Ex Parte Taylor et al

Patent Trial and Appeal Board

Jun 21, 2016

11515966 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111515,966
95666 7590
ConMed Corporation
Attn. Tim Evans
525 French Road
Utica, NY 13502
0910112006
06/22/2016
FIRST NAMED INVENTOR
Kenneth D. Taylor
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.
24_371 8237
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3739
MAILDATE DELIVERY MODE
06/22/2016 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 KENNETH D. TAYLOR, STEPHEN N. DONNIGAN, and
ALANR.LEE
Appeal2014-004031
Application 11/515,966
Technology Center 3700
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-24. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellants identify "ConMed Corporation" as the real party in
interest. (Appeal Br. 3.)
Appeal2014-004031
Application 11/515,966
STATEMENT OF THE CASE
The Appellants' invention relates to "[an] adapter and method and
apparatus for converting a gas-enhanced electrosurgical coagulation
instrument into a cutting instrument." (Spec. 1, 11. 4--7.)
Illustrative Claim2
1. An adapter to convert a gas-enhanced electrosurgical
coagulation handpiece into a cutting instrument, the coagulation
handpiece including a protruding hollow nozzle having an
exterior surface and an interior passageway through which a
stream of gas flows to tissue at a surgical site from a distal end
of the nozzle, the coagulation handpiece also including a
handpiece electrode within the interior passageway of the nozzle
and from which electrical energy is conducted into the gas stream
flowing from the distal end of the nozzle to the surgical site
during gas-enhanced electrosurgical coagulation, the adapter
compnsmg:
a main body having a proximal end and a distal end, the
proximal end of the main body formed generally as a tube within
which to receive the distal end of the nozzle of the coagulation
handpiece, the main body also including a coupling mechanism
to secure the tube to the external surface of the protruding nozzle
of the coagulation handpiece and thereby secure the adapter to
the nozzle, the main body further including at least one flow
passageway for conducting substantially all of the gas stream
entering the tube from the interior passageway of the nozzle
through the main body to the distal end of the main body when
the distal end of the nozzle is received in the tube and the tube is
secured to the external surface of the nozzle by the coupling
mechanism; and
an adapter electrode supported by the main body, the
adapter electrode extending longitudinally through the main
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 21-29 of the Appeal Brief.
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Application 11/515,966
body, the adapter electrode including a proximal end portion
within the tube and a distal cutting end portion which extends
distally beyond the main body, the proximal end portion of the
adapter electrode extending into the interior passageway of the
nozzle to contact the handpiece electrode when the distal end of
the nozzle is received in the tube and the tube is secured to the
external surface of the nozzle by the coupling mechanism, the
contact of the adapter electrode with the handpiece electrode
conducting electrical energy from the handpiece electrode to the
adapter electrode, the distal cutting end portion of the adapter
electrode transferring the electrical energy conducted from the
adapter and handpiece electrodes, and the distal cutting end
portion of the adapter electrode located relative to each flow
passageway to be surrounded by gas flowing from each flow
passageway.
Rejections3
I. The Examiner rejects claims 1, 13, 14, 16, and 17 under
35 U.S.C. § 103(a) as unpatentable over Mackay.4 (Non-Final Action 3.)
II. The Examiner rejects claims 2-12, 15, and 18-24 under
35 U.S.C. § 103(a) as unpatentable over Mackay and Cosmescu. 5 (Id. at 13.)
ANALYSIS
Claims 1, 14, 16, and 17 are the independent claims on appeal, with
the rest of the claims on appeal (i.e., claims 2-13, 15, and 18-26) depending
therefrom. (See Claims App.)
3 In view of the Applicant-Initiated Interview Summary (mailed December
26, 2013) we consider the Examiner's rejection of claims 14, 15, and 20-24
under 35 U.S.C. § 112, second paragraph, as withdrawn. (See Reply Br. 1.)
4 US 2004/0044342 Al, published Mar. 4, 2004.
5 US 6,458,125 Bl, issued Oct. 1, 2002.
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Application 11/515,966
Independent Claim 1
Independent claim 1 is directed to an "adapter to convert a gas-
enhanced electrosurgical coagulation handpiece into a cutting instrument."
