David C. Hacker et al.

Patent Trials and Appeals Board

Oct 18, 2019

13455760 - (D) (P.T.A.B. Oct. 18, 2019)

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.
13/455,760 04/25/2012 David C. Hacker M192.467.101/
C00001471.US
9381
63496 7590 10/18/2019
DICKE, BILLIG & CZAJA, PLLC
ATTN: MDT SURGICAL TECHNOLOGIES MATTERS
FIFTH STREET TOWERS, SUITE 2250
100 SOUTH FIFTH STREET
MINNEAPOLIS, MN 55402
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
DBCLAW-Docket@dbclaw.com
USPTO.PATENTS@dbclaw.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. HACKER, WENJENG LI, and
KEVIN LEE MCFARLIN
____________

Appeal 2018-001234
Application 13/455,760
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19 in this application. The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b). A hearing was held on
September 10, 2019. See Transcript (entered Oct. 7, 2019) (“Tr.”).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Medtronic
Xomed, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the claimed subject matter on appeal, and it recites:
1. A stimulation probe, comprising:
a proximal end connector, wherein the proximal end
connector is electrically conductive;
a flexible wire coupled to the proximal end connector at a
first end of the wire, wherein the wire is electrically conductive;
a handle including a proximal end coupled to a second end
of the wire, the handle including a distal end opposite the
proximal end, and the handle including a grasping portion
configured to be grasped by an instrument; and
a needle extending from the distal end of the handle and
terminating at a conductive tip, wherein a length of the handle
and the needle is greater than 0.0 centimeters and less than
3.0 centimeters, as measured from the proximal end of the handle
to the conductive tip,
wherein the needle and the handle are configured to be
laparoscopically introducible into a laparoscopic surgical site.
Appeal Br. 24 (Claims App.).
REJECTIONS ON APPEAL
Claims 1, 2, and 15 are rejected under 35 U.S.C. § 112, first
paragraph,2 for lack of written description.
Claims 1, 2, and 15 are rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.

2 This application was filed on April 25, 2012, before the AIA amendments
to § 112 took effect on September 16, 2012. See Leahy-Smith America
Invents Act (“the AIA”), Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 297
(2011); MPEP § 2161(I).
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Claims 1–33 and 5–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fagin (US 2008/0281313 A1, published Nov. 13, 2008),
Utley (US 6,139,545, issued Oct. 31, 2000), and Richmond
(US 2001/0010010 A1, published July 26, 2001).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fagin, Utley, Richmond, and Regan (US 8,137,285 B1, issued Mar. 20,
2012).
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fagin, Utley, Richmond, and Prass (US 6,292,701 B1,
issued Sept. 18, 2001).
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fagin, Utley, Richmond, and Sterrantino (US 2006/0025702 A1, published
Feb. 2, 2006).
Claims 13, 14, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee (US 2004/0193146 A1, published Sept. 30, 2004),
Fagin, and Utley.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Fagin, Utley, and Richmond.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Fagin, Utley, and Regan.

3 The Examiner’s summary statement for this rejection does not include
claim 2 (Final Act. 6), but the underlying analysis does (id. at 7).
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OPINION
A. Written Description (Claims 1, 2, and 15)
The Examiner rejects claim 1, 2, and 15 as lacking written description
in reciting a length of the handle and needle “is greater than 0.0 centimeters
and less than 3.0 centimeters” (claim 1) or less than 2.0 centimeters
(claims 2 and 15). Final Act. 4–5 (emphasis added). The Examiner
acknowledges the Specification’s disclosure that the recited length “in one
embodiment, is less than 3.0 centimeters (cm) and in further embodiments is
less than 2.5 cm and less than 2.0 cm.” Id. at 4 (quoting Spec. ¶ 19).
Despite this disclosure, the Examiner determines Appellant’s Specification
“does not exactly provide support for an infinitesimally small length.” Id.
at 4–5.
