Ex Parte Whittaker et al

Patent Trial and Appeal Board

Mar 12, 2013

12030590 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GREGORY R. WHITTAKER,
GARY MCALISTER, and JASON HAMILTON
__________

Appeal 2011-008497
Application 12/030,590
Technology Center 3700
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-5, 10, 11, 16-18, and 20.
1
We have
jurisdiction under 35 U.S.C. § 6(b).

1
Claims 6-9, 12-15, 19, and 21-23 are also pending, but stand withdrawn
from consideration (App. Br. 2).
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2
STATEMENT OF THE CASE
Claims 1 and 11 are representative of the claims on appeal, and read
as follows:
1. A surgical access device, comprising:
an elongate surgical access member having a lumen extending
therethrough that is configured to receive a surgical tool;
a flexible sleeve member having a lumen extending therethrough that is
configured to receive the elongate surgical access member; and
a substantially rigid collar member disposed adjacent to a proximal
end of the flexible sleeve member and having a lumen extending
therethrough that is configured to receive the elongate surgical access
member, the collar member being movable relative to the elongate surgical
access member to selectively configure the flexible sleeve member in a
relaxed condition in which the flexible sleeve member has a relatively
smooth outer surface and a compressed condition in which the flexible
sleeve member has a plurality of protrusions formed on the outer surface that
are configured to create a seal between the outer surface and tissue, each
protrusion extending circumferentially around the flexible sleeve member,
wherein the flexible sleeve member is normally in the relaxed
condition and is configured to receive a compressive force to be configured
in the compressed condition.

11. The device of claim 10, wherein the outer tissue-contacting surface
contains threads configured to form a seal with tissue when a compressive
force is applied to the deformable surgical access member.

The following grounds of rejection are before us for review:
I. Claims 1-5, 10, 16-18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bonutti
2
(Ans. 3). Appellants
only argue independent claims 1, 10, and 16 separately, and thus

2
Bonutti, US 5,197,971, issued Mar. 30, 1993.
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the dependent claims stand or fall with the claim on which they
depend. 37 C.F.R. § 41.37(c)(1)(vii).
II. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Bonutti and Smith.
3
(Ans.
6.)

We affirm.

ANALYSIS
Anticipation
The Examiner finds that Bonutti teaches all of the limitations of claim
1. Specifically, relying on Figures 7 and 8 of Bonutti, the Examiner finds
that the surgical access member as taught by Bonutti has a flexible sleeve
member, in which in the relaxed condition has a relatively smooth outer
surface as shown in Figure 7 (Ans. 4). The Examiner finds further that the
flexible sleeve member has a compressed condition as shown in Figure 8,
wherein “the flexible sleeve member has a plurality of protrusions (shown at
62 in Figure 8) formed on the outer surface that are configured to create a
seal between the outer surface and tissue, each protrusion (62) extending
circumferentially around the flexible sleeve member” (id.)
As to claim 1, Appellants argue that Bonutti is drawn to a surgical
retractor that is expandable within a body to allow for improved
visualization of a surgical site (App. Br. 5). Appellants assert that while it
comprises a plurality of hinged arms that expand outwardly to engage tissue,

3
Smith, US 2005/0119685 A1, published Jun. 2, 2005.
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the arms provide multiple fluid pathways between the arms, thus preventing
a seal against the tissue (id.). That is, according to Appellants, “[t]he arms
do not create a seal against the tissue because of the large gaps in between
each arm, nor is such required for their intended function” (id.).
Similarly, as to claims 10 and 16, Appellants argue that Bonutti fails
to anticipate those claims as the disclosed device does not form a seal with
the tissue.
Our mandate is to give claims their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. In re American Academy of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Claim 1 requires a “flexible sleeve member has a plurality of
protrusions formed on the outer surface that are configured to create a seal
between the outer surface and tissue, each protrusion extending
circumferentially around the flexible sleeve member.” Claim 10 requires
that the “the deformable surgical access member is configured to receive a
compressive force to effect an increase in an outer diameter thereof to
configure the outer tissue-contacting surface in a condition effective to form
a seal with tissue at a plurality of axial locations along a length of the
deformable surgical access member.” Finally, claim 16 is drawn to a
method that requires a “flexible sleeve [that] includes surface features which
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extend radially outward from the elongate surgical access member at a
plurality of axial locations along a length of the flexible sleeve to form a seal
with tissue at the plurality of axial locations along the length of the flexible
sleeve.”
Appellants do not point to any definition of seal in the Specification.
Seal may be defined as “to fasten or close tightly by or as if by a seal.”
4

While claims 1, 10 and 16 require that the protrusions formed on the outer
surface of the flexible sleeve create a seal between the outer surface and the
tissue, the claims do not set forth any limitation as to how much of the
circumference of the surgical access device need be sealed in such a manner.
Stated differently, the claims only require that the protrusions form a seal,
but the claims do not specify how much tissue is involved in or the extent of
that seal.

4
seal. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/seal (accessed: February 28, 2013).
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Figures 7 and 8 of Bonutti are reproduced below:

Figure 7 shows “a retractor having two axially expanding portions, shown in
the unexpanded condition,” and Figure 8 show the same retractor in the
expanded condition (Bonutti, col. 3, ll. 7-11). We agree with the Examiner
(Ans. 7-8) that the arms 62 will form a seal with the tissue.
We thus conclude that the Examiner has established that independent
claims 1, 10, and 16 are anticipated by Bonutti. Dependent claims 2-5, 17,
18, and 20 fall with those claims.

Obviousness
The Examiner relies on Bonutti as in the anticipation rejection, but
finds that “Bonutti is silent on the specifics of the outer tissue-contacting
surface containing threads configured to form a seal with tissue when a
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compressive force is applied to the deformable surgical access member”
(Ans. 6).
The Examiner finds that “Smith discloses a surgical access device
having a deformable surgical access member (24) having an outer tissue-
contacting surface which contains threads (38) to retain the device in tissue
such that the threads form a seal with the tissue (paragraph [0060])” (id.).
The Examiner thus concludes that it would have been obvious to provide the
outer tissue-contacting surface of the deformable surgical access member of
Bonutti with threads as taught by Smith so that the deformable surgical
access member may be retained better by tissue (id.).
Appellants argue that there is no reason to combine the references as
suggested by the Examiner (App. Br. 6). Specifically, Appellants argue that
even if it one did employ the threads of Smith on the retractor of Bonutti,
they would not be located where the arms 62 expand, as that is designed to
be inside the body cavity to expand the tissue for visualization, whereas the
threads are positioned at the skin (id.). Appellants argue further that the
threads have gaps between them, as the arms of Bonutti do, and thus would
not form a seal, but would leave flow paths in between (id.).
We do not find Appellants’ arguments convincing. As to Appellants’
argument as to the lack of a seal, that argument has been addressed above
with respect to the anticipation rejection. As to Appellants’ argument that
one would not add the threads of Smith to the arms of the device of Bonutti,
Smith teaches that not only may the threads be used to advance the
apparatus, but, in the alternative, they may also be used to retain the
apparatus in tissue (Smith, p. 3, ¶ 60). Thus, the ordinary artisan would have
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added the threads of Smith to the arms 62 of the surgical access device of
Bonutti to allow for better retention of the device in tissue when in the
expanded condition.

SUMMARY
We affirm the rejection of claims 1-5, 10, 16-18, and 20 under 35
U.S.C. § 102(b) as being anticipated by Bonutti; as well as the rejection of
claim 11 under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Bonutti and Smith.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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