Ex Parte Zeiner et al

Patent Trial and Appeal Board

Nov 5, 2013

11589995 (P.T.A.B. Nov. 5, 2013)

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.
11/589,995 10/31/2006 Mark S. Zeiner END-5791 4982
21884 7590 11/05/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
HENDERSON, RYAN N
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
11/05/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK S. ZEINER and MICHAEL J. STOKES
____________

Appeal 2012-002126
Application 11/589,995
Technology Center 3700
____________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 6-8, and 14 (App.
Br. 3).2 Examiner entered rejections under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Ethicon Endo-Surgery, Inc. (App. Br. 1).
2 Pending claims 3-5, 9-13, and 15-20 stand withdrawn from consideration
as directed to non-elected subject matter (see App. Br. 3).
Appeal 2012-002126
Application 11/589,995

2
STATEMENT OF THE CASE
The claims are directed to an endoscopic attachment apparatus. Claim
1 is representative and is reproduced below:3
1. An endoscopic attachment apparatus for coupling an endoscope
with an endoscopic instrument, comprising:
an attachment ring including a ring body having first and second
apertures respectively shaped and dimensioned for the receipt of an
endoscope and an endoscopic instrument;
wherein the attachment ring includes an annular body defining the
first aperture and the annular body is provided with an endoscope release
mechanism for facilitating release of the endoscope from the attachment
ring, wherein the release mechanism includes a tear strip formed along the
annular body the tear strip including a tab at an end thereof for engagement
by a medical practitioner.

Claims 1 and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cocanower.4
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cocanower and Whalen.5
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Cocanower and Kojouri.6

3 Claim 1 is not accurately reproduced in Appellants’ Claim Appendix. The
correct version of Appellants’ claim 1 is reproduced herein and reflects
Appellants’ December 13, 2010 amendment to claim 1, which Examiner
entered into the record on February 16, 2011 (see Appellants’ December 13,
2010 Amendment; Examiner’s February 16, 2011 Office Action 2: ¶ 1).
4 Cocanower, US 5,334,167, issued August 2, 1994.
5 Whalen et al., US 2002/0198506 A1, published December 26, 2002.
6 Kojouri, US 7,604,627 B2, issued October 20, 2009.
Appeal 2012-002126
Application 11/589,995

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Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Cocanower teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner’s annotated versions of Cocanower’s Figures 10 and 11
are reproduced below:

“FIG. 10 is a fragmentary view of [an] … embodiment of … [Cocanower’s]
invention having a line of weakness at the attachment between the introducer
sheath and the … tube” annotated to identify the parts of Cocanower’s
device Examiner finds to represent the “Ring Body,” Second Aperture,” and
“First Aperture” (Cocanower, col. 5, ll. 53-56; Ans. 5 and 7). “FIG. 11 is a
fragmentary view of the embodiment shown in FIG. 10 having the
introducer sheath partially separated from the nasogastric tube” annotated to
identify what Examiner considers to represent Cocanower’s “Tear Strip
Release Mechanism” (id. at ll. 57-59; Ans. 5 and 7).
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Application 11/589,995

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FF 2. Examiner finds that Cocanower teaches an instrument attachment
apparatus comprising “an attachment ring including a ring body having first
and second apertures …; wherein the attachment ring includes an annular
body … provided with a[] … release mechanism … [that] includes a tear
strip formed along the annular body” (Ans. 5).
FF 3. Cocanower teaches that “[t]he separation of the sheath 40c from the
N-G tube 20c may be initiated by the withdrawal of a string … or the like”
(Cocanower, col. 8, ll. 3-5).
FF 4. While Examiner asserts that Cocanower’s “tear strip include[s] a tab
(string) at an end thereof for engagement by a medical practitioner,”
Examiner later concedes that “Cocanower does not expressly teach … [a]
tear strip including a tab at an end thereof for engagement by a medical
practitioner” (Ans. 5-6; Cf. id. at 10).
ANALYSIS
We recognize, but are not persuaded by, Examiner’s rationale that
Cocanower anticipates Appellants’ claimed invention because
A common practice when employing tear strips is to
incorporate a string or some type of pull member along a line of
weakness and when the string is pulled, the line of weakness is
torn…. [I]f the string is located along the line of weakness
minimal force is required to tear the line of weakness.
Therefore, the string is being considered a tab formed at the end
of the line of weakness.
(Ans. 12-13; Cf. FF 3-4.) As Appellants explain “[w]hile the Examiner
provides a substantial explanation as to what is disclosed by Cocanower, the
explanation is based upon conjecture and is not supported by the cited art”
(Reply Br. 4; see FF 3). Stated differently, while Examiner posits that a
string may, in some instances, serve as a pull tab; Examiner failed to
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Application 11/589,995

