Ex Parte Durgin et al

Patent Trial and Appeal Board

Aug 31, 2016

12078963 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/078,963 04/08/2008
109610 7590 09/02/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Russell F. Durgin
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.
06530.0362-00000 6564
EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
usptomail@bookoffmcandrews.com
Kross@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL F. DURGIN, KENNETH M. BLAIR,
F. ANTHONY HEADLEY JR., and DENNIS R. BOULAIS 1
Appeal2014-008391
Application 12/078,963
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
endoscopes including a distal chamber which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Boston Scientific Scimed,
Inc. (App. Br. 2.)
Appeal2014-008391
Application 12/078,963
STATEMENT OF THE CASE
Appellants' invention relates to "an endoscope including a distal
chamber and related methods of use, for example, with an endoscopic
instrument." (Spec. i-f 2.) "The endoscope may include an elongate member,
at least two lumens extending through the elongate member, and a chamber
defined by a distal portion of the elongate member." (Id. at i-f 5.)
Claims 1, 3---6, 8-11, 13, 15, 17, and 43-55 are on appeal. Claim 1 is
illustrative:
1. An endoscope, comprising:
an elongate member;
at least two lumens extending through the elongate
member; and
a chamber defined by a distal portion of the elongate
member, the chamber normally closed at a distal end of the
chamber, and wherein the distal end of the chamber is configured
to selectively receive a medical instrument therethrough;
\~1herein a distal end of each of the at least t\~10 lumens
terminates in the chamber.
(App. Br. 29 (Claims App'x).)
The claims stand rejected as follows:
I. Claims 1, 3, 4, 9, 17, 43, and 50-55 are rejected under
35 U.S.C. § 103(a) over Boussignac2 and Adair.3
II. Claim 15 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, and Lafontaine.4
2 Boussignac et al., US 4,832,024, issued May 23, 1989.
3 Adair, US 4,878,485, issued Nov. 7, 1989.
4 Lafontaine, US 6,520,939 B2, issued Feb. 18, 2003.
2
Appeal2014-008391
Application 12/078,963
Ill. Claim 45 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, and Kato. 5
IV. Claims 4---6, 8-11, 17, and 47 are rejected under 35 U.S.C.
§ 103(a) over Voloshin6 and Kato.
V. Claim 13 is rejected under 35 U.S.C. § 103(a) over Voloshin,
Kato, and Saadat.7
VI. Claim 44 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, and Brown.8
VII. Claim 46 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, and Saadat.
VIII. Claim 48 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, Lafontaine, and Brown.
IX. Claim 49 is rejected under 35 U.S.C. § 103(a) over Boussignac,
Adair, Lafontaine, and Saadat.
DISCUSSION
REJECTIONS I-III and VI-IX
These rejections rely upon the combination of Boussignac and Adair,
and so we focus on the Examiner's findings with respect to these references.
Each of Appellants' independent claims 1, 4, 9, 15, and 17, requires,
inter alia, "the distal end of the chamber is configured to selectively receive
a medical instrument therethrough." (App. Br. 29-32 (Claims App'x).)
5 Kato, US 6,354,992 Bl, issued Mar. 12, 2002.
6 Voloshin et al., US 2003/0105386 Al, published June 5, 2003.
7 Saadat, US 7 ,860,555 B2, issued Dec. 28, 2010.
8 Brown, US 3,720,203, issued Mar. 13, 1973.
3
Appeal2014-008391
Application 12/078,963
The Examiner finds that "Boussignac is silent on [whether] the distal
end of the chamber is configured to selectively receive a medical instrument
therethrough." (Ans. 3.) The Examiner, however, turns to Adair and
concludes that it would have been obvious to
(Id.)
have configured the closed distal end 1,[]4 via 4 of Boussignac
with the configuration 52 of the closed distal end 32' for
selectively receiving a medical instrument therethrough as taught
by Adair in order to have provided an improved closed distal end
of the chamber that is closed and yet facilitates insertion of
various medical instruments therethrough for the purpose of
treating a patient or taking biopsies, etc.
