Ex Parte Merz et al

Patent Trials and Appeals Board

Apr 26, 2019

13865532 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/865,532 04/18/2013 Robin Merz
154825 7590 04/30/2019
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
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.
02581-Pl586A 3023
EXAMINER
HERBERMANN, ERICH G.
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/30/2019 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@whipgroup.com
patent@karlstorz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN MERZ, SVEN SCHNEIDER, and JOCHEN STEFAN1
Appeal2017-007267
Application 13/865,532
Technology Center 3700
Before JOHN C. KERINS, JILL D. HILL, and GEORGE R. HOSKINS,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robin Merz et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the final rejection of claims 1-5 and 12-18. Dependent claims 6-11 are
indicated as containing allowable subject matter. Final Act. 8. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b). An oral hearing was
conducted by video conference on April 16, 2019, with Patrick D. Duplessis,
Esq., appearing on behalf of Appellants.
We REVERSE.
1 Karl Storz GmbH & Co. KG is identified as the real party-in-interest in this
application. Appeal Br. 2.
Appeal2017-007267
Application 13/865,532
THE INVENTION
Appellants' invention relates to a medical instrument and a handling
device therefor. Independent claim 1 is illustrative of the claimed invention
and reads as follows:
1. A handling device for a medical instrument, comprising:
a main body with a coupling configured to releasably connect to
a proximal end of an outer shaft;
a first actuation device, which is movable relative to the main
body;
a second actuation device, which is movable relative to the main
body;
a first coupling device configured to couple the first actuation
device to a first transfer device so as to transfer at least one of a
force and a torque; and
a second coupling device configured to couple the second
actuation device to a second transfer device so as to transfer at
least one of a force and a torque;
wherein the first coupling device has a decoupling position in
which the first actuation device is decoupled from the first
transfer device, and the second coupling device has a decoupling
position in which the second actuation device is decoupled from
the second transfer device; and
wherein the first coupling device is configured such that the
decoupling position of the first coupling device can only be
reached when the outer shaft is not connected to the coupling on
the main body, and the second coupling device is configured
such that the decoupling position of the second coupling device
can only be reached when the outer shaft is not connected to the
coupling on the main body.
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Appeal2017-007267
Application 13/865,532
THE REJECTIONS
The Examiner rejects:
(i) claims 1, 3, 5, 12, and 13 under 35 U.S.C. § 102(b) as being
anticipated by Dycus (US 7,101,372 B2, issued Sept. 5, 2006);
(ii) claim 2 under 35 U.S.C. § 103(a) as being unpatentable over
Dycus in view ofMcFarlin (US 7,717,932 B2, issued May 18, 2010);
(iii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Dycus in view ofKalmann (US 2005/0021079 Al, published Jan. 27, 2005);
(iv) claims 14 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Dycus in view of Carranza (US 2003/0032954 Al, published Feb. 13,
2003); and
(v) claims 16-18 under 35 U.S.C. § 103(a) as being unpatentable over
Dycus in view of Berns (US 5, 913,874, issued June 22, 1999).
ANALYSIS
Claims 1, 3, 5, 12, and 13--§ 102(b)--Dycus
The Examiner finds that Dycus discloses all limitations appearing in
claim 1, including a second coupling device (sleeve 78) coupling a second
actuation device (trigger assembly 70) to a second transfer device (knife tube
34). Final Act. 2. For the additional claim limitation requiring that the
second coupling device be configured such that its decoupling position can
only be reached when an outer shaft is not connected to a coupling on a main
body, the Examiner cites to the disclosure at column 10, lines 40-50 in
Dycus of optionally providing the device with a release mechanism. Id. at 3.
The Examiner finds that this release mechanism "keep[ s] the device locked,
[and] when it is released, the decoupling positions of both the first and
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Application 13/865,532
second coupling devices can be reached when the piece is removed from the
handling assembly." Id.
Appellants point out that the cited text in Dycus relied on by the
Examiner mentions only drive rod 32, shaft 12, effector assembly 100, and
knife assembly 200 as being releasable from housing 20 and handle
assembly 30, for disposal and/or replacement. Appeal Br. 5 (quoting Dycus,
col. 10, 11. 40-50). Appellants argue that Dycus does not disclose that knife
tube 34, corresponding to the claimed second transfer device in the rejection,
is released or decoupled from the second coupling device and second
actuation device. Id. Appellants explain that, although knife assembly 200
is disclosed as being disposable/replaceable, "there is nothing in Dycus that
discloses or suggests that decoupling of the knife assembly 200 would
necessitate decoupling of the knife tube 34," which operates to advance and
retract the knife assembly in operation. Id. ( emphasis omitted).