5
establish an evidentiary basis on this record to support a finding that
Cocanower teaches the string is a tab as required by Appellant’s claimed
invention.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Cocanower teaches Appellants’ claimed invention.
The rejection of claims 1 and 14 under 35 U.S.C. § 102(b) as being
anticipated by Cocanower is reversed.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 5. Examiner relies on Cocanower as discussed above (see Ans. 8-10).
FF 6. Examiner finds that Cocanower fails to suggest, inter alia, a helical
tear away release mechanism and relies on Whalen to make up for this
deficiency in Cocanower (id. at 8-9).
FF 7. Examiner finds that Cocanower fails to suggest a tear strip including
a tab at an end thereof for engagement by a medical practitioner and relies
on Kojouri to make up for this deficiency in Cocanower (id. at 10).
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Application 11/589,995

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FF 8. Kojouri’s Figures 5 and 9 are reproduced below:

Kojouri’s Figures 5 and 9 illustrate a “nasopharyngeal sheath from different
views” (Kojouri, col. 3, ll. 20-21).
FF 9. Kojouri suggests a nasopharyngeal sheath comprising “two rings
(22) at its proximal end to facilitate its tearing through the tear-off lines
(23),” wherein “[t]he rings are attached at the 3 and 9 o’clock positions and
are large enough to be easily grabbed and pulled apart” (id. at ll. 50-54; see
also id. at Abstract (Kojuris’ system includes a tube and a sheath, wherein
“[t]he diameter of both the tube and the sheath are such that the sheath can
accommodate the … tube”)).
ANALYSIS
The rejection over the combination of Cocanower and Whalen:
Claim 6 depends from and further limits the release mechanism of
Appellants’ claim 1 to include a helical tear away mechanism (see
Appellants’ claim 6).7
Based on the combination of Cocanower and Whalen, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious and “a matter of design choice to provide the
apparatus of Cocanower with the helical tear away mechanism of Whalen to

7 Appellants’ claim 7 depends from claim 6.
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enhance the durability of the slit to prevent premature release during
insertion” (Ans. 9). We are not persuaded. Examiner failed to establish that
Whalen makes up for Cocanower’s failure to suggest a tear strip that
includes a tab at the end thereof for engagement by a medical practitioner as
is required by Appellants’ claimed invention.

The rejection over the combination of Cocanower and Kojouri:
Based on the combination of Cocanower and Kojouri, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to provide the apparatus of Cocanower with the
release mechanism of Kojouri providing a grip portion for the practitioner to
handle to facilitate the tearing of the tear strip” (Ans. 10). We are not
persuaded. As Appellants explain, “Kojouri is concerned with peeling a
sheath from about a nasogastric tube” and “there does not appear to be any
reason why one would want to tear open the introducer sheath 40 of
Cocanower as suggested by the Examiner based upon the teachings of
Kojouri” (App. Br. 16; see FF 8-9).
We recognize Examiner’s alternative rationale, but, like Appellants,
find that “Examiner’s explanation of a rationale for the suggested
modification appears to have been cut off” or is incomplete (Reply Br. 5; Cf.
Ans. 14). Nevertheless, Examiner reasons that “[o]ne of ordinary skill in the
art would understand that the two rings could be implemented at the end of
the line of weakness of Cocanower to separate the … tube from the sheath”
(Ans. 14 (emphasis added)). We are not persuaded. Rather than placing the
tab/ring at the end of a tear-off line, Kojouri suggests that the rings are
arranged on the sheath in an orientation that is perpendicular to, e.g., at the 3
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Application 11/589,995

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and 9 o’clock positions relative to, Kojouri’s tear-off lines, thereby
facilitating the peeling of Kojouri’s sheath into two halves along the tear-off
lines (see FF 9-10). Examiner failed to articulate how or why a person of
ordinary skill in this art would modify the orientation of Kojouri’s rings
about a tear-off line, or line of weakness, i.e. from a position that is
perpendicular to a tear-off line to a position that is at the end of a tear-off
line, and then apply this modification of Kojouri to the end of Cocanower’s
line of weakness to facilitate the separation of Cocanower’s tube from the
sheath (see Ans. 14). As Appellants explain, Cocanower’s sheath “is not
positioned about the … tube” as it is in Kojouri and such a modification
would serve only to complicate Cocanower’ device (see App. Br. 16; Reply
Br. 5). “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 6-7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cocanower and Whalen is reversed.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cocanower and Kojouri is reversed.

REVERSED

cdc