Ex Parte Mitelberg et al

Patent Trial and Appeal Board

Jul 31, 2017

13327988 (P.T.A.B. Jul. 31, 2017)

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.
13/327,988 12/16/2011 Vladimir Mitelberg APO-022A 8009
119800 7590 07/31/2017
frnrrlnn Rr Taonhsinn P P
EXAMINER
60 Long Ridge Road
Suite 407
HIGHLAND, RACHEL S
Stamford, CT 06902 ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/31/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR MITELBERG, J. LANDON GILKEY,
BRETT E. NAGLREITER, and DONALD K. JONES
Appeal 2016-000323
Application 13/327,988
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Vladimir Mitelberg et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a)
claims 1—9 and 11—24 as unpatentable over Long (US 2003/0176880 Al,
1 In the Answer, the Examiner states that “[i]t is noted that the after final
amendment submitted on December 9, 2014 was entered as part of the
Advisory Action dated December 17, 2014. The amendment to claim 7
overcame the 35 U.S.C. § 112 rejections set forth in the Final Rejection of
October 10, 2014.” Ans. 6 (mailed August 7, 2015); see also Final Act. 2;
Adv. Act. Cover Sheet (Form PTOL-303) and p. 5.
Appeal 2016-000323
Application 13/327,988
pub. Sept. 18, 2003) and Zimmon (US 7,445,603 B2, iss. Nov. 4, 2008).
Claim 10 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to an endoscopic treatment device.
Spec. 1 6; Figs. 73B, 74, 75. Claims 1, 7, and 17 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A treatment device for use with an endoscope having an
instrument channel for passage of an endoscopic instrument and
a distal end, the instrument channel defining an inner wall, the
endoscope used to perform treatment in a body and being
operable from outside the body, comprising:
a) an end effector assembly including,
i) a base for placement at the distal end of the
endoscope,
ii) a mounting portion extending proximally from
said base, wherein said mounting portion is structured
such that when said mounting portion is positioned in the
instrument channel of the endoscopic instrument, said
mounting portion provides an outward force against the
inner wall of the instrument channel and thereby retains
the base relative to the distal end of the endoscope, said
mounting portion further defining an opening
longitudinally extending therethrough communicable with
the instrument channel and sized for receiving the
endoscopic instrument therethrough,
iii) an end effector rotatable relative to said base,
and
iv) a link mechanism coupled to said base and said
end effector; and
b) a flexible transmission member having a distal end
portion which is capable of being inserted into the body
through or adjacent the endoscope, said distal end portion
of said flexible transmission member coupled to said link
2
Appeal 2016-000323
Application 13/327,988
mechanism, said flexible transmission member being
actuated by an operation outside the body,
wherein said link mechanism causes rotation of said
end effector upon actuation of said flexible transmission
member.
ANALYSIS
The Examiner finds that Long discloses the treatment device of claim
1 including a mounting portion except Long does not “explicitly teach” that
the mounting portion “extends proximally from the base,” wherein the
mounting portion “is structured such that when said mounting portion is
positioned in the instrument channel of the endoscopic instrument, said
mounting portion provides an outward force against the inner wall of the
instrument channel and thereby retains the base relative to the distal end of
the endoscope.” See final Act. 3^4; see also Appeal Br. 15 (Claims App.).
The Examiner finds that Zimmon discloses a “mounting portion (4)”
including the limitations discussed above, final Act. 4—5 (citing Zimmon
figs. 2, 4); see also Ans. 7 (“jaws [4 of Zimmon] are retained in the tube [1]
due to the outward biasing force while they are within the tube [1]. . . Thus,
the spring bias of the jaws [4] in Zimmon exerts an outward force upon the
tube [1] which meets the structural requirements” of claim 1 (citing figs. 1,
2, 4 of Zimmon)). The Examiner concludes that it would have been obvious
“to use the mounting portion which provides an outward force as taught by
Zimmon in the endoscope apparatus as taught by Long, since the friction fit
mounting portion of Zimmon reduces the number of attachment mechanisms
making the device cheaper and more efficient to produce.” Final Act. 5.
3
Appeal 2016-000323
Application 13/327,988
Appellants contend that “Zimmon does not teach a mounting portion,
as claimed, as purported by the [Ejxaminer; nor an outwardly-forced
mounting portion that is retained against the inner wall into which it is
positioned, as claimed.” Appeal Br. 10. According to Appellants, “Zimmon
provides a cable 2 that ultimately provides retention, as it is not provided by
the biased jaws 4” and “[t]he jaws are positioned where they are positioned
solely because of the position of the control cable 2, which is controlled
from the proximal end of the instrument. . . . The jaws are not described to
provide any retention force within the working channel of the endoscope.”
Reply Br. 3^4; see also Appeal Br. 10.
As an initial matter, we note the Examiner does not specifically direct
