Ex Parte Falahee

Board of Patent Appeals and Interferences

Mar 1, 2012

10444882 (B.P.A.I. Mar. 1, 2012)

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.
10/444,882 05/23/2003 Mark H. Falahee FLH-10102/29 7868
25006 7590 03/01/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
STIGELL, THEODORE J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
03/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK H. FALAHEE
__________

Appeal 2010-010673
Application 10/444,882
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
navigable trocar. The Examiner rejected the claims on grounds of
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“Trocars are essentially long, smooth, large needles having an
extremely sharp distal end and drainage tube connected to the proximal end”
(Spec. 1, ll. 9-11). The Specification teaches an “embodiment includes an
elongated curved shaft having a proximal end adapted for attachment to a
drainage tube and a sharpened distal tip, and one or more recess pads closer
to the proximal end, facilitating a more predictable grasping and
manipulation to steer the trocar through a body” (Spec. 2, ll. 7-10).
The Claims
Claims 1-3 are on appeal. Claim 1 is representative and reads as
follows:
1. A navigable trocar, comprising:
an elongated solid shaft having a proximal section and a
curved distal section terminating in a sharpened distal tip;
the shaft having a substantially uniform cross section and
smooth outer surface with the exception of one or more non-
round recesses into the outer surface of the proximal section of
the shaft without any raised projections beyond the outer
surface, the recesses facilitating a more predictable grasping
and manipulation to steer the trocar through a body; and
a drainage tube attached to the proximal end of the shaft.

The issue

The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as
obvious over Koch1 and Kurtz2 (Ans. 4).

1 Koch, Durmus, US 5,431,661, issued Jul. 11, 1995.
2 Kurtz, L.D., US 3,197,997, issued Aug. 3, 1965.
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The Examiner finds that “Koch discloses a navigable trocar assembly
comprising an elongated solid shaft (20) having a proximal section and a
curved distal section terminating in a sharpened distal tip (22), the shaft
having a substantially uniform cross section and smooth outer surface, and a
drainage tube (32) attached to the proximal end of the shaft” (Ans. 4). The
Examiner finds that “Koch does not teach to include one or more non-round
recesses on the proximal section of the shaft” (id.).
The Examiner finds that “Kurtz discloses a suture needle assembly
that is designed to pull sutures through body tissue. Kurtz discloses a shaft
having a smooth outer surface with non-round recesses (at 7, 8, 9, 10) in the
shaft wherein there are no projections beyond the outer surface” (id.).
The Examiner finds it obvious “to modify the device of Koch with the
recesses of Kurtz to provide a better gripping means on the drainage trocar
of Koch” (id.).
Appellant acknowledges that “Koch indeed discloses a navigable
trocar of precisely the type to which Appellant’s claimed are directed” (App.
Br. 2). Appellant contends that “even if Koch were modified with Kurtz
Appellant’s invention would not result. Note in claim 1 that Appellant
claims ‘an elongated solid shaft having a proximal section and a curved
distal section,’ and that ‘the non-round recesses into the outer surface [are
on] the proximal section of the shaft’” (id.). Appellant contends that “the
non-round recesses 7, 10, are on the curved section and not ‘the proximal
section of the shaft.’ The flats are closer to the tip of the needle because
when suturing a surgeon needs precise control of tip placement” (id. at 3).
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Appellant contends that “Koch also teaches away from a non-smooth
outer surface in favor of a smooth shaft and a seamless connection with the
diameter of the trocar and the diameter of the ‘connector’” (App. Br. 3).
Appellant cites Koch, who teaches “to maintain a continuous outer surface
between the trocar element 20 and the adapter 10 of constant outer diameter
when they are mated” (Koch, col. 4, ll. 38-40). Appellant contends that
“[b]ased upon this disclosure, one of skill in the art would recognize that
Koch teaches away from recesses in favor of a continuous, smooth surface.
If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification” (App. Br. 3).
Appellant contends that “it would not be obvious to simply put the
recesses of Kurtz on the trocar of Koch since this was invented by Appellant
and neither Koch nor Kurtz teach or suggest non-round recesses into the
curved, proximal section of a shaft” (id. at 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Koch and Kurtz render claim 1 obvious?
Findings of Fact
1. The Specification teaches “an elongated curved shaft having a
proximal end adapted for attachment to a drainage tube and a sharpened
distal tip, and one or more recess pads closer to the proximal end, facilitating
a more predictable grasping and manipulation to steer the trocar through a
body” (Spec. 2, ll. 7-10).

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2. Figure 1 of the Specification is reproduced below:

Figure 1 is a drawing of a trocar of the invention (Spec. 2, l. 20).
3. The Specification teaches that “two separate and distinct pads
112, 114 are shown, a single recessed area . . . each pad is recessed below
the outer surface of the shaft overall, so as not to interfere with movement of
the shaft of through body tissues” (Spec. 4, ll. 3-7).
4. The Specification teaches that “[n]ote further that the pad(s) are
preferably located toward the proximal end of the device 100, where it
attaches to tube 111” (Spec. 4, ll. 8-10).
5. Koch teaches that the “trocar element is similar to a traditional
trocar element in that it is typically fabricated of metal and has the shape of a
rod with a first end being machined to a sharp point” (Koch, col. 2, ll. 52-
55).

