Ex Parte Akahoshi

Patent Trial and Appeal Board

Nov 28, 2018

13008714 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/008,714 01/18/2011 Takayuki Akahoshi
32116 7590 11/30/2018
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
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.
ASI10951P00160US 9291
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKA YUKI AKAHOSHI
Appeal2017-009495
Application 13/008,714 1
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 4, 5, 13-17,
and 19-22 (Office Act. 2 1 ). 3 Examiner entered rejections under the written
description requirement of 35 U.S.C. § 112, first paragrah and 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies "Art, Limited" as the real party in interest (App. Br. 1 ).
2 Examiner's October 6, 2016 Non-Final Office Action.
3 Pending claims 2, 3, and 6-12 stand withdrawn from consideration (Office
Act. 1 ).
Appeal2017-009495
Application 13/008,714
STATEMENT OF THE CASE
Appellant's "disclosure relates to surgical instruments and surgical
techniques used in eye surgery and more particularly, to phacoemulsification
apparatus and methods for their use" (Spec. ,r 2). Claims 1 and 19 are
representative and reproduced below:
1. A phacoemulsification needle for emulsifying body tissue,
said needle configured to be attached to a phacoemulsification
handpiece configured to impart vibration to said needle, said
needle comprising:
a hollow needle body having a distal end and a proximal
end, said needle body having a passageway and a
longitudinally-extending central axis and configured to be
attachable to a handpiece;
a hollow needle tip formed at said distal end and having
an interior surface defining an opening communicating with
said hollow needle body passageway and an exterior surface,
said tip having a multiplicity of flat wall segments arranged to
cooperatively give a part of said tip a polygonal cross-sectional
shape greater in size than a cross-section of said needle body,
taken normal to said needle body central axis;
said tip having a central tip axis,
said tip axis and said needle body axis being substantially
parallel and offset one from the other;
each said flat tip wall segment terminating at a lip,
said tip wall segment lips defining a needle mouth,
at least one of said flat tip wall segments having a
thickness greater than another of said flat tip wall segments,
whereby said tissue is emulsified when said needle is vibrated
by a phacoemulsification handpiece.
(App. Br. 13.)
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19. A phacoenmlsification needle for emulsifying body tissue,
said needle configured to be attached to a phacoemulsification
handpiece imparting vibration to said needle, said needle
compnsmg:
a hollow needle body having a distal end and a proximal
end, said needle body having a passageway and a
longitudinally-extending central axis and attachable to a hand
piece;
a hollow needle tip formed of a multiplicity of flat wall
segments at said distal end and having an interior surface
defining an opening communicating with said hollow needle
body passageway;
said tip having a central tip axis substantially parallel to,
and offset from, said needle body axis;
each of said flat tip wall segments terminating at a lip,
said lips defining a needle mouth having a polygonal shape as
viewed along the central tip axis that is greater in size than the
needle body as viewed along the needle body central axis, a
first plurality of said flat tip wall segments each having a
thickness greater than another plurality of the flat tip wall
segments, whereby said tissue is emulsified when said needle is
vibrated.
(Id. at 17-18.)
Grounds of rejection before this Panel for review:
Claim 21 stands rejected under the written description requirement of
35 U.S.C. § 112, first paragraph.
Claims 1, 4, 5, 13-17, and 19-22 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Dimalanta4 and Dewey. 5
4 Dimalanta, US 2011/0112466 Al, published May 12, 2011.
5 Dewey, US 2006/0052758 Al, published Mar. 9, 2006.
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Application 13/008,714
Written Description:
Because Appellant does not dispute Examiner's rejection of claim 21
under the written description requirement of 35 U.S.C. § 112, first
paragraph, we summarily affirm this rejection.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Dimalanta relates "to phacoemulsification cutting tips" (Dimalanta
,r 1; see Office Act. 6).
FF 2. Dimalanta's Figure 2b is reproduced below:
:t~:- ·····'-.
··"· ·~--· rei · -,,.,
~-~' ), .. /a><
)o
............ ::. ... r·
·····--n(I
.:.::/! ..... ·
FU,, 2b
Dimalanta's FIG. 2b illustrates side and front views of a phacoemulsification
cutting tip within the scope of Dimalanta' s disclosure (see Dimalanta ,r 11 ).
