Ex Parte Cosmescu

Patent Trial and Appeal Board

Aug 5, 2016

12637194 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/637, 194 12/14/2009 loan Cosmescu
95996 7590 08/09/2016
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
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.
30359.1936 2824
EXAMINER
PEFFLEY, MICHAEL F
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
lzemanmullen@zmfiplaw.com
ktopolewski@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IOAN COSMESCU
Appeal2014-001562
Application 12/637,194
Technology Center 3700
Before JAMESON LEE, MICHAEL R. ZECHER, and
BARBARA A. BENOIT, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4 and 7-10, which constitute all the claims
pending in this application. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b ). 1
We affirm.
1 This Decision refers to Appellant's Appeal Brief ("App. Br.," filed July 5,
2013), Examiner's Answer ("Ans.," mailed Sept. 5, 2013), Appellant's
Reply Brief ("Reply Br.," filed Nov. 5, 2013), and Final Office Action
("Final Act.," mailed Sept. 14, 2012).
Appeal2014-001560
Application 12/637,194
The subject matter of the Application is directed to an electro surgical
pencil including an active electrode and a return electrode. Spec. i-fi-12, 8.
The Specification indicates that an objective of the invention is to provide a
telescopic electrosurgical pencil "with smoke evacuation means wherein the
distance between the operating tip of the electrode and the hand piece is
adjustable to accommodate desired lengths associated with different sized
patients." Id. i-f 11.
CLAIMED SUBJECT MATTER
Of all claims on appeal, claims 1 and 7 are independent. Each of
claims 2--4 depends from claim 1. Each of claims 8-10 depends from claim
7. Claims 1 and 7 are reproduced below:
1. An electrosurgery pencil for use in electrosurgery
procedures comprising:
a hand piece having a distal end and proximal end and a
straight, non-bending, non-detachable smoke evacuation channel
therein having an approximately same diameter throughout the
channel wherein the length of the channel is in both horizontal
and vertical alignment with the distal and proximal ends of the
hand piece;
an active electrode and a return electrode contained within
at least a portion of the smoke evacuation channel of the hand
piece such that they are in electrical contact with an
electrosurgery unit; and
a connector element near the proximal end of the hand
piece for connecting the smoke evacuation channel to a smoke
evacuator tubing.
7. An electrosurgery pencil for use in electrosurgery
procedures comprising:
a hand piece having a distal end and proximal end and a
channel therein having an approximately same diameter
throughout the channel;
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Application 12/637,194
a telescopic member having a channel therein wherein said
telescopic member is circumferentially contained within said
handpiece;
an electrode contained within at least a portion of the
channel within the telescopic member contained within the hand
piece such that it is in electrical contact with an electrosurgery
unit; and
a connector element near the proximal end of the hand
piece for connecting the smoke evacuation channel to a smoke
evacuator tubing.
PERTINENT APPLICATION DISCLOSURE
Figure 3b is reproduced below:
FlG.3b
Figure 3b illustrates a perspective exploded view of an embodiment of
Applicant's invention. Spec. i1i129, 48. Main body 42 of the device
comprises distal thread 58 and proximal thread 60 connected by channel 62.
Id. i1 48. Telescopic body 44 comprises distal end 70 and proximal end 72
which are separated by channel 7 4 that is smaller in diameter than channel
62 of main body 42. Id. Bipolar electrode 48 is connected to telescopic
body 44 such that active electrode 86 and return electrode 88 are in contact
with elongated conductors 76 and 78, respectively. Id. i149. Locking
element 46 can be slid over telescopic body 44 and connected to distal
threads 58 of main body 42 to enable telescopic body 44 to be locked in
position within main body 42. Id.
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Appeal2014-001560
Application 12/637,194
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is listed as follows:
Pao
Kaufman
Harris
us 4,674,499
us 5,234,428
us 5,626,577
REJECTIONS
June 23, 1987
Aug. 10, 1993
May 6, 1997
Claims 1--4 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Pao and Kaufman. Final Act. 2--4.
Claims 7-10 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Pao, Kaufman, and Harris. Final Act. 4.
ISSUES
Has Appellant shown that the Examiner erred in concluding that
claims 1--4 would have been obvious over Pao and Kaufman?
Has Appellant shown that the Examiner erred in concluding that
claims 7-10 would have been obvious over Pao, Kaufman, and Harris?
