Ex Parte Weizman et al

Board of Patent Appeals and Interferences

Jun 27, 2012

11404796 (B.P.A.I. Jun. 27, 2012)

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.
11/404,796 04/14/2006 Patrick A. Weizman END-5622USNP2 2622
21884 7590 06/28/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
06/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PATRICK A. WEIZMAN, JOHN P. MEASAMER,
STEPHEN W. EVANS, DEBORAH J. ALLAN,
MICHAEL SHERRILL, and RICHARD F. SCHWEMBERGER
__________

Appeal 2011-004098
Application 11/404,796
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

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

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Statement of the Case
The Claims
Claims 1-7, 9, 13, and 14 are on appeal. Claim 1 is representative and
reads as follows:
1. An endoscopic device comprising:
an elongate member having opposite ends and an
exterior;
a clevis attached at one of said opposite ends about the
exterior of the elongate member, said clevis including a barrel
having a first edge extending along a longitudinal axis of the
barrel and a second edge extending along the longitudinal axis
of the barrel, the first edge and the second edge being spaced
from one another and defining a slot longitudinally extending
completely through the barrel when the barrel is attached
about the exterior of the elongate member;
a pair of jaws mounted on the clevis for pivotal
movement, each of said jaws having an end opposite the
elongate member; and
an actuator member operatively connected to said pair
of jaws for moving the jaws between a closed position in
which the end of the corresponding jaw is positioned adjacent
said other jaw and an open position in which an end of the jaw
is spaced from the other jaw.

The issues

A. The Examiner rejected claims 1-3 and 13 under 35 U.S.C. § 102(b) as
anticipated by Francese1 (Ans. 3-4).
B. The Examiner rejected claims 4-9 under 35 U.S.C. § 103(a) as
obvious over Francese and Goble2 (Ans. 4-5).

1 Francese et al., US 5,716,374, issued Feb. 10, 1998.
2 Goble et al., US 5,496,317, issued Mar. 5, 1996.
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C. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious
over Francese (Ans. 5).
D. The Examiner rejected claims 1-9, 13, and 14 under 35 U.S.C. §
103(a) as obvious over Baker3 and Francese (Ans. 5-7).
A. 35 U.S.C. § 102(b) over Francese
The Examiner finds that Francese teaches “an endoscopic device
including an elongate member (16) having opposite ends, a generally
uniform outer diameter, and an exterior, a clevis (100) attached at one of
said opposite ends about the exterior of the elongate member and including a
barrel” (Ans. 3).
Appellants contend that “both claims 1 and 13 require that the clevis
is attached about the exterior of the endoscopic instrument. Referring to the
annotated Figure 6a of Francese, Francese clearly discloses a clevis attached
to the interior of the endoscopic instrument.” (App. Br. 9). The annotated
drawing is reproduced below:

3 Baker et al., US 5,971,940, issued Oct. 26, 1999.
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(App. Br. 10). Appellants contend that “Francese fails to anticipate (that is,
disclose each and every claim feature) claims 1 and 13” (id.).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner’s conclusion that Francese anticipates a “clevis
attached at one of said opposite ends about the exterior of the elongate
member” as required by claim 1?
Findings of Fact
1. Francese teaches a clevis 100 in figure 6, which is reproduced
below:

“FIG. 6 is an enlarged perspective view of the clevis” (Francese, col. 3, l.
40).
2. Francese teaches that an “endoscopic biopsy forces instrument
10 generally includes . . . a long, slender flexible coil 16. . . . The coil 16 is
preferably covered with a PTFE, FEP, or polyolefin sheath 15 along
substantially all of its length” (Francese, col. 1, ll. 25-32).
3. Francese teaches that the “bifurcated cylinder can be crimped or
welded to the distal end of a coil 16 as shown in FIG. 6a and the tangs 36b,
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38b of jaws 36, 38 can be mounted between the central tab 116 and a
respective arm 106, 108” (Francese, col. 4, ll. 18-21).
4. Figure 6a of Francese is reproduced below:

“FIG. 6a is an enlarged partially transparent top view in partial section of the
clevis from FIGS. 5 and 6 as part of the distal end of a biopsy forceps
instrument” (Francese, col. 3, ll. 42-44).
Principles of Law
Anticipation under 35 U.S.C. § 102(a) requires that “each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
Analysis
Francese teaches a clevis 100 which is mounted between a coil 16 and
a polyolefin sheath 15 (FF 1, 2, 4). Francese teaches that the clevis 100 is
formed into a cylinder which is crimped or welded to the distal end of coil
16 (FF 3).
Claim 1 requires that the clevis is attached “about the exterior of the
elongate member.” In Francese, the clevis 100 may be attached to the
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exterior of the coil 16, but the coil 16 is housed inside of polyolefin sheath
15, which is reasonably interpreted as the elongate member in Francese, and
the clevis 100 is not attached to the exterior of the polyolefin sheath 15.
Consequently, we agree with Appellants that Francese does not anticipate
claims 1 and 13 since the clevis is not attached to the exterior of the elongate
member of the endoscopic instrument.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Francese anticipates a “clevis attached at one of said opposite ends
about the exterior of the elongate member” as required by claim 1.
B. 35 U.S.C. § 103(a) over Francese and Goble
This rejection relies upon the underlying anticipation rejection over
Francese which we reversed above. Having reversed the anticipation
rejection over Francese for a failure to teach “clevis attached at one of said
opposite ends about the exterior of the elongate member” as required by
claim 1, we necessarily reverse this obviousness rejection further including
Goble as Goble also does not teach a clevis attached to the exterior of the
elongate member.
C. 35 U.S.C. § 103(a) over Francese
This rejection relies upon the underlying anticipation rejection over
Francese which we reversed above. Having reversed the anticipation
rejection over Francese for a failure to teach “clevis attached at one of said
opposite ends about the exterior of the elongate member” as required by
claim 1, we necessarily reverse this obviousness rejection which relies solely
upon Francese.
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D. 35 U.S.C. § 103(a) over Baker and Francese
The Examiner finds that Baker teaches “an endoscopic device
including an elongate member (100) having opposite ends, a generally
uniform outer diameter, and an exterior; a clevis (150/152) attached at one of
said opposite ends about the exterior of the elongate member” (Ans. 5). The
Examiner finds that Baker teaches “a barrel having a first and second edges
extending completely through and longitudinally along the barrel and
defining two longitudinal slots (166) and wherein the clevis having an inner
diameter conforming to the outer diameter of the elongate member such that
the barrel is attached about the exterior of the elongate member” (id. at 5-6).
The Examiner finds that the “device of Baker et al is disclosed with
the edges of the barrel defining the two slots (166) being welded together
instead of the edges being spaced apart” (id. at 6). The Examiner finds that
Francese teaches “that having edges of a barrel be spaced apart to define a
slot is an equivalent structure known in the art” (id.).
The Examiner finds that “because these two configurations of barrel
edges were art-recognized equivalents at the time the invention was made,
one of ordinary skill in the art would have found it obvious to substitute the
welded edges in the barrel for spaced apart edges in the barrel” (Ans. 6).
Appellants contend that “[o]bviousness is not determined simply
because structure is disclosed in the prior art from analogous art areas.
Rather, there must be a reason for the combination” (App. Br. 12).
Appellants contend that the “statement of the Examiner provides no reason
for the combination and the rejection must fail. In addition, this teaches
forming a cylinder by welding the parts together, which would result in no
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slot. In fact, it would result in the same structure disclosed by Baker” (id. at
12-13).
Appellants contend that if
it were to be obvious to one of ordinary skill in the art to
modify Baker based upon the disclosure of Francese so as to
provide for the spaced slots of Franceese [sic], this would
require the mounting of the clevis within the sheath 15 and
some structure must be provided for holding the adjacent the
members together in the absence of the structure disclosed
by Baker

