Ex Parte Brown

Patent Trial and Appeal Board

Aug 17, 2016

12547609 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/547,609 08/26/2009
62763 7590 08/17/2016
Tod T. Tumey
TumeyLLP
P.O. BOX 22188
HOUSTON, TX 77227-2188
FIRST NAMED INVENTOR
David C. Brown
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.
02.1003.22 5602
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
08/17/2016 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 DAVID C. BROWN 1
Appeal2014-004888
Application 12/547,609
Technology Center 3700
Before STEFAN STAICOVICI, AMANDAF. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David C. Brown ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's final rejection of claims 1, 7, 13, and 14.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is the named inventor,
David C. Brown. Appeal Br. 3.
2 Claims 2-5 and 8-12 have been withdrawn, and claim 6 has been
cancelled. Final Act. 2; Non-Final Act. 2 (mailed Mar. 24, 2011).
Appeal2014-004888
Application 12/547,609
CLAIMED SUBJECT MATTER
The claimed invention concerns a tip that can be placed over a
conventional phacoemulsification instrument and used for sonic cleaning of
eye tissue. Spec. i-f 4. Claims 1 and 14 are illustrative of the subject matter
on appeal, and recite:
1. A sonic tip for placement over the needle portion of
a phacoemulsification hand piece consisting essentially of:
a tubular member having a first end portion and a second
portion end, the first end portion of the tubular member being
open, the second portion end of the tubular member having a
closed end, an outside surface of the closed end having a smooth
curved surface, an orifice extending through the closed end
curved surface, and
an annular sealing ring on an interior surface of the tubular
member adapted to space the interior surface of the tubular
member from the needle portion of the hand piece thereby
forming an annular passageway between the inner surface of the
tubular member and the needle portion when the tubular member
is placed over the needle portion.
14. A sonic tip for placement over a needle portion of a
phacoemulsification hand piece consisting essentially of:
a tubular member having a first end portion and a second
portion end, the first end portion of the tubular member being
open, the second portion end of the tubular member having a
closed end, an outside surface of the closed end having a smooth
curved surface, and an orifice extending through the close d end
curved surface,
an annular sealing ring on an interior surface of the tubular
member and adapted to fit over the needle portion of the
phacoemulsification hand piece thereby forming two chambers
independent of each other one for conveying irrigation fluid to a
proximal end of the tip and a second chamber at a distal end of
the tip for collecting aspiration fluid; and
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Application 12/547,609
a port in the wall of the tubular member in fluid
communication with the first irrigating chamber when the tip is
placed over the needle portion of the phacoemulsification hand
piece.
Appeal Br. 11-12 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claim 1 under 35 U.S.C. § 103(a) as unpatentable over Chon
(US 2006/0206050 Al, pub. Sept. 14, 2006) and Broaddus (US
2006/0025752 Al, pub. Feb. 2, 2006).
II. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Chon,
Broaddus, and Charles (US 7,141,048 Bl, iss. Nov. 28, 2006).
III. Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Chon, Broaddus, and Hong (US 2008/0167604 Al, pub.
July 10, 2008).
ANALYSIS
Obviousness over Chon and Broaddus - Claim 1
The Examiner finds that Chon discloses phacoemulsification sleeve
115 sized to fit over and surround the needle of a phacoemulsification hand
piece. Final Act. 2 (citing Chon i-f 20, Figs. 2-3); Ans. 7. The Examiner
finds that sleeve 115 is a tubular member with a first, open end portion and a
second, closed end portion having a smooth and curved surface. Final Act.
2. The Examiner finds that orifice 118 extends through the closed end's
curved surface. Id. The Examiner finds that Chon fails to disclose an
annular sealing ring on an interior surface of the tubular member. Id.
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Application 12/547,609
The Examiner finds that Broaddus teaches a coaxial catheter having
outer tube 10 and inner tube 3 0. Id. at 3. The Examiner finds that an elastic
annular sealing ring ( o-ring) is positioned in gap 18 between the tubes of
Broaddus to "reduce the ability of material to flow into and out of a hole in
the outer tube." Id. (citing Broaddus i-fi-131-32); Ans. 7. Although Broaddus
does not state expressly that the seal is "attached" to the inner surface of the
outer tube, the Examiner states that such placement is well known and
Broaddus' s seal "must be in contact with the interior surface of the outer
tube since [it] provides a seal within the gap from flow." Final Act. 3.
Thus, the Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to have provided an annular sealing ring, as taught by
Broaddus, on the inner surface of Chon's tubular member "to provide an
interference fit between the tubular member and needle portion and means to
reduce flow of material into areas where such flow is not intended." Id.;
Ans. 7.
Appellant argues that the Examiner errs in rejecting claim 1 as
obvious over Chon and Broaddus for the following reasons.
First, we are unpersuaded by Appellant's contention that the Examiner
fails to identify a valid rationale for modifying Chon in light of Broaddus.
