Ex parte RUDKO

Board of Patent Appeals and Interferences

Apr 30, 1998

08201052 (B.P.A.I. Apr. 30, 1998)

Application for patent filed February 24, 1994. 1
According to appellant, the application is a continuation of
Application 08/014,363, filed February 5, 1993, now abandoned,
which is a continuation of Application 07/928,531, filed
August 13, 1992, now abandoned, which is a continuation of
Application 07/586,891, filed September 24, 1990, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT I. RUDKO
________________
Appeal No. 95-4246
Application 08/201,0521
________________
HEARD: SEPTEMBER 17, 1997
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4246
Application 08/201,052
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This is a decision on an appeal from the final rejection
of claims 18-35, all the claims currently pending in the
application. An amendment filed subsequent to the final
rejection on August 28, 1995 (Paper No. 32) has not been
entered. See the advisory letter mailed November 3, 1995
(Paper No. 33).
Appellant’s invention pertains to a handpiece for use in
a medical laser system. A basic understanding of the
invention can be derived from a reading of exemplary claim 18,
which reads as follows:
18. A handpiece for use in a transmyocardial
revascularization heart synchronized pulsed laser system
comprising:
a barrel having a passage for transmitting a laser
beam; and
a contacting wall at one end of said barrel
including an aperture in communication with said passage and a
face extending continuously radially outward from said
aperture to the periphery of said contacting wall.
The references of record relied upon by the examiner in
support of the rejections are:
McFee 1,562,460 Nov. 24,
1925
Sharon et al. (Sharon) 3,865,113 Feb. 11,
1975
Hughes 4,757,515 Jul. 12,
Appeal No. 95-4246
Application 08/201,052
Both the examiner and appellants have incorrectly2
denominated U. S. Patent No. 1,562,460 to McFee as “Fee”.
Claim 30 is obviously incorrect in that it depends from3
itself. For purposes of this appeal, we will consider claim
30 as depending from claim 29. This error is deserving of
correction in the event of further prosecution.
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1988
Johnson 4,850,352 Jul. 25,
1989
Vassiliadis et al. (Vassiliadis) 4,940,411 Jul. 10,
1990
The following rejections under 35 U.S.C. § 103 are before
us for review:
(a) claims 18-23 and 31-35, rejected as being
unpatentable over Sharon in view of McFee ;2
(b) claims 24-27, rejected as being unpatentable over
Sharon in view of McFee, and further in view of Johnson;
(c) claim 28, rejected as being unpatentable over Sharon
in view of McFee, and further in view of Hughes; and
(d) claims 29 and 30 , rejected as being unpatentable over3
Sharon in view of McFee, and further in view of Vassiliadis.
The rejections are explained in the examiner’s answer
(Paper No. 29).
The opposing viewpoints of appellant are set forth in the
Appeal No. 95-4246
Application 08/201,052
We do not agree with the examiner’s implicit findings to4
the extent they suggest that the independent claims on appeal
require the barrel to have an “enlarged” contact surface which
includes a “solid” face, and that Sharon lacks such features.
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brief (Paper No. 28) and the reply brief (Paper No. 30).
Considering first the examiner’s rejection of independent
claims 18, 31, 34 and 35 as being unpatentable over Sharon in
view of McFee, the examiner has taken the following position:
These claims are met by Sharon ‘113 with the
exception of providing the barrel with an enlarged
contact surface including a solid face extending
continuously radially outward from the aperture of
the barrel; however, as Fee [sic, McFee] teaches
using an enlarged contact surface in the form of a
flange for contacting the surface of an area to be
treated to stabilize and assist in orienting a
surgical instrument[,] . . . providing Sharon ‘113,
particularly the embodiment of Fig. 11[,] with the
same in this manner for the benefits derived
therefrom would have been considered as obvious
modification. [final rejection, page 2]
Implicit in the above is the examiner’s position that the
modified Sharon device would correspond to the claimed
handpiece in all respects.
While we are not in complete agreement with the
examiner’s position as stated above, the rejection is4
sustainable. Our reasons follow.