ANALYSIS
A. Rejection of Claims 1--4 Under 35 U.S.C. § 103(a) as
Unpatentable Over Pao and Kaufman
With regard to claim 1, the Examiner determined that Pao discloses all
limitations, except the requirement that the active electrode and the return
electrode are contained within at least a portion of the smoke evacuation
channel of the hand piece. Final Act. 3. Figures 7 and 8 of Pao are
reproduced below:
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Appeal2014-001560
Application 12/637,194
1-?t~ \ ~-:-'"*'~*'"
i -:-> ... ~ .. #
'-..#'
/,·:,~,:~2
~~
M
F!G. 7
Figure 7 is an isometric view of a preferred embodiment of a bipolar probe
structure of Pao. Pao, 4: 13-14. Figure 8 is a longitudinal sectional view of
a portion of the structure shown in Figure 7. Id. at 4:4:16-18.
Pao describes: "Referring to FIG. 7 the probe is generally designated
as 210 and again includes an electrode assembly portion indicated generally
as 212 disposed in a handpiece portion 214." Pao. 7:6-9. "One end of the
electrode portion 212 comprises the probe or terminal region and is
designated generally as 232." Id. at 7:13-15. There is axial electrode 226
and outer electrode 228 with a concentric layer of electrically-insulating
polymeric material 230 disposed there between. Id. at 7: 19-21. "The axial
electrode 226 is also provided with a central lumen 260 along its entire
length and terminating in an opening 252 through the transverse end surface
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Appeal2014-001560
Application 12/637,194
242 of the electrode 226 at the probe end 232 of the assembly 212." Id. at
7:21-25.
With regard to central lumen 260, Pao further describes:
The device 210 is provided with a hollow channel extending from
the extreme tip of the probe region 232 of the axial electrode
assembly 212 through the assembly to its opposite end within the
handle 214 from which it continues to a fluid connector 256
protruding from the handle. The lumen 260 provides the portion
of the channel 250 extending through the electrode assembly
212. As is depicted in FIG. 8, a hollow tubing 254 sealingly
connects the handle end 23 7 of the axial electrode allowed to
extend beyond the opposing end 235 of the outer electrode 228
where the handle end 231 of the electrode assembly 212
terminates within the handpiece 214, to the fluid connector 256
externally mounted on the handpiece 214. The channel 250
terminates in an opening 258 at the tip of the connector 256 ....
The channel 250 can be used to introduce an irrigating fluid,
compressed air or a partial vacuum at the tip 232 of the assembly.
. . . Furthermore, the provision of the lumen at the end of the
protruding tip allows pinpoint application of fluid or a partial
vacuum and, being centrally positioned, makes it easier for the
user to estimate the location of the channel even though unable
to see it when using the instrument.
Pao, 7:37-8:5 (emphases added).
Thus, Pao' s central lumen 260 functions as a smoke evacuation
channel. However, the active electrode and the return electrode are not
contained within at least a portion of lumen 260. Claim 1 requires the
active electrode and the return electrode to be contained within at least a
portion of a smoke evacuation channel. For this missing limitation, the
Examiner relied, instead, on Kaufman. Final Act. 3.
The Examiner determined: "Kaufman discloses (Figure 3) an
electrosurgical pencil wherein the active electrode and a return electrode
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Application 12/637,194
(obvious alternative to a monopolar device) are contained within at least a
portion of the smoke evacuation channel of the hand piece (See Figure 3
with electrode# 48 within the channel# 36 which is an extension of suction
channel 52 and col. 6, line 52---col. 7, line 39)." Id. The Examiner further
determined that "at the time of the invention it would have been obvious to
one of ordinary skill in the art to modify the device of Pao, as taught by
Kaufman, to provide an alternative equivalent electrode structure and
location for effective performance of the electrosurgical instrument." Id.
Figure 1 of Kaufman is reproduced below:
Figure 1 depicts a perspective view of an electrosurgical pencil with integral
smoke evacuation function. Kaufman, 5:26-27. Kaufman describes:
The electrosurgical instrument 22 also terminates at a distal end
in a standard ribbed vacuum tube connector 28 to which is
attached by press-fitting a standard 5 mm internal diameter non-
conductive connecting tube 30 with funnel-funnel or other
standard ends. The other end of the connecting tube 30 is
attached to a standard operating room suction canister (not
shown). The suction canister (not shown) is attached to a
standard operating room wall vacuum line (not shown). At the
proximal end, closest to the patient, the instrument 22 ends in a
truncated suction intake cone 34 with an annular suction intake
aperture 36. The leading edge 38 of the truncated cone 34 is
radiused or beveled and smooth. This leading edge 3 8 forms the
annular aperture 36. The annular aperture 36 encircles, for
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Appeal2014-001560
Application 12/637,194
instance, a standard 2.4 mm interchangeable electrode blade 48,
which protrudes beyond the annular aperture.
Id. at 6:5-22 (emphases added).