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Application 13/008,714
FF 3. Dimalanta's Figure 2f is reproduced below:
2'20
F1G~ 2.f
Dimalanta's FIG. 2f illustrates that
the face of the tip 110 may include dimensions WI
approximately in a range of 0.027 to 0.05 inches; W2
approximately in a range of 0.027 to 0.05 inches; W3
approximately in a range of 0.01 to 0.025 inches; and inner
diameter (ID) approximately in a range of 0.01 to 0.045 inches.
Other dimensions and configurations are also contemplated.
(Dimalanta ,r 22 ( emphasis omitted).)
FF 4. Dimalanta's Figure 2g is reproduced below:
W4
FIG. 2g
Dimalanta's FIG. 2g illustrates that the face of Dimalanta's tip may include
dimensions:
Dimension W4[, which,] may be approximately in a range of
0.035 to 0.07 inches and ID may be approximately in a range of
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0.02 to 0.065 inches. In some embodiments, the axis of rotation
225 may be co-linear with a centerline of the aspiration lumen
215 such that the dominant point 220 is displaced further from
the axis of rotation 225 than any other point on the tip face.
(Id. ( emphasis omitted).)
FF 5. Dimalanta discloses that "[t]he end of cutting tip 110 may be in the
shape of an irregular polygon having a dominant point 220 (e.g., shaped
similar to a baseball home-base) and a section 215 that forms an aspiration
lumen" (Dimalanta ,r 20 ( emphasis omitted); see Office Act. 6-8).
FF 6. Dimalanta discloses:
The 'home-base' shape may include four points ... that are
approximately equidistant from the axis of rotation and one
dominant point 220 placed further from the axis of rotation 225
than any of the other points ... on the tip 110. In some
embodiments, the axis of rotation 225 may be co-linear with a
centerline of the cylindrical shaft 205. Other locations of the
axis of rotation 225 are also contemplated.
(Dimalanta ,r 21 ( emphasis omitted); see Office Act. 6-8.)
FF 7. Dimalanta discloses that
the base "home-base" shape of [the] tip may be modified by
adding or subtracting material/shapes from the shape. For
example, the "home-base" shape may have two rectangular
portions removed from the bottom portion of the tip. In some
embodiments, the four points ... may be fully rounded such
that the shape approaches a tear-drop shape ... [and] [o]ther
modifications are also contemplated.
(Dimalanta ,r 23.)
FF 8. Examiner finds that Dimalanta fails to disclose a
phacoemulsification cutting tip "wherein at least one said tip wall segment[]
[has] a thickness greater than the remaining of said tip wall segments,
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Application 13/008,714
whereby [] tissue is emulsified when [the] needle is vibrated" and relies on
Dewey to make up for this deficiency in Dimalanta (Office Act. 8).
FF 9. Dewey "relates to improved phacoemulsification needles used in
ophthalmic surgery" (Dewey ,r 3; see Office Act. 8).
FF 10. Dewey's Figure 22 is reproduced below:
Dewey's "FIG. 22 shows a perspective view of a phacoemulsification needle
having an asymmetric bore" (Dewey ,r 45 ( emphasis omitted); see Office
Act. 8). Dewey also suggests phacoemulsification tips that have a variety of
different shapes (see e.g., Dewey Figs. 6, 13, 43, and 45).
FF 11. Dewey's Figure 23 is reproduced below:
.e·. 2"!:l' r(!J. . .. .;,
Dewey's "FIG. 23 shows an end view of the needle shown in FIG. 22"
(Dewey ,r 46 ( emphasis omitted); see Office Act. 8).
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Dewey's "FIG. 26 shows a cutaway perspective view of a
phacoenmlsification needle having an asymmetric bore that extends only
partway through the needle" (Dewey ,r 49 ( emphasis omitted); see Office
Act. 8).
