Ex Parte Wenchell et al

Patent Trial and Appeal Board

Mar 10, 2016

12576295 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/576,295 10/09/2009
50855 7590 03/14/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Thomas W enchell
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.
H-US-01694 (203-6440) 1812
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS WENCHELL, DAVID C. RACENET,
ANTHONY L. CENICCOLA, DANYEL J. RACENET,
NADIA F. NEAVE, MICHAEL J. BETTUCHI, MARGARET UZNANSKI,
KIMBERLY E. MARTIN, JOHN LEACH, FIONA M. HAIG,
NICHOLAS JOHN COLLIER, ALISTAIR FLEMING, and
CORMAC O'PREY
Appeal2013-010949
Application 12/576,295
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Wenchell et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 21--40. Claims 1-20
have been cancelled. Appeal Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 According to Appellants, the real party in interest is Covidien LP. Appeal
Br. 1.
Appeal2013-010949
Application 12/576,295
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 21, 32, and 40 are independent. Claim 21, reproduced below,
is illustrative of the subject matter on appeal.
21. A surgical access assembly configured and dimensioned
to facilitate access to an internal work site through an intercostal
space defined between a patient's adjacent ribs, the surgical
access assembly including a body extending along a longitudinal
axis, the body comprising:
a proximal portion defining a cross-section having a first
geometrical configuration;
an intermediate portion extending distally from the
proximal portion, and defining a cross-section having a second
geometrical configuration, the intermediate portion being
configured and dimensioned for insertion into the intercostal
space; and
a distal portion extending distally from the intermediate
portion, and defining a cross-section having a third geometrical
configuration, wherein the first geometrical configuration is
different than the second geometrical configuration, and the
second geometrical configuration is different than the third
geometrical configuration, the distal portion being configured
and dimensioned for passage through the intercostal space into
the internal work site.
THE REJECTION2
Claims 21--40 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Yastrebov (US 7,214,199 Bl; iss. May 8, 2007).
2 The Final Action (mailed April 1, 2013) presents the anticipation rejection
of claims 21--40 over Yastrebov as two separate rejections. Final Act. 2, 8.
We treat the two anticipation rejections as one for purposes of this appeal.
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Application 12/576,295
ANALYSIS
Regarding claims 21, 32, and 40, the Examiner finds, inter alia, that
Yastrebov discloses "an intermediate portion ... fully capable of insertion
into the intercostal space" (Final Act. 2, 5, 7-8), and further, regarding
claims 21 and 40, that Yastrebov discloses "a distal portion ... fully capable
of passage through the intercostal space and into the internal work site" (id.
at 2, 7-8). The Examiner reasons that
[ t ]he device of Yastrebov[] has the ability to perform the function
of being inserted between a patient's ribs. Yastrebov shows scale
of the device with labeled volumes of small liquid measurements
( 4 oz. or a half a cup) as can be seen in Fig. 1 as pointed to by
reference numerals 45 and 32. This device is adequately sized to
fit between ribs of a patient.
Ans. 11. The Examiner further reasons that "the [claim] term 'patient' or
'intercostal space between adjacent ribs' does not exclude non-human ribs,"
and that "the device would be fully capable of fitting in between a larger
species' ribs; such as a large mammal (horse; elephant; whale; etc.);" thereby
meeting the recitations of the independent claims. Id.
Appellants argue that the Examiner's findings regarding the size and
capability ofYastrebov's device are speculative, and that
the Y astrebov urine analysis collection device 10 has not been
shown [to] include any portion, or component, that is specifically
"configured and dimensioned for passage through the intercostal
space into the internal worksite," as recited in independent claims
21 and 40, or "configured and dimensioned for insertion into the
intercostal space," as recited in independent claim 32.
Appeal Br. 8-9; see also Reply Br. 3. Appellants also argue that the
Examiner's finding that Yastrebov's device would be capable of fitting into
the intercostal space of the ribs of a larger species "is based entirely upon
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Appeal2013-010949
Application 12/576,295
speculation, rather than upon any specific disclosure in Yastrebov." Appeal
Br. 9.
We are not persuaded by Appellants' arguments. The Examiner's
findings that Yastrebov' s device discloses all of the recited structural
limitations of the independent claims and is capable of performing all of the
functional limitations of the independent claims is supported by evidence
from Yastrebov and, in particular, by the labeled volumes in Yastrebov's
Figures 1 and 2. Appellants' conclusory argument that the Examiner's
findings regarding the size and capabilities of the device in Y astrebov are
speculative fails to consider the size of Yastrebov' s device as explicitly
disclosed in Y astrebov or the Examiner's additional finding that the claimed
"intercostal space between adjacent ribs" could be the intercostal space of
large mammals, such as a whale. See Ans. 11.
Accordingly, we sustain the Examiner's rejection of independent
claims 21, 32, and 40. Appellants do not present separate arguments for the
patentability of the dependent claims 22-31 and 33-39. Appeal Br. 10.
Thus, we also sustain the Examiner's rejection of claims 22-31 and 33-39.
DECISION
The Examiner's decision to reject claims 21--40 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2015).
AFFIRMED
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