Ex Parte Viola et al

Patent Trial and Appeal Board

Jul 25, 2017

13210573 (P.T.A.B. Jul. 25, 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 INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/210,573 08/16/2011 Frank Viola H-US-02997 (203-8035) 2422
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
EXAMINER
EL ALAMI, RAJAA
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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 FRANK VIOLA and KENNETH HORTON
Appeal 2016-004157
Application 13/210,573
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a
methodfor performing laparoscopic surgery. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Statement of the Case
Background
“In laparoscopic surgery, surgery is performed through access ports
extending into the abdominal cavity. ... In many of these procedures,
several access ports are required, each dimensioned to receive a surgical
1 Appellants identify the Real Party in Interest as Covidien LP, a subsidiary
of Medtronic, PLC (see App. Br. 1).
Appeal 2016-004157
Application 13/210,573
instrument, providing a guide for accessing the surgical site” (Spec. 1).
“One of the access ports is configured to receive the endoscopic camera for
viewing the abdominal cavity ...” (Id.). “It would be advantageous to
reduce the number of access ports in the abdominal cavity while maintaining
the same instrumentation and maneuverability of the instruments within the
body cavity” (Id.).
The Claims
Claims 12—17 are on appeal. Claim 12 is representative and reads as
follows:
12. A method for performing laparoscopic surgery
comprising:
providing a camera and a camera insertion tool having
the camera mounted thereon;
inserting the camera through a first access port into a
body cavity;
attaching the camera to a portion of a first laparoscopic
instrument positioned within the body cavity;
removing the insertion tool from the camera and
withdrawing the insertion tool through the first access port; and
performing a surgical procedure with the first
laparoscopic instrument while viewing a surgical area via the
camera mounted on the first laparoscopic instrument.
The issues
A. The Examiner rejected claims 12—15 and 17 under 35 U.S.C. § 103(a)
as obvious over Karasawa2 and Kazuyoshi3 (Ans. 3—5).
B. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as obvious
over Karasawa, Kazuyoshi, and Belson4 (Ans. 5).
2 Karasawa et al., US 8,317,814 B2, issued Nov. 27, 2012.
3 Kazuyoshi et al., JP 2003-135388 A, published May 13, 2003.
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Appeal 2016-004157
Application 13/210,573
A. 35 U.S.C. § 103(a) over Karasawa andKazuyoshi
The Examiner finds
Karasawa teaches a method for performing laparoscopic
surgery . . . comprising:
providing a camera (Camera 4 Fig. 8) and a camera
insertion tool (treatment instrument 120 Fig. 10, paragraph
[C8:F22-29]);
inserting the camera through a first access port (trocar
111) into a body cavity (abdominal cavity 101 Fig. 10,
paragraph [C8:F22-29]); attaching the camera to a portion of a
first laparoscopic instrument (extracorporeal device 3)
positioned within the body cavity Figs. 1 and 11-12;
removing the insertion tool from the camera and
withdrawing the insertion tool through the first access port
(Figs. 12-13 and 17 paragraph [C9:41-54])[.]
(Ans. 3).
The Examiner acknowledges that Karasawa “fails to teach the
extracorporeal device 3 performing a surgical procedure while viewing a
surgical area via the camera mounted thereon” (Ans. 3—4).
The Examiner finds Kazuyoshi teaches “capsule camera 2b can be
‘freely attachable/detachable’ to the side of endoscope 4B via magnets and
also attachable to the tip of endoscope (3//64) where ‘capsule camera 62 and
endoscope 64 are made into one . . . the channel can perform with one
endoscope’” (Ans. 4).
The Examiner finds it obvious “to utilize the method for performing
laparoscopic surgery of Karasawa with camera mounted on the first
laparoscopic instrument of Kazuyoshi in order to provide a means of
4 Belson, A., US 2006/0235457 Al, published Oct. 19, 2006.
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Appeal 2016-004157
Application 13/210,573
performing surgery while simultaneously viewing using the mounted camera
for advanced visualization and manipulation” (Id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Karasawa and Kazuyoshi
render claim 12 obvious?
Findings of Fact
1. Karasawa teaches “an endoscope system that is a medical
device according to the present invention used for a laparoscopic surgery”
(Karasawa 3:52—53).
2. Figure 10 of Karasawa is reproduced below:
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Appeal 2016-004157
Application 13/210,573
Figure 10 depicts a procedure where
the operator makes a puncture into an abdominal cavity 101
with the trocar 111 for introducing a treatment instrument 120
such as a grasping forceps into the abdominal cavity 101 ....
. . . The operator inserts the camera 4 grasped by the
treatment instrument 120 such as a grasping forceps into the
abdominal cavity 101 through the trocar 111.
(Karasawa 7:64 to 8:26).
3. Figures 11 and 12 of Karasawa are reproduced below:
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Appeal 2016-004157
Application 13/210,573
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Figures 11 and 12 of Karasawa depict procedures where “the operator
punctures the abdominal wall 102 with the puncture needle tube 31 of the
hook needle 16 which is being inserted and held in the fixing unit 15 that
constitutes the extracorporeal device 3” and that “the operator hooks the