us to what the Examiner considers to represent the mounting portion in
Long. See Final Act. 4 (“a mounting portion (that which secures the base to
the endoscope) defining an opening longitudinally extending therethrough
communicable with the instrument channel and sized for receiving the
endoscopic instrument therethrough (See Figs. 1-9).”). Long discloses an
endoscope 14 having an “instrument channel 42” and “[a]t the distal end of
instrument channel 42, pivot arm 74 can be connected to interior forceps jaw
68 by insertion of the smaller diameters of stepped-diameter pins 75 into
engagement holes 72.” Long || 39, 53, Figs. 1—3. Long further discloses
that interior forceps jaw 68 has an “open interior portion]}, creating a hollow
tubular structure through which gas, fluids, particulate matter, or instruments
may pass through to the proximal end.” Long 149 (emphasis added), Figs.
1,3. As such, we understand the Examiner’s position to be that interior
forceps jaw 68 constitutes the “mounting portion” of Long’s device.2
2 We further note the Examiner proposes to modify the mounting portion of
4
Appeal 2016-000323
Application 13/327,988
In this case, Zimmon discloses that “[t]he movement of [cutting tool
3] is controlled by pulling the actuator wire 2, which causes the tool to
retract (FIG. 2) encountering the edges of the tip tube causing the retracted
jaws 4 to come together to cut specimen 6.” Zimmon 5:25—28 (emphasis
added), Figs. 1, 2; see also Appeal Br. 9. Zimmons further discloses:
The Tip Tube 1 is connected to an outer flexible sheath
(A) which, in turn is connected to the handle. The control wire 2
slides down the center of the outer sheath and is axially moved
by the handle[.] Cutting tool 3 is pushed out of or pulled into the
tip tube 1 by control wire 2. When moved out of tip tube 1, the
jaws 4 separate under spring bias. To take a tissue biopsy, the
forceps with [sic] open[.] Cutting tool 3 is pushed into the tissue
and then the jaws [4] are retracted back into the tip tube 1. As
the jaws 4 pass the mouth of tip tube 1, the jaws [4] are forced
closed.
Zimmon 5:49-57 (emphasis added), Figs. 1,2; see also Appeal Br. 10;
Reply Br. 3^4.
Based on Zimmon’s disclosure, we agree with Appellants that “the
position of the actuation wire 2 determines where the jaws [4] are held
relative to the tip tube [1], not any spring structure” and although jaws 4 of
Zimmon “are subject to a spring bias, such bias is not taught for retention,
but only for biasing [the] jaws toward an open configuration and providing a
force against which to cam the jaws into a closed and retracted configuration
(dynamic operation).” Appeal Br. 10. In other words, jaws 4 of Zimmon
“are not described to provide any retention force” (i.e., outward force)
against the inner wall of tip tube 1. See Reply Br. 3^4; see also Appeal Br.
15 (Claims App.).
Long with “mounting portion 4” (i.e., jaws 4) of Zimmon. See Final Act. 4;
see also Zimmon 5:19-21, Figs. 1, 2.
5
Appeal 2016-000323
Application 13/327,988
We further agree with Appellants that “the rationale for the
combination; i.e., that it would reduce parts to render the Long device less
expensive to produce ... is unsupported.” Appeal Br. 13; see also Final
Act. 5. As an initial matter, we acknowledge the Examiner’s position that
“substituting [a] known attachment mechanism would be within the level of
skill and creativity of one of ordinary skill in the art.” Ans. 9—10. However,
Appellants correctly point out that Long discloses that base 54 “can be
attached to the distal end of the endoscope using various means that would
require apparently fewer components than would be suggested by the
combination, including light press fit, threaded engagement, or snap fit.”
Appeal Br. 13 (citing Long 145). Given that Long already discloses an
adequate means for retaining base 54 to the distal end of the endoscope, we
agree with Appellants that the Examiner does “not set out how the stated
combination of structure provides fewer parts or less expense than a light
press fit, snap fit, or threaded assembly.” Id. Moreover, the Examiner fails
to articulate how “friction fitting” Long’s mounting portion, in view of
Zimmon, would “mak[e] the device cheaper and more efficient to produce.”
Final Act. 5; see also Ans. 9—10; Reply Br. 5 (“there is no evidence of cost
savings in the implementation of the purported combination”).
Independent claim 11 is directed to a treatment device and
independent claim 17 is directed to a treatment system and each independent
claim includes language to “a mounting portion” similar to that discussed
above for claim 1. See Appeal Br. 16, 17 (Claims App.). The Examiner
relies on the same unsupported findings and conclusions for claims 7 and 17
as those discussed above for claim 1. See Final Act. 3—5. Thus, the
6
Appeal 2016-000323
Application 13/327,988
Examiner’s findings with respect to Long and Zimmon are deficient for
claims 7 and 17 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claims 1, 7, and 17 and their respective
dependent claims 2—6, 8, 9, 11—16, and 18—24 as unpatentable over Long
and Zimmon.
DECISION
We REVERSE the decision of the Examiner to reject claims 1—9 and
11—24 as unpatentable over Long and Zimmon.
REVERSED
7