Kaufman further describes operation of the instrument as follows:
When the electrode blade tip is placed in proximity to the area to
be cut or cauterized, and the surgeon actuates the appropriate
switch 72 or 74, a current which produces heat locally is applied
to the tissue. As the tissue heats up, smoke comprised of steam,
carbon and other particulates, vaporized and aerosolized organic
material, and possibly viable viral particles, is produced. With
integral smoke evacuation, when smoke is generated at the
electrode blade tip 48, the smoke is drawn continuously and
unobtrusively into the annular suction intake aperture 3 6 at high
velocity, allowing no smoke to escape and disperse above the
field. No extra hands or personnel are needed, and the surgeon
operates as if he is using an electrosurgical pencil alone. The
smoke is completely evacuated from the surgical field with the
instrument 22 held parallel or perpendicular to the field, or at
any angle in between. Smoke evacuation is complete no matter
how the instrument 22 itself is rotated.
Id. at 9:36-53 (emphases added).
With respect to the Examiner's findings and reasoning, Appellant
asserts only a single argument, that:
If one were to combine the Pao and Kaufman references as the
Examiner suggests, one would still not be able to arrive at
Appellant's invention since neither reference teaches or suggests
how to position the active and return electrode within the smoke
evacuation channel of the handpiece such that the smoke
evacuation channel possesses a straight, non-bending, non-
detachable channel that has approximately the same diameter
throughout the channel.
App. Br. 9. For reasons discussed below, this argument is unpersuasive.
The Examiner's obviousness rejection is based on the combined
teachings of Pao and Kaufman. Neither reference has to disclose or teach
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Application 12/637,194
the entirety of the limitation at issue. The Examiner explained clearly that
Kaufman is relied on to teach only a portion of the subject limitation. Final
Act. 3. One cannot show non-obviousness by attacking references
individually where the rejections are based on a combination of references.
In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 426 (CCPA 1981). The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Specifically, the Examiner relied on Kaufman only for its teaching
that the electrode in an electrosurgical pencil may be contained at least in
part within a smoke evacuation channel. Final Act. 3. The rest of the
limitation at issue is accounted for by Pao, as applied by the Examiner. Id.
Also, a reason to combine teachings need not be expressly stated in any prior
art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need
only be an articulated reasoning with rational underpinnings to support a
reason to combine teachings. Id. at 988. Here, the Examiner provided that
reasoning, which we find to be sufficient, and Appellant has not challenged
that reasoning, except to say that neither reference alone teaches or suggests
the entire limitation at issue. As noted above, however, Appellant may not
properly assert non-obviousness by attacking references individually where
the rejection is based on a combination of references.
In its Reply, Appellant makes this new argument:
If one provides the Pao evacuation channel in a
surrounding relationship, as opposed to extending it through the
electrode arrangement, as suggested by the Examiner, the result
would be the evacuation channel that is disclosed in Kaufman
or, alternatively, an evacuation channel that is positioned either
completely up, over, and around the electrode shown in
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Application 12/637,194
Kaufman or an evacuation channel that is positioned completely
down, under, and around the electrode shown in Kaufman. In
all three of these possible configurations, the smoke evacuation
channel would still not meet the elements of Appellant's claims
- namely that the smoke evacuation channel be non-bending,
non-detachable, and have an approximate same diameter
throughout the channel where the length of the channel is in both
horizontal and vertical alignment with the distal and proximal
ends of the handpiece.
Reply Br. 2.
The applicable rule governing arguments in a reply brief is 37 C.F.R.
§ 41.41 (b )(2), which states:
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
Note also 37 C.F.R. § 41.37(c)(l)(iv), which states, in pertinent part:
"Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal. "2
Appellant's new argument in the Reply, as quoted above, could have,
and should have, been raised in the Appeal Brief, but was not. Appellant has
not explained why there is good cause for the new argument to be
considered by us. The record is without the Examiner's position with regard
to the new argument. It is too late, at the stage of filing a Reply, for
Appellant to redirect its arguments or to make a more specific argument so
as to effectively start its appeal anew. Appellant identified nothing in the
2 37 C.F.R. § 41.47 pertains to oral hearing and 37 C.F.R. § 41.52 pertains to
a request for rehearing. Neither is applicable here.
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Application 12/637,194
Examiner's Answer that would have justified assertion of the argument for
the first time in the Reply Brief. Accordingly, we decline to consider
Appellant's new argument in the Reply Brief.
In any event, if we were to consider the new argument in the Reply,
we would find it to be misplaced. The Examiner already determined that
Pao discloses a hand piece having a straight, non-bending, non-detachable
smoke evacuation channel with approximately the same diameter throughout
the channel wherein the length of the channel is in both horizontal and
vertical alignment with the distal and proximal ends of the hand piece. Final
Act. 2. The only teaching derived from Kaufman is that having the
electrodes contained within at least a portion of the channel. Id. at 3.