(Claims App.) The adapter comprises a "main body" and an "adapter
electrode" (id.); and the Examiner finds Mackay discloses such an adapter
(see Non-Final Action 3--4). Mackay discloses a nozzle assembly 202 that
contains an electrode 212. (See Mackay i-f 29, Fig. 2.)
Independent claim 1 requires the adapter's main body to have a
proximal end "formed generally as a tube within which to receive the distal
end of the nozzle of the coagulation handpiece." (Claims App.) The
Examiner finds that Mackay' s nozzle assembly 202 has such a proximal end.
(See Non-Final Action 4.) MacKay discloses that its "nozzle assembly 202
is secured to handle 201." (Mackay i-f 29.) In Figure 2, Mackay shows "a
screw-in type fitting" consisting of "outside threaded portion 205" on the
proximal end of nozzle assembly 202 and "inside threaded portion 206" on
the distal end of handle 201. (Id.)
The Appellants argue that MacKay' s handle 201 cannot be considered
a "coagulation handpiece" and that its threaded portion 206 cannot be
considered a "nozzle." (See Appeal Br. 6-9; see also Reply Br. 3-7.) We
are not persuaded by the Appellants' position because independent claim 1
recites structural aspects of the adapter, not the coagulation handpiece. The
claimed invention "is drawn solely to the adapter." (Answer 4.)
That being said, we agree with the Appellants that independent
claim 1 does define structural aspects of the adapter in terms of its function
as a connector to the coagulation handpiece. (See Reply Br. 9-10.) And we
agree with the Appellants that these functional limitations must be taken into
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consideration in an obviousness evaluation. (Id.) However, the Appellants'
arguments premised upon Mackay' s handle 201 not being a coagulation
handpiece, even if entirely correct, do not defeat a finding that these
functional limitations are met by the structure of Mackay's nozzle
assembly 202.
The Appellants' arguments in this regard establish, at most, that
Mackay's nozzle assembly 202 has structural aspects allowing it to function
as a connector to something that is not necessarily a coagulation handpiece
(e.g., handle 201). This is not dispositive as to whether the proximal tubular
form of Mackay's nozzle assembly 202 possesses the structural aspects
necessary for it to also function as a connector to a coagulation handpiece
having, for example, a configuration similar to that of handle 201. "6 The
Appellants do not adequately address why Mackay' s nozzle assembly 202
itself does not read on the structure defined by such functional limitations.
More specifically, the Appellants do not sufficiently explain why the
Examiner errs in finding that Mackay "reads on all structural aspects of the
claimed adapter except for [the] coupling mechanism." (Answer 3
(emphasis added).)
Independent claim 1 further requires the adapter's main body to
include "a coupling mechanism to secure the tube to the external surface of
6 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In Schreiber,
the Appellant argued that its claim called for a dispensing top that could
dispense popcorn from an open-ended popcorn container, and the prior art
reference did not disclose that its dispensing top could do so. The Federal
Circuit held that "[a]lthough Schreiber is correct that [the prior art reference]
did not address the use of the disclosed structure to dispense popcorn," the
absence of such disclosure "does not defeat" a finding of anticipation.
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the protruding nozzle of the coagulation handpiece." (Claims App.
(emphasis added).) In the illustrated version of MacKay's nozzle
assembly 202, the arrangement of inside-outside threads in the screw-in
fitting results in the proximal tubular portion of nozzle assembly 202 being
secured to the internal surface of the distal end of handle 201. (See Mackay
Fig. 2.) The Examiner determines that it would have been obvious to
modify the coupling arrangement shown in Mackay's Figure 2 to have the
tapered-bore coupling arrangement shown in Mackay's Figure 4. (See Non-
Final Action 8.) The Examiner explains that "this is a simple substitution of
one known element for another to obtain predictable results." (Id.)
The Appellants argue that the Examiner's proposed modification to
Mackay's coupling mechanism transforms a shroud 402 into a mechanical
connector and this transformation requires shroud-repositioning, diameter-
enlargement, retention-abridgement, and leakage prevention. (See Appeal
Br. 9.) We are not persuaded by this argument because we understand the
Examiner's proposed modification to be a simple substitution of known
mechanical-part connections; wherein this substitution does not involve
shroud 402 and/ or a transformation thereof.