Appellant argues “one [of] ordinary skill in the art would not
reasonably read the claim[s] as covering” an infinitesimally small length.
Appeal Br. 7 (emphasis by Appellant). Appellant contends this is because
the Specification indicates the claimed handle must be “long enough to be
grasped by an instrument.” Id. at 8. Appellant asserts “[s]upport for the
claimed features” as interpreted by Appellant is found in the Specification at
paragraphs 16, 17, and 19–22, and in Figure 2. Id.; Reply Br. 2, 4.
The Examiner’s Answer maintains that Appellant’s Specification
“gives no clear indication of the specific sizing of the device” and “gives no
clear indication on exactly how small the device can be.” Ans. 11.
The test for sufficiency of a written description under 35 U.S.C. § 112
¶ 1 is whether an application’s disclosure “reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
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(Fed. Cir. 2010) (en banc). In determining what “the claimed subject
matter” is, we apply the broadest reasonable interpretation of the claim that
is consistent with Appellant’s Specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We then perform “an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art,” to determine whether it
demonstrates possession of the claimed subject matter. Ariad, 598 F.3d
at 1351.
Appellant’s Specification discloses that the combined length of the
handle and the needle may be less than 3.0 centimeters in one embodiment,
and less than 2.0 centimeters in another embodiment. Spec. ¶ 19.
Therefore, Appellant’s Specification demonstrates possession of the length
being greater than 0.0 centimeters, and less than 3.0 centimeters or less than
2.0 centimeters, as recited in the claims at issue here. A person of ordinary
skill in the art would not reasonably construe the claims to encompass a
negative length or a zero length in this context,4 because it makes no sense
for physical structures such as a handle and a needle to have a negative
length or a zero length. Therefore, the Specification demonstrates
possession of the length being “greater than 0.0 centimeters,” as claimed.
The claim interpretation underpinning the rejection, that the claim
encompasses an infinitesimally small length, is unreasonably broad.
“[U]nder the broadest reasonable [claim] interpretation, the Board’s

4 The Examiner applied this construction in a previous Office Action. See
Reply Br. 5; Non-Final Office Action (dated Dec. 7, 2016), 2–3 (considering
previous version of claim 1, reciting “a length of the handle and the needle is
less than 3.0 centimeters,” and concluding “it is unclear how the device can
have a zero centimeter length or a negative centimeter length”).
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construction . . . ‘must be consistent with the one that those skilled in the art
would reach.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015) (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999)). Here, a person of ordinary skill in the art would understand that
both of the handle and the needle need to have some minimum, not
infinitesimally small, length in order to function as described in Appellant’s
Specification. The handle must be long enough to be grasped by an
instrument, such as a pair of jaws. See claim 1 (handle includes “a grasping
portion configured to be grasped by an instrument”); Spec. ¶¶ 17, 19
(handle 72 is “sized to be grasped by the jaws 66, 68”). The needle must be
big enough to deliver electrical energy to tissue sites. See claim 1 (needle
“terminat[es] at a conductive tip”); Spec. ¶¶ 17–19, 21 (needle 74 terminates
at conductive tip 76 to deliver electrical energy to tissue site). Thus, the
combined length of the handle and the needle must also not be
infinitesimally small. The unreasonableness of the Examiner’s contrary
claim interpretation is demonstrated by the necessary consequence that, if
the Examiner’s interpretation were accepted, it would effectively prevent
any patent applicant from claiming a maximum physical dimension of a part
of a claimed invention, without also specifying a minimum.
For the foregoing reasons, we do not sustain the rejection of claims 1,
2, and 15 for lack of written description.
