Ex Parte Seiger et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11961909 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JASON SEIGER, RAFAL CHUDZIK, ANGELA JENSEN,
and GLEN LAZOK
__________

Appeal 2010-009487
Application 11/961,909
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES and LORA M. GREEN,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-009487
Application 11/961,909

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STATEMENT OF THE CASE
The following claim is representative and reads as follows:
1. A biopsy device, comprising:
a chamber having a body having a distal end and a proximal end,
wherein the proximal end includes an inlet;
a vacuum generator located in the chamber and configured for
generating pressure within the chamber;
at least one first recessed area extending along an inner wall of the
body, wherein the first recessed area is configured to release positive
pressure at a first location within the chamber;
at least one second recessed area extending along the inner wall of the
body, wherein the second recessed area is configured to release negative
pressure at a second location within the chamber, said second location being
spaced apart from said first location in a direction from the proximal end
toward the distal end; and
a cannula coupled to the chamber for taking a tissue sample from a
patient.

Cited References

The Examiner relies on the following prior art:

DeSantis et al. US 5,817,033 Oct. 6, 1998
Frass et al. US 2007/0270710 A1 Nov. 22, 2007
Molomut US 3,224,434 Dec. 21, 1965

Grounds of Rejection
1. Claims 1-12, 16-19, and 34 are rejected under 35 U.S.C. § 103(a)
over DeSantis in view of Frass.
2. Claims 13-15 are rejected under 35 U.S.C. § 103(a) over DeSantis
in view of Frass and Molomut.

Appeal 2010-009487
Application 11/961,909

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FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-9.
The following facts are highlighted.
1. Figure 1 of the Specification is reproduced below.

Figure 1 is a side view of the disclosed biopsy device (Spec. 1).
Figure 1 shows recesses 120 configured to release negative pressure
and recesses 116 configured to release positive pressure, at the end of
the biopsy device where positive pressure accumulates (Spec. 6).
2. Figure 1(b) of DeSantis is reproduced below.

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Figure 1(b) is a cross-sectional sideview of the needle biopsy device
of DeSantis (DeSantis, col. 5, ll. 6-9). The Figure shows standoffs
(34) which relieve vacuum pressure or negative pressure. (Col. 7, ll.
15-38.)
3. Figure 12 of Frass is reproduced below.

Figure 12 of Frass shows an embodiment of the device of Frass (Frass,
¶39). The Figure shows ventilating means, recess 37, which is at the end of
the biopsy device where negative pressure accumulates.

Discussion
ISSUE
The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at
the time of the invention to modify the device taught by DeSantis to
include recessed areas as taught by Frass in order to a ventilation
means [sic] by substituting one vent means for another in order to
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Application 11/961,909

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prevent inadvertent acquisition of blood or other tissues and prevent
possible leakage of fluid in the proximal portion of the chamber.
The combination of DeSantis and Frass teaches the device wheiren
[sic, wherein] as the piston is advanced towards the proximal end a
positive pressure is released via the first recessed area and as the
piston is advanced towards the distal end a negative pressure is
created and released via the second recessed areas.

(Ans. 7.)

Appellants argue both DeSantis and Frass teach a recessed area for
relieving a vacuum or negative pressure and neither reference teaches a
recessed area configured to release a positive pressure. (See Reply Br. 18.)
The issue is: Does the cited prior art support the Examiner’s
conclusion that the references teach a recessed area configured to release a
positive pressure?

PRINCIPLES OF LAW
During ex parte prosecution, claims are to be given their broadest
reasonable interpretation consistent with the description of the invention in
the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
We begin with claim interpretation. We interpret the claim phrase
“first recessed area is configured to release positive pressure” (claim 1) to
mean that the first recessed area must be present in a location of the biopsy
device where positive pressure accumulates in the biopsy apparatus. This
claim language therefore places a structural limitation on the claimed device,
and is not merely a recitation of intended use, as the Examiner interprets it
(see Answer 10-11).
We do not find that the Examiner has provided sufficient evidence in
the prior art of a “first recessed area . . . configured to release positive
pressure”, as claimed. (Claim 1.) We agree with Appellants that the specific
elements pointed to in the prior art by the Examiner in the Answer are at a
location within the biopsy device where negative pressure accumulates in
the biopsy device. While we acknowledge that DeSantis, col. 7, ll. 33-35,
indicates that alternatively, “other grooves or slots may be placed anywhere
on the periphery of cylinder 16 to allow vacuum [pressure] release,”
Appellants have argued that vacuum release is a negative pressure release.
The Examiner has not countered this argument or shown that slots are
suggested at the distal end of the device to release positive pressure.
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In view of the above, we are constrained to reverse the obviousness
rejections of the Examiner. As both rejections are based on the same
combination of DeSantis and Frass, and we do not find that Molomut
overcomes the deficiencies of the combination of DeSantis and Frass, we
also reverse the second obviousness rejection.

CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejections.
REVERSED

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