Ex Parte Huey et al

Patent Trial and Appeal Board

Oct 27, 2016

12766086 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121766,086
123907 7590
Mintz Levin/EES
One Financial Center
Boston, MA 02111
04/23/2010
10/31/2016
FIRST NAMED INVENTOR
Kevin M. Huey
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.
47364-078001 US/END6553 1726
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
ipdocketingbos@mintz.com
ipfileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN M. HUEY and MATTHEW D. HOLCOMB
Appeal2014-009915
Application 12/766,086
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin M. Huey and Matthew D. Holcomb ("Appellants") appeal
under 35 U.S.C. § 134 from a final rejection of claims 13-16 and 21-34. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claims 1-12 and 17-20 have been cancelled. Appeal Br. (App. A, A)
(filed July 23, 2014).
Appeal2014-009915
Application 12/766,086
CLAIMED SUBJECT MATTER
The claims are directed to a device for accessing a body cavity.
Claims 13 and 22 are independent. Claim 13, reproduced below, is
illustrative of the claimed subject matter:
13. A surgical device, comprising:
a retractor configured to be positioned in an opening in
tissue such that an instrument inserted into a working channel
extending through the retractor can pass through the opening in
the tissue and into a body cavity underlying the tissue; and
a housing removably coupled to the retractor and having a
plurality of sealing ports in communication with the working
channel in the retractor, each of the sealing ports having a sealing
element disposed therein, the housing including a distal base
removably coupled to the retractor, and a proximal cap
removably coupled to the distal base so as to form a fluid tight
seal, the proximal cap being freely rotatable 360° relative to the
distal base and the retractor when the proximal cap is removably
coupled to the distal base.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wenchell US 2004/0254426 Al
(hereinafter "Wenchell '426")
Wenchell US 2005/0222582 Al
(hereinafter "Wenchell '582")
Voegele
Smith
US 2006/0247673 Al
US 2009/0227843 Al
2
Dec. 16, 2004
Oct. 6, 2005
Nov. 2, 2006
Sept. 10, 2009
Appeal2014-009915
Application 12/766,086
REJECTIONS
(I) Claims 13-15, 21-27, 29, and 31-34 are rejected under 35
U.S.C. § 103(a) as unpatentable over Wenchell '582.
(II) Claims 16 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wenchell '582 in view of Voegele.
(III) Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wenchell '582 in view of Wenchell '426.
(IV) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Smith in view of Wenchell '582.
(V) Claims 13, 14, 22, and 24 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claim 1 of co-pending Application No. 12/399,482.2
ANALYSIS
Rejection(!)
Independent claim 13 recites, in part, "a housing removably coupled
to the retractor and having a plurality of sealing ports in communication with
the working channel in the retractor." Appeal Br. (App. A, A). Independent
claim 22 recites a substantially similar feature. Id. at B
The Examiner relies on Figure 24 of Wenchell '582 as depicting a
housing having a plurality of sealing ports. Final Act. 2. In the Response to
Arguments section of the Final Action, the Examiner notes that "Examiners
are required to use broadest reasonable interpretation of the claim language
2 The USPTO issued a notice of abandonment in this application on
Nov. 19, 2014. Based on this, the rejection is moot.
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Appeal2014-009915
Application 12/766,086
and language within the specification should not be assumed to be part of the
claim." Id. at 10. Under a broadest reasonable interpretation, the Examiner
interprets Figure 24 ofWenchell '582 as showing a plurality of sealing ports
because "there at least two spots that the rod goes through where a seal is
formed," and that"[ w ]hile these are multiple parts they are also multiple
ports." Id.
Appellants assert that Figure 24 of Wenchell '582 shows "a single
sealing port similar to the embodiment of Figure 3 of the present application,
as opposed to the embodiment of Figure 3A of the present application that
includes a plurality of sealing ports." Appeal Br. 8. Appellants assert that
"[t]he Examiner is interpreting the single sealing port of Wenchell's Figures
1 and 24 in a way that contradicts the present specification," which is
"unreasonable in light of the specification." Id. Although Appellants agree
that "subject matter from the specification should not be imported into
claims," Appellants argue that, "the Examiner is interpreting the recited
'plurality of sealing ports' ... in a way that completely disregards the plain
language of the claim, a further indication of the Examiner's interpretation
being contradictory to the present specification's description of sealing
ports." Id.; see also Reply Br. 3.
In response, the Examiner provides an annotated copy of Figure 24 of
Wenchell '582 "[t]o clarify how Wenchell discloses the claimed limitation."
Ans. 2-3. Therein, the Examiner relies on "the proximal opening/port that
valve 218 lies in[ ] having a sealing element disposed therein (218 is the
element that is disposed in that opening helping to create a seal at that
location)," and relies on "the distal opening/port having a sealing element
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Appeal2014-009915
Application 12/766,086
disposed therein," denoted "sealing element" in the Examiner's annotated
Figure 24. Id.
The Federal Circuit has established that the proper construction is not
just the broadest construction, but rather the broadest reasonable
construction in light of the specification. Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). ("A construction that is
unreasonably broad and which does not reasonably reflect the plain language
and disclosure will not pass muster.") (internal quotation marks omitted).
Here, the Specification states that "[ w ]hile the proximal housing 16 can