B. Enablement (Claims 1, 2, and 15)
The Examiner rejects claim 1, 2, and 15 as lacking enablement in
reciting a length of the handle and needle “is greater than 0.0 centimeters
and less than 3.0 centimeters” (claim 1), or less than 2.0 centimeters
(claims 2 and 15). Final Act. 5 (emphasis added). The Examiner
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determines: “After review of the specification it is unclear how the device
can have an infinitesimally small centimeter length,” and “[i]t would not be
clear to one of ordinary skill in the art to be able to create a device with such
an infinitesimally small length based on the disclosure.” Id. Thus, in the
Examiner’s view, the claims are “not enabled for all possible claimed
lengths.” Id.
For the reasons provided above concerning the written description
rejection, we determine the claim interpretation underpinning the
enablement rejection is unreasonably broad. Further, “[o]pen-ended claims”
lacking an upper limit “may be supported if there is an inherent, albeit not
precisely known, upper limit and the specification enables one of skill in the
art to approach that limit.” Scripps Clinic & Research Found. v. Genetech,
Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991) (citing In re Fisher, 427 F.2d
833, 839 (CCPA 1970)). This case presents a similar situation, albeit
wherein the unknown limit is a lower limit (not an upper limit) to the
combined length of the handle and the needle. The Examiner has not
established that a person of ordinary skill in the art would be unable to
approach the requisite minimum length to perform as intended. See, e.g.,
In re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988) (setting forth several
factors to consider as part of enablement inquiry). Thus, we do not sustain
the rejection of claims 1, 2, and 15 for lack of enablement.
C. Obviousness over Fagin, Utley, and Richmond
(Claims 1–3 and 5–9)
Whether Utley is Analogous Art
Appellant raises the threshold issue of whether Utley is analogous art.
See Appeal Br. 14–16. Only “analogous” prior art references may be used to
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support an obviousness determination. In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A
prior art reference is analogous to an application (1) if it is from the same
field of endeavor as the inventor’s, regardless of the problem addressed, or
(2) if the reference is not within the field of the inventor’s endeavor, it is
nonetheless reasonably pertinent to the particular problem with which the
inventor is involved. Id. (citations omitted). A reference is reasonably
pertinent if it is one that, because of the matter with which it deals, would
have logically commended itself to an inventor’s attention in considering the
invention as a whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379–80 (Fed. Cir. 2007).
Here, the Examiner defines the inventors’ field of endeavor as
“devices for stimulating a nerve or neural pathway.” Final Act. 3 (citing
“Background of Invention of Applicant’s Disclosure”); Ans. 13 (citing
claim 1 (preamble); Spec. ¶ 3). The Examiner finds Utley falls within the
same field of endeavor. Final Act. 3–4 (citing Utley, Abstract); Ans. 13–14
(citing Utley, 7:67–8:2).
Appellant responds that the inventors’ field of endeavor “is a
stimulating probe used to deliver stimulation signals to a tissue site in order
to locate nerves for robotic and laparoscopic surgery for evaluation and
preservation of the electro-physical function during procedures where there
exists a high probability of damage to tissues.” Appeal Br. 14 (citing Spec.
¶¶ 2, 10). Appellant characterizes Utley’s field of endeavor as being
different, namely: “systems and methods for treating neuromuscular
hyperfunction or cosmetic conditions in the human body,” more particularly
“systems and methods for treating neuromuscular hyperfunction or cosmetic
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conditions affecting the face and neck, as evidenced by either involuntary
contraction of facial or neck muscles (dystonias) or by the appearance of
lines and wrinkles in the face or neck, or both.” Id. at 14–15 (citing Utley,
1:4–12).
We conclude Appellant’s characterization of the field of endeavor is
overly narrow. Appellant’s independent claims are directed principally to a
“stimulation probe.” See Appeal Br. 24 (claim 1), 25–26 (claim 13).
Appellant’s Specification indicates the stimulation probe stimulates tissue,
such as nerves or muscles, to perform “[e]voked potential (EP) monitoring”
which “is useful for a multitude of different surgical procedures or
evaluations that involve or relate to nerve conduction.” Spec. ¶¶ 1–2
(emphasis added). Appellant’s Specification indicates one example of such
an evaluation is to “assist in preservation of the intended electrophysical
[tissue] function during procedures where there exists a high probability of
damage to these tissues,” by laparoscopically probing tissues “in order to
locate nerves” to prevent damage to the nerves during a surgical operation.
