Ex Parte Stokes et al

Patent Trial and Appeal Board

Mar 26, 2013

11394150 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/394,150 03/31/2006 Michael J. Stokes END-5418CIP7 9905
21884 7590 03/27/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
EREZO, DARWIN P
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/27/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL J. STOKES, THOMAS E. ALBRECHT,
MARK S. ORTIZ, MARK S. AEINER, ANDREW M. ZWOLINSKI, and
FREDERICK E. SHELTION IV
__________

Appeal 2011-012504
Application 11/394,150
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
endoscopic apparatus. The Patent Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
The invention concerns “an attachment structure for securing a
surgical suturing apparatus to an endoscope.” (Spec. 1.)
Appeal 2011-012504
Application 11/394,150

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Claims 1-20 are on appeal. Claim 1 is representative and read as
follows:
1. An endoscopic apparatus shaped and dimensioned for passage through
an orifice in the body, comprising:
a scope attachment member coupled to an endoscopic instrument
having an end effector, and a resilient connection member attaching the
scope attachment member to the endoscopic instrument, the connection
member having an insertion orientation sized for passage through the orifice
and a deployed orientation too large to pass though the orifice,
wherein when the connection member is in its insertion orientation the
endoscopic instrument is positioned closely adjacent an exterior of an
endoscope for low profile insertion of the endoscopic instrument through an
orifice, and when the connection member is in its deployed orientation the
endoscopic instrument is spaced from the endoscope to improve visibility;
and
the connection member is an elastomer lever arm resiliently biased to
its deployed orientation moving the endoscopic instrument off axis from the
endoscope.

The Examiner rejected the claims as follows:
• claims 1-3 and 6-9 under 35 U.S.C. § 103(a) as unpatentable over
Yoon;1 and
• claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Yoon
and Kelleher.2

OBVIOUSNESS
I. The Rejection over Yoon.
The Examiner’s position is:

1 Patent No. US 6,277,064 B1 issued to InBae Yoon, Aug. 21, 2001.
2 Patent Application Publication No. US 2005/0055038 A1 by Brian
Kelleher et al., published Mar. 10, 2005.

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Application 11/394,150

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Yoon discloses an endoscopic apparatus capable of
passing through an orifice in the body or a trocar, the apparatus
comprising:
a scope attachment member 74 coupled to an endoscopic
instrument having an end effector (forceps, see Fig. 2), wherein
the scope attachment member is offset similar to the offset of
endoscope 16.
Yoon is silent with regards to the specifics of the offset
forceps. However, Yoon does provide details for the offset
endoscope 16, which has a resilient connection member 186
attaching the scope attachment member to the endoscopic
instrument (col. 7, ll. 50-67). Therefore, since both the forceps
and the endoscope are taught to be offset from a longitudinal
axis of barrel 12, one of ordinary skill in the art would have
found it obvious to form/manufacture the offset forceps similar
to that of the offset endoscope.

(Ans. 3-4.) Therefore, the Examiner adapted Yoon’s disclosure relating to
the offset endoscope and its connection member 186 to the offset forceps,
finding that such disclosure met the limitations of resilient connection
member recited in instant claim 1, except for the lever arm of the connection
member being an elastomer lever arm. (Id. at 4-5.) However, the Examiner
found that it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to have formed Yoon’s lever arm from
an elastomer because elastomers were well known in the medical art, and it
was within the skill of the artisan to have selected such a known material on
the basis of suitability for the intended use as a matter of obvious design
choice. (Id. at 5.)
Appellants contend, among other things, that “Yoon does not teach a
resilient connection member attaching the scope attachment member to the
endoscopic instrument such that the endoscopic instrument is moved away
from an endoscope.” (App. Br. 8.)
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Application 11/394,150

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In the Response to Argument, the Examiner states, “For the surgical
instruments, Yoon provides the endoscope 16 and the forceps 74 as
examples and both are shown to have an offset configuration.” (Ans. 9.)
In the Reply Brief (Reply Br. 2) Appellants note that the Examiner’s
position in the Response to Argument (Ans. 9) is that element 74 is a
surgical instrument, i.e., reads upon the claimed endoscopic instrument,
rather than reading upon the scope attachment member, as the Examiner
initially found (see id. at 9). Therefore, Appellants assert that if element 74
(the forceps) are considered as the endoscopic instrument, then “there is no
available structure to read upon the claimed scope attachment member.”
(Reply Br. 2.)
We agree with Appellants that the Examiner has not accounted for
each element of the claimed invention, i.e., a scope attachment member, and
thus did not appreciate the difference between the claimed subject matter
and the prior art. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
Accordingly, we reverse the rejection of claims 1-3 and 6-9 over
Yoon.
II. The Rejection over Kelleher and Yoon.
The Examiner found that Kelleher disclosed an endoscopic apparatus
capable of passing through an orifice of the body or a trocar, comprising:
a scope attachment member (Fig. 30, element 158)
coupled to an endoscopic instrument (Fig. 30, element 150)
having an end effector 142, and
a connection member (Fig. 30, element 161) attaching
the scope attachment member to the endoscopic instrument
(Fig. 30, element 150),
the connection member having an insertion orientation
sized for passage through the orifice and a deployed orientation
too large to pass through the orifice (Figs. 30 and 46), wherein
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Application 11/394,150

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when the connection member is in its insertion orientation the
endoscopic instrument is positioned closely adjacent an exterior
of an endoscope for low profile insertion of the endoscopic
instrument through an orifice, and when the connection
[member] is in its deployed orientation the endoscopic
instrument is spaced from the endoscope to improve visibility
(Fig. 30)….

(Ans. 6.) The Examiner additionally found that Kelleher disclosed that
connection member 161 is flexible, but was silent regarding the member
being resiliently biased to the deployed position. (Id. at 7.) However, the
Examiner found that providing a biasing element on an endoscope device for
biasing a connection/operating member was well known in the art, as
exemplified in Yoon. (Id.) According to the Examiner, it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to have modified Kelleher’s apparatus to have a resiliently biased
connection member to allow the endoscope to become offset to provide
better visibility, as taught by Yoon. (Id.)
Appellants contend that Kelleher and Yoon “fail to disclose, either in
combination or individually, each and every element of the claimed
invention….” (App. Br. 15.)
We agree with Appellants. Specifically, we do not find that the
evidence of record supports the Examiner’s finding that Kelleher disclosed
(a) the connection member having “a deployed orientation too large to pass
th[r]ough the orifice (Figs. 30 and 46)” wherein (b) “when the connection
[member 161] is in its deployed orientation the endoscopic instrument is
spaced from the endoscope to improve visibility (Fig. 30).” (Ans. 6.) In
particular, we note neither Figure 30 nor 46 of Kelleher illustrates a
deployed orientation too large to pass through the orifice. Further, Kelleher
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Application 11/394,150

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does not describe such a deployment orientation. Indeed, we do not find that
Kelleher disclosed or suggested any difference in orientation for the
connection member 161, i.e., flexible section 161, upon insertion and
“deployment.” (See, e.g. Kelleher [0132]-[0133].)
Accordingly, we reverse the rejection over Kelleher and Yoon.

SUMMARY
We reverse both of the obviousness rejections.

REVERSED

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