reasoning explained here is also incorporated by reference in our new
ground of rejection of claim 11, as entered supra.
C. Rejection of claims 16 and 17 as obvious over Gade, Chappuis, and
Jacoby
Issue 1: Claim 16
Claim 16 recites: The device of claim 1 wherein the first optical fiber
is a split optical fiber capable of carrying at least two optical channels. App.
Br. 28. Appellants argue the Examiner erred because the combined cited
prior art references fail to teach or suggest the limitation of claim 16. Id. at
18.
Analysis
In addition to the Examiner’s findings and conclusions with respect to
Gade and Chappuis reported supra, the Examiner finds that Jacoby teaches a
device in which a first optical fiber is a split optical fiber capable of carrying
at least two optical channels and in which the first optical fiber is a
concentric optical fiber capable of carrying at least two optical channels.
Final Act. 10 (citing Jacoby (col. 12,11. 50-57; col. 13,11. 15—24). The
Examiner also finds Jacoby teaches the same fiber optic bundle taught by
Gade. Id. (citing Jacoby col. 10,11. 30—37; Gade col. 5,11. 29—33).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have modified the optical fiber taught by
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Gade/Chappuis with the optical fibers taught by Jacoby because the different
optical fibers taught by the references are known equivalent structures.
Final Act. 10.
Appellants argue Jacoby teaches an optical fiber bundle 18 that is split
into four separate groups of fibers such that a distal end of each of the four
separate groups of fibers terminates at one of four separate ports 50, 52, 54,
and 56. App. Br. 19 (citing Jacoby Fig. 3a, col. 12,11. 50-57). According to
Appellants, Jacoby does not show or suggest an optical fiber, in a first
opening, where the optical fiber is a split optical fiber, rather, Appellants
argue, Jacoby teaches bundle of multiple fibers, separated so that each fiber
terminates at a different opening.
We are not persuaded. Claim 16 requires: “a split optical fiber
capable of carrying at least two optical channels.” Jacoby teaches:
One example of an optical head 24 shown in FIG. 3 a
comprises four separate illuminating ports 50, 52, 54, 56. In such
embodiment, the first (illuminating) optical fiber bundle 18 is
split into four separate groups of illuminating fibers such that the
distal ends of the four separate groups of the illuminating optical
fibers will terminate at the four illuminating lens member or light
output ports 50, 52, 54, 56.
Jacoby col. 12,11. 50-57 (emphasis added). Jacoby thus expressly teaches a
split optical fiber.
Appellants’ Specification discloses: “Figure 31 shows another
implementation of a probe 3105 with a single sensor opening 3110 having a
fiber with multiple light paths. This fiber may be referred to as a split
channel fiber.” Spec. 1391. Appellants’ Specification thus discloses “a
split optical fiber with multiple light paths” as defining the claim term “a
split optical fiber capable of carrying at least two optical channels.” Jacoby,
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in the passage quoted supra, expressly teaches an optical fiber: “split into
four separate groups of illuminating fibers such that the distal ends of the
four separate groups of the illuminating optical fibers will terminate at the
four illuminating lens member,” i.e., the optical fiber is split into four optical
channels as defined by Appellants’ Specification. We consequently affirm
the Examiner’s rejection of claim 16.
Issue 2: Claim 17
Claim 17 recites: “17. The device of claim 1 wherein the first optical
fiber is a concentric optical fiber capable of carrying at least two optical
channels.” App. Br. 28. Appellants argue the Examiner erred in finding the
combined cited prior art references do not teach this limitation of claim 17.
App. Br. 20.
Analysis
Appellants argue Jacoby teaches concentric configurations of optic
fiber bundles positioned in inner and outer concentric lumens of the optical
head. App. Br. 20 (citing Jacoby col. 13,11. 15—24). Appellants contend that
this arrangement of Jacoby is different from their claimed invention. Id. By
way of example, Appellants contend that, in their claimed invention, an
optical fiber, positioned at a sensor opening, can be a single fiber with
multiple light channels. Id. (citing Spec. Fig. 33,400).
We are not persuaded. Figure 3a of Jacoby, which corresponds to the
quoted passage in the section immediately preceding supra, is reproduced
below:
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Figure 3a of Jacoby depicts a plan view of one embodiment of
an optical head usable in instruments of the present invention as
described in col. 12,11. 50-57.
Figure 3a of Jacoby depicts the four illuminating ports 50, 52, 54, and
56 of the optical head, each of which receives one of the optical channels
(i.e., channels of the split optical fiber) and the lot arranged concentrically in
the optical head. Because this configuration of Jacoby is the same as in
claim 17, we affirm the Examiner’s rejection.
D. Rejection of claims 27 and 28 as obvious over Gade, Chappuis, and
Sinnreich
Issue
Claim 27 is representative and recites: “An endoscopic instrument
comprising a device of claim 1.” App. Br. 29. Appellants argue the
Examiner erred because the cited prior art combination neither teaches nor
suggests this limitation. App. Br. 20.
