Kogent Surgical, LLC

Patent Trials and Appeals Board

Sep 2, 2021

2021001656 (P.T.A.B. Sep. 2, 2021)

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.
15/092,011 04/06/2016 Gregg D. Scheller 016 0092U 1073
156219 7590 09/02/2021
Kogent Surgical, Inc.
754 Goddard Ave.
Chesterfield, MO 63005
EXAMINER
COLLINS, SEAN W
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/02/2021 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):
s.smith@katalystsurgical.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGG D. SCHELLER, BRETT D. SMITH, and
ANTHONY E. BRAMBLETT
Appeal 2021-001656
Application 15/092,011
Technology Center 3700
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Kogent
Surgical, LLC. Appeal Br. 4.
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Application 15/092,011

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a bipolar forceps with active
cooling.” Spec. 2. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. An instrument comprising:
a first forceps arm having a first forceps arm distal end
and a first forceps arm proximal end;
a first forceps arm grip of the first forceps arm having a
first forceps arm grip distal end and a first forceps arm grip
proximal end wherein the first forceps arm grip distal end is
disposed between the first forceps arm distal end and the first
forceps arm proximal end and wherein the first forceps arm grip
proximal end is disposed between the first forceps arm distal
end and the first forceps arm proximal end;
a first conductor tip of the first forceps arm having a first
conductor tip distal end and a first conductor tip proximal end;
a first input conductor housing of the first forceps arm;
a first coating of an electrical insulator material over at
least a portion of the first forceps arm;
a first internal conduit of the first forceps arm having a
first superior opening, a first inferior opening, and a first
internal conduit distal end wherein the first internal conduit
distal end is disposed within a portion of the first conductor tip;
a second forceps arm having a second forceps arm distal
end and a second forceps arm proximal end, the second forceps
arm disposed opposite the first forceps arm;
a second forceps arm grip of the second forceps arm
having a second forceps arm grip distal end and a second
forceps arm grip proximal end, the second forceps arm grip
disposed opposite the first forceps arm grip wherein the second
forceps arm grip distal end is disposed between the second
forceps arm distal and the second forceps arm proximal end and
wherein the second forceps arm grip proximal end is disposed
between the second forceps arm distal end and the second
forceps arm proximal end;
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Application 15/092,011

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a second conductor tip of the second forceps arm having
a second conductor tip distal end and a second conductor tip
proximal end;
a second input conductor housing of the second forceps
arm;
a second coating of the electrical insulator material over
at least a portion of the second forceps arm;
a second internal conduit of the second forceps arm
having a second superior opening, a second inferior opening,
and a second internal conduit distal end wherein the second
internal conduit distal end is disposed within a portion of the
second conductor tip; and
a coolant multiplexer having a coolant transfer tube
housing, the coolant multiplexer configured to electrically
isolate the first input conductor housing of the first forceps arm
and the second input conductor housing of the second forceps
arm wherein the first forceps arm proximal end is disposed in
the coolant multiplexer and the second for-ceps [sic] arm
proximal end is disposed in the coolant multiplexer.
REJECTIONS
Claims 1–16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sartor2 and Hanlon.3
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sartor, Hanlon, and van der Weide.4
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sartor, Hanlon, and Xuan.5

2 US 2012/0316557 A1, published Dec. 13, 2012.
3 US 2014/0194870 A1, published July 10, 2014.
4 US 2008/0147056 A1, published June 19, 2008.
5 Yimin Xuan and Qiang Li, Heat Transfer Enhancement of Nanofluids,
Int’l. J. Heat and Fluid Flow 21 (2000) 58–64.
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Application 15/092,011

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Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sartor, Hanlon, and Edmunds.6
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Sartor, Hanlon, and Widenhouse.7
OPINION
Obviousness—Sartor and Hanlon
The Examiner finds that Sartor discloses a medical instrument
comprising two forceps arms substantially as recited in claim 1, including, in
pertinent part, a first internal conduit (fluid lumen 114 in Figure 4A) of the
first forceps arm and a second internal conduit (fluid lumen 124 in Figure
4B). Final Act. 3–4. The Examiner determines that it would have been
obvious to route the respective fluid channels through the first and second
shafts (shafts 12a and 12b) because Sartor suggests that either or both shafts
12a and 12b may be configured to secure fluid cables 70 thereto, and either
configuration would work equally well for the purpose of circulating fluid
through the electrode members. Final Act. 4 (citing Sartor ¶ 33; Figs. 2, 4A,
4B).
The Examiner also finds that Sartor does not disclose first and second
arm grip distal and proximal ends located between the first and second
forceps arm proximal and distal ends as claimed, the first and second input
conductor housings, first and second electrical insulator material coatings, or
a coolant multiplexer in which the proximal ends of the first and second
forceps arms are disposed, as claimed. Final Act. 4–5. The Examiner finds