We are not persuaded that the Examiner has established by a
preponderance of the evidence that claims 1, 4, 9, 15, and 17 would have
been obvious. Instead, we agree with Appellants that
Boussignac states that blood must be prevented from entering the
transmission chamber 5 in order to avoid the risk of self-
destruction of the system. Boussignac explains that introduction
of blood may inhibit laser energy from being delivered from fiber
3, to tissue external to the device. Any leakage of blood into
chamber 5 may destroy the fiber 3, rendering the device of
Boussignac incapable of its intended purpose. See col. 2, lines
57---60. This is a clear teaching away from a configuration
having a distal end of a chamber configured to selectively receive
a medical instrument therethrough, as recited in the present
claims.
(App. Br. 22.)
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it
suggests that the line of development flowing from the
4
Appeal2014-008391
Application 12/078,963
reference's disclosure is unlikely to be productive of the result
sought by the applicant.
(In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).)
We recognize, but are not persuaded by, the Examiner's assertion that
Boussignac clearly discloses "an additional conduit may possibly
be provided for washing the outer surface of the optical system,
which conduit may be merged with a conduit intended for
containing a guiding device" (see col. 4, lines 57---60 of
Boussignac ). That is, the additional conduit may be merged with
the conduit that carries guiding device 9. This teaching of
Boussignac clearly shows to one skilled in the art that the
application/addition of an additional conduit within the device is
encompassed by the Boussignac invention.
(Ans. 17-18.) As the Examiner points out, Boussignac teaches "an
additional conduit may possibly be provided for washing the outer surface
of the optical system." (Id. (emphasis added).) Accordingly, we agree with
Appellants that
Boussignac[] does not teach or suggest the location of the
additional conduit. Based on a complete reading of Boussignac,
a person having ordinary skill in the art would not find it obvious
to compromise the closed optical system 4 of Boussignac with a
conduit through transmission chamber 5 to accommodate a
medical device and have the device selectively pass through the
distal tip of chamber 5. Instead, the teaching of Boussignac
suggests that the additional conduit be separated from and not
communicate with chamber 5, since Boussignac does not want
chamber 5 to be infiltrated by any material (e.g. blood or other
body fluid) that could compromise optical fiber 3. The added
conduit simply would need an exit port that communicated with
the outer surface of the optical system to permit washing.
(App. Br. 23.)
The Examiner has not provided sufficient "articulated reasoning with
some rational underpinning" - based on Boussignac or otherwise - why
5
Appeal2014-008391
Application 12/078,963
the skilled artisan would make the changes necessary to arrive at an
endoscope with the claimed features. KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d 977, 988 (Fed. Cir.
2006). Moreover, we agree with Appellants that the Examiner's
modification would render Boussignac' s closed system unsatisfactory for its
intended purpose. In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Boussignac
teaches that "[h ]ead 1 is hermetically closed by an optical system 4 intended
to protect the optical fiber and to modulate the diameter of the impact of the
rays" (Boussignac 2:36-38) and that "the connection between the head 1 and
the sheath 2 must prevent the blood from penetrating into the energy
transmission chamber 5 due to the risk of self-destruction of the system" (id.
at 2:57---60). In view of these teachings, the Examiner has supplied
insufficient evidence or scientific reasoning to explain why the skilled
artisan would have made the proposed modification.
For the reasons above, the rejections of independent claims 1, 4, 9, 15,
and 17 are reversed. So too, we reverse the rejections of claims 3, 43--46,
and 48-55 because of their dependencies from claims 1, 4, 9, 15, and 17.
REJECTIONS IV and V
The Examiner rejected claims 4---6, 8-11, 17, and 4 7 over V oloshin
and Kato and claim 13 over Voloshin, Kato, and Saadat.
Each of Appellants' independent claims 4, 9, and 17, requires, inter
alia, "a chamber defining an unoccupied space and defined by a distal
portion of the elongate member." (App. Br. 29-30, 32 (Claims App'x).)