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Analysis
The Examiner, in addition to the findings and conclusions related
supra, finds Sinnreich teaches an endoscopic instrument comprising
Appellants’ claimed invention. Final Act. 10 (citing Sinnreich Abstr.). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art to modify the device of Gade/Chappuis with the use of an
endoscopic instrument in order to advantageously perform endoscopic
procedures. Id.
Appellants argue Gade and Sinnreich teach very different inventions
and are not properly combinable. App. Br. 20. According to Appellants,
Sinnreich teaches a flexible retractor that can be retracted into and extended
from an endoscope. App. Br. 20 (citing Sinnreich col 1,11. 5—10).
Appellants contend that the retractor of Sinnreich is made of a thin flexible
membrane of material, which “may be as little as two-thousandths of an inch
in thickness, and occupies negligible volume,” that can be retracted into the
endoscope. Id. (citing Sinnreich col 2,11. 34—36). As such, Appellants
argue, the teachings of Sinnreich are not combinable with those of Gade and
Chappuis as described supra. Id.
Furthermore, Appellants argue Gade teaches that its blade is malleable
to allow the surgeon to adjust the blade, which is not consistent with
Sinnreich’s membrane. App. Br. 20. Appellants assert that, once extended
from the endoscope, Sinnreich’s retractor expands to open into a single
preset retractor configuration (i.e., like a pop-up tent), and would, therefore,
not be bendable by the surgeon to a desired shape. Id.
The Examiner responds that all of the limitations of the claim are
taught by the prior art. Ans. 6. The Examiner finds Appellants have
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claimed little with respect to the structure of the endoscopic instrument and,
further, Appellants are incorporating elements of Sinnreich into their
arguments over the prior art combination that are not being cited by the
Examiner as teaching the claimed limitation. Ans. 6—7. The Examiner finds
Sinnreich is cited solely to show the use of a retractor in an endoscope /
endoscopic procedure. Id. at 7. The Examiner finds the specifics of how the
retractor is incorporated with the endoscopic instrument are not claimed and
are therefore irrelevant. Id.
We are not persuaded by Appellants’ arguments. Sinnreich is cited by
the Examiner solely for the purpose of demonstrating that it was known in
the art that retractors can be used with endoscopes. Appellants’
Specification confirms this, disclosing that:
[T]he principles of the invention are also applicable to an
elevator tool or other tool with oximeter sensor when
implemented in an endoscopic instrument. Endoscopy is a
minimally invasive diagnostic medical procedure that is used to
assess the interior surfaces of an organ by inserting a tube into
the body. At the end of the endoscope tool is an elevator or other
blade or tool as described in this application.
Spec. 1150. Appellants’ claims merely recite the use of their claimed
invention as an endoscopic device, and Sinnreich teaches that the use of
retractors with and/or as endoscopes is well known in the art. Siinnreich
does not, however, teach the remaining limitations of claim 1 (as
incorporated into claims 2 and 28), however, we have explained supra why
we agree with the Examiner that Gade and Chappuis teach those limitations.
We consequently affirm the Examiner’s rejection of the claims.
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E. Rejection of claims 32 and 33 as obvious over Gade, Chappuis, and
Tschupp
Issue
Claim 32 is representative and recites: “The device of claim 30
wherein the electronic component is at least one of a printed circuit board
comprising power and ground wires, a thin-film circuit board, a
photodetector, a light emitting diode, or a laser diode.” App. Br. 28.
Appellants argue the Examiner erred in finding the combined cited prior art
references teach or suggest the limitation of claim 32. Id. at 21.
Analysis
Appellants point to the Examiner’s finding that: “Gade’s Clark
electrode can be modified with Tschupp’s photodetector, since ‘a
photodetector and ‘a Clark electrode are known equivalents for detecting
oxygen levels.’” App. Br. 21 (quoting Final Act. 11). Appellants argue to
the contrary that the combination of Tschupp’s photodetector with Gade’s
blade would not be the recited invention. Id. Rather, Appellants contend,
Gade teaches that, in using an electronic sensor (e.g., a Clark electrode), no
optical fibers are necessary as the electronic sensor uses electrical wires. Id.
(citing Gade col. 6,11. 37^44). Therefore, Appellants assert, even if Gade’s
device were to be modified with Tschupp’s photodetector, the combination
would not show or suggest an optical fiber coupled to the first opening. Id.
The Examiner responds that Gade teaches the use of a sensor that
includes optical fibers or lead wires. Ans. 7 (citing Gade col. 6,11. 1—5).
Therefore, the Examiner finds, Gade teaches the use of several different
alternative sensors choices, some of which include optical fibers, and
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concludes that it would have been obvious to one having ordinary skill in the
art to use any known appropriate sensors in the art. Id.
