Ex Parte Mark

Patent Trial and Appeal Board

Dec 31, 2018

13296745 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/296,745 11/15/2011
22045 7590 01/03/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Joseph L. Mark
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.
NIC00101PUS9 2147
EXAMINER
MCCROSKY, DAVID J
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH L. MARK 1
Appeal2018-002390
Application 13/296,745
Technology Center 3700
Before JEREMY M. PLENZLER, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-15, 17-19, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as Nico Corporation. Appeal
Br. 1
Appeal2018-002390
Application 13/296,745
ILLUSTRATIVE CLAIMS
Claims 1, 4, and 21 are independent claims. Claims 1 and 4 are
illustrative of the claimed subject matter and are reproduced below with
italics added to highlight certain disputed limitations:
1. A tissue removal device, comprising:
an outer cannula having an outer cannula lumen, a
proximal end, a distal end, and an outer cannula opening adjacent
the distal end, wherein the opening defines a cutting edge for
severing tissue;
an inner cannula disposed in the outer cannula lumen and
selectively reciprocable within the outer cannula lumen, the inner
cannula having an inner cannula lumen, a proximal end, an open
distal end, a hinge, an elongated, continuous relieved portion
whereby a portion of a side wall of the inner cannula is removed
to allow for bending of the inner cannula, and a cutting edge at
the distal end; wherein the relieved portion is positioned
proximal to the hinge and has a length extending axially along
the inner cannula that is greater than a length of the hinge, and
a seal in contact with the proximal end of the outer cannula
and disposed around the inner cannula;
wherein the inner cannula is configured to selectively
reciprocate within the outer cannula lumen between a proximal
position and a distal position.
4. A method of performing a neurosurgical procedure,
compnsmg:
providing a tissue removal device comprising:
an outer cannula having an outer cannula opening
adjacent the distal end, wherein there is an opening to
receive tissue and fluids,
an inner cannula disposed in the outer cannula and
selectively reciprocable within the outer cannula, the inner
cannula having a cutting edge at an open distal end to sever
tissue,
inserting the tissue removal device into a surgical site
proximate a target tissue associated with the patient's
neurological system;
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Appeal2018-002390
Application 13/296,745
manipulating tissue within the surgical site so as to move
the tissue from a first location or orientation to a second location
or orientation within the surgical site prior to initiating a cutting
operation of the tissue removal device by using the tissue
removal device without resecting tissue;
drawing tissue into the surgical device by applying
vacuum through the inner cannula; and
initiating the cutting operation of the tissue removal device
after manipulating tissue to the second location or orientation by
reciprocating the inner cannula between a proximal position and
a distal position after manipulating tissue to the second location
or orientation, such that when the inner cannula is in the proximal
position, the target tissue is received in the outer cannula
opening, and when the inner cannula is in the distal position, the
received target tissue is severed from surrounding tissue.
THE REJECTIONS
Claims 1, 2, and 21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Miller (US 5,782,849; issued July 21, 1998),
Hayafuji et al. (US 5,106,364; issued Apr. 21, 1992), and Escudero et al.
(US 9,31,263 B2; filed June 30, 2008).
Claims 4--7, 11-15, and 17-19 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable in view of Mark et al. (US 2001/0007944 Al;
published July 12, 2001) and Miller.
Claim 3 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Miller, Hayafuji, and Mark.
Claims 8-10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable in view of Mark, Miller, and Fisher (US 2005/0090765 Al;
published Apr. 28, 2005).
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Appeal2018-002390
Application 13/296,745
ANALYSIS
Independent Claims 1 and 21
Independent claims 1 and 21 recite a tissue removal device that
includes an inner cannula having, among other things, a hinge and "an
elongated continuous relieved portion whereby a portion of a side wall of the
inner cannula is removed to allow for bending of the inner cannula." In the
rejection of claims 1 and 21, the Examiner finds Miller teaches an inner
cannula having a hinge and Hayafuji teaches an elongated relieved portion
as claimed. Final Act. 3. The Examiner notes that Miller and Hayafuji do
not teach a "continuous" relieved portion, but the Examiner cites Escudero
