Ex Parte Weizman et al

Patent Trial and Appeal Board

Apr 15, 2013

11404736 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/404,736 04/14/2006 Patrick A. Weizman END-5622USNP 1845
21884 7590 04/15/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
04/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PATRICK A. WEIZMAN, STEPHEN W. EVANS,
JOHN P. MEASAMER, and ANIL K. NALAGATLA
__________

Appeal 2012-001128
Application 11/404,736
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stamped
jaw for use in an endoscopic device, and an endoscopic device. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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Application 11/404,736

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Statement of the Case
Background
“[T]he present invention includes a stamped jaw for use in an
endoscopic device. The jaw comprises a cup having opposite side walls
extending longitudinally along the jaw, and an end wall extending between
the side walls. The opposite side walls have a first tooth profile and the end
wall has a second tooth profile different from the first tooth profile” (Spec.
2).
The Claims
Claims 1, 3, 7-9, 11-14, and 16 are on appeal. Claim 1 is
representative and reads as follows:
1. A stamped jaw for use in an endoscopic device, said jaw
comprising:
a cup having opposite side walls extending longitudinally
along the jaw, and an end wall extending between said side
walls, wherein the opposite side walls each have a first tooth
profile with at least one tooth and the end wall has a second
tooth profile different from the first tooth profile and said
second tooth profile has at least one tooth having a shape
different from the at least one tooth of said first tooth profile,
wherein said first tooth profile comprises a saw tooth shape and
said second tooth profile comprises a curved sinusoidal shape.

The issue
The Examiner rejected claims 1, 3, 7-9, 11-14, and 16 under 35
U.S.C. § 103(a) as obvious over Bales,1 Lippitt,2 and Ryan3 (Ans. 4-6).

1 Bales et al., US 2006/0184198 A1, filed Jan. 30, 2006, published
Aug. 17, 2006.
2 Lippitt et al., US 2001/0007057 A1, published Jul. 5, 2001.
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The Examiner finds that Bales teaches:
an endoscopic device including an elongate member (2), a
pair of stamped jaws, each jaw including a cup having
opposite longitudinal side walls each having a first saw-
tooth-shaped tooth profile including a plurality of generally
uniform and repeating teeth (1233) and an end wall having a
second tooth profile different from the first tooth profile and
including at least one tooth (1231) having a different shape
from the at least one tooth of the first tooth profile (see
figures 11-18), and an actuator member (3) for moving the
jaws between open and closed positions (see at least figures
6 and 27).

(Ans. 4-5). The Examiner finds that Bales does not teach a sinusoidal profile
but that Lippitt teaches “that saw-tooth and sinusoidal profiles are equivalent
structures” (Ans. 5). The Examiner finds that Ryan teaches “that a curved-
tipped tooth profile and a flat-tipped tooth profile are equivalent structures
known in the art” (Ans. 5).
The Examiner finds it obvious that “because these two tooth profile
configurations were art-recognized equivalents at the time the invention was
made, one of ordinary skill in the art would have found it obvious to
substitute a curved tooth profile for the truncated tooth profile in the
modified device of Bales et al in view of Lippitt et al with predictable result”
(Ans. 5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Bales, Lippitt, and Ryan
render claim 1 obvious?

3 Ryan, T., US 6,267,761 B1, issued Jul. 31, 2001.
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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Bales teaches that “the end effector is shown as a biopsy
forceps jaw in the drawings, the same tang configuration could be used for
many different kinds of end effectors such as: graspers, dissectors, clamps . .
. there is provided, in accordance with the invention, an end effector jaw for
an endoscopic surgical instrument, including a tang portion, a hollow body
portion” (Bales 2 ¶¶ 0027-0028).
2. Figure 6 of Bales is reproduced below:

“FIG. 6 is a fragmentary, perspective view of a distal end of an end effector
of the surgical instrument according to the invention with a second
embodiment of a jaw assembly with the jaws in an opened position” (Bales 4
¶ 0074).
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3. Bales teaches that a “significant different feature of the one-
piece jaw 100 lies in the teeth 123. The distal-most teeth 1231 are larger than
the other teeth 1233” (Bales 8 ¶ 0175).
4. Figure 14 of Bales is reproduced below:

“FIG. 14 is an enlarged, fragmentary, cross-sectional view of the distal
portion of the jaw” (Bales 4 ¶ 0082).
5. Lippitt teaches that a “medical instrument structure 18 also
includes a biopsy taking portion 30 at its distal end extending outwardly of
the tubular portion 20. As shown, the outer biopsy taking portion 30 is cut
along a saw tooth shaped line and then bent outwardly to form spaced side
and end biopsy taking surfaces 26” (Lippitt 2 ¶ 0019).
6. Figure 1 of Lippitt is reproduced below:

“FIG. 1 is a fragmentary side elevational view of a medical device
embodying the principles of the present invention, showing the movable
medical instrument assembly at the distal end thereof in a fully retracted
condition” (Lippitt 1 ¶ 0006).
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7. Figure 8 of Lippitt is reproduced below:

“FIG. 8 is a fragmentary side elevational view of another form of medical
device” (Lippitt 2 ¶ 0013).
8. Lippitt teaches that the “movable medical instrument assembly
14 is in the form of an alligator-type gripping and releasing mechanism
which includes two cooperating medical instrument structures, generally
indicated at 118. The medical instrument structures 118, as shown in this
embodiment, constitutes a pair of cooperating alligator jaw members”
(Lippitt 3 ¶ 0032).
9. Lippitt teaches that the “medical instrument includes a gripping
portion 124 extending outwardly of the tubular portion 120. As shown, the
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outer gripping portion is cut along a blunt sinusoidal line and then bent
outwardly to form spaced side and end grippers 126” (Lippitt 4 ¶ 0032).
10. Lippitt teaches that the “alligator jaw members 118 are moved
in the same fashion as the biopsy taking jaw members 18” (Lippitt 4 ¶
0035).
11. Figures 6 and 8 of Ryan are reproduced below:

“FIG. 6 is an enlarged top view of the part and the end effector with
partially mating complimentary sure that nest with rib and slot conjugating
jaws . . . FIG. 8 is an enlarged top view of the part and the end effector with
partially mating complimentary surface that nest with a pedistaled male and
a flush female wherein both are U shaped conjugating jaws” (Ryan, col. 5, ll.
8-19).
12. Ryan teaches that the “partial mating complimentary surfaces
33 and 34 in FIG. 8 are curvelinear for providing more tissue contacting
area than flat surfaces of the same width would” (Ryan, col. 7, ll. 15-18).
13. Ryan teaches that any “complimentary mating curvelinear jaws
even ‘S’ shaped or those shown in FIG. 1 could be arranged to provide more
surface area for contact than the flat surfaces defined by the cords there
across” (Ryan, col. 7, ll. 37-40).
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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Bales teaches an endoscopic jaw comprising a side walls with a first
tooth profile which comprises a saw tooth shape and an end wall with a
second tooth profile that differs in shape from the first tooth profile (FF 1-4).
Lippitt teaches alligator jaw members (FF 8) where “the outer gripping
portion is cut along a blunt sinusoidal line and then bent outwardly to form
spaced side and end grippers 126” (Lippitt 4 ¶ 0032; FF 9).
While neither Bales not Lippitt clearly teach a curve for the sinusoidal
tooth profile, Ryan teaches that the “partial mating complimentary surfaces
33 and 34 in FIG. 8 are curvelinear for providing more tissue contacting
area than flat surfaces of the same width would” (Ryan, col. 7, ll. 15-18; FF
12). Ryan also teaches that any “complimentary mating curvelinear jaws
even ‘S’ shaped or those shown in FIG. 1 could be arranged to provide more
surface area for contact than the flat surfaces defined by the cords there
across” (Ryan, col. 7, ll. 37-40).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary skill would have reasonably modified
the teeth on the endoscopic device of Bales to incorporate a sinusoidal “S”
shaped and curved teeth because Ryan teaches that forming a curvelinear
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shape provides greater tissue contacting area, thereby providing a firmer grip
(FF 12-13). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “Lippitt has been cited as teaching a
sinusoidal tooth profile, but really discloses a ‘blunt sinusoidal’ as shown in
Fig. 8 and discussed at Col. 4 lines 3-5; this is not a curved sinusoidal shape
as required by the pending claims nor does it teach ‘a second tooth profile
different from the first tooth profile’” (App. Br. 10).
While Appellants correctly describe Lippitt, their argument fails to
address the combination of references in the Examiner’s rejection, which
includes Bales and Ryan. Ryan teaches an “S” shaped jaw, which is a
“curvelinear” shape and Ryan teaches the advantages of a curved tooth
include a larger contacting surface area for improved contact (FF 12-13). It
is the combination of references where Bales suggests the use of a second set
of teeth (FF 3) and Lippitt and Ryan suggest teeth which are curvelinear for
superior contact (FF 7-9, 12, 13). See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“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”.)
Appellants also contend that at “no point does Ryan disclose or
suggest the mating complimentary surfaces are curved sinusoidal shapes”
(App. Br. 13).
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We are not persuaded. Ryan teaches that any “complimentary mating
curvelinear jaws even ‘S’ shaped or those shown in FIG. 1 could be
arranged to provide more surface area for contact than the flat surfaces
defined by the cords there across” (Ryan, col. 7, ll. 37-40; FF 13). This is an
express teaching of “curvelinear jaws” which are curved, while the teaching
of “S” shaped jaws is an express teaching of a curved sinusoidal shape (FF
13).
Appellants contend that the “structures and methodologies
contemplated by Bales and Ryan are very different and ultimately there is no
proper rationale for the combination. The mere fact that structure exi[s]ts
does not make it obvious to combine structural elements” (App. Br. 16).
We are not persuaded. The test for non-analogous art is first whether
the art is within the field of the inventor’s endeavor and, if not, whether it is
“reasonably pertinent to the particular problem with which the inventor was
involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field” of
endeavor, it logically would have commended itself to an inventor’s
attention in considering his problem “because of the matter with which it
deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Both Ryan and Bales are concerned with uses where an endoscopic
type tool is used to hold tissue, whether for biopsy, dissecting, grasping or
clamping as in Bales (FF 1) or for applying energy to curvelinear “S” shaped
jaws to join tissue as in Ryan (FF 13). In both cases, these are surgical end
effectors designed to, in part, hold tissue and the shape of the teeth and jaws
on the ends are determinative of whether, and how well, the devices will be
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able to hold tissue for further actions. Ryan provides a specific reason to
select curvelinear “S” shaped jaws, which is for increased contact area (FF
12-13) which would have been directly applicable to Bales, who was
interested in clamping and holding tissue (FF 1).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Bales,
Lippitt, and Ryan render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Bales, Lippitt, and Ryan. Pursuant to 37 C.F.R. §
41.37(c)(1), we also affirm the rejection of claims 3, 7-9, 11-14, and 16, as
these claims were not argued separately.

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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