We agree with the Examiner. Gade teaches: “The sensor embedded
in the blade may take the form of any of several sensing devices which
directly measures a parameter indicative of cellular metabolism, tissue blood
flow, or tissue oxygenation.” Gade col. 2,11. 46-49. Gade expressly
teaches: “The bore 62 and the hollow handle 54 provides a passage for the
optic fiber bundles or lead wires 64 from the sensor 56 to connect the sensor
56 to remote signal processing equipment (not shown).” Gade col. 6,11. 1—5
(emphasis added).
Furthermore, Gade teaches:
The sensor 56 embedded in the blade 52 may be one of a variety
of designs as discussed above with reference to the first
embodiment. For example, the sensor 56 may be a Clark
electrode for monitoring the surface oxygen tension of the
underlying tissue. In this case, an oxygen permeable membrane
68 would be positioned between the face of the sensor 56 and the
tissue underlying the retractor blade 52. Alternatively, an optical
fiber sensor could be utilized with or without an optically
transparent membrane over the sensor face to transmit a light
signal utilized in the laser Doppler velocimeter or in the NADH
fluorescence spectrometry methods also described above.
Id. at 11. 18—28 (emphasis added).
Tschupp teaches: “For the measurement of the oxygen saturation the
sensor 1 has a pulse oximetric measurement system 17 which includes a
two-colour light emitting diode 2 (FED) and also a photodetector 3.”
Tschupp 143. Tschupp’s photodetector, then, is expressly part of a sensor
dedicated to measuring “cellular metabolism, tissue blood flow, or tissue
oxygenation,” as taught by Gade.
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Gade therefore teaches the use of multiple types of sensors in the
apertures of the blade, including sensors requiring the use of optical fibers
(i.e., “optical fiber sensors”), such as the photodetectors of Tschupp. We
consequently affirm the Examiner’s rejection of claims 33 and 35.
F. Rejection of claims 35, 38-40, and 44 as obvious over Gade,
Chappuis, and Evans
Appellants repeat their arguments made with respect to claim 3 supra.
For the reasons we have explained above with respect to claim 3, we
similarly affirm the Examiner’s rejection of claims 35, 38-40, and 44.
G. Rejection of claims 36 and 37 as obvious over Gade, Chappuis,
Evans, and Tschupp
Issue
Claim 36 is representative and recites: “The device of claim 35
wherein the first electronic component comprises at least one of a printed
circuit board comprising power and ground wires, a thin-film circuit board, a
photodetector, a flexible circuit board, a light emitting diode, or a laser
diode.” App. Br. 29. Appellants argue the Examiner erred because the
combined, cited prior art references fail to teach or suggest the limitation of
claim 35. Id. at 23.
Analysis
Appellants argue that, contrary to the Examiner’s finding, a
photodetector and a Clark electrode are very different devices, using
different technology. App. Br. 23. According to Appellants, Tschupp
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expressly teaches that its “photodetector 3 could be replaced by an electrode
20 in accordance with Clark,” but nothing more. Id. (quoting Tschupp 54).
Appellants assert that Tschupp teaches that, when employing the Clark
electrode, the light emitting diode 2 can be dispensed with. Id.
Appellants disagree with the Examiner’s finding that the
photodetector and the Clark electrode of Tschupp are known equivalents;
Appellants argue that such an equivalence is taught neither in Gade nor
Tschupp. App. Br. 23. Appellants allege that the Examiner is therefore
impermissibly broadening the prior art, especially considering that Tschupp
expressly indicates that the Clark electrode does not need a light source, as
does a photodetector. Id. Therefore, argue Appellants, Tschupp teaches that
the two are different. Id.
Similarly, Appellants argue, Gade teaches that a Clark electrode
“directly senses the surface oxygen tension (pCE) in the underlying brain and
produces an electrical signal proportionally.” App. Br. 23 (quoting Gade
col. 4,11. 58—66). Appellants assert there is no teaching that a photodetector
could replace a Clark electrode as an equivalent device. Id. Rather,
Appellants assert, a person of ordinary skill in the art would understand that
a photodetector and a Clark electrode function according to different
principles. Id.
As we have explained supra, Gade expressly teaches the use of
multiple types of sensors in the apertures of the blade, including sensors
requiring the use of optical fibers (i.e., “optical fiber sensors”), such as the
photodetectors taught by Tschupp, which are used for measuring oxygen
saturation, as are the sensors taught by Gade. We therefore agree with the
Examiner’s conclusion that it would be obvious to a person of ordinary skill
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in the art to incorporate the photodetector-based oxygen saturation sensory
taught by Tschupp for the sensors detecting: “a parameter indicative of
cellular metabolism, tissue blood flow, or tissue oxygenation” as taught by
Gade. See Gade col. 2,11. 46-49. We consequently affirm the Examiner’s
rejection of claims 36 and 37.
DECISION
The Examiner’s rejection of claims 1—10, 12—19, and 27-44 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claim 11 as unpatentable under 35 U.S.C.
§ 103(a) is reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claim 11.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record....
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
32