Ex Parte Speeg et al

Patent Trial and Appeal Board

May 31, 2013

12038359 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TREVOR W. V. SPEEG, PETER MORGAN, JOHN A. HIBNER,
LEE E. REICHEL, WILLIAM A. GARRISON, GAVIN M. MONSON,
MICHAEL E. JOHNSON, ROBERT F. WEIKEL, JR.,
and MICHAEL R. LUDZACK
__________

Appeal 2012-003586
Application 12/038,359
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 5-16, 18-19, and
21-25. The Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
Appellants’ invention relates to a biopsy device having a cannula with
a plurality of dimples that may function to reduce adherence to tissue (see
e.g., Specification 15, ¶ [0064]). Independent claims 1, 19, and 23 are
representative and read as follows (emphasis added):
1. A biopsy probe, wherein the biopsy probe comprises:
(a) a body portion;
(b) a cannula extending from the body portion, wherein
the cannula defines at least one lumen, wherein the cannula
comprises a transverse aperture configured to receive tissue,
wherein the cannula further comprises a plurality of recessed
dimples formed therein;
(c) a tip located at the distal end of the cannula;
(d) a first blade extending longitudinally from the tip;
(e) a second blade extending longitudinally from the tip;
and
(f) a cutter configured to translate relative to the cannula,
wherein the cutter is configured to sever tissue.

19. A biopsy probe, wherein the biopsy probe comprises:
(a) a body portion;
(b) a cannula extending from the body portion, wherein
the cannula defines at least one lumen, wherein the cannula
comprises a transverse aperture configured to receive tissue,
wherein the cannula further comprises a plurality of recessed
dimples formed therein;
(c) a tissue piercing tip located at the distal end of the
cannula, wherein the recessed dimples in the cannula are
proximal to the tip; and
(d) a cutter configured to translate relative to the cannula,
wherein the cutter is configured to sever tissue.

23. A biopsy probe, wherein the biopsy probe comprises:
(a) a body portion;
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(b) a cannula extending from the body portion, wherein
the cannula defines at least one lumen, wherein the cannula
comprises a transverse aperture configured to receive tissue,
wherein the cannula comprises a plurality of recessed dimples
formed therein, wherein the recessed dimples are inwardly
directed;
(c) a tissue piercing tip located at the distal end of the
cannula; and
(d) a cutter configured to translate relative to the cannula,
wherein the cutter is configured to sever tissue protruding
through the transverse aperture.

The claims stand rejected as follows:
I. Claims 1, 7-16, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hibner,
1
Eggers,
2
and
Boock.
3

II. Claims 5-6 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Hibner, Eggers, Boock, and Enstrom.
4

III. Claims 19 and 22-25 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hibner and Boock.

The same issue is dispositive for each rejection.

1
Hibner et al., EP 1 356 772 A2, published Oct. 29, 2003.
2
Eggers et al., US 7,569,053 B2, issued Aug. 4, 2009.
3
Boock et al., US 2005/0059905 A1, published Mar. 17, 2005.
4
Enstrom, US 4,712,548, issued Dec. 15, 1987.
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Issue
The issue presented is: Does the evidence of record support the
Examiner’s finding that the combined prior art teaches or suggests a biopsy
probe having a cannula with a plurality of dimples as recited by independent
claims 1, 19 and 23?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses a cannula having a plurality of
dimples formed in the cannula (Specification 15, ¶ [0064]). Specifically, the
Specification discloses as follows:
[C]annula (750) is subject to shot peening, which results in a
plurality of dimples (752) being formed in cannula (12). It will
be appreciated that, in some contexts, a cannula (12) that has a
smooth electropolished outside surface may exhibit some
degree of adherence to tissue as it penetrates the tissue. Such
adherence may result in a relatively increased force that is
required for a needle portion (10) that has such a cannula (12)
to penetrate the tissue. By contrast, dimples (752) may reduce
such a drag effect (e.g., by reducing the contact surface), such
that modified cannula (750) requires relatively less force for
needle portion (10) to penetrate tissue.
(Id.)
FF2. In the alternative embodiment, the Specification discloses a
cannula having a plurality of scallops where, “[s]imilar to dimples (752),
scallops (762) may reduce the force that is required for a needle portion (10)
having such a cannula (760) to penetrate tissue (e.g., by reducing the contact
surface).” (Id. at 16, ¶ [0066].)
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FF3. Boock discloses “a tissue extraction and maceration device that
is designed to effectively remove a viable tissue sample, to control the
volume of tissue removed, and to macerate the tissue sample into particles
having a predetermined size” (Boock 1, ¶ [0006]).
FF4. Boock discloses embodiments having “a substantially semi-
cylindrical tissue harvesting tip 16a, 16b having a scalloped parameter that
is effective to cut into tissue upon rotation of the shaft 14” (id. at 4, ¶
[0039]).
Principles of Law
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention — including all its
limitations — with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
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added). Similarly, as our reviewing court has stated, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Analysis
We begin with claim interpretation, since until a claim is properly
interpreted, its scope cannot be compared to the prior art. The words of the
claim must be given their plain meaning unless the plain meaning is
inconsistent with the specification. See In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989). We determine the scope of the claims not solely on the basis of
the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1395-96 (CCPA 1969).
In the present case, each of the independent claims recites a cannula
comprising a plurality of recessed dimples. The Examiner finds that Boock
“disclose[s] dimples, in the form of scallops” (Ans. 11).
We are not persuaded. Rather, we agree with Appellants’ view that
“an interpretation equating the scallops of Boock, et al. with the recessed
dimples recited in claim 1 goes beyond the standard of the broadest
reasonable interpretation of the claim language, especially when viewed in
light of the application’s written description” (App. Br. 15). In particular, it
is clear from reading the Specification as a whole that the structures referred
to as dimples and scallops in the Specification are distinct from Boock’s
scallops. “[T]he scallops of Boock, et al. are included to assist in the cutting
of tissue when the tip of the device is rotated. ... The recessed dimples
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recited in the present application are included on the cannula to reduce the
adherence of tissue to the cannula by reducing the contact surface such that
less force is required to penetrate the tissue.” (App. Br. 16-17; see also,
FF1-FF4.) The functional difference between scallops that cut versus
scallops that reduce adhesion implies a structural difference that is not
addressed by the Examiner.
Having determined the scope of Appellants’ claims, we conclude that
the preponderance of the evidence of record does not support the Examiner’s
conclusion that Boock discloses a cannula with a plurality of dimples as
recited by independent claims 1, 19 and 23. Like Appellants, we are unable
to find where in the references a cannula having a plurality of dimples is
either taught or suggested. (See e.g., App. Br. 9-10.) We are not persuaded
that the Examiner has advanced an adequate evidentiary basis to conclude
that Boock’s “scallops” meet the limitation of “recessed dimples” when
those terms are construed in light of the Specification as it would be
interpreted by one of ordinary skill in the art. See e.g., In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d at 1364. We thus reverse the rejections under 35
U.S.C. § 103(a) that rely on the teachings of Boock.

SUMMARY
We reverse all rejections on appeal.

REVERSED

cdc