Id. ¶¶ 2, 9–12, 14, 16. Appellant’s attempt to limit the field of endeavor to
one preferred embodiment of the invention is unavailing. We conclude the
field of endeavor, as reflected in Appellant’s Specification, is devices for
stimulating nerves.
Utley falls within that field of endeavor. Utley discloses systems and
methods for applying stimulant energy “to stimulate targeted motor nerve
tissue prior to ablation” of the motor nerve tissue. Utley, Abstract. More
particularly, Utley describes targeted nerve detection module 50 which
determines “the presence (or absence) of the targeted nerve tissue” in
region 34 between electrodes 32A and 32B, so that a physician may “best
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target the ablation energy to the desired nerve region.” Id. at Figs. 3–4,
7:37–48.
Moreover, even applying Appellant’s more narrow characterization of
the field of endeavor, Utley still is reasonably pertinent to the particular
problem with which the inventors are involved. That problem is to preserve
the intended electrophysical functioning of non-targeted tissue during a
surgical operation, via a laparoscopic procedure. Spec. ¶¶ 2, 9–12, 14, 16;
Appeal Br. 15–16, 17–18. Appellant’s argument in this regard differentiates
between Appellant’s ultimate goal of selectively preserving nerve function,
and Utley’s ultimate goal of selectively eliminating nerve function via
ablation. See Appeal Br. 15–16. Appellant’s argument overlooks Utley’s
disclosure that nerves are selected for ablation by first electrically
stimulating several tissues of interest in order to identify particular nerves
for ablation, without ablating the tissues, so that the ablation may be applied
only to selected nerves. See Utley, 7:36–8:47. A person of ordinary skill in
the art would understand this is done to protect the tissues that do not need to
be ablated to treat the patient’s neuromuscular dysfunction or displeasing
appearance. See id. at 5:1–15, 8:44–46 (“In this way, the module 50 aids the
physician in finding and confining the targeted nerve within the zone 34
targeted for ablation.”). Thus, when read as a whole, Utley is reasonably
pertinent to the problem addressed by Appellant.
We conclude Utley is analogous art to Appellant’s application.
Whether Richmond is Analogous Art
Appellant raises the threshold issue of whether Richmond is
analogous art. See Appeal Br. 16–18. The Examiner finds Richmond falls
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within the inventors’ field of endeavor. Final Act. 3–4 (citing Richmond,
Abstract); Ans. 14 (citing Richmond ¶ 2).
We agree with the Examiner. As discussed above, the inventors’ field
of endeavor is devices for stimulating nerves. Richmond falls within that
field of endeavor. Richmond discloses implanting electrodes “at strategic
locations within a patient . . . so as to stimulate muscle and nerve tissue in a
constructive manner which helps open blocked airways,” to treat sleep
apnea. Richmond, Abstract, ¶ 2. Appellant’s assertion that the field of
invention is limited to using a device “to evaluate and preserve nerves”
(Appeal Br. 17) is unduly narrow, for reasons provided above.
Moreover, even applying Appellant’s more narrow characterization of
the field of endeavor, Richmond still is reasonably pertinent to the particular
problem with which the inventors are involved. As discussed above, that
problem is to preserve the intended electrophysical functioning of
non-targeted tissue during a surgical operation, via a laparoscopic procedure.
Richmond similarly discloses implanting “very small electronic devices”
such as electrode stimulators for stimulating muscle and nerve tissue, “with
minimal surgical intervention.” Richmond ¶¶ 4, 10, 12. For example, the
stimulators may be implanted through the lumen of a laparoscopic
instrument. Id. ¶¶ 13–14, 39. Appellant’s argument in this regard,
differentiating between Appellant’s ultimate goal of preserving nerve
function and Richmond’s ultimate goal of stimulating muscles to open an
obstructed airway, overlooks the common laparoscopic insertion of the
electrodes. See Appeal Br. 17–18.
