Ex Parte Saadat et al

Patent Trial and Appeal Board

Apr 23, 2013

10797485 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/797,485 03/09/2004 Vahid Saadat USGINZ00130 3298
7590 04/24/2013
USGI Medical, Inc.
1140 Calle Cordillera
San Clemente, CA 92673
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
04/24/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte VAHID SAADAT, CHRIS A. ROTHE, RICHARD C. EWERS,
TRACY D. MAAHS, and KENNETH J. MICHLITSCH
__________

Appeal 2011-008071
Application 10/797,485
Technology Center 3700
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an endoluminal apparatus. The Patent Examiner rejected
the claims for anticipation and obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 67-71, 73, 74, 76-80, 82-84, 92, and 94-96 are on appeal.
Claim 67 illustrates the subject matter on appeal and reads as follows:
67. An endoluminal apparatus comprising:
an elongated main body having a proximal end, a distal end, a
longitudinal axis, and at least one lumen extending through the main body,
the main body comprising a single tube having at least a first section near
the proximal end and a second section near the distal end, and with the first
section comprising a plurality of nested links with substantially all adjacent
links having mating surfaces that are in contact with but that are not
connected to each other and having a plurality of first pullwire lumens,
a plurality of first pull wires routed through substantially each of the
first pullwire lumens, with each of the first pullwires being fixed to the
elongated main body at a location at or near a distal end of the first section
and at substantially a common point along the longitudinal axis of the main
body, the first pullwires being substantially symmetrically spaced around the
periphery of the nested links of the first section,
a tensioning mechanism operatively coupled to each of said first pull
wires and adapted to impart a tension force that is substantially evenly
distributed to each of said first pullwires, wherein the first section may be
selectively switched between a substantially flexible condition and a
substantially rigid condition, and
wherein the second section is steerable relative to the first section; and
a scope extended through at least a portion of said at least one lumen,
said scope being moveable through said lumen relative to said elongated
main body.

The Examiner rejected the claims as follows:
I. claims 67-71, 73-74, 76-80, 82-83, 95, and 96 under 35 U.S.C.
§ 102(b) as anticipated by Zehel;1
II. claim 84 under 35 U.S.C. § 103(a) as unpatentable over Zehel and
Furihata;2 and

1 Wendell E. Zehel et al., US 5,251,611, issued Oct. 12, 1993.
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III. claims 92 and 94 under 35 U.S.C. § 103(a) as unpatentable over Zehel
and Boury.3

DISCUSSION
We consider the three rejections together because the same issues are
dispositive for all three. (See App. Br. 15: “Neither of the Furihata and
Boury patents corrects the deficiencies of the Zehel patent.”)
Appellants have contended that neither of Zehel’s first endoluminal
apparatus or second endoluminal apparatus comprised (i) an elongated main
body comprising a single tube, (ii) a movable scope extended through the
main body lumen, and (iii) a second section of the main body distal to the
first section such that pull wires are fixed to the main body at or near a distal
end of the first section. (App. Br. 14-15.) The Examiner provided a
thorough response, explaining how the claim should be interpreted, and
explaining how the cited evidence supported the findings. (See Ans. 11-13.)
Upon consideration of the evidence on this record, and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable. Accordingly, we sustain the Examiner’s
rejections for the reasons set forth in the Answer, which we incorporate
herein by reference, including the Examiner’s responses to Appellants’
arguments. Appellants further explain their positions in a Reply Brief,
which we find unpersuasive for the following reasons.

2 Hiroyuki Furihata, US 3,897,775, issued August 5, 1975.
3 Harb N. Boury, US 5,916,147, issued June 29, 1999.
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Claim 67 recites “the main body comprising a single tube having at
least a first section near the proximal end and a second section near the distal
end . . . .” The transitional term “comprising” has an established meaning in
the art; the Examiner interpreted “main body” accordingly. (See Ans. 11.)
Appellants contend claim 67’s interpretation “does not turn on the open-
ended nature of the ‘comprising’ transition.” (Reply Br. 2.) Instead, “[t]he
word ‘single’ in the claim requires a numerical limitation.” (Id.) As
Appellants’ read claim 67, “Zehel’s dual conduit shaft cannot be a ‘main
body comprising a single tube.’” (Id.) Appellants summarize:
This case would be different ... and the Examiner's analysis
would be correct ... if the claim recited a main body
“comprising a tube” or “comprising a first tube,” either of
which would not exclude a dual conduit shaft. However, claim
67 recites a main body “comprising a single tube.” A numerical
limitation is clearly the intent and the result. Given this result,
the claim cannot encompass the Zehel device.

(Id. at 3.)
In our view, Zehel’s main body 11 (Zehel, Fig. 1) does comprise a
single tube having the requisite sections, and we agree with the Examiner.
Even if we agreed with Appellants’ alternate interpretation of “main body,”
which we do not, the rejection should be affirmed because claim 67 defines
an “endoluminal apparatus comprising” an elongated main body among
other things. That is, because even under Appellants’ alternate interpretation
the claim as a whole still defines an apparatus open to additional
components within the main body, and the defined apparatus is still not
differentiated from Zehel’s apparatus.
Appellants renew their argument that Zehel did not describe a
movable scope, and that Zehel’s conduit 10 with optical fibers is not a scope
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movable through Zehel’s main lumen. (Id.) As the Examiner found, Zehel
disclosed that “inner flexible conduit 10 is slidably disposed and free to
travel” (Zehel, col. 4, ll. 49-52). In the passages the Examiner cited, Zehel
described “the insertion of an exploratory device” by detailing how conduit
10 is advanced. (Id. at cols. 4-5.) The Examiner cited further passages
describing “visual inspection” and “endoscopic procedures” (id. at cols. 5-
6), and using “optical fibers” in conduit 10 (id. at col. 8.)
Claim 67 requires a “scope,” which Appellants contend “plainly refers
to a self-contained endoscope that is movable within the lumen of the main
body. Such an interpretation is supported by the conventional meanings of
the words used in the claim, as well as Appellants’ specification.” (Reply
Br. 3-4, citing Specification ¶ 0006.) We disagree that the plain meaning of
“scope” in this art distinguishes over Zehel’s insertable and movable conduit
10 containing optical fibers taught for use as an endoscope. We also
disagree that Specification ¶ 0006 provides a basis for differentiating the
claimed “scope” from Zehel’s endoscope. The Specification provides:
[0006] Endoscopy is typically performed with the use of
an endoscope, a small circular tube containing optical
components. Traditional endoscopes comprise a small diameter
“snake-like” insertion tube having a distal end which is inserted
into the orifice to the desired internal location. Fiber optics
extend through the insertion tube and terminate at the distal end
to allow axial viewing from the distal end. Images of the
internal location near the distal end of the endoscope are
transmitted to a video monitor for the physician to view. A
control handle allows the endoscopist to control the direction of
the scope and in some cases, permits the actuation of air, water
and suction utilities that may be required for the endoscopy
procedure.

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(Spec. 2.) The Specification defines the same thing Zehel described for
doing endoscopy: a movable conduit with optical fibers in it.
Claims 68-71, 73, 74, 76-80, 82-84, 92, and 94-96 have not been
argued separately and therefore fall with claim 67. 37 C.F.R.
§ 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 67-71, 73-74, 76-80, 82-83, 95, and
96 under 35 U.S.C. § 102(b) as anticipated by Zehel.
We affirm the rejection of claim 84 under 35 U.S.C. § 103(a) as
unpatentable over Zehel and Furihata.
We affirm the rejection of claims claims 92 and 94 under 35 U.S.C.
§ 103(a) as unpatentable over Zehel and Boury.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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