Ex Parte Fleming et al

Patent Trial and Appeal Board

Apr 27, 2017

13235587 (P.T.A.B. Apr. 27, 2017)

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.
13/235,587 09/19/2011 Alistair Ian Fleming H-US-02729 5907
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
05/01/2017 EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISTAIR IAN FLEMING, SIMON RODERICK GROVER, and
CHARLES ALAN SEEGERT
Appeal 2016-000268
Application 13/235,587
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alistair Ian Fleming et al. (Appellants) appeal under 35 U.S.C. §
134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1)
claims 1, 2, 5, and 6 as unpatentable over Heaven (US 5,337,754; iss. Aug.
16, 1994); (2) claim 8 as unpatentable over Heaven and dayman
(US 5,037,379; iss. Aug. 6, 1991); and (3) claim 10 as unpatentable over
Heaven and Bell (US 5,465,731; iss. Nov. 14, 1995). Claims 7 and 9 have
been withdrawn from consideration. Claims 3, 4, and 11—20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000238
Application 13/235,587
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a specimen retrieval device.”
Spec. 11, Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A specimen retrieval device comprising;
an applicator;
a specimen retrieval bag operably disposed within the
applicator and deployable therefrom, the specimen retrieval bag
defining a cavity and including a closed portion and an open
portion;
a conduit positioned on an interior surface of the specimen
retrieval bag, the conduit extending within the specimen retrieval
bag and along at least a portion of a length of the specimen
retrieval bag, the conduit having positioned along its length a
plurality of perforations communicating with the cavity
configured to evacuate air from a portion of the specimen
retrieval bag; and
an open cell material disposed within the conduit.
ANALYSIS
Obviousness over Heaven
Claims 1, 2, 5, and 6
Appellants do not provide arguments for dependent claims 2, 5,
and 6 separate from those provided for independent claim 1. See
Appeal Br. 3—9. We select claim 1 as the representative claim, and
claims 2, 5, and 6 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
Independent claim 1 is directed to a specimen retrieval device
including a specimen retrieval bag having a conduit, wherein “an open cell
material [is] disposed within the conduit.” Appeal Br. 12, Claims App.
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Appeal 2016-000238
Application 13/235,587
Appellants contend that “there is absolutely no support in Heaven to
modify the inflatable bag 18 of Heaven in view of the disclosure in Heaven
directed to the retractor 1.” Appeal Br. 7. In particular, Appellants contend
that
the configuration of a retractor is substantially different from the
configuration of an isolation bag. There is nothing in Heaven
that would suggest that the use of high strength engineering
plastic or suitable metal open cell honeycomb or open cell foam
structures (col. 7, lines 5—15) would be suitable for use within
the channels 26 of Heaven’s isolation bag to open the bag while
still providing a cavity of suitable dimension for receiving a
tissue specimen. This is evidenced by the fact that Heaven did
not suggest such a modification would be possible or desirable.
Appeal Br. 7—8; see also Reply Br. 3^4.
It is well established that a reference disclosure is not limited only to
its preferred embodiments, but is available for all that it discloses and
suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747,
750 (CCPA 1976). In this case, the Examiner determines that
since Heaven teaches a specimen retrieval bag comprising
channels used for inflation and a second embodiment of Heaven
teaches a retractor using an open celled material with
perforations for inflation, it would have been obvious to one with
ordinary skill in the art at the time of the invention to recognize []
that the inflation means taught in the retractor embodiment of
Heaven could be an alternate inflation means for the gas used to
inflate the channels shown in the embodiment comprising the
specimen retrieval bag of Heaven shown in figure 9.
Ans. 2; see also Advisory Act. 2 (mailed Dec. 12, 2014); Final Act. 2—5.
The Examiner reasons that a skilled artisan “would recognize that the
two inflation means disclosed in Heaven were art-recognized equivalent
inflation means for inflatable surgical devices and it would have been within
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Appeal 2016-000238
Application 13/235,587
the knowledge of one with ordinary skill in the art... to substitute one for
the other between the two embodiments.” Ans. 3; see also Advisory Act. 2;
Final Act. 2—5. The Examiner concludes that it would have been obvious to
“to replace the pressurized fluid inflation means in the conduits [of Heaven]
with the open-cell material inflation means” as taught by Heaven to
“provid[e] a large surface area when the bag is deployed for capture of the
desired material.” See Final Act. 2, 4—5; see also Heaven, 7:9-13 (emphasis
added) (“Upon ejection, the honeycomb structure springs out to its preferred
configuration offering a large surface area suitable, by way of example, for
manipulating internal bodily organs.”). The Examiner’s findings and
conclusions are supported by the record and based on rational
underpinnings. Appellants do not provide persuasive evidence or argument
apprising us of Examiner error.
Even if, as argued by Appellants, “the configuration of a retractor [of
Heaven] is substantially different from the configuration of an isolation bag”
(see Appeal Br. 7; see also Reply Br. 3—4), that does not undercut the
Examiner’s findings and reason to modify Heaven in rendering obvious the
