Ex Parte Perkins

Board of Patent Appeals and Interferences

Mar 2, 2012

11017586 - (D) (B.P.A.I. Mar. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES T. PERKINS
__________

Appeal 2010-009601
Application 11/017,586
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Application 11/017,586

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STATEMENT OF THE CASE
The following claim is representative:
1. An ophthalmic phacoemulsification irrigation sleeve comprising:
an elongated resilient essentially tubular body portion having a distal
end and a proximal end for surrounding a portion of a shaft of a
phacoemulsification needle;
an enlarged section formed on the proximal end of the body portion
for surrounding a hub of a needle and for connection to a
phacoemulsification handpiece; and
wherein adjacent to the tubular body portion distal end at least one
noncircular irrigation port is formed such that a shape of the port
includes a radiused leading edge closest to the distal end and
has tapering trailing sides resulting in a trailing end having a
smaller radius than the leading edge radius.

Cited References

The Examiner relies on the following prior art references:

Lindsay et al. US 4,863,441 Sep. 5, 1989
O‟Neill et al. US 5,324,260 Jun. 28, 1994
Mackool US 7,014,629 B2 Mar. 21, 2006
Strukel US 5,919,157 Jul. 6, 1999

Grounds of Rejection
 Claim 1 is rejected under 35 U.S.C.§ 102(b) over Lindsay.
 Claim 2 is rejected under 35 U.S.C. §103(a) over Lindsay in view of
O‟Neill.
 Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) over Mackool in
view of Lindsay.
 Claim 2 is rejected under 35 U.S.C. § 103(a) over Mackool, in view of
Lindsay and Strukel.

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Application 11/017,586

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FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 3-
11. The following fact is highlighted.

1. Lindsay, figure 2 is reproduced below.

Lindsay, Figure 2 shows a venous return catheter with transitional areas 20
and 16 including inlet opening 24.

Discussion
ISSUE
The Examiner concludes that the phacoemulsion needle and phaco
handpiece are not structural requirements of the pending claims. The
Examiner argues that the structural requirements of the preamble of the
claim include a tubular structure capable of irrigation in a medical
environment. (See Ans. 4.) The Examiner argues that the claims are “not
limited to the human eye” and do not require an open distal end. (Id. at 10.)
Structurally, the Examiner argues that the device of Lindsay discloses non-
circular irrigation ports that are “adjacent” to the distal portion of the device.
(Id.)
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Appellant argues that the preamble of the claims “expressly limits the
claims to a phacoemulsification (phaco) irrigation sleeve - that is a sleeve for
surrounding a phaco needle that will deliver (infuse) fluid into the eye” and
that the Examiner has ignored this claimed feature. (App. Br. 3; Reply Br.
2.) Appellant further argues that the Specification‟s field of invention
supports this claim interpretation. (Reply Br. 2.) Appellant argues that
Lindsay‟s device “cannot properly function as a phaco sleeve,” and that
Lindsay‟s “openings 24 are not adjacent to the distal end” of the device
(App. Br. 6 and 7.)
The issues are: Is the claim preamble given weight with respect to
claim interpretation? Does the cited prior art support the Examiner‟s
conclusion that the device of Lindsay is capable of functioning as a
phacoemulsion sleeve with openings adjacent to the distal end of the device?

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).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
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case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is „necessary to
give life, meaning, and vitality‟ to the claim, then the claim preamble should
be construed as if in the balance of the claim. . . . If, however, the body of
the claim fully and intrinsically sets forth the complete invention, including
all of its limitations, and the preamble offers no distinct definition of any of
the claimed invention‟s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to constitute or
explain a claim limitation.” Pitney Bowes Inc. v. Hewlett Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999).

ANALYSIS
While we agree with the Examiner that the phacoemulsification
needle and phaco handpiece are not structural requirements of the pending
claims and that the claims are not limited to the human eye and do not
require an open distal end, contrary to the Examiner, we find that the
preamble of the claimed subject matter, a phacoemulsification irrigation
sleeve, informs the capabilities of the structure of the claimed device.
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We further agree with Appellant that Lindsay does not disclose non-
circular irrigation ports at the distal end of the tubular body, as claimed. As
Appellant argues, ports 24 of Lindsay, in transitional area 20, lie outside the
vena cava and second catheter portion 16 cannot enter the vena cava if
appropriately dimensioned. (See Lindsay col. 3, l. 26, App. Br. 6.) For this
reason, Appellant argues that the device of Lindsay could not function as a
phacoemulsification irrigation sleeve, and that the “openings 24 would
deliver fluid outside of the eye and fluid would spill all over the patient and
the eye would collapse without a steady supply of irrigation fluid and cause
serious damage to the eye.” (App. Br. 7.)
In contrast, the Examiner points to no evidence suggesting that a
device of Lindsay‟s size would be capable functioning as a
phacoemulsification sleeve. Thus we find that a preponderance of the
evidence of record does not support the Examiner‟s position that the device
of Lindsay is capable of functioning as a phacoemulsification irrigation
device, and that Lindsay‟s openings 24 are not adjacent to the distal end of
the device, as claimed. The anticipation rejection of claim 1 is reversed.
The Examiner has not adequately explained why the limitations not
taught by Lindsay would nevertheless have been obvious. For this reason,
the obviousness rejection of claim 2 is reversed. Similarly, Examiner has
not adequately explained why the port 24 of Lindsay would have made
obvious the limitations not taught by Mackool, and these obviousness
rejections are also reversed.

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CONCLUSION OF LAW
The cited references do not support the Examiner‟s anticipation and
obviousness rejections. The rejections are reversed.

REVERSED

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