That one optionally may implement Kaufman's channel in an off-
centered manner when surrounding Pao's electrodes is both a non-issue, as
well as an unnecessary speculation. Pao, as determined by the Examiner,
discloses a smoke evacuation channel that is aligned centrally and has
approximately the same diameter throughout its length. Pao states that its
lumen is "centrally positioned" and that such positioning makes it easier for
the user to estimate the location of the channel even though the user would
be unable to see the lumen when using the instrument. Pao, 7:68-8:5. Pao
also refers to its lumen 260 as a "central lumen." Id. at 7:21-26.
For the reasons discussed above, we sustain the Examiner's
obviousness rejection of claim 1, under 35 U.S.C. § 103(a), as unpatentable
over Pao and Kaufman. Each of claims 2--4 depends from claim 1.
Appellant does not assert separate patentability arguments for claims 2--4
other than those asserted for claim 1. We note that 37 C.F.R.
§ 41.37(c)(l)(iv) provides: "[w]hen multiple claims subject to the same
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Application 12/637,194
ground of rejection are argued as a group or subgroup by appellant, the
Board may select a single claim from the group or subgroup and may decide
the appeal as to the ground of rejection with respect to the group or subgroup
on the basis of the selected claim alone." We sustain the Examiner's
obviousness rejection of claims 2--4, under 35 U.S.C. § 103(a), as
unpatentable over Pao and Kaufman, on the basis of our discussion of the
Examiner's obviousness rejection of claim 1.
B. Rejection of Claims 7-10 Under 35 U.S.C. § 103(a)
as Unpatentable Over Pao, Kaufman, and Harris
Claim 7 differs from claim 1 in further reciting a telescopic member
circumferentially contained within the hand piece and reciting that the
channel is within the telescopic member. Claim 7 also differs from claim 1
in not requiring that the channel be nonbending, non-detachable, and having
a length that is in both horizontal and vertical alignment with the distal and
proximal ends of the hand piece.
The Examiner already determined in the context of claim 1 that Pao
does not disclose an electrode contained within at least a portion of the
smoke evacuation channel. That finding applies equally to claim 7. As in
the case of claim 1, the Examiner relies on the combination of Pao and
Kaufman to account for that limitation. The Examiner also determined that
neither Pao nor Kaufman discloses the use of a telescopic member
circumferentially contained within the hand piece. The Examiner relies on
Harris to account for the telescopic member limitation. Final Act. 4.
With regard to claim 7, Appellant makes essentially the same
arguments it made in the context of claim 1 regarding the combination of
Pao and Kaufman. Those arguments have been addressed and rejected
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Application 12/637,194
above. We note further that the limitation that the smoke evacuation channel
is non-bending, non-detachable, and in both horizontal and vertical
alignment with the distal and proximal ends of the hand piece, is absent from
claim 7. Thus, Appellant's arguments are even less persuasive in the context
of claim 7. The addition of a telescopic member, as taught by Harris, does
not change the Examiner's reasoning with regard to placing an electrode
within the channel that has approximately the same diameter throughout its
length. We reiterate that one cannot show non-obviousness by attacking
references individually where the rejections are based on a combination of
references. In re Merck, 800 F.2d at 1097; In re Keller, 642 F.2d at 426.
For reasons discussed above, we sustain the Examiner's obviousness
rejection of claim 7, under 35 U.S.C. § 103(a), as unpatentable over Pao,
Kaufman, and Harris. Each of claims 8-10 depends directly from claim 7.
No patentability arguments for claims 8-10, separate from those Appellant
advanced for claim 7, have been presented. The arguments Appellant
presented for claim 7 have been addressed and found unpersuasive above.
We note that 37 C.F.R. § 41.37(c)(l)(iv) provides: "[w]hen multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone." We sustain the
Examiner's obviousness rejection of claims 8-10, under 35 U.S.C. § 103(a),
as unpatentable over Pao, Kaufman, and Harris, on the basis of our
discussion of the Examiner's obviousness rejection of claim 7 above.
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CONCLUSION
Appellant has not shown error in the Examiner's conclusion that
claims 1--4 are unpatentable as obvious over Pao and Kaufman.
Appellant has not shown error in the Examiner's conclusion that
claims 7-10 are unpatentable as obvious over Pao, Kaufman, and Harris.
DECISION
The rejection of claims 1--4 under 35 U.S.C. § 103(a) as obvious over
Pao and Kaufman is affirmed.
The rejection of claims 7-10 under 35 U.S.C. § 103(a) as obvious
over Pao, Kaufman, and Harris is 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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