Specifically, we understand the Examiner's combination of the prior
art to involve substituting the illustrated mechanical-part connection in
Mackay's nozzle assembly 202 (i.e., the threaded connection shown in
Figure 2) with another known mechanical-part connector between two
mechanical parts (i.e., a tapered friction-fit connection). (See Answer 4.) As
discussed above, the Appellants do not show, persuasively, that Mackay's
nozzle assembly 401 does not "read[] on all structural aspects of the claimed
adapter except for [the] coupling mechanism." (Id. at 3.) The Appellants do
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Application 11/515,966
not contend that one of ordinary skill in the art would not consider the to-be-
substituted coupling arrangement to be one of"[ a ]ny number of means such
as is well known in the art may be used to attach nozzle assembly 202 to
handle 201." (Id. at 5 (alteration in original) (quoting Mackay i-f 29).) And
the Appellants do not adequately address why, especially in view of this
teaching by Mackay, the Examiner's combination of the prior art would not
be "a simple substitution of one known element for another to obtain
predictable results" as both coupling arrangements would attach nozzle
assembly 202 to a handle or handpiece. (Id.)7
Thus, we are not persuaded by the Appellants' arguments that the
Examiner errs in finding that the adapter recited in independent claim 1
would have been obvious over Mackay; and we sustain the Examiner's
rejection of independent claim 1 (Rejection I).
Dependent Claims 2--4
Claims 2--4, which depend directly or indirectly from independent
claim 1, require the coupling mechanism to include "[a] plurality of legs and
a collar which surrounds at least some portion of the plurality of legs to
apply inward transverse force against the legs while in contact with the
exterior surface of the nozzle to secure the adapter to the nozzle." (Claims
App.) The Examiner finds that it would have been obvious, in view of
Cosmescu's teachings, to provide Mackay's nozzle assembly 201 (as
7 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (When "a
structure already known in the prior art [] is altered by the mere substitution
of one element for another known in the field, the combination must do
more than yield a predictable result" to be considered non-obvious); see also
MPEP § 2143 (Exemplary Rationale (B)).
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Application 11/515,966
modified) with such a coupling mechanism. (See Non-Final Action 14.)
The Examiner explains that Mackay "teaches the possibility of using a
variety of coupling mechanisms," some of which include a "collar." (Id.
at 13.
The Appellants argue that "neither Mackay nor Cosmescu relate to
securely attaching an adapter to the exterior surface of a protruding nozzle."
(Appeal Br. 16.) We are not persuaded by this argument because, as
discussed above, Mackay does relate to securely attaching nozzle
assembly 202 to handle 201. And the Examiner sufficiently explains why
one of ordinary skill in the art would infer that Mackay's nozzle
assembly 202 could include a coupling mechanism involving a collar, and
the Examiner sufficiently explains why one of ordinary skill in the art would
infer that Cosmescu's collar-coupling mechanism could be used for this
purpose.8 The Appellants do not assert that Cosmescu's coupling
mechanism does not possess the "various claimed portions" recited in
dependent claims 2--4. (Answer 7.) As such, the Examiner articulates
reasoning, with rational underpinnings in the prior art, to support the
obviousness rejection.
The Appellants argue that the Examiner does not explain how "the
Cosmescu structure work[s] in connection with Mackay's phantom's
structures." (Appeal Br. 16.) We are not persuaded by this argument
because "the only modification made to the Mackay reference is with regard
8 See KSR, 550 U.S. at 418 (2007) (An obviousness-evaluating entity "need
not seek out precise teachings directed to the specific subject matter of the
challenged claim" as "the inferences and creative steps that a person of
ordinary skill in the art would employ" can be taken into account).
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to the coupling mechanism." (Answer 7.) Thus, the Cosmescu collar-
coupling mechanism would work in connection with Mackay' s structure in
the same manner as the illustrated screw-in fitting, namely it would be used
to attach Mackay' s nozzle assembly 202 to handle 201. The Appellants do
not assert that this same structure would not be capable of attaching
Mackay's modified nozzle assembly 202 to a "coagulation handpiece."
