Ex Parte Saadat et al

Patent Trial and Appeal Board

Apr 24, 2013

11036029 (P.T.A.B. Apr. 24, 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.
11/036,029 01/14/2005 Vahid Saadat USGINZ00710 5015
7590 04/25/2013
USGI Medical, Inc.
1140 Calle Cordillera
San Clemente, CA 92673
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
04/25/2013 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, JOHN A. COX
and CHRIS ROTHE
__________

Appeal 2011-006747
Application 11/036,029
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, JACQUELINE WRIGHT BONILLA,
and SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
and apparatus for obtaining laparoscopic access. The Examiner has rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

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Application 11/036,029

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STATEMENT OF THE CASE
Claims 1-8, 11-18, 21-25, and 31-44 are on appeal. Independent
claims 1, 17, and 31 are representative and read as follows (emphasis
added):
1. Apparatus for obtaining laparoscopic access, the apparatus
comprising:
a trocar having a lumen, the trocar configured for
placement across a wall of a body lumen;
an elongate body adapted for insertion through the trocar
lumen, the elongate body having a longitudinal axis and a distal
region, the elongate body comprising a plurality of links and at
least one tensioning wire whereby said elongate body has a
first, substantially flexible state and a second, substantially rigid
state;
at least two working lumens extending through the
flexible elongate body; and
at least one articulating element disposed near or at the
distal region, and pivotally connected to the elongate body near
or at its distal region by a linkage member pivotally connected
to a first hinge on the articulating element and a second hinge
on the elongate body, wherein the at least one articulating
element articulates from an in-line position to an off-axis
position relative to the longitudinal axis of the elongate body,
and wherein a distal opening of at least one of the working
lumens is substantially covered by the articulating element in
the in-line position and is substantially uncovered by the
articulating element in the off-axis position.

17. A method for obtaining access to a body lumen or body
cavity, the method comprising:
placing a trocar across a wall of the body lumen or body
cavity;
advancing an elongate body having an articulatable
element disposed near or at a distal region thereof through the
trocar and into the body lumen or body cavity;
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moving the articulatable element from a position in-line
with or adjacent to a longitudinal axis of the elongate body to a
position off-axis relative to the longitudinal axis, thereby at
least substantially exposing a distal opening of a working lumen
provided in the elongate body; and
passing a diagnostic or therapeutic tool through the
working lumen while the articulatable element is maintained in
the out-of-line position.

31. Apparatus for obtaining laparoscopic access, the
apparatus comprising:
a trocar having a lumen, the trocar configured for
placement across a wall of a body lumen;
an elongate body adapted for insertion through the trocar
lumen, the elongate body having a longitudinal axis and a distal
region;
at least two working lumens extending through the
flexible elongate body; and
at least one articulating element disposed near or at the
distal region, and pivotally connected to the elongate body near
or at its distal region by a linkage member pivotally connected
to a first hinge on the articulating element and a second hinge
on the elongate body, wherein the at least one articulating
element articulates from an in-line position to an off-axis
position relative to the longitudinal axis of the elongate body,
and wherein a distal opening of at least one of the working
lumens is substantially covered by the articulating element in
the in-line position and is substantially uncovered by the
articulating element in the off-axis position.

The claims stand rejected as follows:
I. Claims 17-18, 21-25 and 31-44 as patentable under 35 U.S.C. §
102(e) over Khalili.1

1 Khalili, US 2005/0096502 A1, published May 05, 2005 .
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II. Claims 1-8 and 11-16 as unpatentable under 35 U.S.C. § 103(a)
over the combination of Khalili and Zehel.2
The same issue is dispositive for all of the rejections.
Issue
The Examiner finds that Khalili discloses the disputed element of a
“working lumen,” where “the term ‘working lumen’, may be interpreted as
being a fixed camera, as the CCD itself is a ‘working’ element that is
provided within a lumen” (Ans. 11) (see also, Figure 13B, element 330, of
Khalili).
Appellants contend as follows:
The recitation in each of the claims of “a working
lumen”... refers to an open space(s), channel(s), or conduit(s)[
to be] used for passage of diagnostic or therapeutic tools
therethrough. This interpretation is supported by Appellants’
specification, which consistently uses the terms to refer to such
a structure. (See, e.g., ¶ 0003: “The elongate body may also
include a working lumen to facilitate passage of diagnostic or
therapeutic tools therethrough, or for injection of fluids or to
draw suction.”[)]
...
[E]ven if a subassembly of the Khalili device included at one
time (e.g., during assembly) a conduit or channel that would
constitute a “working lumen,” the body of the camera 330 is
installed in the conduit or channel, and there is therefore no
longer a “working lumen” as claimed.

(App. Br. 14 and 15.)

2 Zehel et al., US 5,251,611, issued Oct. 12, 1993.
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The issue presented is:
Does the evidence of record support the Examiner’s findings that
Khalili discloses “at least two working lumens” or “passing a diagnostic or
therapeutic tool through the working lumen” as required by the claims?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses as follows: “The elongate body may
also include a working lumen to facilitate passage of diagnostic or
therapeutic tools therethrough, or for injection of fluids or to draw suction”
(Specification 1, ¶ [0003]).
FF2. Khalili discloses robotic surgical device where “a camera 330
may be provided at the interface region where the leaflets connect to the
body of the device” (Khalili 8, ¶ [0079]).

Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). However, a claim element cannot be
interpreted so broadly so as to read the limitation out of the claim. See Texas
Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed.
Cir. 1993) (Claim language cannot be mere surplusage. An express
limitation cannot be read out of the claim). Further, claim terms are not
interpreted in a vacuum, devoid of the context of the claim as a whole.
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Analysis
We agree with Appellants. The evidence of record fails to establish
that a “working” camera fixed within the interior of a device assembly (FF2)
would have been understood by a person of ordinary skill in the art to be a
“working lumen” (see, e.g., Ans. 11). Rather, a broadest reasonable
interpretation of the phrase “working lumen” in light of the Specification is
consistent with the Appellants’ view that a “working lumen” is a lumen
capable of facilitating the passage of tools (FF1; see also, App. Br. 14). An
occupied channel or cavity would not be capable of this function.
Accordingly, with regard to claims 1 and 31, we find that the Examiner has
not established that a skilled worker would have recognized that Khalili
discloses an apparatus having at least two working lumens as required by the
claims.
Independent claim 17 defines a method for obtaining access requiring
“passing a diagnostic or therapeutic tool through the working lumen.” We
find that the Examiner’s claim interpretation reads this element out of the
claim (see, e.g., Ans. 11). The Examiner has not established that a skilled
worker would have recognized that Khalili discloses a method for obtaining
access requiring passing a diagnostic or therapeutic tool through the
working lumen as required by claim 17. For example, the Examiner has not
adequately explained how disclosing the robot arm(s) as shown in Figures
15 and 16 in Khalili describes a step of passing a tool through a working
lumen (Ans. 4-5 and 11-13; see also Khalili [0082]-[0083]).
The rejection for obviousness relies on the Examiner’s same findings
that Khalili discloses at least two working lumens (Ans. 7-8), and therefore
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suffers from the same deficiency. The Examiner fails to establish by a
preponderance of the evidence that this reference describes or suggests “at
least two working lumens” as required in independent claim 1 and dependent
claims thereto.

SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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