Ex Parte Wagner et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10625826 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DARRELL ORVIN WAGNER and JASON ALAN SHIROFF
__________

Appeal 2008-5407
Application 10/625,826
Technology Center 1600
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Decided: January 29, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2008-5407
Application 10/625,826

STATEMENT OF CASE
The following claim is representative.
1. A dissection tool, comprising:
a handle having a proximal end and a distal end;
an elongated dissecting member having a proximal end and a distal
end, the elongated dissecting member extending from the distal end of the
handle; and
a light source provided at the distal end of the dissecting member, the
light source adapted to provide a visible locating reference through the skin.

Cited References
Chen et al. US 5,445,608 Aug. 29, 1995

Grounds of Rejection
1. Claims 1-5, 8-11, 44, 46, 47, 49, 50, 53-58, and 61-63 stand
rejected under 35 U.S.C. § 102(b) as being unpatentable over Chen. We
select claim 1 as representative of the rejection before us since Appellants
have not separately argued the claims. 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The Examiner finds that Chen teaches each element claimed,
including an elongated dissecting member (Ans. 3-4).
Appellants contend that Chen does not teach a dissection tool having
an elongated dissecting member (App. Br. 8).
The issue is: Does Chen disclose a dissection tool having an
elongated dissecting member.

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FINDINGS OF FACT
According to the Examiner:
1. “Chen discloses … a dissection tool comprising a handle (236), an arcuate
shaped elongated dissection member (262), a battery (abstract: 8-6), a
switch, and a light source (234), comprising a LED (abstract: 4-5) and a
power line.” (Ans. 3; Chen, col. 24, l. 20.)
2. “Chen further discloses 2 fluid-channels (254) and (258) adapted to
transport an irrigation fluid and a pharmaceutical (antibiotic) agent (8:27-34
and 9:47-51) shown in Fig 17.” (Id.)
3. Chen discloses that the positioning of the light source comprises the step
of invasively disposing the light source proximate to the in vivo treatment
site inside a patient’s body. (Col. 4, ll. 17-23.) Invasively disposing the
source includes causing a penetration of the patient’s body to access an
internal, in vivo treatment site. (Col. 4, ll. 23-30.)
4. Chen’s device provides for destruction of other abnormal cell types,
destruction of normal cell types for therapeutic ends, and the destruction of
microorganisms. (Col. 3, ll. 28-35.)
5. Dissecting means “‘dividing or separating parts of an animal.’” (Ans. 4.)
See also, (“to cut apart or separate (tissue).” Webster’s II New Riverside
Dictionary, The Riverside Publishing Co, Boston, MA (1994).
6. The Specification, page 4 states that the dissector of the invention is
suited to dissect a path for subcutaneous electrode placement.
7. The Specification, page 10, lines 22-26, states that the distal end of the
tunneling tool projects light for improved navigation. The tool can be used
to perform small diameter blunt tissue dissection of subdermal layers.
(Spec. 11: 3-11.) Thus the tunneling tool is a dissecting member.

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Application 10/625,826

PRINCIPLES OF LAW
The standard under § 102 is one of strict identity. “Under 35 U.S.C. §
102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454,
1457 (Fed. Cir. 1997). “Every element of the claimed invention must be
literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co.,
Ltd , 868 F.2d 1226, 1236 (Fed. Cir. 1989).

ANALYSIS
Appellants contend that “the Examiner has not identified where Chen
teaches that flexible catheter 262 is a dissecting member, as claimed.” (App.
Br. 8.)
The Examiner argues that according to a medical dictionary definition
of the term “dissecting,” it is defined as “’dividing or separating parts of an
animal.’” (Ans. 4.) The Examiner finds that Chen teaches in figures 2A-C
the separation of tissue. (Ans. 4.)
We find that the use of Chen’s device (FF 3-5) is consistent with the
tunneling and path dissection uses of the device claimed. (FF 6-7.) In
particular, Chen’s Fig. 7 shows a ceramic tube having a pointed end which
would be capable of tunneling through soft tissue and thus would serve as a
dissecting member. (Chen, col. 6, ll. 9-18.) The light source may be
invasively disposed proximate to the internal, in vivo treatment site. (Chen,
col. 4, ll. 16-29.) The light source is invasively disposed by a step of causing
penetration at the treatment site. (FF3, Chen, col. 4, ll. 25-29.) Moreover,
according to Chen, the device is implantable which reasonably appears to
support that the device of Chen, including array element 54, may be

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Application 10/625,826

tunneled and implanted in tissue, thus dissecting it. (Chen, abstract.) We
agree with the Examiner that “whether or not another device is used to break
the skin is irrelevant because the device of Chen is advanced through soft
tissue thereby dissecting it.” (Ans. 4.)
Appellants argue that the Examiner improperly resorted to a
dictionary instead of the Specification to define the term “dissect” and that
according to the Specification the “dissecting member is used to perform
small diameter blunt tissue dissection of subdermal layers and, for example,
may be a long metal rod similar to conventional trocars.” (Reply Br. 8-9.)
We note that Appellants have not claimed a long metal rod dissecting
member or that the dissecting member is a conventional trocar. The claim
recites that the dissection tool includes an elongated dissecting member.
The Examiner argues that “[t]he device of Chen is inherently capable
of being pushed through soft tissue because Chen discloses it may be made
from PMMA [polymethylmethacrylate] a known flexible yet resilient
material. Furthermore Chen discloses that the device can be stiffened if
desired (column 19 line 17).” (Ans. 4.) We find the Examiner has the better
argument, as the Appellants have not shown that the PMMA device of Chen
is not capable of being pushed through soft tissue.
Appellants also argue that Chen fails to disclose a light source visible
through the skin. (App. Br. 10.) However, Chen clearly discloses the use of
both a LED and infrared light sources throughout its disclosure (Chen,
abstract). For example in claims 21-23 of Chen he clearly is claiming the
use of a LED or an infrared light sources.” (Ans. 4.) According to
Appellants’ Specification page 13, the light source may be an LED light
source. Appellants have put forth no argument indicating why his LED light

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source is visible through the skin, and why the same LED light source of
Chen, is not visible through the skin.
Appellants further argue that Chen fails to disclose a dissecting
member extending from a handle. (App. Br. 10.) However, Chen discloses
a syringe element 236 in Figures 16 and 17 which functions as a handle with
flexible catheter 241 extending from it, Figure 16. (Ans. 5.)
Appellants argue that dependent claims are also improperly rejected
over Chen arguing they recite additional features. (App. Br. 11.) However,
merely stating the different limitations of dependent claims does not
constitute separate argument. See 37 CFR 1.192(c)(7); In re Dance, 160
F.3d 1339, 1340 n.2, (Fed. Cir. 1998).

CONCLUSION OF LAW
In view of the above, we find that Chen teaches a dissection tool
having an elongated dissecting member. Appellants have failed to rebut the
Examiner’s prima facie case of anticipation and the anticipation rejection is
affirmed.

SUMMARY

The anticipation rejection over Chen is affirmed.
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

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