Thus, we are not persuaded by the Appellants' arguments that the
Examiner errs in finding that the adapter recited in dependent claims 2--4
would have been obvious over Mackay and Cosmescu; and we sustain the
Examiner's rejection of dependent claims 2--4 (Rejection II).
Dependent Claim 5
Claim 5, which depends indirectly from independent claim 1, requires
the collar to include "a groove formed adjacent to the legs which receives
rotational and longitudinal stops to confine the collar to longitudinal
movement into [a] clamping position and to confine the collar into rotational
movement from the clamping position to the locking position." (See Claims
App.) The Examiner finds that Cosmescu's collar-coupling mechanism
includes threads, and these threads constitute the "groove" and the "stops"
recited in dependent claim 5. (See Non-Final Action 15.)
The Appellants argue that "[a] threaded connection is a threaded
connection" and not the rotational and longitudinal stops recited in
dependent claim 5. (See Appeal Br. 17-18.) We are not persuaded by this
argument because the Appellants do not assert that inside threads 25 in
Cosmescu's collar (locking cone 30) do not include a groove formed
adjacent to Cosmescu's legs (flanges 29). (See Cosmescu, col. 7, 11. 50-63,
Figs. 3, 4.) And the Appellants do not assert that Cosmescu's outside
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Application 11/515,966
threads 26 do not function as rotational and longitudinal stops when locking
cap 1 is screwed into the distal end of handpiece 22. (See id.)
Thus, we are not persuaded by the Appellants' arguments that the
Examiner errs in finding that the adapter recited in dependent claim 5 would
have been obvious over Mackay and Cosmescu; and we sustain the
Examiner's rejection of dependent claim 5 (Rejection II).
Dependent Claims 6--9
Dependent claims 6-9, which depend indirectly from independent
claim 1, require the adapter to comprise "an internal seal located with the
tube." (See Claims App.) The Examiner finds that Mackay discloses such
an internal seal and cites to certain paragraphs in Mackay (i.e., paragraphs
28-32 and 43) to support this finding. (See Non-Final Action 16.)
The Appellants argue that the cited paragraphs of Mackay do not
support the Examiner's finding. (See Appeal Br. 19.) We are persuaded by
this argument because the Examiner does not point, with particularity, to a
structure in Mackay' s nozzle assembly 202 which constitutes "an internal
seal" as required by dependent claim 6. And Mackay does not appear to
mention "an internal seal" in the cited paragraphs or elsewhere.
The Examiner does not, therefore, establish a prima facie case that the
adapter recited in dependent claims 6-9 would have been obvious over
Mackay and Cosmescu. Thus, we do not sustain the Examiner's rejection of
dependent claims 6-9 (Rejection II).
Dependent Claim 10
Claim 10, which depends indirectly from independent claim 1, is
argued in conjunction with claims 2--4. (See Appeal Br. 15-16.) As
discussed above in our analysis of claims 2--4, we are not persuaded by these
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Application 11/515,966
arguments. Thus, we sustain the Examiner's rejection of dependent claim 10
(Rejection II).
Dependent Claims 11 and 12
Claims 11 and 12, which depend indirectly from independent claim 1,
require a "retention structure" formed on an "interior surface of one leg" to
comprise "a lip." (Claims App.) The Examiner finds that a thread in
Cosmescu's collar-coupling mechanism constitutes such a "lip." (See Non-
Final Action 17.)
The Appellants argue that, even if a thread is interpreted as a "lip," the
prior art does show or suggest a "lip" as required by the claims. (See Appeal
Br. 16-17.) We are persuaded by this argument because the Examiner does
not sufficiently explain how, in Cosmescu, this alleged lip is situated on the
interior surface of one of its legs (i.e., inwardly-pressed flanges 29). The
threaded connection in Cosmescu appears to be located contiguous with the
exterior surfaces of flanges 29. (See Cosmescu, Figs. 2, 3.)
The Examiner does not, therefore, establish a prima facie case that the
adapter recited in dependent claims 11 and 12 would have been obvious over
Mackay and Cosmescu. Thus, we do not sustain the Examiner's rejection of
dependent claims 11 and 12 (Rejection II).