We conclude Richmond is analogous art to Appellant’s application.
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Claim 1
In rejecting claim 1 as having been obvious, the Examiner finds Fagin
discloses a stimulation probe (i.e., probe 20) comprising an electrically
conductive proximal end connector, a flexible and electrically conductive
wire coupled to the proximal end connector at a first end of the wire, and a
handle including a proximal end coupled to a second end of the wire. See
Final Act. 6. Appellant’s only challenge to these findings is whether Fagin’s
probe 20 includes a “handle.” See Appeal Br. 10–12; see also 37 C.F.R.
§ 41.37(c)(1)(iv) (arguments not included in Appeal Brief are waived).
The Examiner finds Fagin’s probe 20 comprises a handle including a
grasping portion configured to be grasped by an instrument. Final Act. 6
(citing “the non-patterned section of element 20 shown in Figure 1” and
Fagin ¶¶ 4, 22). To illustrate this finding, the Examiner annotates an excerpt
of Fagin’s Figure 1, focusing on Fagin’s probe 20 as follows:

Ans. 11. These annotations reflect where the Examiner finds Fagin’s
probe 20 has a “Handle” and a “conductive tip ‘needle’” extending from the
handle. Id. The Examiner finds Fagin’s Figure 1 shows probe 20 “as having
two parts,” a handle (non-patterned part) and a needle (patterned part), citing
a dictionary definition of the term “part” as meaning “one of several or many
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equal units of which something is composed or into which it is divisible.”
Final Act. 2; Ans. 11–12.
Appellant disputes the Examiner’s finding that Fagin discloses a
handle. See Appeal Br. 10–12; Reply Br. 6–7; Tr. 4:10–6:12, 8:7–15.
Appellant contends “Fagin simply discloses exploratory probe 20 as a single
element, a ‘probe body’, not as including the features of separate elements of
a ‘needle’ and a ‘handle’ as claimed.” Appeal Br. 10–11. Appellant
contends “the definition of a ‘part’ is irrelevant to pending claim 1, which
does not recite a ‘part’” but rather recites a handle and a needle. Id. at 11.
Appellant points out Fagin identifies element 10 in Figure 1 as a “handle”
comprising divisible parts as extensions 12 with catheters 14, and does not
describe probe 20 as including a “handle” and a “needle” or otherwise as
comprising divisible parts. Id. (citing Fagin ¶¶ 9, 18–19, 21–22). Thus, in
Appellant’s view, “the Examiner impermissively relies on hindsight,” rather
than Fagin’s disclosure, “to randomly divide probe 20 of Fagin into a
‘needle’ unit and a ‘handle’ unit of part, probe 20.” Id. at 12; Reply Br. 7.
The Examiner answers that claim 1 “do[es] not provide any structure
to the term handle,” which a person of ordinary skill “would realize . . . is
anything that is capable of being grasped, which the non-patterned section of
[Fagin’s probe 20] is.” Ans. 12. According to the Examiner, Appellant’s
argument tries “to impart some further structure to the claims without having
actually claimed such structure.” Id. In the Examiner’s view, “[w]hether
Fagin discloses the probe [20] as a unitary body is irrelevant as this does not
prevent one part of the probe being considered the handle and one part the
conductive tip or ‘needle,’” and “[d]rawings and pictures can anticipate
claims if they clearly show the structure which is claimed.” Id. (citing
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MPEP § 2125(I); In re Mraz, 455 F.2d 1069 (CCPA 1972)). Further, the
Examiner determines Fagin’s express description of element 10 as a
“handle” “does not exclude another element [such as the non-patterned
portion of probe 20] from being interpreted as being a ‘handle.’” Final
Act. 2; Ans. 12.