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6. Figure 7 of Koch is reproduced below:

“FIG. 7 is an illustration of a trocar assembly using an adapter and a trocar
element” (Koch, col. 3, ll. 48-49).
7. Koch teaches that the “flexible tube 32, which is common in
trocar assemblies, is fabricated of PVC and has a plurality of regularly
spaced pores or perforations 36 formed therein so as to provide for the
drainage of fluids” (Koch, col. 4, ll. 57-60).
8. Koch teaches that “reduction in diameter of the second end 24
of the trocar element 20 preferably corresponds to the wall thickness of the
threaded bore portion 18 of the adapter 10, so as to maintain a continuous
outer surface between the trocar element 20 and the adapter 10 of constant
outer diameter when they are mated” (Koch, col. 4, ll. 35-40).
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9. Figure 1 of Kurtz is reproduced below:

“FIG. 1 is a perspective view of a surgical suture needle” (Kurtz, col. 1, l.
63).
10. Kurtz teaches that “[a]djacent the midportion of suture needles
on the inner and outer portions of the curved surfaces thereof the needle is
slightly flattened” (Kurtz, col. 2, ll. 12-14).
11. Kurtz teaches that the “flattened surfaces form gripping areas
for needle holders and are provided in order to prevent twisting of the needle
in the holder” (Kurtz, col. 2, ll. 16-19).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421.
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Analysis
Koch teaches a trocar element “similar to a traditional trocar element
in that it is typically fabricated of metal and has the shape of a rod with a
first end being machined to a sharp point” (Koch, col. 2, ll. 52-55; FF 5).
Koch teaches that the “flexible tube 32, which is common in trocar
assemblies, is fabricated of PVC and has a plurality of regularly spaced
pores or perforations 36 formed therein so as to provide for the drainage of
fluids” (Koch, col. 4, ll. 57-60; FF 7).
While Koch, in figure 7 and in the patent text, discloses that the trocar
has a relatively uniform cross section with a smooth outer surface (FF 6, 8),
the Examiner acknowledges that Koch “does not teach to include one or
more non-round recesses on the proximal section of the shaft” (Ans. 4).
Kurtz teaches that “[a]djacent the midportion of suture needles on the
inner and outer portions of the curved surfaces thereof the needle is slightly
flattened” (Kurtz, col. 2, ll. 12-14; FF 10). Kurtz teaches that the “flattened
surfaces form gripping areas for needle holders and are provided in order to
prevent twisting of the needle in the holder” (Kurtz, col. 2, ll. 16-19; FF 11).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
found it obvious “to modify the device of Koch with the recesses of Kurtz to
provide a better gripping means on the drainage trocar of Koch” (Ans. 4; FF
10-11). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Appellant contends that “the non-round recesses 7, 10, are on the
curved section and not ‘the proximal section of the shaft.’ The flats are
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closer to the tip of the needle because when suturing a surgeon needs precise
control of tip placement” (App. Br. 3).
We are not persuaded that this difference renders the claims
nonobvious. That is, Kurtz expressly teaches, consistent with Figure 1 of
Kurtz, that “[a]djacent the midportion of suture needles on the inner and
outer portions of the curved surfaces thereof the needle is slightly flattened”
(Kurtz, col. 2, ll. 12-14; FF 9-10). Thus, Kurtz places the location of the
gripping area at the midpoint of the needle (FF 10). In the absence of any
evidence of a secondary consideration, placement of the gripping area
slightly more proximal than the midpoint disclosed by Kurtz represents a
functionally equivalent location for providing a grip for the trocar. An
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
The person of ordinary creativity would have reasonably recognized that the
slightly flattened portion designed for gripping may be located at a variety of
portions of the trocar needle, depending upon the specific surgery and
depending upon the preference of the surgeon.
Appellant contends that “Koch also teaches away from a non-smooth
outer surface in favor of a smooth shaft and a seamless connection with the
diameter of the trocar and the diameter of the ‘connector’” (App. Br. 3).
Appellant cites Koch, who teaches “to maintain a continuous outer surface
between the trocar element 20 and the adapter 10 of constant outer diameter
when they are mated” (Koch, col. 4, ll. 38-40). Appellant contends that
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“[b]ased upon this disclosure, one of skill in the art would recognize that
Koch teaches away from recesses in favor of a continuous, smooth surface.
If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification” (App. Br. 3).
We are not persuaded. The portion of Koch cited by Appellant simply
reflects Koch’s desire to permit mating of the trocar with the drainage tube,
and does not teach away from the use of gripping elements at the midpoint
or other locations on the trocar (see FF 8). Indeed, Kurtz makes it clear that
the gripping surfaces have a diameter smaller than the needle (FF 9-10)
which would have no effect on the ability of the trocar to penetrate flesh.
Like our appellate reviewing court, “[w]e will not read into a reference a
teaching away from a process where no such language exists.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006).
Appellant contends that “it would not be obvious to simply put the
recesses of Kurtz on the trocar of Koch since this was invented by Appellant
and neither Koch nor Kurtz teach or suggest non-round recesses into the
curved, proximal section of a shaft” (App. Br. 4).
We are not persuaded. The Supreme Court found that the
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR, 550
U.S. at 416. In the instant situation, inclusion of recesses on surgical
instruments to improve grip is expressly taught by Kurtz and Koch teaches a
trocar with the remaining elements necessary to satisfy the claims (FF 5-11).
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Kurtz does teach placement of the grip into a curved portion of the suture
needle, as is clear from Figure 1 where the grip is in the middle of the curved
needle (FF 9). As we have already discussed, the ordinary artisan of
ordinary creativity would reasonably have recognized that the location of the
grips could be slightly more proximal than the midpoint location taught by
Kurtz, thereby satisfying the requirements of the claim.
Conclusion of Law
The evidence of record supports the Examiner’s finding that Koch and
Kurtz render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Koch and Kurtz. Pursuant to 37 C.F.R. § 41.37(c)(1),
we also affirm the rejection of claims 2 and 3 as these claims were not
argued separately.

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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