Ex Parte O et al

Patent Trial and Appeal Board

Apr 28, 2017

13245022 (P.T.A.B. Apr. 28, 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.
13/245,022 09/26/2011 Cormac O'Prey H-US-02560 6604
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
05/02/2017 EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORMAC O’PREY,
CHARLOTTE ADELE CLARK, and
ALISTAIR IAN FLEMING
Appeal 2015-007061
Application 13/245,022
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007061
Application 13/245,022
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4—11, 13—15, and 17—22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE CLAIMED SUBJECT MATTER
The claims are directed to a cleaning apparatus configured to remove
debris from the lens of a minimally invasive viewing instrument. Spec. | 1.
Claims 1 and 11 are independent, with claims 2, 4—10, 21, and 22 ultimately
depending from claim 1, and claims 13—15 and 17—20 ultimately depending
from claim 11. Br. 16—19 (claims app’x.). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A minimally invasive surgical instrument
comprising:
a viewing instrument including a lens and
having a longitudinal axis;
a wiper mechanism attachable to the
viewing instrument prior to introducing the
viewing instrument into a body, the wiper
mechanism including a pair of wipers coupled
to each other by at least one connector, a first
wiper of the pair of wipers configured and
adapted to pivot about a second wiper of the pair
of wipers as the first wiper contacts and
translates diametrically across a surface of the
lens, the first and second wipers having an
initial position in which the first and second
wipers are diametrically spaced apart with
respect to the surface of the lens; and
an actuator positionable at a proximal
portion of the viewing instrument, the actuator
actuable to move the first wiper across the lens
to clean the lens.
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Appeal 2015-007061
Application 13/245,022
REFERENCES
Ogawa ’450
Ogawa ’782
US 2002/0065450 A1
US 6,755,782 B2
May 30, 2002
June 29, 2004
Apr. 26, 2007
Dec. 18, 2008
Sept. 9,2010
Karasawa ’314
Hsu
Karasawa ’753
WO 2008/153841 A2
US 2010/0225753 A1
JP2007105314
REJECTIONS
Claims 1, 2, 4, 5, 7—11, 13, 14, and 17—20 stand rejected under
35 U.S.C. § 102(b) as anticipated by Hsu. Final Act. 2.
Claims 1,21, and 22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Karasawa ’314. Id. at 8.
Claims 1,21, and 22 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ogawa ’782. Id. at 9.
Claims 2—4, 11—14, and 16—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hsu and Karasawa ’753. Id. at 11.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hsu, Karasawa ’753 and Ogawa ’450. Id. at 15.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hsu and Karasawa ’753. Id. at 16.
ANALYSIS
The Examiner finds, inter alia, that Hsu’s linear wiper 13 depicted in
Figure 8 corresponds to independent claim 1 ’s recitation of a “pair of
wipers,” and to claim 11 ’s first and second substantially cylindrical
members. Final Act. 2—3, 5—6 (citing Hsu, 11, 15, 16, Fig. 8). Because
Rejections based on Hsu
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Application 13/245,022
Figure 8 depicts only one linear wiper, the Examiner relies on Hsu’s
teaching that “multiple wiper blades may be used in any embodiment.” Id.
at 3, 6; see Hsu, 16. The Examiner does not find that Hsu expressly teaches
that the first and second wipers recited in claim 1 are “coupled to each other
by at least one connector, a first wiper of the pair of wipers configured and
adapted to pivot about a second wiper of the pair of wipers as the first wiper
contacts and translates diametrically across a surface of the lens, the first and
second wipers having an initial position in which the first and second wipers
are diametrically spaced apart with respect to the surface of the lens,” as
claim 1 requires. Likewise, the Examiner does not find that Hsu expressly
discloses claim 1 l’s requirement that “the first substantially cylindrical
member [is] pivotable with respect to the second substantially cylindrical
member as the first substantially cylindrical member moves diametrically
across the lens of the viewing instrument to clean the lens.” Instead, the
Examiner contends that “it is inherent that the wipers would be connected to
either each other, or to the actuator so that movement of the actuator may be
transferred to the wipers to effect cleaning of the lens.” Ans. 2. The
Examiner further contends that “Applicant’s claimed pivot fails to describe
any structural feature beyond the at least one connector, so that “[a]s the
second wiper must be attached either to the actuator or the first wiper, the
connection between the second wiper and the actuator or the first wiper
would define a pivot because the first wiper must move or ‘pivot’ to function
as disclosed.” Id. at 3. Appellants respond that Hsu merely states that
multiple wipers may be used, but “provides no other disclosure as to how
multiple wipers would operate.” Br. 6.
