Ex Parte Hart et al

Patent Trial and Appeal Board

Dec 10, 2018

11279600 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/279,600 04/13/2006 Charles C. Hart
21378 7590 12/12/2018
APPLIED MEDICAL RESOURCES CORPORATION
22872 A venida Empresa
Rancho Santa Margarita, CA 92688
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.
3514-US 8409
EXAMINER
ENGEL, MATTHEW A
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
uspto@appliedmedical.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES C. HART, JOHN R. BRUSTAD, and
JEREMY J. ALBRECHT
Appeal2018-004201
Application 11/279,600
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection under 35 U.S.C. § 103(a) of claims 1-3 and 37--41 as unpatentable
over Blake (US 5,242,412, iss. Sept. 7, 1993) and Dehdashtian (US 2003/
0085373 Al, pub. May 8, 2003) and of claims 6-9 and 44--47 over Blake,
Dehdashtian, and Willis (US 2005/0187524 Al, pub. Aug. 25, 2005). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2018-004201
Application 11/279,600
THE INVENTION
Appellants' invention relates to check valves for trocars. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A duckbill check valve for receiving an instrument
therethrough, comprising:
a substantially circumferential hollow elastomeric body
having a first, proximal end that is open and a second, distal end
that is closed;
a pair of opposed substantially flat portions at an angle to a
longitudinal axis of the elastomeric body, the pair of flat portions
extending distally toward one another and intersecting at the distal
end of the elastomeric body, thereby forming an edge, the edge
defining an edge axis substantially perpendicular to the
longitudinal axis of the elastomeric body;
a slit along the edge at the distal end of the body, the slit
having a shape consisting essentially of a single linear segment
extending parallel to the edge axis along the edge, and a periphery
of the slit having a first perimetric length in an undisturbed state,
the slit being stretchable to a stretched configuration such that the
periphery of the slit has a second perimetric length greater than the
first perimetric length and the periphery of the slit in the stretched
configuration fits around a periphery of the instrument; and
a reinforcing structural member at each end of the slit, each of
the structural members comprising a protuberance projecting away
from each of the flat portions of the duckbill check valve generally
perpendicular to a plane formed by the longitudinal axis and the
distal edge of the duckbill check valve and extending proximally
into each of the flat portions of the duckbill check valve;
wherein the slit and the substantially flat portions form a
single seal member providing a zero seal in the absence of the
instrument positioned within the slit and an instrument seal
defined by the slit in the stretched configuration in the presence of
the instrument positioned within the slit; and
wherein the duckbill check valve is configured to be
positioned in a fluid pathway of a seal housing of a trocar such
that the single seal member inhibits the escape of insufflation
gases.
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Appeal2018-004201
Application 11/279,600
OPINION
Unpatentability of Claims 1-3 and 37-41
over Blake and Dehdashtian
Claims 1 and 3 9
Appellants argue independent claims 1 and 39 together. Appeal
Br. 6-10. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Blake teaches the invention except for a
reinforcing structure with protuberances, for which the Examiner relies on
Dehdashtian. Final Action 3---6. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to reinforce the valve of Blake with the reinforcing structure as
taught by Dehdashtian. Id. at 6. According to the Examiner, a person of
ordinary skill in the art would have done this to maintain closure of the slit
opening. Id. at 6.
Appellants argue that Blake discloses two seals, not a "single" seal.
Appeal Br. 7-8 ("Blake ... includes two separate seals."). According to
Appellants,
Blake repeatedly indicates that the trocar tube thereof includes a
sealing ring ( 48) to seal around an instrument and that valve
(50) seals when no instrument is present. ... Blake does not
contemplate that the valve (50) of Figure 4, in isolation, forms
an instrument seal, rather it acts in conjunction with a seal
formed at the sealing web (54) of sealing ring (48).
Id. at 8-9 ( emphasis added).
In response, the Examiner states that there is no "in isolation"
requirement in the claims. Ans. 5. In reply, Appellants reiterate that Blake
discloses "two structurally distinct seals." Reply Br. 2.
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Appeal2018-004201
Application 11/279,600
Having carefully considered the positions of the Examiner as well as
Appellants, we think that the Examiner has stated the better one. Claim 1
contains a "comprising" transition. "In the patent claim context the term
'comprising' is well understood to mean 'including but not limited to."'
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007);
see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
( explaining the "comprising" transition means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim).
Claim 1 is directed to a "duckbill check valve." Claims App. The
claim requires "a slit along the edge at the distal end of the body." Id. The
subsequent limitation directed to forming a zero seal in the absence of an
instrument and an instrument seal in the presence of an instrument relates to
"the slit" and its substantially flat portions of the duckbill valve. Id.
Nothing in the claim precludes the use of an additional seal at the proximal
end of the trocar.
Furthermore, whereas Appellants' claimed invention is directed to a
duckbill check valve (Claims App., claim 1 preamble), we note that Blake is
more broadly directed to a trocar assembly that includes a plurality of
components including: (1) a sealing ring and (2) a sealing valve that is
positioned in the trocar tube. Blake, Abstract. In at least one embodiment,