(id. at 15).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Baker and Francese render claim 1
obvious?
Findings of Fact
5. Francese teaches that when “formed into a cylindrical member,
the angled distal edges 202a, 204a form distal spiral sections which provide
room for the movement of tangs of jaws coupled to the central tab 216”
(Francese, col. 4, ll. 52-55).
6. Baker teaches that “[f]emale and male housings 150 and 152
are preferably manufactured from 17-4 PH stainless steel. Housings 150 and
152 sandwich together and are laser welded at interface 166 shown in FIG.
3. In addition, pin 164 is welded to hole 162” (Baker, col. 5, ll. 45-50).
7. Baker teaches that the “construction according to the present
invention provides for an end effector assembly that is lower cost and easier
to manufacture and assemble” (Baker, col. 5, ll. 52-54).
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8. Baker teaches that “[f]lexible coil 100 extends into annular
grooves 154 and 156 once housings 150 and 152 have been fixedly
attached” (Baker, col. 5, ll. 57-58).
9. Figure 4 of Baker is reproduced below:

“FIG. 4 is an exploded perspective view of the end effector assembly”
(Baker, col. 3, ll. 18-19).
10. Baker teaches that each “jaw 190 includes an arm 192 having a
pin 194 and a hole 196” (Baker, col. 6, ll. 4-5).
11. Baker teaches that through “the connection of member 170 to
jaws 190 by links 180, the distal movement of actuator 170 forces jaws 190
to open around the tissue to be sampled” (Baker, col. 8, ll. 1-3).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Baker teaches an endoscopic device with an elongate member 100
with a clevis attached at one end about the exterior of the elongate member
(FF 5-8). Baker teaches that each “jaw 190 includes an arm 192 having a
pin 194 and a hole 196” (Baker, col. 6, ll. 4-5; FF 10). Baker teaches that
through “the connection of member 170 to jaws 190 by links 180, the distal
movement of actuator 170 forces jaws 190 to open around the tissue to be
sampled” (Baker, col. 8, ll. 1-3; FF 11).
Francese’s endoscopic sampling device is described with a clevis that
similarly allows jaws to open around tissue to be sampled: when “formed
into a cylindrical member, the angled distal edges 202a, 204a form distal
spiral sections which provide room for the movement of tangs of jaws
coupled to the central tab 216” (Francese, col. 4, ll. 52-55; FF 5).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
utilize the slot clevis barrel of Francese in place of the welded clevis barrel
of Baker since Francese teaches that the slots assist in the movement of the
tangs of the jaws (FF 5). In addition, we agree with the Examiner that such
a substitution of equivalent components is merely a “predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
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Appellants contend that “[o]bviousness is not determined simply
because structure is disclosed in the prior art from analogous art areas.
Rather, there must be a reason for the combination” (App. Br. 12).
We are not persuaded. KSR states that “when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417. Here, the
substitution of the clevis barrel of Francese for the clevis barrel of Baker is a
simple substitution where the barrels perform the same joining function
required of a clevis.
Appellants contend that the “statement of the Examiner provides no
reason for the combination and the rejection must fail. In addition, this
teaches forming a cylinder by welding the parts together, which would result
in no slot. In fact, it would result in the same structure disclosed by Baker”
(App. Br. 12-13). Appellants contend that if
it were to be obvious to one of ordinary skill in the art to
modify Baker based upon the disclosure of Francese so as to
provide for the spaced slots of Francese, this would require
the mounting of the clevis within the sheath 15 and some
structure must be provided for holding the adjacent the
members together in the absence of the structure disclosed
by Baker

(id. at 15).
We are not persuaded. In both of these arguments, Appellants are
literally bodily incorporating the features without recognizing that Francese
suggests leaving slots (FF 5) and that Baker teaches mounting to the exterior
of the elongate member (FF 9). See In re Keller, 642 F.2d 413, 425 (CCPA
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1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art”). Here, the combination of references would have reasonably
encompassed retaining the slots of Francese while attaching the clevis to the
exterior of the elongate member as shown in Baker (FF 5-11).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Baker
and Francese render claim 1 obvious.
SUMMARY
In summary, we reverse the rejection of claims 1-3 and 13 under 35
U.S.C. § 102(b) as anticipated by Francese.
We reverse the rejection of claims 4-9 under 35 U.S.C. § 103(a) as
obvious over Francese and Goble.
We reverse the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Francese.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Baker and Francese. Pursuant to 37 C.F.R. § 41.37(c)(1), we
also affirm the rejection of claims 2-9, 13, and 14 as these claims were not
argued separately.

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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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