Appeal Br. 7; Reply Br. 1-2. The Examiner provides articulated reasoning
with a rational underpinning to support the conclusion that it would have
been obvious to provide a sealing ring on the inner surface of Chon's tubular
member, namely, that a sealing ring would "reduce flow of material into
areas where such flow is not intended." Final Act. 3; Ans. 7. This reasoning
is supported by a preponderance of evidence. See Broaddus i-fi-131-32
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Application 12/547,609
(disclosing that outer and inner tubes 10, 30 include apertures 12, 32 and that
inter-tube gap 18 is provided with seals 36 to "reduce[ the] ability of
materials to flow into and out of a hole in the outer catheter (tube), where
such flow is not intended").
Additionally, we are unpersuaded by Appellant's contention that
Chon's tip is not used for sonic cleaning. Appeal Br. 7. Claim 1 does not
include a step of sonic cleaning, but rather recites a "sonic tip for placement
over the needle portion of a phacoemulsification hand piece." Appeal Br. 11
(Claims App.); Ans. 6. We agree with the Examiner that Chon's tip 115 is
capable of being placed over the needle portion of a phacoemulsification
hand piece that has sonic capabilities. Ans. 6; Chon i-fi-1 5---6 (disclosing that
conventional phacoemulsification hand pieces operate ultrasonically), i120
(disclosing that distal cap 115 is sized and shaped to fit over a conventional
phacoemulsification tip).
We are also unpersuaded by Appellant's contention that Chon's
device "operates in a completely different manner" than Appellant's device,
because Chon's inner and outer members "do not move with respect to one
another and there is no selective positioning of apertures." Appeal Br. 8.
This argument is not commensurate with the scope of claim 1. See Appeal
Br. 11 (Claims App.) (failing to recite respective movement or selective
positioning of apertures). For the same reason, we are unpersuaded by
Appellant's characterization of the "invention" as involving "a seal that
spaces the outer tubular from tip 14 so as to create an annular flow passage
12 for the flow of cleaning fluid and simultaneously forms an aspiration
flow path that does not interfere with the supply passageway 12." Id. at 8.
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Appellant's claim 1 does not recite a flow passage "for the flow of cleaning
fluid" or a non-interfering "aspiration flow path." Id. at 11 (Claims App.).
We are also unpersuaded by Appellant's contention that the Examiner
errs in relying on Broaddus because Broaddus' s device is not used for
cataract surgery. Appeal Br. 8. "In order to rely on a reference as a basis for
rejection of the applicant's invention, the reference must either be in the
field of the applicant's endeavor or, if not, then be reasonably pertinent to
the particular problem with which the inventor was concerned." In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Broaddus is directed to a
medical instrument comprising inner and outer tubes containing apertures
through which media can be transferred into, and out of, the human body.
See Ans. 7; see also Broaddus, Abstract (disclosing a "coaxial catheter" that
"permit[ s] a flux of the therapeutic agent to flow into the brain ... or
remove[ s] fluids or other medium from the brain"). Therefore, Broaddus is
analogous art, in the same field of endeavor as Appellant's endeavor.
Additionally, we are unpersuaded by Appellant's contention that
Broaddus's seals "are positioned on the outer surface of inner catheter 30,
not on the inner surface of the outer catheter." Appeal Br. 8. Appellant's
claim 1 requires "an annular sealing ring on an interior surface of the tubular
member." Id. at 11 (Claims App.). We agree with the Examiner that
Broaddus's seals 36 are "on an inner surface of the tubular member" as
claimed, because those seals are fitted in the gap between Broaddus' s outer
tube 10 and inner tube 30 so as to preclude materials from flowing past the
seal. Final Act. 3; Ans. 7; Broaddus i-fi-131-32. Further, claim 1 does not
require the seal be "formed on" the inner surface, attached thereto, or any
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Application 12/547,609
other more narrow form of positioning. Rather, the claim requires simply
that the seal be "on" the tubular member's inner surface.
Finally, we are unpersuaded by Appellant's conclusory argument that
"[ t ]he device would not function" with such seal placement "unless seals
were place[d] adjacent to each set of apertures 12." Appeal Br. 8. This
argument is unsupported by any technical reasoning or evidence, beyond
conclusory attorney argument. Indeed, Appellant's argument, to the extent it
is explained at all, seems to suggest that the device would function if the
"seals were place[d] adjacent to each set of apertures 12," an arrangement
not precluded by the claims.
Not being apprised of error in the Examiner's rejection, we affirm the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Chon and
Broaddus.
Obviousness over Chon, Broaddus, and Charles - Claim 7
Appellant does not provide separate argument for claim 7, which
depends from claim 1. See Appeal Br. 10. Not being apprised of error, we
affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Chon, Broaddus, and Charles. See Ex parte Frye, 94 USPQ2d 1072, 107 5
(BP AI 2010) (precedential) ("If an appellant fails to present arguments on a
particular issue - or, more broadly, on a particular rejection - the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.").
Obviousness over Chon, Broaddus, and Hong- Claims 13 and 14
With respect to claims 13 and 14, the Examiner finds that the device
rendered obvious by the combination of Chon and Broaddus, as discussed
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Application 12/547,609
with respect to claim 1, provides a conduit or chamber into which aspiration
fluid can be collected, but fails to disclose another chamber that conveys
irrigation to the end of the device through a port. Final Act. 4.