FF 13. Dewey illustrates in Figures 22, 23, and 26 a phacoemulsification
needle 100 that has a lumen 101 that "is asymmetrically placed to increase
the thickness or thinness of a specific region of the distal tip 102 of the
needle. The asymmetric placement of the lumen 101 functions to increase or
decrease the relative effectiveness of ultrasonic energy emanating from the
tip 102 during a phacoemulsification procedure" (Dewey ,r 89 ( emphasis
omitted); see Office Act. 8-9).
ANALYSIS
Based on the combination of Dimalanta and Dewey, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious "to modify the wall segments of ... [Dimalanta's]
phacoemulsification needle tip ... in order to have greater wall thickness for
purposes of increasing or decreasing the relative [effectiveness] of ultrasonic
energy emanating from the tip [] during a phacoemulsification procedure"
(Office Act. 9; see FF 1-13).
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Application 13/008,714
Claim 1:
Appellant acknowledges "that changing mass distribution, as by
making one wall segment thicker than another, does increase or decrease
asymmetry" and "that changing the thickness of one wall segment in
Dimalanta would change vibrational characteristics" (App. Br. 7; see Ans.
3). Nevertheless, Appellant contends that Examiner fails to explain why,
based on the combination of Dimalanta and Dewey, "one or more segments
would be thickened relative to another one or more segments," particularly,
"if such a change might 'decreas[ e ]' ultrasonic energy emanation" (id.; see
also Reply Br. 2 ("there is no indication how one skilled in the art would be
motivated to take the general teachings [ of the combination of Dimalanta
and Dewey] and arrive at the very specific construction recited in each of
[Appellant's claims]")). We are not persuaded.
Notwithstanding Appellant's contention to the contrary, Dimalanta
and Dewey both disclose phacoemulsification needle tip variations, which
effect the ultrasonic energy emanating from the needle's tip during a
phacoemulsfication procedure. Specifically, Dimalanta discloses that the
"axis of rotation" of the phacoemulsification needle's tip may be "co-linear
with the centerline of the cylindrical shaft" or at other locations (FF 6).
Similarly, Dewey discloses a phacoemulsification needle that has a lumen
that "is asymmetrically placed to increase the thickness or thinness of a
specific region of the distal tip [] of the needle," which "functions to
increase or decrease the relative effectiveness of ultrasonic energy
emanating from the tip [] during a phacoemulsification procedure" (FF 13).
Thus, a person of ordinary skill in this art would modify one or more wall
segments of Dimalanta' s phacoemulsification needle's tip according to
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Dewey for the same reasons suggested by the combination of Dimalanta and
Dewey, which Appellant concedes will "increase or decrease asymmetry"
and "change vibrational characteristics" (App. Br. 7; see also FF 6 and 13;
see Ans. 3). Stated differently, in response to Appellant's inquiry as to why
a person of ordinary skill in this art would make the modification proffered
by Examiner, one of ordinary skill in this art would state: Because
Dimalanta and Dewey suggest doing so (see App. Br. 7; see also id. at 9; cf
FF 6 and 13; see Ans. 3--4).
Dimalanta suggests placing the "axis of rotation" of the
phacoemulsification needle's tip may be "co-linear with the centerline of the
cylindrical shaft" or at other locations (FF 6). Therefore, we are not
persuaded by Appellant's contention that modifying "any of the wall
segments, other than that diametrically opposite to the dominant point 220,
was thickened, it would throw off the symmetry that allows the described
arced movement of [Dimalanta's] dominant point 220 in a range bisected by
the vertical axis," because "the tip in Dimalanta is symmetrical about a
vertical dividing line through the axis 225 ... to best achieve results with the
'dominant point 220' ," which "moves in an arc ... centered on the vertical
dividing line ... [and] describes the desirability of this 'arced motion' for
the dominant point 220" (App. Br. 8).
Claim 19:
Having found no error in Examiner's rejection of Appellant's claim 1,
we are not persuaded by Appellant's contentions that Examiner's rejection
of claim 19 is in err " [ fJ or the same basic reasons argued with respect to
claim 1" (App. Br. 9). In addition, we are not persuaded by Appellant's
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Application 13/008,714
assertion that "[t]he more specific thickness relationships for the wall
segments [set forth in Appellant's claim 19] further distinguishes over the
applied art" (App. Br. 9; see id. at 18 (Appellant's claim 19 requires, inter
alia, "a first plurality of said flat tip wall segments each having a thickness
greater than another plurality of the flat tip wall segments")). Appellant
failed to explain why the combination of Dimalanta and Dewey fails to
suggest this arrangement of wall segments to a person of ordinary skill in
this art. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation").
