Ex Parte Smith et al

Patent Trial and Appeal Board

Jul 28, 2017

12276632 (P.T.A.B. Jul. 28, 2017)

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
12/276,632 11/24/2008 Robert C
50855 7590 08/01/2017
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
Smith H-US-00078DIV
(203-4385DI
4481
EXAMINER
SCHERBEL, TODD J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. SMITH and THOMAS WENCHELL1
Appeal 2016-005183
Application 12/276,632
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER,
and RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(A) involving claims to
surgical access system, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Minimally invasive procedures such as endoscopic or laparoscopic
procedures often involve the use of a trocar to create a pathway to the
surgical site. Spec. 1. The trocar typically includes a stylet or obturator that
1 Appellants identify the Real Party in Interest as Coviden LP. Appeal Br. 2.
Appeal 2016-005183
Application 12/276,632
penetrates the body cavity. Id. The advancement of the obturator is usually
performed without visualization of the tissue being entered. Id. at 2. The
Specification describes an optical obturator that permits direct visualization
of the tissue during penetration. Id.
Claims 1, 3, 6, 8, 11, 14—17, and 21—29 are on appeal. Claim 1 is
representative of the rejected claims and read as follow:
1. A surgical optical access system, which comprises:
a cannula assembly having a cannula with open proximal
and distal ends and a seal housing having a seal configured and
dimensioned to sealingly receive surgical instrumentation
mounted on the proximal end of the cannula, the cannula
defining a longitudinal axis and having a longitudinal bore for
reception of the surgical instrumentation;
an optical access assembly including:
a sleeve, the cannula assembly being removably
insertable into the sleeve; and
a window secured to the sleeve for permitting passage of
light into the cannula, the window including a material
permitting light to pass therethrough, and being configured,
dimensioned, and positioned for selective engagement with the
distal end of the cannula, the window including at least two
separable segments adapted for radial displacement with respect
to the longitudinal axis of the cannula to permit the surgical
instrumentation to extend beyond a distal end of the cannula
and a distal end of the window, the at least two separable
segments being adapted for radial displacement from an initial
position to a displaced position in response to longitudinal
movement of the cannula into contact with the window,
adjacent separable segments of the at least two separable
segments being separated from each other a predetermined
distance when in the initial position; and
a blade disposed on an outer surface of the window, the
blade being configured and dimensioned to facilitate
penetration of tissue.
2
Appeal 2016-005183
Application 12/276,632
The claims have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Ko2 in view of Kerr3 4 5in further view of Reik.4,5
DISCUSSION
Issue
The issue is whether a preponderance of evidence supports the
Examiner’s finding that claims 1, 3, 6, 8, 11, 14—17, and 21—29 would have
been obvious over Ko, Kerr, and Reik.
The Examiner finds that Ko discloses the invention as claimed with
the exception of the window being a transparent material permitting light to
pass through (Final Act. 5), and Ko does not disclose a blade disposed in the
outer surface of each of the separable segments (Final Act. 6). The
Examiner finds that Kerr teaches surgical optical access system that has a
window of transparent material permitting light to pass therethrough. Id. at
5. The Examiner also finds that Reik teaches a surgical optical access
system having blades disposed on the outer surface of a window. Id. at 6.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify the device of Ko
to include the window of Kerr and the blades of Reik. Id. at 6—7.
2 Ko, US 5,354,302, issued Oct. 11, 1994 (“Ko”).
3 Kerr, US 2004/0082969 Al, published Apr. 29, 2004 (“Kerr”).
4 Reik et al., US 5,685,820, issued Nov. 11, 1997 (“Reik”).
5 The Examiner also rejected claims 1,3,6, 8, and 21—27 as unpatentable
over Ko combined with Kerr. Final Act. 3. The Examiner has withdrawn
that rejection. Ans. 2.
3
Appeal 2016-005183
Application 12/276,632
Appellants contend that the modification proposed by the Examiner
would be contrary to the teachings of Ko, which call for the obturator to
safely manipulate “solid distensible tissue.” Id. at 11. Appellants also argue
that Ko teaches that the disclosed device is already capable of penetrating
soft tissue. Id. Appellants argue that adding blades to Ko would not allow
the device to safely manipulate the tissue as taught by Ko. This would in
turn frustrate the purpose of Ko.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims would have been obvious over Ko combined with Kerr and Reik.
Appellants have not produced evidence showing, or persuasively argued,
that the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellants in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative;
therefore, all claims fall with claim 1. We address Appellants’ arguments
below.
Appellants contend that modification of the device disclosed in Ko to
add the blades disclosed in Reik would render the device unsuitable for its
intended purpose. Appeal Br. 11—12. We are unpersuaded. As the
Examiner points out, Ko teaches that the purpose of the device disclosed
therein is to penetrate the tissue being examined. Ans. 2. Adding the blades
of Reik to the device of Ko would actually facilitate tissue penetration. Id.
4
Appeal 2016-005183
Application 12/276,632
at 3. In addition, as the Examiner points out, Appellants provide no
evidence that the presence of blades would hinder the ability to safely
manipulate the tissue. Id. at 4. “[Attorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness.”
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Thus, the evidence of
record does not show that the purpose of Ko would have been frustrated.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Ko, Kerr,
and Reik.
Claims 3, 6, 8, 11, 14—17, and 21—29 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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
5