We conclude a preponderance of the evidence supports the
Examiner’s finding that Fagin’s probe 20 comprises a handle. Albeit highly
schematic in nature, Figure 1 of Fagin illustrates probe 20 as including a
non-patterned portion disposed proximal to a patterned distal tip. When
pressed during oral argument to identify a structural difference between the
claim term “handle” and the non-patterned structure shown in Fagin’s
Figure 1, Appellant’s counsel was unable to do so. See Tr. 4:10–6:12, 8:16–
10:15. Indeed, a broadest reasonable construction of the claim term
“handle,” consistent with Appellant’s Specification, is that a handle is a
structure capable of being grasped by an instrument so that the probe can be
placed near a tissue of interest for stimulation by the probe. See Spec.
¶¶ 16–20, Fig. 2; Am. Acad., 367 F.3d at 1364 (during examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the Specification). The non-patterned portion
of Fagin’s probe 20 is illustrated in Figure 1 to have such a structure. See
also Fagin ¶¶ 9, 18 (probe 20 is placed near a tissue of interest for
stimulation by the probe).
Next, it is not entirely clear whether the Examiner finds Fagin’s
probe 20 includes a “needle” extending from the handle. There is some
indication that the Examiner relies on Utley, and not Fagin, as disclosing a
needle. See Final Act. 6–7 (“Fagin is silent on a needle . . . ,” “Utley teaches
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a needle . . . ,” and “Fagin is being used to teach a stimulation probe (20) for
laparoscopic procedures modified with the design of Utley to replace the
patterned tip of element 20 of Fagin with the needle electrode (32) taught by
Utley”). There is also some indication that the Examiner relies on Fagin as
disclosing a needle. See id. at 2 (“one would clearly be able to define the
probe 20 of Fagin as having two parts . . . one part is to be considered the
‘handle’ and one part the ‘needle’”), 6 (“Fagin teaches wherein the needle
and the handle are configured to be laparoscopically introducible . . . ”);
Ans. 11–12.
However, during oral argument, Appellant conceded Fagin’s probe 20
comprises a needle. See Tr. 6:8–7:10 (“the Examiner was able to find a
reference with Fagin in this case that showed a needle,” and “I believe that
Fagin and Utley both teach needles”). Thus, we need not consider whether
there is any error in the Examiner’s determination that it would have been
obvious to modify the patterned portion of Fagin’s probe 20 to include a
needle, in light of Utley’s needle electrodes 32A, 32B, because Fagin
already has a needle. See Final Act. 2–3, 6–7; Appeal Br. 12–14
(arguments C & D); Ans. 12–13.
The Examiner finally determines “Fagin is silent on . . . a length of the
handle and the needle is greater than 0.0 centimeters and less than 3.0
centimeters.” Final Act. 6. The Examiner cites Richmond as disclosing
“laparoscopic devices with a length less than 3 cm,” and notes Fagin’s
probe 20 is similarly implanted laparoscopically. Id. (citing Richmond ¶ 39;
Fagin ¶¶ 4, 22). Based on that similarity, the Examiner determines it would
have been obvious to form probe 20 (that is, Fagin’s combined handle and
needle) to have a length of less than 3.0 centimeters, “because it allows for
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easy laparoscopic procedures thereby allowing for noninvasive procedures.”
Id. at 3, 6–7.
Appellant objects on the basis that Richmond’s laparoscopically
implanted device is a microstimulator, not a handle and a needle, so
Richmond does not disclose a handle and a needle having a combined length
falling within the claimed range. Appeal Br. 16. According to Appellant,
“the length of the housing of a microstimulator simply has no relevance to
the length of a handle and a needle of a stimulation probe.” Id. (emphasis
omitted). Appellant concludes, therefore, that the cited prior art does not
“reasonably make obvious the features of” claim 1. Id.
The Examiner replies that Appellant’s argument is not persuasive,
because “one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.”