Each of the independent claims 18, 31 and 35 requires a
Appeal No. 95-4246
Application 08/201,052
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contacting wall “at one end of said barrel.” Similarly,
independent claim 34 requires a contacting wall extending
transversely “from one end of said barrel.” In addition, each
of the independent claims requires a face “extending
continuously radially outward” from the aperture of the barrel
to the periphery of the contacting wall.
Turning to Sharon, this references discloses a laser
scalpel comprising a barrel 4, 6, 7 having a lens 8 for
focusing a laser beam at the point 11, and a tip member for
targeting the laser beam on a working spot or working line of
cut. The tip member may take various forms, as illustrated in
Figures 2-11. None of the embodiments disclosed by Sharon
satisfies all of the claim requirements set forth in the
previous paragraph. The Figure 5 embodiment and the Figure 11
embodiment of Sharon are most pertinent to the claimed
invention. The Figure 5 embodiment, however, lacks a
contacting wall “at one end of said barrel” (as required by
claims 18, 31 and 35), and a contacting wall extending
transversely “from one end of said barrel” (as required by
claim 34). This is so because the leg 42 to which the tab 44
is secured is not itself a barrel, and cannot be fairly
Appeal No. 95-4246
Application 08/201,052
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considered to be a part of the barrel 4, 6, 7. As for the
Figure 11 embodiment, Sharon explains at column 5, lines 28-
37, that the tip member 100 may be made from a test tube or a
centrifuge tube, with the laser beam being utilized to melt
the bottom of the tube to form the opening 104. While the
area of the tube immediately adjacent the aperture 104 may be
broadly considered a “contacting wall” having a “face,” it not
clear that this face “extend[s] . . . radially outward” from
the aperture 104, as required by each of the independent
claims.
McFee pertains to a therapeutical device for producing a
high frequency electrical discharge for treating tonsils or
other parts to which access is more or less difficult (page 1,
lines 9-14). The device includes an electrode 15 and a
tubular protector 17, preferably made of glass (page 2, line
35). The protector serves to make it easier for the operator
to hold the device at a proper distance from the part to be
treated (page 1, lines 36-43). In one embodiment, illustrated
in Figure 2, the protector is provided with an enlarged end in
the shape of a substantially radially extending flange (page
1, line 100; page 2, line 78). The purposes of the enlarged
Appeal No. 95-4246
Application 08/201,052
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end include “[holding] the parts adjacent the part to be
treated . . . away from the discharge by the protector” when
the body part to be treated is located in a relatively
confined space, “bear[ing] on the part to be treated,” and
“facilitat[ing] the holding of the electrode approximately
perpendicular to the part to be treated” (page 1, lines 89-
104).
From our perspective, it would have been obvious to one
of ordinary skill in the art to provide the Figure 11 tip
member of Sharon’s laser scalpel with a radially extending
flange in light of the combined teachings of the applied
references. Suggestion for this modification is found in
McFee’s express teaching that this type of construction
facilitates proper positioning of an energy beam relative to
the body part to be treated when the instrument bears on the
body part, and holds body parts adjacent the part to be
treated away from the energy discharge when the body part to
be treated is located in a relatively confined space, which
teachings one of ordinary skill in the art would recognize as
being applicable to Sharon’s laser scalpel to bring about
these same benefits. Independent claims 18, 31, 34 and 35
Appeal No. 95-4246
Application 08/201,052
Furthermore, at least the independent claims on appeal5
would also not appear to distinguish over the protector 37 of
McFee’s Figure 2 embodiment taken by itself. In this regard,
the protector 37 has a uniform diameter tubular body that
comprises a barrel having an aperture capable of transmitting
a laser beam and the radial flange 38 having at least an outer
portion that comprises a contacting wall having a face
extending continuously radially outwardly to the periphery.