sealing ring 48 is an entirely separate component from sealing valve 50. Id.
Fig. 2. Thus, the scope of Blake's invention includes, but is not limited to, a
valve for a trocar. Id. col. 1, 11. 56-57. Blake's valve features an integral
retaining collar at the proximal end of the seal. Id. col. 1, 11. 62---63, Fig. 4.
At the distal end are two valve walls that converge to form lips for closing
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Appeal2018-004201
Application 11/279,600
the valve. Id. col. 1, 11. 63-65, Fig. 4. When instruments are withdrawn
from the trocar tube, the lips provide a seal for gas pressure in the patient's
body cavity. Id. col. 4, 11. 55---68.
The interior of the sealing valve along passage x-x' is at
atmospheric pressure while the valve exterior within the
housing chamber is exposed to the overpressure of the body
cavity. The pressure differential squeezes the lips together to
form the seal.
Id. col. 4, 11. 58---65. Substantially similar sealing action occurs when a
surgical instrument is deployed through the valve. Id. col. 4, 11. 52-54. The
fact that Blake's assembly also discloses a separate component comprised of
sealing ring 48 with sealing web 54 disposed at the proximal end of the seal
device does not negate the fact that the Blake discloses a valve with sealing
lips. Id. col. 3, 11. 58---65.
Id.
As shown in FIGS. 3, 4 and 6, the sealing valve includes a
generally cylindrical body or tube 60 with integral, planar,
truncate side walls or sealing flaps 62, 64 converging at an
apex 66 and there defining diametric sealing lips 68, 70. The
sealing flaps come together forming sealing lips along a seal
tube diameter coincident with apex 66 and lying in the plane of
each sidewall.
Next, Appellants argue that Blake fails to disclose that the slit of
duckbill valve 50 is stretchable from a first perimetric length in an
undisturbed state to a second perimetric length fitting around a periphery of
an instrument. Appeal Br. 8.
With respect to the sealing valve (50), Blake describes that the
valve (50) has sealing flaps (62, 64) that converge at an apex
(66) that define diametric sealing lips (68, 70). (Blake, col. 3,
lines 58-62). Blake fails to indicate that the diametric sealing
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Appeal2018-004201
Application 11/279,600
lips ( 68, 70) stretch to a length greater than this diametric
length.
Id.
In response, the Examiner directs our attention to excerpts from the
Figures of Blake illustrating an undisturbed state and a stretched
configuration. Ans. 4, Figs. Al, A2. The Examiner maintains that the lips
of Blake stretch and, therefore, increase in length when an instrument is
inserted. Id.
We agree with the Examiner's position. Blake discloses that that the
valve is comprised of "supple" rubber or plastic. Blake, col. 1, 11. 61---63;
col. 3, 11. 53-55. A person of ordinary skill in the art would understand that
Blake's valve is comprised of sufficiently elastic material that it would
stretch when an instrument is inserted, thereby increasing in perimetric
length.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claims 1
and 39.
Claims 2, 3, 37, 40, and 41
Appellants do not argue for the separate patentability of claims 2, 3,
3 7, 40, and 41 apart from arguments presented with respect to claim 1,
which we have previously considered. We sustain the Examiner's rejection
of claims 2, 3, 37, 40, and 41. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to
separately argue claims).
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Application 11/279,600
Claim 38
Claim 3 8 depends from claim 1 and adds the limitation: "wherein the
periphery of the slit in the stretched configuration is adapted to form a
continuous circular seal around the periphery of the instrument." Claims
App. The Examiner finds that this limitation is taught by Blake. Final
Action 7.
Appellants argue that Blake fails to disclose the recited limitation.
[T]he cited disclosure of Blake illustrates sealing lips ( 68, 70)
extending diametrically beyond the instrument tube (71) to ends
of the lips (68, 70). The sealing lips (68, 70) are bulged into an
almond or "cat-eye" shape with a non-sealed gap between the
sealing lips ( 68, 70) and the instrument tube (71) at the
interface thereof. Thus, the sealing lips (68, 70) of the Blake
device do not form a seal at all, much less one that is
"continuous," and "circular."
Appeal Br. 11.
In response, the Examiner finds that the periphery of the slit in the
stretched configuration of Blake's Figure 4 is adapted to form a continuous
circular seal around the periphery of the instrument. Ans. 12. "[T]he seal is
likewise circular and is continuous in that the lips 68, 70 surround the
instrument in a sealing fashion." Id. at 12-13. The Examiner further notes
that Blake contemplates instruments of various sizes, such that that Blake
would form circular seal around a sufficiently large, circular instrument. Id.
at 13.
On the one hand, Appellants are correct that Figure 4 of Blake shows
an instrument 69 that is smaller in diameter than the length of lips 68 and 70
in the stretched configuration. See Blake, Fig. 4. On the other hand, the
Examiner is correct that lips 68 and 70 would conform to a continuous,
circular shape in the event that a larger diameter instrument is inserted into
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Application 11/279,600
the valve. Thus, the Examiner's findings of fact are supported by a
preponderance of the evidence.
Accordingly, we sustain the Examiner's rejection of claim 38.
Unpatentability of Claims 6-9 and 44-47
over Blake, Dehdashtian, and Willis
Appellants do not argue for the separate patentability of claims 6-9
and 44--4 7 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner's rejection of
claims 6-9 and 44--47. 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The decision of the Examiner to reject claims 1-3, 6-9, 37--41,
and 44--4 7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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