Ans. 14 (citing In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413 (CCPA 1981)). We agree. As discussed above, a
preponderance of the evidence supports the Examiner’s finding that Fagin’s
probe 20 includes a handle, and Appellant has conceded Fagin’s probe 20
also includes a needle. Further, Fagin discloses that probe 20 is inserted into
the patient’s body via “laparoscopic surgery” in order to deliver
predetermined electrical signals. Fagin ¶¶ 2, 4, 7–8, 18. Richmond,
meanwhile, discloses that an electric stimulator that is inserted into the
patient’s body via a “laparoscopic instrument,” “in a non-invasive manner,”
may have “a length no greater than about 10–12 mm.” Richmond ¶ 39. The
combination of Fagin with Richmond, therefore, establishes the obviousness
of forming Fagin’s probe 20 to have a length of less than 3.0 centimeters
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(i.e., 30 mm), as claimed, so that it may be laparoscopically introduced in a
non-invasive manner.
For the foregoing reasons, we sustain the rejection of claim 1 as
having been obvious over Fagin, Utley, and Richmond.
Claims 2, 3, and 5–9
Appellant does not present further argument against the rejection of
claims 2, 3, and 5–9 as having been obvious over Fagin, Utley, and
Richmond. See, e.g., Appeal Br. 18. For the reasons provided above, we
sustain the obviousness rejection of these claims. See 37 C.F.R.
§ 41.37(c)(1)(iv).
D. Obviousness over Fagin, Utley, Richmond, and
Either Regan, Prass, or Sterrantino
(Claims 4, 10, 11, and 12)
Appellant does not present further argument against the rejections of
claims 4, 10, 11, and 12 as having been obvious over Fagin, Utley,
Richmond, and either Regan, Prass, or Sterrantino. Appeal Br. 18–19. For
the reasons provided above, we sustain these rejections. See 37 C.F.R.
§ 41.37(c)(1)(iv).
E. Obviousness over Lee, Fagin, and Utley
(Claims 13, 14, 16, 18, and 19)
Appellant’s arguments against the rejection of independent claim 13
are: (i) “the Examiner impermissively relies on hindsight to randomly divide
probe 20 of Fagin into a patterned ‘needle’ section and a non-patterned
‘handle’ section” (Appeal Br. 19–20); (ii) the Examiner errs in determining
it would have been obvious to modify the patterned portion of Fagin’s
probe 20 to include a needle, in light of Utley’s needle electrodes 32A, 32B
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(id. at 20); and (iii) Utley is non-analogous art (id. at 21–22). These
arguments have been addressed above. Further, Appellant does not present
any additional arguments against the obviousness rejections of claims 14,
16, 18, and 19. Id. at 22. Thus, for the reasons provided above, we sustain
the rejection of claims 13, 14, 16, 18, and 19 as having been obvious over
Lee, Fagin, and Utley.
F. Obviousness over Lee, Fagin, Utley, and
Either Richmond or Regan
(Claims 15 and 17)
Appellant does not present further argument against the rejections of
claims 15 and 17 as having been obvious over Lee, Fagin, Utley, and either
Richmond or Regan. Appeal Br. 22. For the reasons provided above, we
sustain these rejections. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s) / Basis Affirmed Reversed
1, 2, 15 112, ¶ 1 Written Description 1, 2, 15
1, 2, 15 112, ¶ 1 Enablement 1, 2, 15
1–3, 5–9 103 Fagin, Utley, Richmond 1–3, 5–9
4 103 Fagin, Utley, Richmond, Regan 4
10, 11 103 Fagin, Utley, Richmond, Prass 10, 11
12 103 Fagin, Utley, Richmond, Sterrantino 12
13, 14, 16,
18, 19
103 Lee, Fagin, Utley 13, 14, 16,
18, 19

15 103 Lee, Fagin, Utley, Richmond 15
17 103 Lee, Fagin, Utley, Regan 17
Overall
Outcome
1–19
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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)(iv).
AFFIRMED