Dependent Claim 13
The Appellants state that "[c]laim 13 will stand or fall with
independent claim 1" (Appeal Br. 15); and thus we sustain the Examiner's
rejection of dependent claim 13 (Rejection I).
Independent Claim 14
Independent claim 14 is directed to a "gas-enhanced electrosurgical
coagulation handpiece for use with an adapter that converts the coagulation
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Application 11/515,966
handpiece into a cutting instrument." (Claims App.) The handpiece
comprises, among other things, "an interior passageway for conducting a
stream of gas" and "a handpiece electrode" "from which electrical energy is
conducted to the stream of gas." (Id.) The Examiner finds that Mackay
discloses such a handpiece. (See Non-Final Action 7.) In Mackay, a
handle 201 has a gas-conducting chamber 207 and a feed-through conductor
210 is situated within chamber 207. (See Mackay i-fi-131, 32, Fig. 2.)
The Appellants argue that Mackay's feed-through conductor 210 is
not a "handpiece electrode" as required by independent claim 14. (See
Appeal Br. 7; Reply Br. 5.) We are persuaded by this argument. Although,
the Examiner addresses why Mackay's feed-through conductor 210 could be
considered an "electrode," the Examiner does not sufficiently explain why
Mackay's feed-through conductor 210 can be considered an electrode "from
which electrical energy is conducted to the stream of gas." (See Answer 2).
The Examiner does not, therefore, establish a prima facie case that the
coagulation handpiece recited independent claim 14 would have been
obvious over Mackay. Thus, we do not sustain the Examiner's rejection of
independent claim 14 (Rejection I).
Dependent Claim 15
Claim 15 depends from independent claim 14 (see Claims App.) and
the Examiner's further findings with respect to features recited in this claim
and/or Cosmescu (see Non-Final Action 18) do not compensate the
shortcomings in Mackay discussed above in our analysis of independent
claims 14. Thus, we do not sustain the Examiner's rejection of dependent
claim 15 (Rejection II).
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Application 11/515,966
Independent Claim 16
Independent claim 16 is directed to "[a]n electrosurgical cutting
instrument for cutting tissue during an electrosurgical procedure"
comprising a "handpiece." (Claims App.) The handpiece comprises, among
other things, "an interior passageway through which a stream of gas flows"
and "a handpiece electrode" "from which electrical energy is conducted into
the gas stream." (Id.) The Examiner finds that Mackay discloses such a
handpiece electrode (See Non-Final Action 9-10) and, for the same reasons
discussed above in our analysis of independent claim 14, we are persuaded
by the Appellants' arguments otherwise (see Appeal Br. 7; Reply Br. 5).
Thus, we do not sustain the Examiner's rejection of independent claim 16
(Rejection I).
Independent Claim 17
Independent claim 17 is directed to "[a] method of converting a gas-
enhanced electrosurgical coagulation handpiece into a cutting instrument."
(Claims App.) The method comprises a step involving a "handpiece
electrode" that is located within a passageway "to conduct electrical energy
into [a] gas stream." (Id.) The Examiner finds that Mackay discloses such a
step (see Non-Final Action 11-12) and, for the same reasons discussed
above in our analysis of independent claim 14, we are persuaded by the
Appellants' arguments otherwise (see Appeal Br. 7; Reply Br. 5). Thus, we
do not sustain the Examiner's rejection of independent claim 17
(Rejection I).
Dependent Claims 18-24
Claims 18-24 depend directly or indirectly from either independent
claim 14 or independent claim 17. (See Claims App.) The Examiner's
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further findings with respect to features recited in these dependent claims
and/or Cosmescu (see Non-Final Action 18) do not compensate the
shortcomings in Mackay discussed above in our analysis of independent
claims 14 and 17. Thus, we do not sustain the Examiner's rejection of
dependent claims 18-24 (Rejection II).
DECISION
We AFFIRM the Examiner's rejections of claims 1-5, 10, and 13
under 35 U.S.C. § 103(a).
We REVERSE the Examiner's rejections of claims 6-9, 11, 12,
and 14--24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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