Ex Parte Hadba et al

Patent Trial and Appeal Board

Jun 20, 2016

12527445 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/527,445 08/17/2009
50855 7590 06/22/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Ahmad R. Hadba
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.
H-US-00601 (203- 5140) 4687
EXAMINER
NEGARESTAN, FARSHAD
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMAD R. HADBA and RUSSELL HEINRICH1
Appeal2014-002038
Application 12/527,445
Technology Center 3700
Before NINA L. MEDLOCK, ROBERT L. KINDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1--4, 6, 7, 9-13, and 15-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 The Appellants identify Covidien LP as the real party in interest. App.
Br. 1.
Appeal2014-002038
Application 12/527,445
Appellants' Invention
Appellants' invention "relates to methods for endoscopic
polypectomy," including "the use of sensors and materials which permit
excellent visualization of a polyp during an endoscopic procedure and,
where necessary, the removal of such a polyp." Spec. ,-r 2.
Claim on Appeal
Claims 1 and 12 are the only independent claims on appeal. These
claims are illustrative of the subject matter on appeal:
1. A method comprising: introducing at least one media
comprising at least one thermally responsive polymer into
tissue comprising submucosa of a polyp; measuring a response
to an external stimuli in the tissue, the external stimuli being
separate from the media and selected from the group consisting
of palpation, an air puff, and a light source under the polyp; and
deducing a state of health of the tissue depending on the
response to external stimuli.
12. A system comprising: a cannula for introducing at least
one media comprising at least one thermally responsive
polymer into tissue comprising submucosa of a polyp; and at
least one sensor for determining changes in the tissue, wherein
the cannula further comprises a pressure sensor for determining
the pressure of the media in the submucosa.
App. Br. 19-21 (Claims App'x).
Examiner's Rejections
I. Claims 1, 2, 7, and 9 are rejected under 35 U.S.C. § 103(a) over
Scopton (US 2006/0070631 Al, pub. Apr. 6, 2006) and de la Torre (US
7,033,373 B2, Apr. 25, 2006).
II. Claim 3 is rejected under 35 U.S.C. § 103(a) over Scopton,
de la Torre, and Machida (US 4,411,257, Oct. 25, 1983).
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Ill. Claims 4, 6, 10, and 11 are rejected under 35 U.S.C. § 103(a) over
Scopton, de la Torre, and Bryan (US 6,596,257 B2, July 22, 2003).
IV. Claims 12, 13, and 20 are rejected under 35 U.S.C. § 103(a) over
Scopton and Glowa (US 6,086,542, July 11, 2000).
V. Claims 15-18 are rejected under 35 U.S.C. § 103(a) over Scopton,
Glowa, and Bryan.
VI. Claim 19 is rejected under 35 U.S.C. § 103(a) over Scopton,
Glowa, Machida, and Hayafuji (US 5,634,463, June 3, 1997).
ANALYSIS
Claims 1, 2, 7, and 9
Appellants first contend that Scopton fails to "disclose or suggest
subjecting a polyp to an external stimuli such as palpation, an air puff, or a
light source under the polyp." App. Br. 7. Appellants further contend "[a]
dye included in the media introduced with the submucosa of a polyp is
clearly distinguishable from an external stimuli separate from the media, as
recited in the claims." Id.
Appellants' contentions are not commensurate in scope to the
language of claim 1. Claim 1 requires "introducing at least one media
comprising at least one thermally responsive polymer into tissue comprising
submucosa of a polyp; measuring a response to an external stimuli in the
tissue." Id. at 19. Claim 1 does not require "subjecting a polyp to an
external stimuli" as Appellants contend. Instead, claim 1 requires measuring
a response to an external stimuli in the tissue. Although the tissue comprises
submucosa of a polyp, use of the term "comprising" is open ended, meaning
the tissue is not limited to just submucosa of a polyp. See Ans. 8 ("The
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tissue comprises the submucosa of a polyp. So, the tissue is not limited to
the polyp and its submucosa, but rather the tissue can include stomach
wall."); see also MPEP § 2111. 03 ("The transitional term 'comprising',
which is synonymous with 'including,' 'containing,' or 'characterized by,' is
inclusive or open-ended and does not exclude additional, unrecited elements
or method steps."). Thus, the Examiner need not show that the combination
of prior art teaches subjecting a polyp to an external stimuli as Appellants
contend.
