Ex Parte Mozdzierz et al

Patent Trial and Appeal Board

Nov 21, 2014

12434864 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK D. MOZDZIERZ and MICHAEL BETTUCHI
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Appeal 2012-006666
Application 12/434,864
Technology Center 3700
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Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1–5 and 7–20 (Br.
2). Examiner entered a rejection under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Tyco Healthcare Group LP (d/b/a Covidien)
(Br. 2).
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Application 12/434,864

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STATEMENT OF THE CASE
The claims are directed to a surgical portal apparatus. Claim 1 is
representative and is reproduced in the Claims Appendix of Appellants’
Brief.
Claims 1–5 and 7–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yoon2 and Chaffee.3,4
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Yoon “pertains to endoscopic portals for establishing communication
with an internal site in a body . . . having multiple universal seals forming a
seal with instruments of various sizes introduced through the endoscopic
portals” (Yoon, col. 1, ll. 8–12).

2 Yoon, US 5,788,676, issued Aug. 4, 1998.
3 Chaffee, US 2009/0049617 A1, published Feb. 26, 2009.
4 Examiner states that “[c]laims 1-5 and 7-20 are finally rejected and are
under appeal” (Ans. 3). In addition, Appellants characterize the rejection
before this panel for review as a “rejection of claims 1-5 and 7-20” (Br. 5).
Therefore, we find that Examiner’s reference to “[c]laims 1-16” in the
statement of the rejection represents a typographical error (see Ans. 5).
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FF 2. Yoon’s Figures 2 and 4 are reproduced with annotations, circles,
highlighting several elements of the device:

“FIG. 2 is a sectional side view of . . . [Yoon’s] endoscopic portal . . .
showing the universal seals [(e.g., 16a)] thereof in closed positions” (Yoon,
col. 3, ll. 39–41; see also id. at col. 6, l. 3 (“Universal seals 16a and 16b are
disposed in main body 26”)). “FIG. 4 is a sectional side view of . . .
[Yoon’s] endoscopic portal . . . showing the first, proximal universal seal
[(16a)] in an open position” (id. at col. 3, ll. 44–46).
FF 3. Yoon suggests that “[p]roximal seal 16a includes a seal member 80a
defining a variable size passage 82a and a compressible member 84a
disposed around the seal member” (Yoon, col. 6, ll. 11–14; id. at col. 7, ll.
28–32 (each “seal member[] is movable to an open, expanded or stretched
position wherein the legs are moved outwardly away from one another, i.e.,
it a direction transverse to the seal member longitudinal axis, to be spread
apart from one another such that the variable size passage is open”); see FF
2).
FF 4. Yoon suggests that “[c]ompressible members 84a and 84b each
include a body of compressible material 85 disposed around a respective seal
member and confined by the main body of [the] housing . . . . Each
compressible member includes a bladder . . . . Each membrane has a
toroidal or donut-shaped configuration with a central longitudinal passage
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entirely therethrough” (Yoon, col. 7, ll. 54–66 (emphasis added); see
generally Ans. 5).
FF 5. Yoon suggests that “[c]ompressible material 85 can be a
compressible fluid or a compressible solid material including gases and
liquids for exerting a compressive force or pressure on the seal members”
(Yoon, col. 8, ll. 12–16; see also Ans. 7 (“[T]he primary reference[, Yoon,]
utilizes an inflatable seal design”)).
FF 6. Yoon suggests that “seal 16a forms a seal . . . due to the closing
force of bias of the seal member and the compressive force of the
compressible member, which fills the gaps or spaces between legs” (Yoon,
col. 10, ll. 3–7 (emphasis)).
FF 7. Examiner finds that Yoon fails to suggest at least two bladder
members, as required by Appellants’ claimed invention, and relies on
Chaffee to make up for this deficiency in Yoon (see Ans. 5; Cf. FF 4).
FF 8. Chaffee “relates to support and/or comfort devices” that “may
comprise one or more inflatable bladders” (Chaffee ¶¶ 3 and 53; see
generally Ans. 5).
FF 9. Chaffee’s Figure 4a is reproduced below:

Chaffee’s FIG. 4a illustrates a cross-sectional view of an example of one
Chaffee’s inflatable device embodiments, wherein “[u]pon inflation, the
alternate seams 50 may force the bladders 42 to assume a compressed,
corrugated configuration (zigzag end profile)” providing, inter alia,
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dimensional stability allowing the structure to be “sized or shaped to
accommodate a variety of applications which conventional parallel tube
devices may not serve well due to their dimensional instability and irregular
surface” (Chaffee ¶¶ 23 and 53; Ans. 5–6).
ANALYSIS
Based on the combination of Yoon and Chaffee, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious to use Chaffee’s bladders in Yoon’s device to “add
dimensional stability to the inflation profile” (Ans. 6). We are not
persuaded.
Initially, we note that Examiner’s conclusion of obviousness is not
based on a mere duplication of the bladder suggested by Yoon (see FF 4).
See, In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the
mere duplication of parts has no patentable significance unless a new and
unexpected result is produced”). Instead, Examiner’s focus is on the
“creat[ion] of an effective inflated design” that is an “improvement over
single inflation bladder designs” (Ans. 7–8). Specifically, a bladder design
that “add[s] dimensional stability to the inflation profile” (Ans. 6). In this
regard, Chaffee suggests that dimensional stability is achieved by connecting
a plurality of bladders through alternating seams 50, which “force the
bladders 42 to assume a compressed, corrugated configuration (zigzag end
profile)” (FF 9). Chaffee suggests that it is this “dimensional stability” that
allows Chaffee’ structure to be “sized or shaped to accommodate a variety of
applications which conventional parallel tube devices may not serve well
due to their dimensional instability and irregular surface” (id. (emphasis
added)).
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Examiner, however, failed to establish an evidentiary basis on this
record to support a conclusion that the dimensional stability resulting from
Chaffee’s bladder configuration permits the bladder, or “compressible
member . . . [to] fill[] the gaps or spaces between legs” as suggested by
Yoon (FF 6). Stated differently, while Chaffee’s structure may be suitable
for a variety of applications, Examiner failed to establish an evidentiary
basis on this record to support a conclusion that Chaffee’s structure, which
has dimensional stability, is applicable to Yoon’s device (FF 9; Cf. FF 6).
For the foregoing reasons, even if we assume that Yoon and Chaffee
are analogous art and/or that the duplication of Yoon’s bladder was at issue
on this record, Examiner failed to establish a prima facie case of obviousness
(see Ans. 7–8; Cf. Br. 8 (“[A] reference describing support devices, such as
that which is described in Chaffee, lies in a different field of endeavor than
[Yoon, which is directed toward a] ‘surgical portal apparatus’”); see
generally Br. 5–10). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[T]he [E]xaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1–5 and 7–20
under 35 U.S.C. § 103(a) as unpatentable over the combination of Yoon and
Chaffee is reversed.

REVERSED

cdc