6 US 2012/0123406 A1, published May 17, 2012.
7 US 2011/0306972 A1, published Dec. 15, 2011.
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that Hanlon teaches an electrosurgical forceps having such features,
including intermediate portion 32 for the user to hold the forceps. Final
Act. 5–7. The Examiner determines it would have been obvious to modify
Sartor by substituting the tweezer-type bipolar forceps structure with a
proximal fluid connection as taught by Hanlon for the scissors-type bipolar
forceps structure with a proximal fluid connection disclosed by Sartor while
maintaining the closed loop cooling fluid channel in the distal jaws because
the tweezer-type structure is a well-known alternative structure that
functions in a similar manner and “would provide the expected result of a
bipolar device capable of grasping tissue between distal jaw elements for
bipolar treatment while supplying fluid to the device.” Final Act. 7.
Appellant argues that paragraph 33 of Sartor may disclose input and
output tubes in a single shaft (either shaft 12a or shaft 12b) or, alternatively,
may disclose input and output tubes in one of the shafts and an
electrosurgical cable in the other of the shafts. Appeal Br. 17. Appellant
submits, however, that Sartor’s paragraph 33 “does not disclose an
instrument with input and output tubes extending though both shafts 12[a]
and 12b.” Appeal Br. 17.
Appellant’s argument is not persuasive. Sartor discloses that “[t]he
housing of one (or both) of the electrodes includes a lumen defined therein
configured to circulate a cooling fluid therethrough.” Sartor ¶¶ 12, 14
(emphasis added). Sartor also discloses that, “[a]lthough proximal shaft
connector 19 is shown connected to shaft 12b, either (or both) of shafts 12a
and 12b may be configured to secure electrosurgical cable 60 and/or fluid
cable(s) 70 thereto.” Sartor ¶ 33 (emphasis added). With respect to the fluid
lumens, a person having ordinary skill in the art would have gleaned from
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this disclosure a plurality of possible embodiments, including an instrument
having input and output tubes in shaft 12a, an instrument having input and
output tubes in shaft 12b, and an instrument having input and output tubes in
shaft 12a and in shaft 12b. Thus, the selection of any of this finite number
of identifiable, predictable solutions would have been obvious to a person of
ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (holding that, where there are a finite number of identified,
predictable solutions to solve a problem, “a person of ordinary skill has good
reason to pursue the known options within his or her technical grasp,” and,
“[i]f this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense”).
Appellant also argues that the combination of Sartor and Hanlon
proposed in the rejection would render Sartor “unsatisfactory for its intended
purpose, which is insertion into the nostrils of a patient to grasp a nasal
septum and apply electrosurgical energy for reforming the nasal septum.”
Appeal Br. 19; see also id. at 18. Appellant points out that Sartor’s forceps
configuration with opposing electrode members 110, 120 pivotably
connected about pivot pin 150 works in tandem with ratchet 30 to help fix
the relative positions of the electrode members to ensure consistent and
effective grasping of the nasal septum. Appeal Br. 18. Appellant contends
that substitution of a tweezer-type bipolar forceps structure for Sartor’s
scissors-type forceps structure “would make Sartor inoperable with the
ratchet 30 and the geometry of the nasal septum.” Appeal Br. 19 (italics
omitted). According to Appellant, “[t]he structural differences in geometry
between a tweezer-type and a scissor type structure result in significant
differences in the operation and function of the devices.” Appeal Br. 19.
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Appellant points to disclosure in Appellant’s Specification regarding the
importance of the surgeon being able to confirm both visually and tactilely
that an electrosurgical procedure is being performed as intended. Appeal
Br. 19–20. Appellant submits that the proposed combination would not have
been predictable and that Appellant’s Specification and Sartor teach away
from the proposed combination. Appeal Br. 20.
Appellant does not persuasively explain why the proposed
modification of Sartor to employ a tweezers-type configuration in place of
the scissors configuration would render the resulting device inoperable or
unsuitable for Sartor’s intended purpose of insertion into a patient’s nostrils
to grasp the nasal septum and apply electrosurgical energy for reforming the
septum. It is not clear why the electrode members at the distal ends of a
tweezers forceps could not be shaped and sized for insertion into the nostrils