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would not patentably distinguish over the Figure 1 handpiece
of Sharon fitted with such a modified Figure 11 tip member.5
Appellant’s arguments have been considered but are not
persuasive that the examiner erred in rejecting claims 18, 31,
34 and 35. For the reasons noted above, we simply disagree
with appellant that there is no suggestion to combine the
references in the manner proposed. We also disagree with
appellant that Sharon teaches away from providing a flange on
tip member, or that providing Sharon’s tip member with a
flange would defeat Sharon’s purpose because Sharon desires
movement of a narrow tipped scalpel-type instrument. First of
all, Sharon discloses a number of tip member configurations,
at least some of which (e.g., the Figures 5, 6 and 7
embodiments) include a relatively broad end portion. In
addition, as is made clear by Sharon at several places in the
specification (e.g., column 3, lines 30), the laser beam may
Appeal No. 95-4246
Application 08/201,052
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be used for cutting along a line or for spot work.
Appellant’s argument that the combination of Sharon and
McFee is the result of impermissible hindsight also is not
well taken. From our standpoint, no impermissible hindsight
reasoning has been relied upon by the examiner, since the
rejection takes into account only knowledge which was within
the level of ordinary skill at the time the presently claimed
invention was made, i.e., the teachings of Sharon and McFee
viewed as a whole, and does not include knowledge gleaned only
from appellants’ disclosure. See In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
We also do not agree with appellant’s argument on pages
10-14 of the brief that the proposed combination would not
result in the claimed subject matter. The preamble recitation
of claim 18, for example, that the handpiece is “for use” in a
heart synchronized pulsed laser system, and the recitation in
the body of claim 35, for example, that the claimed structure
“acts as a handpiece for contacting a beating heart during
use,” are statements of intended use or purpose that cannot be
relied upon to distinguish the claimed handpiece over the
Appeal No. 95-4246
Application 08/201,052
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applied prior art. See LaBounty Manufacturing v.
International Trade Commission, 958 F.2d 1066, 1075, 22 USPQ2d
1025, 1032 (Fed. Cir. 1992); In re Yanush, 477 F.2d 958, 959,
177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d 576, 580,
152 USPQ 235, 238 (CCPA 1967); Ex parte Cordova, 10 USPQ2d
1949, 1950-51 (Bd. Pat. App. & Int. 1987). In any event, the
modified Sharon handpiece reasonably appears to be fully
capable of functioning in the manner called for in the claims.
As to the claim requirement that the face of the
contacting wall “extend[s] continuously radially outward” from
the aperture to the periphery, McFee describes the flange of
protector 37 as being a “substantially radial” flange (page 1,
line 100), or a “radial” flange (page 2, line 78). Hence, the
tip member of Sharon’s Figure 11 embodiment modified in
accordance with McFee’s teachings likewise would extend
radially, at least for the portion thereof adjacent the
periphery, which is sufficient to satisfy the broadly worded
requirement of the independent claims in this regard. The
modified tip member of Sharon would also satisfy the
requirement of independent claim 34 calling for a contacting
Appeal No. 95-4246
Application 08/201,052
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wall “extending transversely from the end of the barrel” in
that the radially extending flange of the modified tip member
clearly would include at least a portion adjacent the
periphery of the flange that “extend[s] transversely” from the
end of the barrel.
On page 14 of the brief, appellant argues that “[w]hen a
combination is properly made under Section 103, the
disclosures being combined must specifically teach a structure
which solves the same problem encountered by the appellant,”
and cite In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.
1988) in support of this position. We note, however, that the
court in In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990) (en banc), cert. denied, 500 U.S. 904 (1991)
overruled Wright on this point. The court also made it clear
in Dillon at 919 F.2d 693, 16 USPQ2d 1901, that while all
evidence of the properties of the claimed subject matter and
the prior art must be considered in determining the ultimate
question of patentability, the discovery that a claimed
invention possesses a property not disclosed for the prior art
subject matter does not by itself defeat a prima facie case of
Appeal No. 95-4246
Application 08/201,052
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obviousness.