claimed subject matter. Appellants neither point to any lack of rational
underpinnings supporting the Examiner’s proposed modification, nor
provide any evidence that the claimed invention achieves unexpected or
surprising results over that which was known in the art. “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 7 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.
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Appeal 2016-000238
Application 13/235,587
To the extent that Appellants’ argument regarding channels 26 of
Heaven is to the effect that persons of ordinary skill in the art would not
substitute open cell honeycomb or open cell foam (inflation) structures for
pressurized inflation structures when considering Heaven’s disclosure (see
Appeal Br. 7; see also Reply Br. 4), that is not persuasive of
nonobviousness. KSR, 550 U.S. at 419 (“[Njeither the particular motivation
nor the avowed purpose of [Appellants] controls” in an obviousness
analysis.). The rejection is grounded in the principle that a person of
ordinary skill in the art would recognize that the inflation structures of
Heaven are equivalents recognized in the art as alternative structures to
achieve “inflation and expansion” of “inflatable surgical devices” and that
the proposed modification would have been within the level of ordinary skill
in the art. Id. at 417; see also Ans. 2—3; Advisory Act. 2; Final Act. 2—5.
In this case, the Examiner provides citation and support within
Heaven and knowledge within the level of ordinary skill to establish the
finding of equivalency, thus the proposed modification to Heaven meets the
burden of forming a prima facie case of obviousness. Ans. 2—3; see also
Advisory Act. 2; Final Act. 2—5. Moreover, with regard to Appellants’
contention “nothing in Heaven . . . would suggest” that the use of “open cell
honeycomb or open cell foam structures . . . would be suitable for use within
the channels 26 of Heaven’s isolation bag to open the bag while still
providing a cavity of suitable dimension for receiving a tissue specimen,” as
pointed out by the Examiner, “the open cell material” of Heaven “impart[s]
various predetermined shapes to the bag . . . while facilitating the collapsing
and ejecting of the retrieval bag within the delivery tube and to the surgical
site” and “provides] a large surface area when the bag is deployed for
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Appeal 2016-000238
Application 13/235,587
capture of the desired material.” See Final Act. 5; see also id. at 2-4;
Appeal Br. 7; Heaven, 7:5—15. Appellants do not apprise us of Examiner
error.1
Appellants further contend that
even if one were to modify the channels of Heaven’s isolation
bag to include an open cell material enclosed in an atraumatic
mesh with very small openings to facilitate venting of the
channels, the channels including the small openings would not
be configured to evacuate air from the specimen retrieval bag as
required by claim 1.
Appeal Br. 8. In particular, Appellants contend that “[t]he recitation ‘from a
portion of the specimen retrieval bag’ requires that air be evacuated from the
bag not into a different portion of the bag as suggested by the Examiner.”
Id. at 9; see also Appeal Br. 12, Claims App.
In response to Appellants’ argument, the Examiner takes the position
that
the limitation “configured to evacuate air from a portion of the
specimen retrieval bag” reads on the air being air being [sic]
evacuated from any portion of the specimen retrieval bag. The
modified conduits of Heaven to include very small openings to
facilitate venting of the channels can be placed on the inside or
outside surface of the bag to allow air to evacuate there through
. . . As long as the prior art evacuates air from a portion of the
bag, whether into a different portion of the bag or not, the prior
art meets the claim.
1 Appellants acknowledge that Heaven’s “honeycomb structure” offers “a
large surface area.” See Appeal Br. 6.
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Appeal 2016-000238
Application 13/235,587
Ans. 3d. Under the broadest reasonable interpretation, the Examiner’s
position is sound and based on rational underpinnings. Appellants do not
apprise us of Examiner error.
Appellants contend that “the use of open cell honeycomb or open cell
foam structures from Heaven’s self-deploying retractor 1 could not be
incorporated into Heaven’s isolation bag 18 without a complete redesign of
the isolation bag 18 if at all possible.” Reply Br. 4.
Appellants’ contention is unpersuasive because it amounts to
unsupported attorney argument, and thus, is entitled to little, if any, weight.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
In particular, Appellants do not apprise us how incorporating “open cell
honeycomb or open cell foam structures” into channels 26 of Heaven’s
isolation bag 18 would require “a complete redesign” of isolation bag 18.
See Reply Br. 4.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Heaven. We further
sustain the rejection of claims 2, 5, and 6, which fall with claim 1.
Obviousness over Heaven and either
dayman or Bell
daims 8 and 10
Appellants contend that neither dayman nor Bell “cure the
deficiencies of Heaven.” See Appeal Br. 9-10. As we find no deficiencies
in the Examiner’s rejection of independent claim 1 over Heaven for the
reasons discussed above, we likewise sustain the Examiner’s obviousness
rejections of claims 8 and 10.
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Appeal 2016-000238
Application 13/235,587
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, 5, 6,
8, and 10 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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