Further, the Examiner does not rely on the dye disclosed in Scopton as
"an external stimuli in the tissue." See Ans. 3 ("Scopton does not explicitly
disclose measuring a response to external stimuli"). Instead, the Examiner
relies on de la Torre's teaching "of an endoscope to observe (i.e. measure the
response by a camera) a patient's stomach while it is palpated" as
corresponding to the claimed external stimuli. Id. Thus, the Examiner relies
on de la Torre's palpation as the external stimuli. Id.
Appellants also contend "nowhere does de la Torre disclose or suggest
its device might be suitable for use in tissue comprising the submucosa of a
polyp, as recited in independent claim 1." App. Br. 7. According to
Appellants, "while de la Torre suggests using palpation as a means for
determining the proper location for an incision to introduce its device into
the stomach," it fails to "suggest introducing a stimuli to a polyp, including
palpation ... and deducing a state of health of the tissue depending on the
response to the external stimuli, as recited in claim 1." Id. at 8.
The Examiner relies on Scopton as teaching introduction of at least
one media comprising at least one thermally responsive polymer into tissue
comprising submucosa of a polyp. Ans. 3, 8. Appellants also recognize,
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Scopton teaches a "the media introduced with the submucosa of a polyp
.... " App. Br. 7. The Examiner relies on de la Torre as teaching use of "an
endoscope to observe the response of the gastric surface (stomach wall) to
external palpation." Ans. 8. The Examiner finds that because Scopton
teaches using endoscopes for diagnosis of gastrointestinal (GI) tract, and
because it is well known to use an endoscope for the observing the response
of the tissue to palpation (the claimed stimuli), one of ordinary skill in the art
would recognize the suitability of using the endoscope of Scopton for
observing the response of the GI tissue to external palpation as taught by de
la Torre. We find no error in the Examiner's findings.
Appellants' arguments are also premised on claim 1 requiring
"introducing a stimuli to a polyp" (App. Br. 8), which, as discussed above, is
not commensurate in scope to the actual claim language. Scopton discloses
that the thermally responsive polymer is injected to the submucosa of a
polyp to facilitate endoscopic procedures, and de la Torre teaches palpating
a patient's tissue and observing the response to the palpation by an
endoscope. See Ans. 3. We agree with the Examiner that it would have
been obvious "to apply palpation and endoscopic observation as taught by de
la Torre in the method of Scopton to diagnose the state of health of the
patient" as required by claim 1. Id. at 3--4.
For the reasons set forth above, and for the reasons provided by the
Examiner, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 103(a) over Scopton and de la Torre. Because Appellants do not
separately argue claims 2, 7, and 9, apart from their dependency from
claim 1, we likewise sustain the Examiner's rejection of claims 2, 7, and 9
under 35 U.S.C. § 103(a) over Scopton and de la Torre.
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Claim 3
Claim 3 recites "[t]he method of claim 1, wherein the external stimuli
comprises an air puff and measuring the response is performed with a device
comprising a tonometer." App. Br. 13 (Claims App'x).
The Examiner finds Machida teaches an inspection endoscope used to
examine a colon, including a tonometer to obtain tension information and a
pressure gauge to obtain information regarding pressure in the colon.
Ans. 4. The Examiner further finds a tonometer as disclosed by Machida
encompasses an air tonometer which measures the response of the tissue to a
stimuli from an air puff. Id. at 9.
Appellants contend
Machida's reference to tonometers for use in the colon does not
disclose or suggest measuring a response to an external stimuli
such as an air puff, nor does Machida' s reference to pressure
gauges suggest a system including a cannula having a pressure
sensor for determining the pressure of the media in the
submucosa.
App. Br. 19; Reply Br. 3.
The Examiner has not persuasively established that Machida's
general reference to data "displayed on a tonometer" or "a data device 44
such as a pressure gauge" relates to the claim limitation requiring an air puff
and measuring the response of the air puff by a tonometer. See Ans. 4
(citing Machida, col. 1, 11. 53-55, col. 3, 11. 5-8). Likewise, Machida's
general mention of obtaining data concerning "the inner pressure of the
colon" does not necessarily relate to an external stimuli (air puff) being
measured in the tissue as required by claim 3. Machida, col. 3, 11. 32-38.