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Application 13/245,022
In relying on inherency, the Examiner must provide evidence or
reasoning to establish a sound basis for the Examiner’s belief that the
missing descriptive matter is necessarily present in the reference. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). “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.” In re
Robertson, 169 F.3d 743, 745 (Fed.Cir.1999) (citations and internal
quotation marks omitted). Once the Examiner has established a sound basis
for a reference’s inherent disclosure, the burden shifts to Appellants to
overcome, with argument or evidence, the apparent identity of Appellants’
claimed device and that of the prior art. Spada, 911 F.2d at 708.
In the present case, we are not persuaded that the Examiner has
established a sound basis for believing that the missing limitations are
inherently present in Hsu. Hsu does not describe or depict an embodiment
with two wipers, and does not describe how multiple wipers would be
installed. Moreover, it is not necessarily the case that two wipers would be
connected to each other or would pivot with respect to each other as one
wiper moves across the lens. The Examiner notes that Hsu “fail[s] to teach
that multiple actuators are used to actuate the wipers,” and infers that Hsu
would use only a single actuator, which would couple the wipers to each
other. Ans. 2. But Hsu’s failure to teach multiple actuators does not
necessarily mean that multiple actuators cannot be used. Multiple wipers
could each have their own actuator, in which case the wipers would not be
coupled via a single actuator. Moreover, even if two wipers were connected
to the same actuator, the Examiner has not explained why such connection
would necessarily “define a pivot” or why “the first wiper must move or
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Application 13/245,022
‘pivot’ to function as disclosed.” 1 Accordingly, because we are not
persuaded that Hsu’s device inherently satisfies the argued limitations, we
do not sustain the Examiner rejection of claims 1 and 11, as well as
dependent claims 2, 4, 5, 7—10, 13, 14, and 17—20, as anticipated by Hsu.
The Examiner relies on the same inherency rationale in rejecting as
unpatentable: (1) claims 2-4, 11—14, and 16—20 over Hsu and Karasawa
’753; (2) claim 15 over Hsu, Karasawa ’753, and Ogawa ’450; and (3) claim
6 as over Hsu and Karasawa’753. Final Act. 11—17. Because we found the
Examiner’s inherency rationale unpersuasive, we also do not sustain these
rejections.
Claims 1, 21, and 22—Anticipation—Karasawa ’314
The Examiner finds that Karasawa ’314 discloses all of the elements
of claim 1. Final Act. 8—9 (citing Karasawa ’314, Figs. 1, 16, 18, 19). In
particular, the Examiner finds that wiper members 73 correspond to the
claimed pair of wipers coupled to each other by at least one connector (belt
member 70), with one of the wipers 73 configured and adapted to pivot
about a second wiper 73. Id. at 8. The Examiner contends that “the film
member [belt-shaped member 70] must constantly pivot about the distal end
of the endoscope in order to effect movement of the wipers (73).” Id. at 9.
Appellants dispute that Karasawa discloses “a first wiper of the pair of
wipers configured and adapted to pivot about a second wiper of the pair of
wipers as the first wiper contacts and translates diametrically across a
surface of the lens,” as recited in claim 1. Br. 9. Instead, Appellants argue
that Karasawa discloses “a winding gear 31 mounted at the sheath operation
1 Neither the Examiner nor Appellants have offered a construction for
“pivot” or “pivotable.”
