Ex Parte Scheller et al

Board of Patent Appeals and Interferences

Mar 29, 2012

10820330 (B.P.A.I. Mar. 29, 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.
10/820,330 04/07/2004 Gregg D. Scheller 10451-11 8512
16464 7590 03/29/2012
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
EXAMINER
DOWE, KATHERINE MARIE
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
03/29/2012 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 GREGG D. SCHELLER and
MICHAEL S. POULSEN
__________

Appeal 2010-010932
Application 10/820,330
Technology Center 3700
__________

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

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
instrument for microsurgery. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 25-42, 47, 48, 51, and 52 are on appeal. Claim 25 is
representative and reads as follows:
25. A microsurgical instrument comprising:
Appeal 2010-010932
Application 10/820,330

2
first and second operative microsurgical surfaces;
means for manually moving the first and second operative
microsurgical surfaces toward and away from each other; and
at least one of the operative microsurgical surfaces having a series of
serrations and each serration having adjacent peaks and a width dimension
between the adjacent peaks that is smaller than 0.007 of an inch.

The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Toth1 and Specht2 (Answer 3). The Examiner
finds that “Toth discloses the invention substantially as claimed” (id.) but
does not disclose that “the operative microsurgical surfaces comprise
serrations” (id. at 4). The Examiner finds that Specht teaches a
microsurgical instrument having, in a preferred embodiment, serrations on
the surfaces of the working area (id.) The Examiner concludes that it would
have been obvious to modify Toth’s device to include serrations on the
operative surfaces to improve gripping, and that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to form the serrations
such that the width between adjacent peaks of the serrations
was within the range of 0.0015 to 0.0039 of an inch, since it has
been held that where the general conditions of a claim are
disclosed in the prior art, discovering optimum or workable
ranges involves only routine skill in the art. See In re Aller,
105 USPQ 233.
(Id.)
Appellants argue that the claims are based on the discovery that “a
microsurgical instrument can be formed by electric discharge machining
(EDM) to have serrations where each serration has adjacent peaks with a

1 Toth et al., US 6,616,683 B1, Sept. 9, 2003
2 Specht et al., US 4,938,214, July 3, 1990
Appeal 2010-010932
Application 10/820,330

3
width dimension between the adjacent peaks that is smaller than 0.007 of an
inch” (Appeal Br. 7). Appellants argue that In re Aller does not apply
because the “small dimension claimed is outside of any range of serration
dimensions disclosed in the prior art of record” (id. at 7-8).
We agree with Appellants that the Examiner has not provided
sufficient evidence to show that a microsurgical instrument having the
serrations required by the claims on appeal would have been obvious. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”).
The Specification states that, in the conventional method of making
microsurgical forceps, “two pieces of wire stock would typically be ground
down along their entire lengths until each piece was reduced to substantially
half of its original thickness or width. Gripping surfaces would then be
formed on the distal ends of the two pieces of wire stock by further grinding
or cutting grooves across the previously ground surfaces of the wires.”
(Spec. 3: 7-11.) The Specification states that the “need for the final grinding
step of the operative surgical surfaces of the instruments, i.e. the gripping
surfaces of the forceps . . . limit[s] the size to which a microsurgical
instrument can be scaled” (id. at 3: 22-25). Specifically, the “smallest
serrations [that] can be formed by the conventional grinding process
typically range between 0.0070 and 0.0140 of an inch” (id. at 17: 24-26).
The Examiner relies on Specht as evidence that the serrations of the
claimed device would have been obvious (Answer 4). Specht discloses
microsurgical tools (Specht, abstract) including the needle holders shown in
Appeal 2010-010932
Application 10/820,330

4
its Figures 12-16 (id. at col. 15, ll. 49-50). Specht states that “[i]n a
preferred embodiment, the mating surfaces of the working area are provided
with a series of serrations extending, with reference to FIG.14, into the plane
of the paper” (id. at col. 16, l. 67 to col. 17, l. 3).
Although Specht discloses that the depth of these serrations “rang[es]
between one-half to one mil” (id. at col. 17, l. 3), it does not specify the
distance between adjacent peaks, nor does it describe any particular method
of making the serrations. We therefore agree with Appellants that the
Examiner has not adequately shown that the peak-to-peak distance required
by the claims would have been obvious to a skilled artisan based on Toth
and Specht.
The Examiner argues that Specht discloses that needles used in
microsurgery are 0.070 millimeters (70 microns) in diameter, and therefore
it is clear microsurgical forceps must have serrations sized to
accommodate curved needles as small as 70 microns in
diameter, which is smaller than the claimed upper limit width
dimension of 0.007 of an inch. If the width between adjacent
peaks of the serrations is greater than the diameter of the object
to be grasped, the entire object would fall between the
serrations and the serrations would not function to improve the
grip of the forceps.
(Answer 8.)
We agree with Appellants (Reply Br. 4), however, that Specht’s
reference to the size of microsurgery needles does not suggest any particular
distance between serrations in its needle holder. As we understand it, the
Examiner’s reasoning assumes that the serrations in Specht’s needle holder
are configured to align peak-to-peak, rather than peak-to-trough, and that a
needle would only be grasped so that it is transverse to the longitudinal axis
Appeal 2010-010932
Application 10/820,330

5
of the needle holder, rather than aligned with that axis. However, the
Examiner has not provided evidence to show that Specht’s needle holder has
this configuration or that it can only be used this way. We therefore agree
with Appellants that the Examiner has not shown that the distance between
serrations in Specht’s device affects its ability to grip microsurgery needles.
We conclude that the Examiner has not shown that the rejection on
appeal is supported by a preponderance of the evidence of record. See
Oetiker, 977 F.2d at 1445 (“After evidence or argument is submitted by the
applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”).
SUMMARY
We reverse the rejection of claims 25-42, 47, 48, 51, and 52 as
obvious based on Toth and Specht.

REVERSED

lp