define any number of sealing ports, in the illustrated embodiment, as shown
in FIG. 3, the proximal housing 16 defines one sealing port 22 that extends
through the proximal housing 16 and that seats a sealing element, as
discussed further below." Spec., para 44 (emphasis added). The
Specification contrasts the embodiment of Figure 3 with the embodiment of
Figure 3A and states that "FIG. 3A illustrates another exemplary
embodiment of a proximal housing 16' that can be configured and used
similar to the proximal housing 16, except the proximal housing 16' includes
a plurality of sealing ports." Id., para. 49. With respect to the embodiment
of Figure 3A, the Specification discloses that each of the sealing ports 22a,
22b, 22c can have a central axis that differs from central axes of the other
sealing ports 22a, 22b, 22c." Id. Plural concentric sealing ports are not
contemplated by the Specification. The Specification discloses that, for the
single sealing port embodiment of Figure 3, "the sealing element includes a
distal duckbill seal 34 that provides a channel seal, and a proximal septum
seal 36 that provides an instrument seal." Id., para. 55. In view of the
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Appeal2014-009915
Application 12/766,086
above, the Examiner's broad construction of "a plurality of sealing ports" as
including different seals at proximal and distal ends of the same opening is
unreasonable. This unreasonably broad claim construction led to the
Examiner's unsupported finding that Figure 24 of Wenchell '582 shows a
plurality of sealing ports. We do not sustain the Examiner's rejection of
claims 13 and 22 and of claims 14, 15, 21, 23-27, 29, and 31-34, depending
therefrom as unpatentable over Wenchell '582.
Rejections (II) and (III)
The Examiner does not rely on Voegele or Winchell '426 in any
manner that remedies the deficiencies in Rejection (I), which is based on
Wenchell '582 alone. Accordingly, for the same reasons, we do not sustain
the rejections under 35 U.S.C. § 103(a) of claims 16 and 28 over Wenchell
'582 and Voegele, and of claim 30 over Wenchell '582 and Wenchell '426.
Rejection (IV)
Claim 13 recites, in part, "a proximal cap removably coupled to the
distal base so as to form a fluid tight seal, the proximal cap being freely
rotatable 360° relative to the distal base and the retractor when the proximal
cap is removably coupled to the distal base." Appeal Br. (App. A, A).
The Examiner finds that Smith discloses "a proximal cap (14a)
removably coupled to the distal base so as to form a fluid tight seal," and
that proximal cap 14a "is freely rotatable 360° relative to the distal base and
the retractor when the proximal cap is removably coupled to the distal base."
Final Act. 8 (citing Smith, Abstract; paras. 35--47; Figs. 2, 3).
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Application 12/766,086
Appellants assert that "Smith is completely silent as to any rotation of
the seal 14a when the seal 14a is 'removably coupled' to the base 12a."
Appeal Br. 30. Appellants argue that Smith's clips 32 are used to secure the
base 12a to the seal 14a and that "clips 32 'engage the inner circumference
of flange 26 of the seal 14a, thus coupling the seal to the base."' Id. at 31
(citing Smith, para. 43). Appellants thus assert that "Smith provides
absolutely no teaching or suggestion that the seal 14a can rotate at all
relative to the base 12a when clipped thereto, much less freely rotate 360°
relative thereto." Id.
The Examiner responds that "once the seal 14a is pressed onto ring 28
a seal is formed," and this "is when the removable coupling occurs between
the two parts." Ans. 10. In view of this, the Examiner takes the position
that "clips 32 are used to completely lock the seal into place," but that "prior
to locking the seal down, the seal can be rotated to any position, so the
claimed limitation is met." Id. (citing Smith, paras. 41--44; Fig. 2).
The Examiner's position is inconsistent not only with Appellants'
Specification, but also with the disclosure of Smith. The Specification
discloses that "[t]o couple the distal and proximal housings 14, 16 together,
the proximal housing 16 can be snapped onto the distal housing 14." Spec.,
para 72; Figs. 10, 12. The Specification also discloses a foot and track
configuration with foot 17 4 "configured to engage the circumferential track
17 6 and slide or thread therein to couple the distal and proximal housings
114, 116," so that "rotating the proximal housing 116 relative to the distal
housing 114 will not remove it from the distal housing 114." Id., paras. 83,
84; Fig. 18. Based on this, one of ordinary skill in the art would understand
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Appeal2014-009915
Application 12/766,086
that "coupling" consistent with the Specification requires more than mere
contact between the proximal and distal housings. Likewise, one of ordinary
skill in the art would understand that base 12a and seal 14a of Smith are not
coupled until clips 32 are clipped into place. Specifically, Smith discloses
that"[ w ]hen in the clipped position, the clips 32 engage the inner
circumference of flange 26 of the seal 14a, thus coupling the seal to the
base." Smith, para. 43; see also id., paras. 10-12. Although we appreciate
that the rotational position of Smith's seal can be changed prior to clips 32
being in the clipped position, Smith's device is considered to be coupled
only when in the clipped position, and the Examiner has not demonstrated
that Smith's seal and base are rotatable relative to each other in the clipped
position. In view of this, the Examiner has not adequately established that
each of the claim limitations is met by the proposed combination of Smith
and Wenchell '582. Accordingly, we do not sustain the rejection under 35
U.S.C. § 103(a) of claim 13 based on Smith and Wenchell '582.
DECISION
The Examiner's rejections of claims 13-16 and 21-34 are reversed.
REVERSED
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