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Application 13/245,022
part to move the strip member 70 from one end to the other end in the radial
direction of the tip end surface.” Id. (quoting Karasawa, abstract).
The Examiner has not established that Karasawa ’314 anticipates
claim 1. Karasawa’s top and bottom wipers 73, as viewed in Figure 16, are
translating within their respective horizontal planes in a direction
orthogonally with respect to the middle wiper “translating] diametrically”
downwardly or vertically across lens 21. The Examiner does not provide
any express analysis as to the meaning of “a first wiper of the pair of wipers
configured and adapted to pivot about a second wiper of the pair of wipers
as the first wiper contacts and translates diametrically across a surface of the
lens” so as to explain how or why this arrangement satisfies the argued
limitation. It is not clear on the record before us why the Examiner
considers one wiper member 73 (i.e., the middle wiper) to pivot around a
second wiper member 73 (i.e., either the top or bottom wiper) as belt-shaped
member 70 moves that first or middle wiper member 73 across the lens. In
order for us to provide any meaningful appellate review there must be some
evidence or analysis in the record to support the Examiner’s factual findings
and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
A rejection must be set forth in sufficiently articulate and informative
manner as to meet the notice requirement of § 132, such as by identifying
where or how each limitation of the rejected claims is met by the prior art
references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011). It is neither
our place, nor Appellants’ burden, to speculate as to the basis for rejecting
claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s
obligation to provide timely notice to the applicant of all matters of fact and
law asserted.). For these reasons, we do not sustain the Examiner’s rejection
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Application 13/245,022
of claim 1, as well as dependent claims 21 and 22, as anticipated by
Karasawa ’314.
Claims 1, 21, 22—Anticipation—Ogawa ’782
The Examiner finds that Ogawa ’782 discloses all of the limitations of
claim 1. In particular, the Examiner finds that first and second projections
306 and 307 on wiper mechanism 301 correspond to the claimed pair of
wipers, which are connected at point C. Final Act. 10 (citing Ogawa ’782,
40:23-60, 41:10-24, 47:4A-67, 56:35-63, Figs. 36A, 36B, 48, 51, 52A, 59).
The Examiner further finds that “Applicant’s claimed pivot fails to describe
any structural feature beyond the at least one connector,” and “[a]s the
connector of Ogawa is configured to contain both wipers (306, 307) and is
configured to move the wipers in unison about point ‘C’ it is well
established that point ‘C’ is the pivot point of the wiper mechanism.” Id.
Appellants dispute that Ogawa discloses “a first wiper of the pair of wipers
configured and adapted to pivot about a second wiper of the pair of wipers
as the first wiper contacts and translates diametrically across a surface of the
lens,” as recited in claim 1. Br. 11.
As with the prior rejection, the Examiner has not established that
Ogawa ’782 anticipates claim 1. Again, the Examiner does not explain what
the “pivot” limitation means, much less explain how Ogawa ’782’s wipers
306 and 307 satisfy that limitation. Therefore, we do not sustain the
Examiner’s rejection that claim 1, as well as dependent claims 21 and 22, are
anticipated by Ogawa ’782.
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Appeal 2015-007061
Application 13/245,022
DECISION
For the above reasons, we reverse the Examiner’s rejection of:
(1) claims 1, 2, 4, 5, 7—11, 13, 14, and 17—20 as anticipated by Hsu;
(2) claims 2-4, 11—14, and 16—20 as unpatentable over Hsu and Karasawa
’753; (3) claim 15 as unpatentable over Hsu, Karasawa ’753, and Ogawa
’450; and (4) claim 6 as unpatentable over Hsu and Karasawa ’753; (5)
claims 1,21, and 22 as anticipated by Karasawa ’314 and (6) claims 1,21,
and 22 as anticipated by Ogawa ’782.
REVERSED
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