of a patient, with either a paddle shape or a sharpened needle shape, for
example. In this regard, we note that Sartor discloses that the electrode
members may define a paddle-shaped configuration or a needle-shaped
configuration having a sharpened distal end. Sartor ¶¶ 11, 38; compare
Sartor Figs. 5, 6A, with Sartor Figs. 1, 3, 4A, 4B. Hanlon illustrates tapered
distal ends 36 on the tweezers-type bipolar forceps. Hanlon, Figs. 1–3.
Further, Hanlon teaches that the disclosed bipolar forceps “does not obstruct
the surgeon’s view of the forceps tips” and “does not resist the surgeon’s
squeezing of the forceps arms.” Hanlon ¶ 10. Thus, a person having
ordinary skill in the art would have a reasonable expectation of success in
being able to modify Sartor’s forceps to have a tweezer-type configuration
that allows the surgeon to confirm both visually and tactilely that an
electrosurgical procedure is being performed as intended. As discussed
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above, Appellant mentions the ratchet feature of Sartor; however, Appellant
does not elaborate on why modifying the forceps to have a tweezer
configuration would render such a feature inoperable. Further, the Examiner
provides a technical explanation, in substantial detail, based on Hanlon’s
teachings, in support of the Examiner’s determination that the modified
device would be operable and suitable for its intended purpose, despite the
difference in gripping functionality. Ans. 5–6. Appellant does not
specifically refute the Examiner’s findings or reasoning in this regard.
As for Appellant’s teaching away argument, prior art does not teach
away from claimed subject matter merely by disclosing a different solution
to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellant does not point to, nor do we discern,
any disclosure in Sartor or Hanlon that criticizes, discredits, or otherwise
discourages the proposed modification of Sartor. A person having ordinary
skill in the art would have inferred from Hanlon’s teachings in paragraph 10
that a tweezers-type configuration would permit a surgeon to confirm both
visually and tactilely that the electrosurgical procedure is being performed as
intended.
Appellant also argues that the Examiner’s conclusion of obviousness
is based upon improper hindsight reasoning. Here, the Examiner explains
that the “rationale applied is based on a combination of known prior art
elements for a predictable result since Hanlon teaches the arm grip structure
as claimed and modifying the grip structure of Sartor in light of Hanlon
would provide the predictable result of a forceps” with “generally equivalent
functionality for electrosurgical procedures requiring tip electrodes.” Ans. 5
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(citing KSR, 550 U.S. at 416, for the principle that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results”). Further, as discussed above,
the Examiner provides a technical explanation, in substantial detail, based on
Hanlon’s teachings, in support of the Examiner’s determination that the
alternative configuration would have generally equivalent functionality. See
Ans. 5–6. Appellant does not identify any flaw in the Examiner’s reasoning
or point to any knowledge relied on by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of the invention, and thereby fails to
support the hindsight assertion. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”).
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, and of
claims 2–16, for which Appellant relies on the arguments presented for
claim 1 (Appeal Br. 20), as being unpatentable over Sartor and Hanlon.
Obviousness—Sartor and Hanlon in view of one of van de Weide, Xuan,
Edmunds, or Widenhouse
Appellant relies on the arguments presented for claim 1 in contesting
the rejections of claims 17–20. Appeal Br. 20. For the reasons discussed
above, these arguments fail to apprise us of error in the rejection of claim 1
and, likewise, fail to apprise us of error in the rejections of claims 17–20.
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Accordingly, we sustain the rejection of claim 17 as being unpatentable over
Sartor, Hanlon, and van der Weide; the rejection of claim 18 as being
unpatentable over Sartor, Hanlon, and Xuan; the rejection of claim 19 as
being unpatentable over Sartor, Hanlon, and Edmunds; and the rejection of
claim 20 as being unpatentable over Sartor, Hanlon, and Widenhouse.
CONCLUSION
The Examiner’s rejections of claims 1–20 are AFFIRMED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16 103 Sartor, Hanlon 1–16
17 103 Sartor, Hanlon, van
der Weide
17
18 103 Sartor, Hanlon,
Xuan
18
19 103 Sartor, Hanlon,
Edmunds
19
20 103 Sartor, Hanlon,
Widenhouse
20
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED