Ex Parte Gellman

Board of Patent Appeals and Interferences

Mar 5, 2012

10062357 (B.P.A.I. Mar. 5, 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.
10/062,357 01/31/2002 Barry N. Gellman BSCU-231/00US
(28748/105)
2971
21710 7590 03/05/2012
BROWN RUDNICK LLP
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/05/2012 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 BARRY N. GELLMAN
____________________

Appeal 2010-004267
Application 10/062,357
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004267
Application 10/062,357
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-8 and 10-24. We have jurisdiction under 35
U.S.C. § 6(b). Claim 1, reproduced below with added emphasis, is
illustrative of the claimed subject matter.
1. A needle device, comprising:
a supply tube having a proximal end and a distal end;
a nozzle, comprising:
a longitudinal axis, a proximal end,
a distal end,
a bevel at said distal end comprising a tissue
piercing point,
a first lumen axially disposed in said nozzle from
said proximal end to said distal end, said first lumen at
said proximal end of said nozzle in fluid communication
with said distal end of said supply tube, said nozzle
comprising a first opening at said distal end of said
nozzle in fluid communication with said first lumen,
a second lumen axially disposed in said nozzle
from said proximal end to said distal end, said nozzle
further comprising a second opening at said distal end of
said nozzle in optical communication with said second
lumen, wherein the first opening is distal to the second
opening between the second opening and the tissue
piercing point, and
at least one optical element axially positioned in
said second lumen for transmitting and receiving optical
radiation through said second opening in said nozzle.

References
The Examiner relies upon the following prior art references:
Olinger
Lowery
Spencer
Mix
Kolff
US 3,941,121
US 4,624,243
US 5,127,916
US 5,236,423
US 5,370,640
Mar. 2, 1976
Nov. 25, 1986
Jul. 7, 1992
Aug. 17, 1993
Dec. 6, 1994
Appeal 2010-004267
Application 10/062,357
3
Bui
Seward
Slanda
Drasler

US 6,036,116
US 6,039,693
US 6,053,899
US 6,258,061 B1
Mar. 14, 2000
Mar. 21, 2000
Apr. 25, 2000
Jul. 10, 2001

Rejections
The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
I. Claim 1 as unpatentable over Olinger.
II. Claims 8, 11, 15-19, and 23 as unpatentable over Olinger and Lowery.
III. Claims 2, 3, 5, and 6 as unpatentable over Olinger, Lowery, and
Drasler.
IV. Claims 4 and 7 as unpatentable over Olinger, Lowery, and Mix.
V. Claim 10 as unpatentable over Olinger, Lowery, and Seward.
VI. Claims 12-14 as unpatentable over Olinger, Lowery, and Kolff.
VII. Claims 20-22 as unpatentable over Olinger, Lowery, and Slanda.
VIII. Claim 24 as unpatentable over Olinger, Lowery, and Spencer.

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejection I
Independent claim 1 requires, in relevant part, a nozzle having a first
opening distal to a second opening, with the nozzle also having a tissue-
piercing bevel. The Examiner found that Olinger has first and second
openings, but without the first opening distal to the second opening or a
bevel. Ans. 3-4; see also Olinger, fig. 3 (noting the two openings are flush
with one another). The Examiner then concluded it would have been
Appeal 2010-004267
Application 10/062,357
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obvious to modify Olinger to have the claimed configuration, as a
“rearranging [of] parts” and a “mere reversal of … parts.” Ans. 4; see also
Ans. 11 (depicting the proposed rearrangement). The Examiner also adds
that it would have been obvious to make the first opening distal to the
second to use the fluid supply to flush the lens. Id. at 4.
Appellant argues that Olinger does not teach a piercing point, and thus
there is no rearrangement or reversal of parts because this part is missing.
Br. 9.
To deploy the needle 11 of the endoscope of Olinger, a pathway to the
viewing area is first made by a puncture needle and stylet combination.
Olinger, col. 9, ll. 30-33. The stylet is then removed and the needle 11 of the
endoscope is subsequently introduced into the puncture needle. Id. at ll. 33-
39. As such, we agree with Appellant that Olinger’s needle 11 does not
have a “tissue piercing point” as required by independent claim 1, such as to
constitute a rearrangement of parts.
To the extent the Examiner’s position is that moving the second
opening behind the first opening in the Olinger needle (see Ans. 11) would
form a bevel, we note that this is more than a mere rearrangement or reversal
of parts but rather a modification of their relative positions and functions,
without a reason why such a modification would be obvious. For example,
given that Olinger requires a separate puncture needle, it is not clear that
such a modification would result in a bevel with a “tissue piercing point.”
Consequently, the Examiner has not provided a reason having rational
underpinning supporting the conclusion that it would have been obvious to
modify the nozzle (needle 11) of Olinger to have a bevel with a tissue
piercing point with the first opening distal to the second opening. As such,
we do not sustain Rejection I.
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Application 10/062,357
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Rejection II
Claims 8, 11, 15-19, and 23 specify various features of the nozzle of
claim 1. In this rejection, the Examiner found that Olinger teaches the
claimed invention except for the “bevel and first opening distal to a second
opening.” Ans. 5. The Examiner then found that Lowery teaches “that it is
known to use the bevel and first opening distal to a second opening between
the second opening and tissue piercing point, as set forth in Figures 2,6,7
and paragraphs beginning at column 5 line 12 to column 6 line 62.” Id. On
this basis, the Examiner concluded that it would have been obvious to
modify Olinger to include the bevel and first opening distal to the second to
“provide optimal and effective direct visualization.” Id.
Appellant argues that Lowery does not teach a first opening (claimed
to provide fluid communication) or the first opening distal to the second
opening. Br. 11-12. The Examiner responds that Lowery teaches the first
opening providing fluid communication because it supplies a solid medical
device (the fiber optics of Lowery’s visualization system). Ans. 12.
The Examiner does not address Appellant’s argument that Lowery
does not teach a first opening distal to a second opening, which we find
persuasive. Lowery’s device only provides one opening, not two, such that
Lowery cannot teach a first opening distal to a second. Accordingly, the
Examiner’s finding that Lowery teaches “that it is known to use the bevel
and first opening distal to a second opening” is not supported by a
preponderance of the evidence and we do not sustain Rejection II.

Appeal 2010-004267
Application 10/062,357
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Rejections III-VIII
With respect to Rejections III-VIII, Appellant argues that these
rejections do not cure the underlying deficiencies identified above with
respect to Olinger and Lowery. Br. 14-18. We agree.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-8 and 10-24.

REVERSED

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