Claims 4 and 22:
Appellant's claim 4, which is representative, depends from and further
limits the cross-sectional shape of the tip of Appellant's claim 1 to an
octagonal shape.
Examiner finds that, although Dimalanta fails to illustrate "an
octagonal tip shape," Dimalanta "teaches that it is known to modify the
home-base shape (having 5 sides) by adding or subtracting material and
shapes from the shape" (Office Act. 12; see FF 7; see also FF IO (Dewey
suggests phacoemulsification tips that have a variety of different shapes).
Therefore, based on the combination of Dimalanta and Dewey, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious "to modify [Dimalanta's] device ... to have an
octagonal shape because [Dimalanta] teach[ es] that it is known to modify the
home-base shape by adding or subtracting material and shapes" and such a
modification "would have been an obvious matter of design choice" (Office
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Act. 12; Ans. 4--5). See In re Dailey, 357 F.2d 669, 672-73 (CCPA 1966)
(Appellant "presented no argument which convinces us that the particular
configuration of their container is significant or is anything more than one of
numerous configurations a person of ordinary skill in the art would find
obvious for the purpose of providing mating surfaces in the collapsed
container of Matzen").
Because Dimalanta suggests tips of varying configurations, we are not
persuaded by the assertion of Appellant or Examiner regarding which
configuration performs better, the same, or worse than another (see App. Br.
10; Office Act. 10). In this regard, we find no requirement in Appellant's
claim 4 regarding the performance characteristics of a particular tip shape.
Claim 5:
Appellant's claim 5 depends from and further limits the wall thickness
of the octagonal shaped tip of Appellant's claim 4 to require:
a first of said flat tip wall segments has a first thickness;
a second and a third of said flat tip wall segments are
adjacent to said first flat tip wall segment,
each said second and third flat tip wall segments having a
second thickness greater than said first thickness;
a fourth flat tip wall segment adjacent to said second flat
tip wall segment;
a fifth flat tip wall segment adjacent to said third flat tip
wall segment,
said fourth and fifth flat tip wall segments having a third
thickness greater than said second thickness;
a sixth flat tip wall segment adjacent to said fourth flat tip
wall segment;
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a seventh flat tip wall segment adjacent to said fifth flat
tip wall segment,
said sixth and seventh flat tip wail segments having a
fourth thickness greater than said third thickness; and
an eighth flat tip wall segment joining said sixth and
seventh flat tip wall segments,
said eighth flat tip wall segment having a fifth thickness
greater than said fourth thickness.
(App. Br. 14--15.)
Thus, Appellant's claim 5 requires that an eighth wall segment, which
is opposite the first wall segment, is the thickest portion of the tip and the
wall segments (2, 4, 6 and 3, 5, 7) that connect the first and eighth wall
segments become gradually thicker as they extend away from the first wall
segment toward the eighth wall segment (see id.). This same feature is
illustrated in Dewey, wherein the wall thickness incrementally increases
from the thinnest portion of the tip to the thickest portion of the tip (see FF
10-12). Although Dewey illustrates this feature with a circular tip, we find
no evidence on this record to support a conclusion that such a feature could
not be applied to other tip shapes, such as Dimalanta's "home-base" shape or
other shapes contemplated by Dimalanta, such as an octagonal shape, or
Dewey (see FF 7; see generally FF IO). See In re Dailey, 357 F.2d at 672-
73. As Examiner explains,
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to vary the thickness of the
wall segment between first, second, third, fourth, fifth, sixth,
seventh, and eighth sidewall segments of Dimalanta device, as
suggested and taught by Dewey, for the purpose of increasing
or decreasing the relative effectiveness of ultrasonic energy
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emanating from the tip during a particular phacoemulsification
procedure.
