Ex Parte Perry et al

Board of Patent Appeals and Interferences

Jul 20, 2012

10964007 (B.P.A.I. Jul. 20, 2012)

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.
10/964,007 10/12/2004 Stephen J. Perry 10121/00413 7783
7590 07/20/2012
Fay Kaplun & Marcin, LLP
Suite 702
150 Broadway
New York, NY 10038
EXAMINER
NASH, BRIAN D
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte STEPHEN J. PERRY, PAUL DICESARE,
PATRICK GUTELIUS, MARK MONROE,
JEFFREY RADZIUNAS, and ROY H. SULLIVAN
____________________

Appeal 2010-005262
Application 10/964,007
Technology Center 3700
____________________

Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005262
Application 10/964,007
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
21-25. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a full thickness resection device control
handle. Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A resectioning assembly for controlling operation of a full
thickness resection device, comprising:
a flexible drive shaft;
a resection actuating mechanism coupled to the flexible
drive shaft, the resection actuating mechanism configured to
rotate the flexible drive shaft in a first direction;
a controlling device engaging the flexible drive shaft to
control, as the flexible drive shaft rotates in a second direction,
a dissipation of torsional energy stored in the flexible drive
shaft during rotation in the first direction;
a full thickness resection device coupled to the flexible
drive shaft, the full thickness resection device being driven by
rotation of the flexible drive shaft to resect tissue.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hooven US 5,433,721 Jul. 18, 1995

REJECTIONS
Claims 21-25 are rejected under 35 U.S.C. 102(b) as being anticipated
by Hooven. Ans. 3.

Appeal 2010-005262
Application 10/964,007
3

OPINION
The Examiner found that Hooven disclosed “a controlling device (46)
engaging the shaft (61) that dissipates the torsional energy stored in shaft
during rotation in the first direction (via wound cables).” Ans. 3, 4.
However, claim 21 does not require this. Rather, claim 21 requires “a
controlling device . . . to control . . . a dissipation of torsional energy stored
in the flexible drive shaft during rotation in the first direction.” Appellants
correctly point out that Hooven does not provide any indication that gearbox
46 would be capable of performing such a function. App. Br. 5-6; Reply Br.
3-4; cf Spec. pp 9-12, paras. [0023] – [0032]. We adopt Appellants’ position
in this regard as our own. Accordingly, the Examiner’s rejection is reversed.

DECISION
The Examiner’s rejection of claims 21-25 as being anticipated by
Hooven is reversed.

REVERSED

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