For the reasons set forth above, and based on the record before us, we
do not sustain the Examiner's rejection of claim 3.
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Claims 4, 6, 10, and 11
Initially, we note that Appellants argue the Examiner's rejection of
claims 4, 6, 10, and 11 is erroneous for reasons similar to those that
Appellants argue the rejection of claim 1 is erroneous. See App. Br. 12-13.
Inasmuch as we are not persuaded by any of Appellants' arguments
regarding claim 1, we sustain the rejections of claims 4, 6, 10, and 11.
Appellants also contend Bryan does not disclose the light sources
recited in claims 4 and 6. App. Br. 13; Reply Br. 4. Appellants, however,
fail to provide any explanation as to why or how the Examiner erred. See
37 CPR§ 41.37(c)(l)(iv) ("The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant." (emphasis
added)). As such, we find Appellants' contention unpersuasive. See also
Ans. 5 (Examiner finding "bioluminescence agent (e.g. Renilla luciferase,
Col. 32, L. 36-39) ... as a light source").
Claims 12, 13, and 20
Initially, we note that Appellants argue the Examiner's rejection of
claims 12, 13, and 20 is erroneous for reasons similar to those that
Appellants argue the rejection of claim 1 is erroneous. See App. Br. 14;
Reply 4. Inasmuch as we are not persuaded by any of Appellants'
arguments regarding claim 1, we sustain the rejection of claims 12, 13, and
20.
Appellants also contend "nowhere does Glowa disclose or suggest the
use of its device to introduce a thermally responsive polymer into the
submucosa of a polyp." Reply Br. 4. We find this contention unpersuasive.
First, Appellants contention is not commensurate in scope to claim 12,
which requires "introducing at least one media comprising at least one
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thermally responsive polymer into tissue comprising submucosa of a polyp."
App. Br. 21. Next, the Examiner relies on Scopton, and not Glowa, as
teaching this limitation. See Ans. 6 ("Scopton discloses a system
comprising: a cannula ... for introducing at least one media comprising at
least one thermally responsive polymer ... into tissue comprising
submucosa of a polyp.").
Appellants next argue the Examiner erred in finding that Glowa's
pressure sensor could be used with any device, and Glowa does not, in fact,
suggest the use of a pressure sensor on any cannula, or in the system recited
in claim 12. App. Br. 14.
The Examiner finds "Glowa teaches a cannula for enabling fluid
inflow (i.e. injection) during endoscopic procedures (abstract) which is
equipped with a pressure sensor to determining the pressure of a media."
Ans. 6. Thus, according to the Examiner, "it would have been obvious to
one of ordinary skill in the art at the time of the invention to apply a pressure
sensor as taught by Glowa in the cannula of Scopton to determine the
pressure of the media in the submucosa." Id.
The Examiner's findings are persuasive. Glowa's device is described
for use in endoscopic surgical procedures. Glowa, col. 1, 11. 9-10; see also
id. at col 1, 11. 38--40 ("Pressure sensing devices may be provided in a
variety of configurations depending upon ... the particular surgical
procedure."). Thus, we find no error in the Examiner's determination that
Glowa' s pressure sensor could be applied to the cannula of Scopton to
determine the pressure of the media in the submucosa.
For the reasons set forth above, and for the reasons provided by the
Examiner (Ans. 6, 10), we sustain the Examiner's rejection of claim 12
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under 35 U.S.C. § 103(a). Because Appellants do not separately argue
claims 13 and 20 apart from their dependency from claim 12, we likewise
sustain the Examiner's rejection of claims 13 and 20 under 35 U.S.C.
§ 103(a).
Claims 15-18
Initially, we note that Appellants argue the Examiner's rejection of
claims 15-18 is erroneous for reasons similar to those that Appellants argue
the rejection of claim 12 is erroneous. See App. Br. 15. Inasmuch as we are
not persuaded by any of Appellants' arguments regarding claim 12, we
sustain the rejection of claims 15-18. Appellants also contend that Bryan
fails to teach or suggest "thermally responsive polymers" and "a cannula
having a pressure sensor." Id. However, the Examiner does not rely on
Bryan as teaching these limitations. See Ans. 6, 7, 10.
