Ex Parte Franer et al

Patent Trial and Appeal Board

Mar 12, 2015

10943222 (P.T.A.B. Mar. 12, 2015)

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.
10/943,222 09/17/2004 Paul T. Franer END-5171 1749
21884 7590 03/12/2015
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
MCEVOY, THOMAS M
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
03/12/2015 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 PAUL T. FRANER, MARK S. ZEINER, and
MARK HOLTHAUS
1

____________

Appeal 2012-009278
Application 10/943,222
Technology Center 3700
____________

Before MELANIE L. McCOLLUM, JUSTIN T. ARBES, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a trocar housing for a trocar assembly. The Examiner rejected the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1
According to Appellants, the real party in interest is Ethicon Endo-Surgery,
Inc. (App. Br. 1).
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2
STATEMENT OF THE CASE
BACKGROUND
Trocar assemblies permit access to a body cavity during a surgical
procedure (Spec. 2). “[M]any trocar housings are formed with first and
second housing members . . . [that] are selectively coupled to facilitate
various surgical procedures. For example, it is often desirable to remove the
first housing member during the removal of a specimen” (id. at 3).
Appellants disclose “a convenient and reliable mechanism for
connecting first and second housing members” (id.). Appellants also
disclose a seal between the first and second housing members that maintains
insufflation (id. at 4–5, 13).
THE CLAIMS
Claims 1, 2, 4–14, 16–31, and 33–41 are on appeal.
2
Claims 1, 4, and
25 are representative and read:
1. A trocar housing for a trocar assembly, comprising:
a first housing member selectively coupled to a second housing
member, wherein the first and second housing members include
aligned apertures shaped and dimensioned for passage of an
instrument therethrough, the first housing member includes a first seal
assembly positioned in alignment with the aperture of the first housing
member and the second housing member includes a second seal
assembly positioned in alignment with the aperture of the second
housing member;
a rotary latch mechanism selectively coupling the first housing
member and the second housing member, the rotary latch mechanism
including a latching member which rotates relative to the first and
second housing members about a longitudinal axis of the housing

2
Claims 3, 15, and 32 have been cancelled (App. Br. 3). Claims 42–44
remain pending and have been indicated as allowable, if re-written into
independent form (id.).
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member for selectively coupling the first and second housing
members, the rotary latch mechanism includes at least one
downwardly extending arm extending from the first housing member
along an axis substantially parallel to the longitudinal axis of the first
housing member for passage through at least one hole formed in a top
surface of the second housing member, and the latching member is a
latching ring mounted within the second housing member for rotation
relative to the at least one hole and about a central axis of the trocar
housing, and the latching ring engages the downwardly extending arm
for selectively coupling the first housing member to the second
housing member, and the at least one downwardly extending arm
includes a camming surface and a latching surface.

4. The trocar housing according to claim 1, wherein the latching
ring includes a latching ring camming surface and the downwardly
extending arm includes an arm camming surface, and the latching
ring camming surface interacts with the arm camming surface to
rotate the latching ring for engagement of the latching ring and the
downwardly extending arm.

25. A trocar housing for a trocar assembly, comprising:
a first housing member selectively coupled to a second housing
member, wherein the first and second housing members include
aligned apertures shaped and dimensioned for passage of an
instrument therethrough;
wherein a seal is formed between the first housing member and
the second housing member when they are coupled, the seal
comprising an angular interface upon either the first housing member
or the second housing member which exerts radial and compressive
forces when the first housing member and the second housing member
are brought together which permits vertical travel of the first housing
member relative to the second housing member beyond a distance
required to seal the first housing member to the second housing
member.

(App. Br. 24, 25, 30 (emphasis added)). Independent claims 13 and 30
contain limitations similar to those emphasized in claim 1 (id. at 27, 31);
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claims 16 and 33 contain limitations similar to those emphasized in claim 4
(id. at 28, 32); and claims 7, 19, and 36 contain limitations similar to those
emphasized in claim 25 above (id. at 25–26, 28–29, 32–33).
THE ISSUES
A. The Examiner rejected claims 25–29 under 35 U.S.C. § 102(b)
as anticipated by Smith
3
(Ans. 4–5).
B. The Examiner rejected claims 1, 2, 4–14, 16–24, 30, 31, and
33–41 under 35 U.S.C. § 103(a) as obvious over Smith and Horimoto
4
(id. at
5–8).
Appellants separately argue independent claim 25; independent claims
1, 13, and 30; dependent claims 4, 16, and 33; and dependent claims 7, 19,
and 36 (App. Br. 15, 21, 22). The patentability of the remaining dependent
claims is not argued separately and, therefore, those claims stand or fall with
their parent claims. See 37 C.F.R. § 41.37(c).
A. 35 U.S.C. § 102(b) over Smith
Regarding claim 25, the Examiner finds that Smith discloses first and
second housing members (100; 200) with a seal formed between them (Ans.
4). The Examiner finds that the seal comprises an angular interface, near
element 210 on duckbill seal 208, as shown in Smith’s Figure 11, which
exerts radial and compressive forces when the housing members are brought
together, and which permits vertical travel of the first housing member
relative to the second housing member beyond a distance required to seal the
housing members, because the seal is resilient (id. at 4–5).

3
Smith et al. (“Smith”), US 5,603,702, issued Feb. 18, 1997.
4
Horimoto, US 5,645,302, issued July 8, 1997.
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The issue is: Does the evidence of record support the Examiner’s
conclusion that Smith discloses each element of claim 25?
FINDINGS OF FACT
1. Smith discloses “a valve system to be used in
combination with a cannula assembly where the cannula
assembly is intended for insertion into a patient’s body
and an instrument is inserted into the patient’s body
through the cannula” (Smith col. 1, ll. 10–12).
2. Smith discloses that “endoscopic procedures generally
require that any instrumentation inserted into the body be
sealed, i.e. provisions must be made to ensure that gases
do not enter or exit the body through the endoscopic
incision as, for example, in surgical procedures in which
the surgical region is insufflated” (id. at col. 1, ll. 20–25).
3. Smith discloses valve assembly 100 and cannula
assembly 200 (id. at col. 5, ll. 29–33). Smith discloses
that the valve assembly is “detachably mountable to the
proximal end of cannula 200 . . . [which] facilitates
specimen removal through cannula 200 and reduces the
profile of cannula 200 when valve assembly is not
needed for the surgical procedure” (id. at col. 5, ll. 49–
61).
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4. Smith’s Figure 11 is reproduced below, rotated clockwise
by ninety degrees:

“FIG. 11 is an enlarged cross-sectional view illustrating the
valve assembly and the cannula housing” (id. col. 4, ll. 56–57).
5. Smith discloses:
A cannula seal 208 fabricated from a resilient
material, e.g., rubber, is positioned within the
interior of cannula housing 204. Seal 208 includes
a circumferential flange portion 210 which rests on
a correspondingly dimensioned circumferential
ledge 212 within cannula housing 204. Seal 208
generally defines a duck bill shape having two
planar tapering portions 214 which intersect at
their distal ends to define abutment face 216 . . .
when cannula 202 is inserted into an insufflated
body cavity, abutment face 216 forms a gas-tight
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seal that isolates the insufflated cavity from the
ambient surroundings.
(Id. at col. 9, ll. 42–57).
6. Smith also discloses that:
The assembled valve assembly 100 is detachably
mounted adjacent stabilizing plate 218 with the
partial annular thread 222 of the stabilizing plate
218 being received within the peripheral groove
122 (FIG. 2a) defined in the distal face of seal
housing 112. The valve assembly 100 is rotated to
cause engagement of the radially inwardly
projecting rib portions 124 adjacent groove 122
with the partial annular thread 222 to releasably
lock the valve assembly 200 to the cannula
housing. Other means for detachably connecting
the valve assembly 100 to cannula housing 204 can
be readily determined by one skilled in the art such
as screw threads, adhesives, bayonet locking, and
the like.
(Id. at col. 10, ll. 14–29).
PRINCIPLES OF LAW
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).
ANALYSIS
Appellants contend that Smith’s seal does not exert radial or
compressive force and does not permit vertical travel of the first housing
member relative to the second housing member (App. Br. 13–15).
Specifically, Appellants argue that the resiliency of the seal is not sufficient
to disclose these limitations (id. at 13–14).
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We are unpersuaded. We agree with the Examiner’s finding that
Smith discloses a trocar housing comprising first and second housing
members (FF3 (100, 200)), each including apertures for the passage of an
instrument therethrough (FF1, FF2, FF4), wherein the housings are
selectively coupled together (FF3, FF6). We also agree with the Examiner’s
finding that a seal is formed between the housing members and that the seal
comprises an angular interface (FF4, FF5 (near 208, 218, 210)).
Smith expressly discloses that the seal between the housing members
is resilient (FF5 (rubber)). Consequently, we agree with the Examiner’s
finding that the seal exerts radial and compressive forces when the housing
members are brought together, which permits vertical travel of the first
housing member relative to the second housing member beyond a distance
required to seal the housing members together. This is inherent in Smith’s
disclosure because a resilient seal with an angular interface as shown in
Figure 11 (e.g., with an angular bend near 208, 218, 210) necessarily exerts
radial and compressive forces when it is compressed by the joining of the
two housing members (FF4–FF6). Likewise, a resilient seal as disclosed by
Smith necessarily permits the first housing member to travel vertically
toward the second housing member beyond a distance required to seal the
housing members together, so as to achieve a tight and effective seal (FF2,
FF4, FF5, Ans. 8–9). As noted by the Examiner, if the seal did not permit at
least some over-travel, the device “would require some exact amount of
compression for sealing,” which the Examiner finds to be neither disclosed
nor expected by a person of ordinary skill in the art (Ans. 8).
Appellants also argue that “the claim limitations relate to the interface
between a first housing member and a second housing member, both of
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which include[] a seal assembly,” and that Smith’s seal, which is located
under stabilizing plate 218, is in “an interface relationship within the cannula
200 itself” (App. Br. 14–15).
We are unpersuaded. That the stabilizing plate 218 is labelled as part
of “cannula 200” is merely a convenient label for identifying the
components of Smith’s device. The stabilizing plate 218 equally could be
considered part of first housing member 100 (see FF6; see also Ans. 9).
Furthermore, claim 25 does not require that the seal be positioned between
the entire first housing member and the entire second housing member. In
other words, Smith’s seal is located between a portion of the first housing
and a portion of the second housing (e.g., proximal end portion 103 and
cannula housing 204 (FF4)), which satisfies the broad claim language.
5

CONCLUSION OF LAW
The evidence of record supports the Examiner’s conclusion that claim
25 is anticipated by Smith. Because Appellants do not separately argue the
patentability of claims 26–29, those claims fall with claim 25.
B. 35 U.S.C. § 103(a) over Smith and Horimoto
Regarding claims 1, 13, and 30, the Examiner finds that Smith
discloses a trocar housing having first and second housing members
selectively coupled together by a variety of means, including by bayonet
locking (Ans. 5–6). The Examiner finds that Smith fails to disclose that the
housing members are coupled by a spring biased locking ring (id. at 6). The
Examiner finds that Horimoto discloses a bayonet-style, spring biased

5
Furthermore, claim 25 does not require that the first and second housing
members each “include[] a seal assembly,” as argued (App. Br. 14). The
only seal recited in claim 25 is that between the first and second housings.
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locking ring mechanism, which serves as a general coupling for small
connections (id.). The Examiner concludes that it would have been obvious
to one of ordinary skill “to have used the coupling means of Horimoto to
connect the housings of Smith et al. since it provides a quick-connect
mechanism that would be useful in a surgical environment” (id.).
Regarding the subject matter of claims 4, 16, and 33, the Examiner
finds that Horimoto’s coupling mechanism includes a downwardly
extending arm (122) and a spring-biased latching ring (151/130) (id. at 6).
The Examiner finds that the sides of the latching ring constitute a camming
surface, that the sides of the downwardly extending arm constitute a
camming surface, and that these structures are “capable of” interacting and
rotating the latching ring (id. at 7).
Regarding the subject matter of claims 7, 19, and 36, the Examiner
finds that Smith discloses a seal comprising an angular interface as claimed,
as discussed above with respect to independent claim 25 (id. at 4–5).
The issue is: Does the evidence of record support the Examiner’s
conclusion that Smith and Horimoto render claims 1, 4, 7, 13, 16, 19, 30, 33,
and 36 obvious?
FINDINGS OF FACT
7. Horimoto discloses a coupling system that may be
“applied to a small coupling apparatus” (Horimoto
Abstract; id. at col. 19, ll. 5–7).
8. Horimoto discloses that the coupling allows for quick
and easy connection and disconnection (id. at col. 1, ll.
49–52; col. 2, ll. 25–30; col. 3, ll. 49–52).
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9. Horimoto’s Figure 38 is reproduced below:

Figure 38 discloses an embodiment in which:
locking pieces 130 . . . are held by the rotational
member 261, and are moved in the circumferential
direction as the rotational member 261 is rotated.
These locking pieces 130 are biased inwardly in
the radial direction by leaf springs 264 and are
engaged with locking projecting portions 125 of
inserted locking pieces 122.
(Id. at col. 17, ll. 20–26).
10. Horimoto also discloses that “[w]hen the rotational
member 261 is located at its stop position, the locking
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pieces 130 correspond to locking piece insertion holes
112 and can be engaged with the locking projecting
portions 125 of the locking pieces 122 to be inserted” (id.
at col. 17, ll. 35–39).
11. Horimoto discloses that when rotational member 261 “is
rotated through, e.g., almost 90°, against the biasing
force of the power spring 266, the locking pieces 130 are
moved in the circumferential direction together with the
rotational member 261, thereby disengaging the locking
pieces 130 from the locking projecting portions 125 of
the locking pieces 122” (id. at col. 17, ll. 40–46).
PRINCIPLES OF LAW
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
“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). As expressly
recognized in KSR, any art recognized need or problem can provide a reason
for combining claim elements. Id.
ANALYSIS
CLAIMS 1, 13, AND 30
We understand Appellants to contend that Smith and Horimoto are not
analogous art (App. Br. 19).
We are unpersuaded. That Smith relates to a cannula assembly and
Horimoto relates to a coupling apparatus for cylindrical bodies (id.) does not
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preclude a determination of obviousness. “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). A person skilled in the
art, faced with the general problem of coupling in a trocar assembly, would
naturally look to coupling arrangements in other fields, because the coupling
mechanism need not depend on the particulars of the members being
coupled. We find no error in the Examiner’s reliance on Smith and
Horimoto.
Appellants also contend that Horimoto’s coupling structure could not
be applied to Smith’s device and that the Examiner fails to establish how to
combine these references with any reasonable expectation of success (App.
Br. 19–21; Reply Br. 3). Specifically, Appellants argue that Horimoto
discloses a “highly specific coupling structure adapted for open cylindrical
members where substantial space and versatility are possible. Smith does
not offer this space and versatility, and the potential for applying the
teachings of Horimoto to Smith renders the proposed combination highly
tenuous and improbable” (App. Br. 20–21).
We are unpersuaded. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also 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
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invention under review.”). Here, Smith discloses housing members that may
be connected by a variety of means, including bayonet connection (FF6).
The Examiner finds that Horimoto discloses a bayonet-style, spring biased
locking ring mechanism, which serves as a general coupling for small
connections (Ans. 6). Horimoto also discloses that this locking mechanism
allows for quick and efficient coupling and decoupling (FF8), a feature
important to use of Smith’s device (FF3). We agree, therefore, that a person
of ordinary skill in the art, faced with these teachings, would have found it
obvious “to have used the coupling means of Horimoto to connect the
housings of Smith et al. since it provides a quick-connect mechanism that
would be useful in a surgical environment” (Ans. 6).
We conclude that the Examiner has provided an articulated reasoning
with a rational underpinning that supports the conclusion of obviousness.
Appellants have not provided evidence or persuasive reasoning showing that
modifying Smith’s device to include a coupling mechanism like that
disclosed by Horimoto would not have been routine for one of ordinary skill
in the art. Indeed, Appellants’ primary argument—that Horimoto is directed
to open cylindrical members where space and versatility are possible (App.
Br. 20–21)—is not supported by Horimoto (Ans. 9–10; FF7). We are,
therefore, unpersuaded.
CLAIMS 4, 16, AND 33
Regarding claims 4, 16, and 33, Appellants contend that interaction of
the structures alleged to be the downwardly extending arm and spring biased
latching ring in Horimoto (e.g., elements 122 and 130/151) do not cause
rotation of the latching ring, as required by the claim (App. Br. 21).
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We agree with Appellants. We find that Horimoto does not support
the Examiner’s finding that the sides of the downwardly extending arm
(122) and the sides of the spring-biased latching ring (151/130) are “capable
of” interacting and rotating the latching ring (Ans. 7). To the contrary,
Horimoto discloses that movement of rotational member 261, not interaction
of camming surfaces, causes the latching ring to rotate (FF9–FF11).
The Examiner alternately argues that claims 4, 16, and 33 “do not
require the arms to cause rotation of the ring relative to either housing”
(Ans. 10).
We disagree. Claims 4, 16, and 33 explicitly require that the
camming surfaces of the downwardly extending arm and latching ring
“interact[] . . . to rotate the latching ring for engagement of the latching ring
and the downwardly extending arm” (App. Br. 25, 28, 32).
CLAIMS 7, 19, AND 36
Regarding claims 7, 19, and 36, Appellants contend that the elements
of these claims are lacking in Smith, as argued with respect to claim 25, and
that Horimoto fails to remedy the deficiency (App. Br. 25).
We are not persuaded, for the reasons discussed above with respect to
claim 25.
CONCLUSION OF LAW
The evidence of record supports the Examiner’s conclusion that
claims 1, 7, 13, 19, 30, and 36 would have been obvious in light of Smith
and Horimoto. Because Appellants do not separately argue the patentability
of claims 2, 5, 6, 8–12, 14, 17, 18, 20–24, 31, 34, 35, and 37–41, those
claims fall with claims 1, 7, 13, 19, 30, and 36.
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The evidence of record does not support the Examiner’s conclusion
that claims 4, 16, and 33 would have been obvious in light of Smith and
Horimoto.

SUMMARY
In summary:
we affirm the rejection of claims 25–29 under 35 U.S.C. § 102(b) as
anticipated by Smith;
we affirm the rejection of claims 1, 2, 5–14, 17–24, 30, 31, and 34–41
under 35 U.S.C. § 103(a) as obvious over Smith and Horimoto; and
we reverse the rejection of claims 4, 16, and 33 under 35 U.S.C.
§ 103(a) as obvious over Smith and Horimoto.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
mp