Ex Parte Kim et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11698749 (B.P.A.I. Aug. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID KIM, THOMAS DAIGLE, DARRIN DICKERSON,
JAMES SKARDA, ADAM PODBELSKI, and MARK BILITZ
__________

Appeal 2011-007227
Application 11/698,749
Technology Center 3700
__________

Before TONI R. SCHEINER, STEPHEN WALSH, and ULRIKE W.
JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims directed to a tissue ablation device. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Application 11/698,749

2
STATEMENT OF THE CASE
Claims 1-9 and 11-15 are on appeal, and can be found in the
Appendix of the Appeal Brief (App. Br. 16-18). Claims 1 and 7 are
independent claims. Claim 1 is representative of the claims on appeal, and
reads as follows:
1. A tissue ablation device for ablating tissue at a desired
location in a body, the device comprising:
a pair of jaws moveable between a spaced apart open position
and a closed position, the pair of jaws comprising at least one ablating
element for ablating tissue located between the jaws;
a handle comprising controls for remotely controlling the
movement of the jaws and the at least one ablative element, wherein
the control for the at least one ablative element comprises a movable
trigger for selectively applying ablative energy to the at least one
ablating element;
a neck connecting the jaws and handle; and
a lockout mechanism for preventing substantial movement of
the trigger over a predetermined range of movement of the pair of
jaws including the movement of the jaws from the open position until
the jaws are moved to the closed position, and for preventing the
application of ablative energy until the jaws are in the closed position.

The following grounds of rejection are before us for review:
The Examiner has rejected claims 1-3, 6-9, and 11-13 under 35 U.S.C.
§ 102(b) as being anticipated by Dumbauld.
1

The Examiner has rejected claims 4 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Dumbauld in view of Truckai.
2

The Examiner has rejected claims 5 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Dumbauld in view of Lichtman.
3

1
Dumbauld et al., US 2005/0113827 A1, published May 26, 2005.
2
Truckai et al., US 6,905,497 B2, issued Jun. 14, 2005.
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Application 11/698,749

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ISSUE
The invention is directed to a surgical device that has “clamping jaws
with ablating elements, which are connected to a handle assembly by a
flexible neck, with controls for opening and closing the clamping jaws and
applying ablative energy controlled remotely in the handle. . . . the ablative
energy cannot be applied unless the user has deactivated the lockout
mechanism.” (Spec. 6.)
The Examiner‟s position is that Dumbauld disclosed a tissue ablation
device that contains a pair of jaws for clamping tissue and having an ablative
element. (Ans. 4.) The device additionally contained a handle with
controls, a trigger mechanism for applying ablative energy to the ablative
element as well as a lockout mechanism comprising a locking flange.
(Ans. 4-5.)
Appellants contend that the trigger mechanism and lockout feature of
Dumbauld are fundamentally different from the claimed invention. (App.
Br. 10.) Appellants further contend that the Examiner is not construing the
claims properly because “lockout mechanism” should be read as a means-
plus-function claim limitation. (App. Br. 11-12.)

FINDINGS OF FACT
We adopt the Examiner‟s findings of fact. (Final Office Action 2-9;
Ans. 4-9.)

3
Lichtman, US 5,318,589, issued Jun. 7, 1994.
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PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).

ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellants‟
arguments that the Examiner has erred. We are not persuaded there is error.
We adopt as our own: (1) the findings and reason set forth by the Examiner
in the action from which this appeal is taken (Final Office Action May 10,
2010); and (2) the findings and the reasons set forth by the Examiner in the
Examiner‟s Answer in response to Appellants‟ Appeal Brief (Ans. 4-17).
We concur with the conclusions reached by the Examiner, and add the
following comments with respect to arguments raised in the Reply Brief.
Appellants contend that “lockout mechanism within claim 1 is in fact
written as a function to be performed and does not recite structure or
material.” (Reply Br. 5.) As such, Appellants contend that “lockout
mechanism” in claim 1 should be construed to invoke 35 U.S.C. §112, sixth
paragraph. We agree with the Examiner‟s analysis
4
that claim 1 does not