For the reasons set forth above, and for the reasons provided by the
Examiner (Ans. 6, 7, 10), we sustain the Examiner's rejection of claims 15-
18 under 35 U.S.C. § 103(a).
Claim 19
Claim 19 recites "[t]he system of claim 12, wherein the sensor
comprises an air tonometer." App. Br. 22. Claim 12 also recites "at least
one sensor for determining changes in the tissue." Id. at 21.
The Examiner finds that Scopton and Glowa disclose the invention
substantially as claimed, except for an air tonometer. Ans. 7. According to
the Examiner, "Machida teaches an inspection endoscope that can be used to
examine a colon (abstract)," and also a tonometer to obtain tension
information of the colon. Id. The Examiner's finds that "Hayafuji teaches
an air tonometer to accurately measure intraocular pressure of a subject's
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eye." Id. The Examiner explains "Hayafuji is relied upon for teaching a
non-contact air tonometer as an alternative for [the] tonometer of Machida."
Id. at 11. The Examiner determines it would have been obvious to one of
ordinary skill in the art at the time of the invention to apply an air tonometer
as taught by Machida and Hayafuji in the system and method of Scopton to
measure pressure of the media in the polyp and obtain tension information of
the polyp. Id. at 7-8.
Appellants contend that Machida fails to "suggest a system including
a cannula having a pressure sensor for determining the pressure of media in
the submucosa of a polyp." App. Br. 16. Appellants contend Hayafuji
discloses a non-contact tonometer capable of measuring intraocular pressure
of a subject's eye, but the reference fails to teach the requirements of
claim 19. Appellants also contend the Examiner engaged in impermissible
hindsight, "as one skilled in the art would have no reason to use the ocular
tonometer of Hayafuji for treating and/or removing polyps." Id. at 17.
Appellants' arguments focus on the references individually without
consideration of the combination proposed by the Examiner. See App.
Br. 16-17; Reply Br. 6. Appellants' contentions also argue limitations that
are not required by the claims. See Ans. 11 ("it is noted that the features
upon which applicant relies (i.e., use the ocular tonometer of Hayafuji for
treating and/or removing polyps) are not recited in the rejected claim(s)").
For example, claims 12 and 19 require a tonometer "for determining changes
in the tissue." App. Br. 20-22. We agree with the Examiner that Hayafuji's
non-contact air tonometer integrated with Machida's colon tonometer would
be suitable for determining changes in the tissue as claimed. We also agree
that the Examiner has provided a persuasive rationale for why one of
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ordinary skill in the art would integrate Hayafuji for its teachings of a non-
contact tonometer capable of measuring pressure into the colon tonometer of
Machida. See Ans. 7-8, 11. Further, Appellants' contention that one skilled
in the art would have no reason to use the ocular tonometer of Hayafuji for
treating or removing polyps is not commensurate in scope to claim 12, as
discussed above.
For the reasons set forth above, and for the reasons provided by the
Examiner (Ans. 7, 10-11), we sustain the Examiner's rejection of claim 19
under 35 U.S.C. § 103(a).
CONCLUSION
The rejection of claims 1, 2, 7, and 9 under 35 U.S.C. § 103(a) over
Scopton and de la Torre is affirmed.
The rejection of claim 3 under 35 U.S.C. § 103(a) over Scopton,
de la Torre, and Machida is reversed.
The rejection of claims 4, 6, 10, and 11 under 35 U.S.C. § 103(a) over
Scopton, de la Torre, and Bryan is affirmed.
The rejection of claims 12, 13, and 20 under 35 U.S.C. § 103(a) over
Scopton and Glowa is affirmed.
The rejection of claims 15-18 under 35 U.S.C. § 103(a) over Scopton,
Glowa, and Bryan is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) over Scopton,
Glowa, Machida, and Hayafuji is affirmed.
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DECISION
We AFFIRM the Examiner's final rejection of claims 1, 2, 4, 6, 7, 9-
13, and 15-20.
We REVERSE the Examiner's decision to reject claim 3.
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-IN-PART
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