Ex Parte Hanlon et al

Board of Patent Appeals and Interferences

Jun 20, 2012

11676340 (B.P.A.I. Jun. 20, 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.
11/676,340 02/19/2007 Matthew A. Hanlon 10451-52 7968
16464 7590 06/20/2012
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
EXAMINER
DELLA, JAYMI E
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
06/20/2012 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 MATTHEW A. HANLON and JAMES C. EASLEY
____________

Appeal 2011-005561
Application 11/676,340
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-4, 6-10, 12-14,
and 16-20 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a disposable, tissue sticking resistant
forceps. Claim 1 is representative and is reproduced in the “Claims
Appendix” of Appellants‟ Brief.

Appeal 2011-005561
Application 11/676,340

2
Claims 1-4, 9, 10, and 12-14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bagley,
1
Thorne,
2
and Asahara.
3

Claims 6-8 and 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bagley, Thorne, Asahara, and
Kirwan.
4

We reverse.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

FACTUAL FINDINGS (FF)
FF 1. We adopt the Examiner‟s findings concerning the scope and content
of the prior art (Ans. 4-12), and repeat the following findings for reference
purposes.
FF 2. Examiner finds that Bagley suggests forceps within the scope of
Appellants‟ claimed invention, “but fails to disclose . . . pincers consisting of
aluminum” (Ans. 5).

1
Bagley, US 3,100,489, issued August 13, 1963.
2
Thorne, US 6,293,946 B1, issued September 25, 2001.
3
Asahara et al., EP 1 709 923 A2, published October 11, 2006.

4
Kirwan, Jr. et al., US 6,749,610 B2, issued June 15, 2004.

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Application 11/676,340

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FF 3. Thorne‟s Fig. 2 is reproduced below:

“FIG. 2 is a detailed view of [Thorne‟s] electrosurgical forceps” (Thorne,
col. 3, ll. 63-64).
FF 4. Thorne suggests “electrosurgical forceps including a pair of separate
spaced-apart electrodes adapted for conducting electrosurgical current
therebetween. Each of the pair of electrodes include[s] a tip with a distal
end” (Thorne, col. 3, ll. 22-25).
FF 5. Thorne suggests that “the electrosurgical forceps are comprised of a
pair of blades 115 usually made of stainless steel,” wherein
the tip 116 . . . is composed of a material having both high
electrical conductivity and high thermal diffusivity and which is
biologically compatible (bio-compatible) when used to apply
radio-frequency energy to tissue and/or fusible materials.
Preferably, this portion of the electrode will be formed from a
substantially pure metal having the desired electrical and
thermal characteristics. Suitable metals include silver and gold,
or alloys of silver and gold. . . .
Alternatively, it is possible to employ a variety of
composite, laminated, and coated structures as the electrode.
For example, it would be possible to employ an aluminum
central core which is coated with a coating of silver, gold, or
tungsten, preferably silver.

(Thorne, col. 5, ll. 33-35 and col. 6, ll. 23-41 (emphasis added); see
generally Ans. 5.)
Appeal 2011-005561
Application 11/676,340

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FF 6. Thorne suggests that “[t]he central core should be composed of a
material having higher thermal conductivity than stainless steel, such as
aluminum or copper” (Thorne, col. 6, ll. 57-59).
FF 7. Examiner finds that Bagley fails to suggest “a layer of biocompatible
metal on . . . each pincer at only the pointed end tip, each layer of
biocompatible metal consisting of a pure metal, having a thickness that is
less than 0.010 of an inch” (Ans. 6).
FF 8. Examiner finds that Asahara suggests
disposable tissue sticking resistant forceps where the opposed
surfaces (1a) of each arm tip end portions (1) have only a
plating of film (2) of a noble, or pure, metal material that is
biocompatible or having a plating of both noble metal material
layer (3a) infused with nonconductive fine particles (3b) that is
layered with a noble metal layer (4) . . . . The thickness of the
noble metal layer (3a) is in the range of 3-50 micrometers and
the thickness of layer (4) is in the range of 10 micrometers, . . .
which is less than .010 of an inch.

(Id.)
FF 9. Examiner relies on Kirwan to suggest “non-stick electrosurgical
forceps . . . that have electrically insulating coating . . . along the
intermediate body portions of the pincers . . . that leaves the tips . . . and the
proximal ends . . . of the pincers . . . exposed” (id. at 9).

ANALYSIS
Based on the combination of Bagley and Thorne Examiner concludes
that, at the time of Appellants‟ claimed invention it would have been prima
facie obvious to a person of ordinary skill in this art to
use only aluminum, since it is well known that aluminum is a
cheaper material, and since it has been held to be within the
Appeal 2011-005561
Application 11/676,340

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general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use as a matter of
obvious design choice.

(Ans. 5.) We are not persuaded.
As Appellants point out, the claimed invention requires pincers
consisting of aluminum (Reply Br. 3). Examiner admits that Bagley fails to
suggest forceps with pincers consisting of aluminum and relies on Thorne to
make up for this deficiency (FF 2; Ans. 5). Thorne, however, suggests
forceps comprising a pair of blades that are usually made of stainless steel
(FF 5). We recognize Examiner‟s assertion that the tip of Thorne‟s forceps
is within the scope of Appellants‟ claimed invention (see Ans. 14
(“Examiner points to Applicant‟s independent claims that each recite „a
layer of biocompatible metal on the aluminum of each pincer at only the
pointed end tip‟”)). While this may be true, Appellants‟ claims require, inter
alia, that the “first and second elongate pincers consist[s] of aluminum”
(Claim 1). Examiner failed to establish an evidentiary basis on this record to
support a conclusion that the combination of Bagley and Thorne suggest
first and second elongate pincers that consist of aluminum. In this regard,
we note that Thorne appears to distinguish between the portion of the
electrode comprising a central core (i.e. the tip of the electrode) and the
remainder of the blade by suggesting that “[t]he central core should be
composed of a material having higher thermal conductivity than stainless
steel, such as aluminum or copper” (FF 6; Cf. FF 5).
Examiner‟s reliance on Asahara to suggest the application of a noble
metal material to the tip of the forceps fails to make up for the deficiency in
the combination of Bagley and Thorne (FF 7-8; Ans. 6). The same is true of
Appeal 2011-005561
Application 11/676,340

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Examiner‟s reliance on Kirwan to suggest “non-stick electrosurgical forceps
. . . that have electrically insulating coating . . . along the intermediate body
portions of the pincers . . . that leaves the tips . . . and the proximal ends . . .
of the pincers . . . exposed” (FF 9).

CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
The rejection of claims 1-4, 9, 10, and 12-14 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bagley, Thorne, and Asahara is
reversed.
The rejection of claims 6-8 and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bagley, Thorne, Asahara, and Kirwan
is reversed.

REVERSED

cdc