Ex Parte Schnitzler et al

Patent Trial and Appeal Board

Jun 23, 2016

10577297 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/577,297 0412712006
24998 7590 06/27/2016
Blank Rome LLP
1825 EYE STREET NW
Washington, DC 20006-5403
FIRST NAMED INVENTOR
Uwe Schnitzler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
E7900.2009/P2009 5152
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
06/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
#IPDocketing-DC@BlankRome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE SCHNITZLER and DANIEL SCHALLER
Appeal2014-002623
Application 10/577 ,297
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Uwe Schnitzler and Daniel Schaller (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 3, 7-
9, 12, 17, 19, 20, and 22-28. 1 We have jurisdiction over this appeal under
35 U.S.C. § 6(b). An oral hearing was conducted on June 9, 2016, with S.
Gregory Herrman, Esq., appearing on behalf of Appellants.
We REVERSE.
1 Claims 29-32 were subject to rejections under 35 U.S.C. § 112, first and
second paragraphs, in the Final Action, but were subsequently canceled, and
the rejections are withdrawn for the purposes of appeal. Final Act. 2-5;
Ans. 2.
Appeal2014-002623
Application 10/577 ,297
THE INVENTION
Appellants' invention relates to an apparatus for coagulating tissue
using a plasma generated from an inert gas. Claim 1 is illustrative and is
reproduced below:
1. An apparatus for coagulating tissue, comprising:
an electrode adapted to produce a high-frequency current;
a gas-delivering device having an outlet and being adapted to
deliver an inert gas from said outlet into a space defined
between said electrode and said tissue, such that a plasma is
produced between said electrode and said tissue when said
high-frequency current is applied to said inert gas, wherein a
distal end of said electrode projects out of said outlet of said
gas-delivering device; and
a guiding device comprised of an electrically insulating material
and disposed at said distal end of said electrode, said guiding
device for directing and guiding said plasma such that at least a
part of said plasma is diverted in a predetermined direction,
wherein a cross-section of at least a portion of said guiding
device is at least a size of an opening of said outlet at a furthest
distal end of said gas-delivering device in order to divert said
plasma into said space substantially radially with respect to an
opening of said outlet of said gas-delivering device,
wherein the guiding device comprises a concave surface at a
surface facing the outlet of the gas-delivering device and a
substantially hemispherical surface at a surface facing away
from the outlet of the gas-delivering device, and
wherein only the electrode and the guiding device, and no other
portion, of the apparatus extend past the opening of said outlet
at said furthest distal end of the gas-delivering device.
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Appeal2014-002623
Application 10/577 ,297
THE REJECTIONS
The Examiner has rejected claims 1, 3, 7-9, 12, 17, 19, 20, and 22-28
under 35 U.S.C. 103(a) as being unpatentable over Ishikawa (JP 2002-
301088 A, published Oct. 15, 2002)2 in view of Lafontaine (US 5,902,328,
issued May 11, 1999).
ANALYSIS
The Examiner cites to Ishikawa as disclosing all limitations found in
independent claim 1, including a guiding device 12, but fails to disclose that
the cross-section or diameter of the guiding device is at least the size of, or
larger than, an opening at an outlet at the furthest distal end of a gas delivery
device, in order to provide for the substantially radial diversion of the
plasma relative to the opening. Final Act. 7. The Examiner finds that
Lafontaine discloses a guiding device having a cross-section or diameter
that is iarger than an opening at a distai end of a deiivery device. Id. at 8.
The Examiner concludes that it would have been obvious to provide guiding
device 12 of Ishikawa with a cross-sectional size or diameter that is larger
than that of the opening in the distal end of the gas delivery device, "to
provide a combined device that provides a desired extent of coagulation via
a plasma applied to tissue." Id. The Examiner also points to disclosure in
LaFontaine of adjusting the size of its guiding device, and concludes that
2 Ishikawa appears, from the record, to be the second-named inventor on this
Japanese publication, with Sugi being the first-named inventor. We will
refer to this reference, as have Appellants and the Examiner, as the Ishikawa
reference. Any citation to this reference will be to the English-language
translation by Schreiber Translations, Inc., dated November 2011.
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Appeal2014-002623
Application 10/577 ,297
increasing the size of the guiding device in Ishikawa would have been an
obvious design choice involving a mere change in size of the component.
Id. at 8-9.
Appellants argue, inter alia, that increasing the size of guiding
member 12 of Ishikawa to be at least as large as the size of the opening
would eliminate a desired feature in Ishikawa, namely the ability to stream
inert gas through the opening even when the high-frequency knife, which
has guiding member 12 at its distal end, is retracted. Appeal Br. 10-11;
Reply Br. 3--4. Appellants argue this in the context of asserting that this
function is mandatory in the Ishikawa device, and that Ishikawa thus teaches
away from eliminating the function. Reply Br. 4.
We do not fully subscribe to the position that Ishikawa teaches away
from the Examiner's proposed modification, but do agree that such
modification would seemingly eliminate a significant feature of the Ishikawa
device. We are further cognizant of precedent in this context to the effect
that a given course of action may simultaneously have advantages and
disadvantages, and that the benefits, both lost and gained, are to be weighed
against each other. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n.8 (Fed. Cir. 2000). With the Examiner's proposed modification, the result
is the loss of an expressly disclosed desired feature, with the "gain" of a
nebulous and poorly explained provision of a "desired extent of coagulation
via a plasma applied to tissue."3 We also disagree that the proposed
3 There is a considerable amount of back-and-forth between Appellants and
the Examiner with respect to whether Ishikawa guiding member 12, in its
unmodified configuration, acts to deflect the inert gas or plasma exiting the
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Appeal2014-002623
Application 10/577 ,297
modification amounts to a mere, and obvious, change in the size of the
guiding device, again, given the elimination of a significant feature.
As such, the Examiner's proffered reason to combine the teachings to
modify the Ishikawa device, is lacking in rational underpinnings. The
rejection of claim 1, and of claims 3, 7, 8, 22-24, and 27 depending
therefrom, is not sustained. Independent claims 9 and 20 include limitations
nearly identical to that discussed above with respect to claim 1, and the
rejection of those claims, and of claims 12, 17, 19, and 25 depending from
claim 9, and of claims 26 and 28 depending from claim 20, are not sustained.
DECISION
The decision of the Examiner to reject claims 1, 3, 7-9, 12, 17, 19, 20,
and 22-28 under 35 U.S.C. 103(a) Ishikawa and Lafontaine is reversed.
REVERSED
gas delivery device. See, e.g., Appeal Br. 9-10; Ans. 5. While not essential
to the outcome here, we note that Ishikawa is silent on this matter, and the
drawing figures appear to show similar gas exit patterns regardless of the
presence or absence of guiding device 12, which suggests that Ishikawa is
not particularly concerned with the effect of the presence of guiding device
12 on gas flow.
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