4
We note that the Examiner raises the issue timeliness in the Answer with
regards to the 35 U.S.C. §112, sixth paragraph argument, however, we find
that the Examiner‟s analysis on the merits is complete and correct.
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invoke application of 35 U.S.C. §112, sixth paragraph. (Ans. 12-13.)
Appellants explain that claim 1 is distinguished from claim 7 on the “point
in that structural elements including a lockout flag and its operative
connection between the lever and trigger are additionally recited.” (Reply
Br. 5.) Because claim 1 does not recite the same structural elements as
claim 7, Appellants reason that claim 1 recites no structural elements.
Appellants reiterate the argument that claim 1 should be construed as a
means-plus-function claim, citing case law that “means for” or “step for” is
not required in order to invoke 35 U.S.C. 112, sixth paragraph. (Reply
Br. 5.)
We are not persuaded by Appellants‟ arguments that claim 1 does not
recite structure or material. Our reviewing court instructs that “to avoid
application of section 112 ¶ 6, we have not required the claim term to denote
a specific structure. Instead, we have held that it is sufficient if the claim
term is used in common parlance or by persons of skill in the pertinent art to
designate structure.” Lighting World, Inc. v. Birchwood Lighting, Inc. 382
F.3d 1354, 1359 (2004.) The Specification uses the term “lockout
mechanism or feature” to describe a mechanism that prevents the inadvertent
application of ablative energy. (Spec. 28, ll. 16-17.) “[T]he fact that a
particular mechanism…is defined in functional terms is not sufficient to
convert a claim element containing that term into a „means for performing a
specified function‟ within the meaning of section 112(6).” Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“detent
mechanism” defined in functional terms was not intended to invoke
35 U.S.C. 112, sixth paragraph). Even if the term “lockout” is construed as
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a functional term, “lockout mechanism” has a reasonably well understood
structural meaning in the in the mechanical arts. As in Greenberg, a
functional interpretation of “lockout” would not convert “lockout
mechanism” into a means for performing a lockout function.
Appellants contend that “[t]he closed position, as presently claimed, is
not and cannot be determined as just any arbitrary position.” (Reply Br. 3.)
In the Final Office Action the Examiner “interpreted the „closed position‟ to
occur at any time when the pair of jaws of Dumbauld is not in the „open
position.‟” (Final Office Action 8.) The Examiner later clarified that
“closed position” is a “tissue-grasping position,” meaning that small gaps in
the jaw members would be acceptable due to the presence of tissue in
between the jaw members. (Ans. 14.) “[T]he jaw members 110 and 120 are
moved from an open, spaced apart position to a clamping or closed position
in which the[ ] jaw members cooperate to grasp tissue there between.” (Ans.
14.) We are not persuaded by Appellants‟ argument. We agree with the
Examiner‟s finding that the thickness of the tissue that is being grasped will
determine the size of the gap in between the jaws. (Ans. 14.) We find it is
reasonable to interpret the “closed position” to include “a number of other
closed positions since they are capable of functioning to grasp tissue when
moved from an open position.” (Ans. 14.)
Appellants assert that “[t]he trigger is substantially moveable well
before the jaw 110 is closed with respect to the jaw 120.” (Reply Br. 4.)
We are not persuaded. “Locking flange 44 prevents the trigger assembly 70
from firing when the handle 40 is oriented in a non-actuated position, i.e.,
the jaw members 110 and 120 are open.” (Dumbauld 4, ¶ 0057.) We find
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that the locking flange is designed to prevent the trigger from moving.
Dumbauld does contemplate alternative trigger designs that are moveable
(Dumbauld 7, ¶ 0083). This implies that the original trigger contemplated
by Dumbauld does not have any movement. “[W]hen the handle 40 is
actuated and flange 90 is fully reciprocated within fixed handle 50, the
locking flange 44 moves proximally allowing activation of the trigger
assembly 70.” (Dumbauld 6, ¶ 0072.) Thus, when the trigger is used in
conjunction with the locking flange, the locking flange prevents the
accidental firing of the trigger. (Dumbauld 4, ¶ 0057.)
We are not persuaded by Appellants‟ arguments with regard to
independent claim 1.

CONCLUSION OF LAW
The preponderance of the evidence of record supports the Examiner‟s
finding that Dumbauld anticipates claim 1. As claims 2, 3, 6-9, and 11-13
were not separately argued, we affirm the rejection as to those claims as
well. 37 C.F.R. §41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 1-3, 6-9, and 11-15 under 35 U.S.C.
§102(b) as anticipated by Dumbauld.
We affirm the rejection of claims 4 and 14 under 35 U.S.C. §103(a) as
unpatentable over Dumbauld as applied to claims 1 and 7 respectively and
further in view of Truckai.
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We affirm the rejection of claims 5 and 15 under 35 U.S.C. §103(a) as
unpatentable over Dumbauld as applied to claims 1 and 7 respectively and
further in view of Lichtman.

AFFIRMED

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