The Examiner responds to several of Appellants' arguments made
along these lines, by further relying on Figure 12 of Dycus, an exploded
view of a number of the components of the device, and asserting that "the
end effector assembly, the knife assembly and the shaft are shown in an
exploded view, where knife tube (34) is seen as part of this assembly," and
"since knife tube (34) is seen as part of this assembly that is removed, knife
tube (34) must be decoupled from trigger (70)." Ans. 2; see also, id. at 3-4.
Appellants characterize the Examiner's position as "rel[ying] on the
premise that the knife tube 34 (i.e., the alleged 'second transfer device') is
part of the knife assembly 200," maintain that the premise is false, and assert
that the Examiner's conclusion regarding the decoupling of knife tube 34 is
incorrect. Reply Br. 2. We do not view the Examiner's position as
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Application 13/865,532
including a specific finding that knife tube 34 is part of knife assembly 200,
but rather the position taken is that the components illustrated in Figure 12
of Dycus, which include drive rod 3 2, shaft 12, end effector assembly 100,
and knife assembly 200, as well as knife tube 34, comprise an overall
assembly that would be releasable for disposal and/or replacement. Dycus,
Fig. 12. Nonetheless, because it appears that knife assembly 200 may be
decoupled from knife tube 34, at least upon removal of shaft 12, and that
drive rod 32 may be removed through the bore in knife tube 34, it seems
possible that the knife assembly and drive rod, as well as shaft 12 and end
effector 100 could be decoupled/released without necessarily decoupling and
releasing knife tube 3 4 ( second transfer device) from its connection to sleeve
78 (second coupling device).
Since there is no explicit disclosure of knife tube 34 being decoupled
from trigger assembly 70 via a decoupling position of sleeve 78, the
Examiner's position is seen as being based on that aspect of Dycus being
inherent in the Dycus configuration.
Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from
a given set of circumstances is not sufficient. [Citations
omitted.] If, however, the disclosure is sufficient to show that
the natural result flowing from the operation as taught would
result in the performance of the questioned function, it seems to
be well settled that the disclosure should be regarded as
sufficient.
In re Oelrich, 666 F.2d 578,581 (CCPA 1981) (quotingHansgirgv.
Kemmer, 102 F.2d 212,214 (CCPA 1939)).
As noted in the preceding paragraph, the possibility that the
components of the Dycus device that are explicitly identified as being
releasable for disposal and/or replacement could be released from the
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Application 13/865,532
housing 20 and handle assembly 30 without decoupling/releasing knife tube
34 therefrom, eradicates the finding that Dycus anticipates the subject matter
of claim 1.
We additionally note that, other than identifying certain components
that are contemplated to be releasable from housing 20 and handling
assembly 30, Dycus provides no details, either in a textual description or in
an illustration, 2 as to the construction of any release mechanism, nor any
discussion as to whether the construction of any existing components would
or would not require modification in order for the would-be release
mechanism to operate as intended. This additionally points to the
speculative nature of the finding that Dycus anticipates claim 1.
The rejection of claim 1 as anticipated by Dycus is not sustained.
Independent claim 12 recites essentially the same subject matter insofar as
the application of Dycus is concerned, and the rejection of that claim as
anticipated by Dycus is also not sustained. The rejection is further not
sustained as to dependent claims 3, 5, and 13.
Claim 2--§ 103(a)--Dycus/McFarlin
The rejection of claim 2 is based on the same erroneous findings as to
the Dycus disclosure discussed above. Mcfarlin is not relied on to remedy
the noted deficiency in Dycus. Accordingly, the rejection of claim 2 as
being unpatentable over Dycus and Mcfarlin is not sustained.
2 Dycus expressly states that the prospective release mechanism is not
shown. Dycus, col. 10, 1. 43.
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Claim 4--§ 103 ( a)--Dycus/Kalmann
The rejection of claim 4 is based on the same erroneous findings as to
the Dycus disclosure discussed above. Kalmann is not relied on to remedy
the noted deficiency in Dycus. Accordingly, the rejection of claim 4 as
being unpatentable over Dycus and Kalmann is not sustained.
Claims 14 and 15--§ 103(a)--Dycus/Carranza
The rejection of claims 14 and 15 is based on the same erroneous
findings as to the Dycus disclosure discussed above. Carranza is not relied
on to remedy the noted deficiency in Dycus. Accordingly, the rejection of
claim 14 and 15 as being unpatentable over Dycus and Carranza is not
sustained.
Claims 16--18--§ 103(a)--Dycus/Berns
The rejection of claims 16-18 is based on the same erroneous findings
as to the Dycus disclosure discussed above. Berns is not relied on to remedy
the noted deficiency in Dycus. Accordingly, the rejection of claims 16-18
as being unpatentable over Dycus and Berns is not sustained.
DECISION
The rejections of claims 1-5 and 12-18 are reversed.
REVERSED
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