as teaching a continuous relieved portion, stating that "Escudero teaches that
the length of the relieved portion is an obvious variation that can be
adjusted/optimized for the preferred angle of deflection." Final Act. 4.
Similarly, the Examiner states that such optimization would have been
obvious to a person of ordinary skill "with routine experimentation." Final
Act. 4.
Appellant argues, and we agree, that Escudero discloses a series of
slots 252, not an elongated continuous relieved portion as claimed. Appeal
Br. 7. Escudero's Figure 20B, copied below, depicts the structures cited by
the Examiner.
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Appeal2018-002390
Application 13/296,745
\D
-100
102 / 250 :
\ j \ \ I
I.
254
l
\
\
120
254
252 252 I 252 252 I
i i I I
(~- 253
/
\ \
·--?56 250
Fig. 20B
Escudero's Figure 20B depicts a catheter 120 with a "sweep frame 250
compris[ing] a tube structure having a plurality of serrations, slots, or semi-
circumferential openings 252." Escudero 28:1-3 (emphasis omitted).
The Examiner describes Escudero as disclosing "a plurality of
elongated, continuous relieved portions 252" where "the bottom portion of
the proximal-most relieved portion 252 (marked 256) has an axial length
greater than a hinge (e.g. the upper portion of distal most opening 252)."
Ans. 11. "In other words, the width of the relieved portion can be
inconsistent along its radial length and still meet the claim limitation." Id.
We disagree with the Examiner that Escudero' s series of "serrations,
slots, or semi-circumferential openings" (Escudero 28:1-3) fall within the
scope of the claimed "elongated continuous relieved portion" of the inner
cannula. Although Escudero describes its slots as weakenings that allow
deflections of the sweep frame, contrary to the Examiner's positions,
Escudero does not recognize its slots as an elongated relieved portion, the
length of which could be optimized through routine experimentation. Cf In
re Applied Materials, Inc., 692 F.3d 1289, 1294 (Fed. Cir. 2012) (explaining
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Appeal2018-002390
Application 13/296,745
that routine optimization is generally limited to instances in which the prior
art recognizes a result-effective variable).
Accordingly, we agree with Appellant that the Examiner erred in the
rejection of independent claims 1 and 21, as well as claims 2 and 3, which
depend from claim 1.
Independent Claim 4
The method of independent claim 4 includes the steps of
"manipulating tissue within the surgical site" and "drawing tissue into the
surgical device by applying vacuum through the inner cannula." The
Examiner finds that Mark discloses the "manipulating tissue" step and the
"drawing tissue" step, citing Mark's teachings regarding suction provided
through its cannula. Final Act. 7 (citing Mark ,r,r 54, 58-59, Fig. 5B); Ans.
14--15. According to the Examiner, Mark's teachings regarding vacuum
supplied from the cannula satisfy both the "manipulating tissue" step and the
"drawing tissue" step because Mark depicts drawing some tissue into the
cannula while some tissue remains outside the cannula, with the portion
remaining outside the cannula being "manipulated" while the suction
"draws" other portions of the tissue into the cannula. Ans. 14--15.
Appellant argues, and we agree, that claim 4 requires manipulating
tissue separate from the step of "drawing tissue into the surgical device by
applying vacuum through the inner cannula." Stated differently, in addition
to the act of "drawing tissue into the surgical device by applying vacuum
through the inner cannula," claim 4 requires an act of manipulating tissue,
separate from incidental movement of tissue that occurs during the act of
drawing tissue into the surgical device by applying vacuum.
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Application 13/296,745
By way of example, Appellant's Specification describes using the
outer cannula as a blunt dissector to move or manipulate tissue to position
the tissue for cutting or to scrape tissue from a structure. Spec. ,r 94. The
Specification additionally states that the outer cannula "may or may not use
vacuum to assist in manipulation of tissue," for example to pull tissue away
from critical structures. Spec. ,r 95. Although vacuum may be used in the
manipulating step, the plain language of claim 4 requires two separate steps,
and we agree with Appellant that the Examiner conflates the two steps by
citing the same disclosure in Mark of suction supplied to draw tissue into the
cannula. Accordingly, we agree with Appellant that the Examiner erred in
the rejection of independent claim 4, as well as in the rejections of claims 5-
15, and 17-19, each of which ultimately depends from claim 4.
DECISION
We reverse the Examiner's rejections of claims 1-15, 17-19, and 21.
REVERSED
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