( Office Act. 15.)
For the foregoing reasons, we are not persuaded by Appellant's
contention that the combination of Dimalanta and Dewey fails to suggest the
"very specific relationships between the tip wall segments, including relative
thicknesses" set forth in Appellant's claim 5 (App. Br. 10).
Claim 13:
Appellant's claim 13 depends from and further limits Appellant's
claim 5 to require:
said first flat tip wall segment is spaced from said needle
body axis by a first distance;
each said second and third flat tip wall segments are
spaced from said needle body axis by a second distance greater
than said first distance;
each said fourth and fifth flat tip wall segments are
spaced from said needle body axis by a third distance greater
than said second distance;
each said sixth and seventh flat tip wall segments are
spaced from said needle body axis by a fourth distance greater
than said third distance;
said eighth flat tip wall segment spaced from said needle
body axis by a fifth distance greater than said fourth distance.
(App. Br. 16.)
As Examiner explains, "[t]he sidewall segments of [Dimalanta's] tip
... can be separated from each other at varying distances" (Office Act. 15;
see FF 3--4). Thus, based on the combination of Dimalanta and Dewey,
Examiner concludes that, at the time Appellant's invention was made, it
would have been prima facie obvious "to modify the lengths of sidewall
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segments of the tip, with varying distances, for purposes for achieving an
improved cutting and/or removal of a targeted tissue" (Office Act. 16 (citing
Dimalanta ,r 8)). We find no err in Examiner's conclusion of obviousness.
Because the combination of Dimalanta and Dewey suggests
Appellant's claimed device, including dimensions for spacing wall segments
away from a needle body axis (see e.g., FF 4), we are not persuaded by
Appellant's contention that "a general statement that variations might be
made for 'improved cutting' does not give guidance to one skilled in the art
to arrive at specific structures such as that claimed" (App. Br. 11 ).
Claims 14-16:
Appellant's claim 14, which is representative, depends from and
further limits the needle body of Appellant's claim 13 to have "an interior
radius around said needle body axis, and said first distance is substantially
equal to said needle body interior radius" (App. Br. 16).
As Examiner explains, the combination of Dimalanta and Dewey
suggests the apparatus of Appellant's claim 13, wherein the "needle body
(205) has an interior radius around [the] needle body axis ... , and [a] first
distance is substantially equal to [the] needle body interior radius," as is
required by Appellant's claim 14 (see Office Act. 16 (citing Dimalanta Figs.
2A-B); see also FF 2). We find no err in Examiner's conclusion of
obviousness.
For the foregoing reasons, we are not persuaded by Appellant's
contention that Appellant's claim 14 recites "specific details which further
distinguish the already significantly different structure in claim 1 from that
in the applied art" (App. Br. 11). In addition, we note that "[a] statement
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which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim." 37 C.F.R. § 4I.37(c)(iv).
Claims 17 and 20:
Appellant's claim 17, which is representative, depends from and
further limits the apparatus of Appellant's claim 1 to be "in combination
with a phacoemulsification handpiece configured to impart torsional
vibration" (App. Br. 17).
As Examiner explains, the combination of Dimalanta and Dewey
discloses a phacoemulsification apparatus within the scope of Appellant's
claimed invention, which includes a phacoemulsification needle in
combination with a handpiece configured to impart torsional vibration
(Office Act. 17 (citing Dimalanta ,r,r 20-21)).
For the foregoing reasons, we are not persuaded by Appellant's
contention that Appellant's claim 17 "actively claim[ s] the
phacoemulsification handpiece as part of the combination" (App. Br. 12). In
addition, we note that "[a] statement which merely points out what a claim
recites will not be considered an argument for patentability of the claim." 3 7
C.F.R. § 4I.37(c)(iv).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 1, 4, 5, 13, 14, 17, and
19 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Dimalanta and Dewey is affirmed. Claim 22 is not separately argued and
falls with claim 4. Claims 15 and 16 are not separately argued and fall with
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claim 14. Claim 20 is not separately argued and falls with claim 17. Claim
21 is not separately argued and falls with claim 19.
TIME PERIOD FOR RESPONSE
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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