wire 45 of the camera 4 into the hook portion 34 formed in the puncture rod
33” (Karasawa 8:43—53).
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Appeal 2016-004157
Application 13/210,573
4. Karasawa teaches the “operator inserts the rigid endoscope 2
through the trocar 110 and the treatment instrument 120 through the trocar
111 to perform the laparoscopic surgery in a state in which the camera 4
sticks to the abdominal wall 102” (Karasawa 9:50-54).
5. Kazuyoshi teaches: “Capsule endoscope 2B is attached to the
endoscope 4B point side freely attachable/detachable with the attracting
magnetic force between the electromagnets 32 which the electromagnet 31 is
attached to the 1 side ... of this capsule endoscope 2B, and were attached to
the side ... of an endoscope 4B point” (Kazuyoshi 140).
6. Figure 11 of Kazuyoshi is reproduced below:
“Fig. 11 shows the endoscope apparatus 61 of a modification. It comprises
the capsule endoscope 62, the tube body 63 connected with this capsule
endoscope 62, and the endoscope 64 which carries out these insertion
guides ...” (Kazuyoshi 1 83).
7. Kazuyoshi teaches fixing capsule endoscope 62 at the tipe of
endoscope 64 (see Kazuyoshi 1 88) where the “capsule endoscope 62 and
the endoscope 64 are made into one, and since the duodenum is not different
from the usual endoscope and can insert, it can insert the capsule endoscope
62 in the small intestine 12 easily” (Kazuyoshi 191).
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Application 13/210,573
Principles of Law
A prima facie case for obviousness requires “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.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
The Examiner “bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We find the Examiner has not satisfied this burden because the
rejection provides no reason to modify the surgical method of Karasawa,
where the camera is located on a separate extracorporeal device 3 (FF 3),
with an integrated camera and endoscope device described by Kazuyoshi
(FF 5—7). The complete reasoning in the rejection is:
Therefore, it would have been prima facie obvious to one
of ordinary skill in the art at the time of the invention to utilize
the method for performing laparoscopic surgery of Karasawa
with camera mounted on the first laparoscopic instrument of
Kazuyoshi in order to provide a means of performing surgery
while simultaneously viewing using the mounted camera for
advanced visualization and manipulation.
(Ans. 4; cf. Final Act. 4). However, this statement fails to provide any
reason for changing Karasawa’ camera location from the separate
extracorporeal device 3 to the laparascopic instrument performing the
surgical procedure as required by claim 12. The statement of “advanced
visualization and manipulation” is an unsupported statement of fact that is
not connected to the camera location. Moreover, this statement provides no
reason or evidence explaining why placement of the camera onto the
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Appeal 2016-004157
Application 13/210,573
laparascopic surgical instrument improves visualization or manipulation
over the process of Karasawa. “[A] conclusory assertion with no
explanation is inadequate to support a finding that there would have been a
motivation to combine.” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir.
2017).
We also are not persuaded by the Examiner’s finding that “allowing
the device (63 and 64) to perform medical procedures and also view the
cavity via the capsule camera with no additional device necessary because
capsule 63 and endoscope 64 ‘are made into one’” (Ans. 8). If this is
intended to rely upon an implicit reason to combine, we recognize that an
implicit reason that “results in a product or process that is more desirable,
for example because it is stronger, cheaper, cleaner, faster, lighter, smaller,
more durable, or more efficient” is certainly one approach that can provide a
reason to combine. See DyStar Textilfarben GmbH & Co. v. C.H. Patrick
Co., 464 F.3d 1356, 1366—68 (Fed. Cir. 2006). However, in this case, the
Examiner has not adequately explained or demonstrated that such a reason
exists for combining the teachings of Karasawa and Kazuyoshi to obtain the
method of claim 12.
Consequently, while we do not agree with Appellants that there is any
teaching away in the references, because neither Karasawa nor Kazuyoshi
criticizes, discredits, or otherwise discourages the Examiner’s combination,
we conclude that the Examiner has not established a prima facie case of
obviousness because the rejection provides no reason to combine the
teachings of Karasawa and Kazuyoshi.
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Appeal 2016-004157
Application 13/210,573
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Karasawa and Kazuyoshi render claim 12 obvious.
B. 35 U.S.C. § 103(a) over Karasawa, Kazuyoshi, and Belson
This rejection relies upon the underlying obviousness rejection over
Karasawa and Kazuyoshi. Having reversed that rejection, we also
necessarily reverse the further obviousness rejection including Belson,
because the Examiner does not resolve the above discussed reason to
combine issues in this rejection.
SUMMARY
In summary, we reverse the rejection of claims 12—15 and 17 under
35 U.S.C. § 103(a) as obvious over Karasawa and Kazuyoshi.
We reverse the rejection of claim 16 under 35 U.S.C. § 103(a) as
obvious over Karasawa, Kazuyoshi, and Belson.
REVERSED
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