The Examiner finds that Hong teaches a phacoemulsification tip
including tubular member 114, 115 with orifice 120 through which material
is aspirated. Id. The Examiner also finds that the side wall of Hong's tip
includes port 132 through which irrigation fluid flows. Id. The Examiner
finds that a sealing ring formed by a reduction in diameter is located
between Hong's orifice 120 and port 132. Id. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art to modify
the device rendered obvious by the combination of Chon and Broaddus to
include "a port within the sidewall, as taught by Hong, to provide means to
irrigate the wound of the cornea tissue," and, further, to locate "the annular
sealing ring ... between the port and the orifice, as taught by Hong, to
prevent the aspirated material from exiting through the port." Id. at 5. The
Examiner concludes that with these modifications, "two independent
chambers are formed such that irrigation is capable of flowing within one
chamber and aspiration fluid is collected in the second chamber at the distal
end of the sleeve." Id.; Ans. 8.
Appellant incorporates the arguments made with respect to claim 1.
Appeal Br. 8. We remain unpersuaded by those arguments, for the reasons
discussed above.
We are unpersuaded by Appellant's argument that neither Chon nor
Broaddus disclose "providing an irrigation fluid to irrigate the wound of the
cornea tissue." Appeal Br. 9. Appellant is attacking the references
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individually, however, the test for obviousness is what the combined
teachings of the references as a whole would have suggested to those of
ordinary skill in the art, not merely what Chon or Broaddus disclosed. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, that Chon and Broaddus do
not disclose irrigation does not constitute error in the Examiner's rejection,
because the Examiner relies on Hong for such a teaching.
We are also unpersuaded by Appellant's argument that "[i]t is not
clear to Appellant exactly why one would provide means to irrigate the
wound of the cornea tissue." Appeal Br. 9; see also Reply Br. 1-2. We note
that Appellant's argument misstates the modification proposed by the
Examiner. The Examiner concludes that it would have been obvious to
include "a port within the sidewall" of the phacoemulsification device
rendered obvious by Chon and Broaddus. Final Act. 5. The Examiner
provides articulated reasoning with adequate rational underpinning to
explain why such a modification would have been obvious, namely, to
irrigate the corneal wound. See id. The Examiner's reasoning is supported
by a preponderance of evidence. See Hong i-fi-1 6 (discussing prior art in
which irrigation is used in conjunction with aspiration during
phacoemulsification), i-fi-19, 17 (disclosing irrigation and aspiration during
phacoemulsification, where irrigation occurs through port 132); Chon i-fi-f l--4
(disclosing phacoemulsification with aspiration); see also Ans. 8 (stating
that "[i]t is known that ... a combination of irrigation and aspiration means
[are used] for clean-up and polishing as well as for maintaining the anterior
chamber and cooling the hand piece.").
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We are unpersuaded by Appellant's argument that "it is not clear at all
how irrigation fluid in the Chon device is supplied to the eye." Appeal Br.
9--10. This argument is not commensurate in scope with Appellant's claims,
which do not recite a mechanism by which irrigation fluid is supplied. Id. at
11-12 (Claims App.). Appellant's claims are directed to a tip that is adapted
for placement over a conventional phacoemulsification hand piece. Id. The
claims do not limit whether that hand piece includes or excludes irrigation
means.
We are also unpersuaded by Appellant's argument that Hong is in
"dire contrast" with Appellant's device because "the entire tip 100 of Hong .
. . is designed to be connected to a hand piece 140," whereas Appellant's
device "includes only an outer tubular member having a seal that is designed
to cooperate with a conventional [phacoemulsification] hand piece in a
simple manner to create a sonic tip that forms irrigation and aspiration flow
passage." Appeal Br. 9. That Hong's entire tip 100 may connect to a hand
piece is not dispositive, because the Examiner's rejection involves modifj;ing
Chon, which discloses a simple outer tubular member designed to cooperate
with a conventional hand piece, to include an irrigation port as discussed
above, based on Hong's teaching. The rejection does not depend on the
physical incorporation of Hong with Chon. In re Sneed, 710 F .2d 1544,
1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.").
Finally, we are unpersuaded by Appellant's argument that Chon lacks
"disclosure of a sealing ring to space the interior surface of the tip from the
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needle portion of a conventional phacoemulsification hand piece ... nor is
there a teaching of forming two chambers ... as claimed." Again, Appellant
is attacking the references individually. See Keller, 642 F.2d at 425; Merck,
800 F .2d at 1097. The Examiner does not rely on Chon to disclose a sealing
ring; Broaddus provides that teaching. Final Act. 3--4. Additionally, the
Examiner does not rely on Chon to disclose two chambers formed by the
placement of the sealing ring between an orifice and an aperture; Hong
provides that teaching. Id. at 4--5. Therefore, that Chon does not disclose
these features does not constitute error in the Examiner's rejection.
Not being apprised of error in the Examiner's rejection, we affirm the
rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Chon, Broaddus, and Hong.
DECISION
The rejections of claims 1, 7, 13, and 14 are AFFIRMED.
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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