6
Appeal2014-008391
Application 12/078,963
The Examiner finds that "Voloshin discloses an endoscope 70
comprising an elongate member 78, a chamber B defining an unoccupied
space B ... when the instrument is not inserted there[]in." (Ans. 9.) The
Examiner concludes that it would have been obvious to
have provided the elongate member ofVoloshin with the at least
two lumens 12, 14 for irrigation and aspiration (or just the
irrigation lumen 14 for claim) with their respective distal ends as
taught by Kato in order to have provided an improved elongate
member having improved lumen(s) for irrigation and/or
aspiration defined on the interior space of the elongated member
with improved distal ends that are honed to provide appropriate
flow or irrigant and suction to and from the chamber for effective
cleaning and clearing the chamber and the medical instrument.
(Id. at 10-11.)
We are not persuaded that the Examiner has established by a
preponderance of the evidence that claims 4, 9, and 17 would have been
obvious. We recognize, but are not persuaded by the Examiner's assertion
that
Nowhere in paragraph [0046] of Voloshin is it stated that the
sleeve does not include a space. On the contrary, paragraph
[0045] teaches that the sleeve 70 is passed around the base 62 of
probe 60 which clearly suggests, that prior to insertion of the
probe 60, there is a chamber (regardless of size) defined at the
distal end of sleeve 70. Furthermore, as stated in [0046], sleeve
70 is inflatable and once inflated, it further defines a larger
chamber. Therefore, the negative recitation "unoccupied space"
is met by the Voloshin reference, since the probe 60 is removable
from the sleeve 70, such that sleeve 70 defines an unoccupied
space/chamber B. Therefore, the combination of Voloshin in
view of Kato is proper.
(Ans. 20-21.)
Volo shin teaches that "[p ]referably, the sleeve is folded over one or
more resilient rings encircling the probe, wherein the rings most preferably
7
Appeal2014-008391
Application 12/078,963
comprise ring-shaped springs, which encircle the outer surface of the probe
and are held against the probe by magnetic attraction." (Voloshin i-f 12
(emphasis added).) We agree with Appellants that
Volo shin [] has no discussion of the removal of the probe 60 from
the sleeve 70. If the probe 60 were removed from the sleeve 70,
the springs 64 and 66 would most likely collapse the sleeve 70
since the springs 64 and 66 would no longer be supported by the
probe grooves 68. The springs 64, 66 are disclosed as "press[ing]
sufficiently tightly against the sleeve." So they therefore have an
inward closing force.
As such, the sleeve 70 is either in a collapsed state (i.e. the
sleeve does not define a space) or is occupied by the probe 60.
There is no state taught in Voloshin in which the sleeve 70
includes an unoccupied "chamber B".
(Reply. Br. 4--5.) The Examiner did not establish a sufficient evidentiary
basis on this record to support the finding that Voloshin teaches "a chamber
defining an unoccupied space and defined by a distal portion of the elongate
member." In short, we are not persuaded that the collapsed sleeve of
Voloshin comprises "a chamber defining an unoccupied space" as required
by claims 4, 9, and 17.
For the reasons above, the rejection of independent claims 4, 9, and 17
is reversed. So too, we reverse the rejections of claims 5, 6, 8, 10, 11, 13,
and 4 7 because of their dependencies from claims 4 and 9.
CONCLUSION OF LAW
We reverse the rejection of claims 1, 3, 4, 9, 17, 43, and 50-55 under
35 U.S.C. § 103(a) over Boussignac and Adair.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) over
Boussignac, Adair, and Lafontaine.
8
Appeal2014-008391
Application 12/078,963
We reverse the rejection of claim 45 under 35 U.S.C. § 103(a) over
Boussignac, Adair, and Kato.
We reverse the rejection of claims 4---6, 8-11, 17, and 4 7 under
35 U.S.C. § 103(a) over Voloshin and Kato.
We reverse the rejection of claim 13 under 35 U.S.C. § 103(a) over
Voloshin, Kato, and Saadat.
We reverse the rejection of claim 44 under 35 U.S.C. § 103(a) over
Boussignac, Adair, and Brown.
We reverse the rejection of claim 46 under 35 U.S.C. § 103(a) over
Boussignac, Adair, and Saadat.
We reverse the rejection of claim 48 under 35 U.S.C. § 103(a) over
Boussignac, Adair, Lafontaine, and Brown.
We reverse the rejection of claim 49 under 35 U.S.C. § 103(a) over
Boussignac, Adair, Lafontaine, and Sadaat.
REVERSED
9