On pages 16-25 of the brief, appellant makes reference to
each of the appealed claims individually. Appellant
presumably considers this to be a separate argument for each
of the claims in favor of patentability. We note, however,
that these “arguments” are ambiguous in that they merely
restate the claim without specifying any particular feature
thereof that is not suggested by the applied prior art. For
example, on pages 19-20 appellants state:
Claim 19 is separately patentable because it
recites that the handpiece further includes means
for focusing a laser beam transmitted through the
passage to focus the laser beam proximate the
aperture to vaporize the tissue of the heart wall
and create a hole therein. Neither Sharon nor Fee
[sic, McFee] teach a handpiece for a transmyocardial
revascularization heart synchronized pulsed laser
system which includes means for focusing a laser
beam transmitted through the passage to focus the
laser beam proximate the aperture to vaporize the
tissue of a heart wall and create a hole therein.
In that Sharon clearly discloses a lens 8 for focusing the
laser beam at a point ll at the end of the tip member, this
“argument” is not well taken. Similarly, appellant’s separate
reference to each of the dependent claims 19-22, 32 and 33
does not convince us that the examiner erred in rejecting
Appeal No. 95-4246
Application 08/201,052
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these claims as being unpatentable over Sharon in view of
McFee.
As to claim 23, the meaning of the language “said
contacting wall is broader in cross-sectional area than said
barrel” is somewhat unclear in that it compares an area (the
cross-sectional area of the contacting wall) to an element per
se (the barrel). Giving this language its broadest reasonable
interpretation, we interpret the above quoted language of
claim 23 to mean that the diameter of the contacting wall is
greater than the diameter of the barrel. As interpreted,
claim 23 also does not patentably distinguish over the
modified Sharon tip member.
In light of the foregoing, we will sustain the § 103
rejection of claims 18-23 and 31-35 as being unpatentable over
Sharon in view of McFee.
Claims 24-26 depend from claim 18 and add that the barrel
includes means for introducing a purging gas into the barrel
(claim 24), means for venting debris purged by the gas from
the barrel (claim 25), and the location of the exhaust means
being proximate the aperture of the barrel (claim 26). We
Appeal No. 95-4246
Application 08/201,052
In that claim 27 depends directly from claim 18 and does6
not add anything to claim 18 above and beyond that disclosed
by Sharon, it is not clear why this claim is grouped with
claims 24-26.
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consider the means for introducing a purging gas of claim 24
to be readable on the bore 46 in appellant’s handpiece, and
the means for venting of claim 25 to be readable on the holes
70, 72 of appellant’s handpiece. The examiner’s position that
it would have been obvious to provide Sharon’s tip member with
a port for introducing a purging gas therein and a port for
venting debris and purging gas therefrom in view of the
teachings of Johnson at gas inlet port 18 and gas outlet port
20 is reasonable and has not been specifically disputed by
appellants. Accordingly, we will sustain the standing
rejection of claims 24-27 as being unpatentable over Sharon in
view of McFee and Johnson.6
Claim 28 depends from claim 18 and further requires that
the contacting wall is thermally insulating. In that the tip
member 100 of Sharon’s Figure 11 embodiment and the protector
of McFee may be made of glass (Sharon, column 5, lines 28-30;
McFee, page 2, line 35), which is a thermally insulating
material at least to some degree, the subject matter of this
Appeal No. 95-4246
Application 08/201,052
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claim would have been obvious to the ordinarily skilled
artisan in view of the combined teachings of the applied
references.
Claim 29 depends from claim 18 and further requires that
the barrel is angled and has a deflector means for directing
the laser beam along the angled barrel. Claim 30 adds that
the deflecting means is a mirror. It is the examiner’s
position that it would have been further obvious to provide
Sharon with such features in view of the teachings of
Vassiliadis in Figure 4 of a handpiece having an angled end
portion and a mirror 80 for deflecting a laser beam
therealong. In that the examiner’s position is reasonable and
has not been specifically disputed by appellants, we will also
sustain this rejection.
Each of the examiner’s rejections are sustained.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 95-4246
Application 08/201,052
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HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4246
Application 08/201,052
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Iandiorio & Dingman
260 Bear Hill Road
Waltham, MA 02154