MISONIX, INCORPORATED

Patent Trials and Appeals Board

Apr 30, 2020

14939668 - (D) (P.T.A.B. Apr. 30, 2020)

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.
14/939,668 11/12/2015 Paul MIKUS M24-214 8412
28156 7590 04/30/2020
COSUD INTELLECTUAL PROPERTY SOLUTIONS, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605-1601
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
COSIPS@OPTIMUM.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL MIKUS, DAN VOIC, ALEXANDER DARIAN,
SCOTT ISOLA, and CHRISTINE MOLEY
____________

Appeal 2019-005919
Application 14/939,668
Technology Center 3700
____________

Before STEFAN STAICOVICI, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Nov. 23, 2018, hereinafter “Final
Act.”) rejecting claims 1–6, 8, and 9. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Misonix Incorporated is identified as the real party in
interest in Appellant’s Appeal Brief (filed Apr. 10, 2019, hereinafter
“Appeal Br.”). Appeal Br. 3.
Appeal 2019-005919
Application 14/939,668

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention is directed to “a method and device for enabling
minimally invasive use of therapeutic ultrasound for the removal of tissue.”
Spec. 4.
Claims 1, 5, and 8 are independent. Claims 1 and 5 are illustrative of
the claimed invention and read as follows:
1. A surgical device comprising:
a tubular member having a sidewall;
a connector at a proximal end of said tubular member;
an outlet port for light energy provided in said tubular
member at said distal end thereof; and
a fiber-optic light guide embedded in said sidewall of
said tubular member and extending through said sidewall from
said connector to said outlet port.

5. A surgical device comprising:
a tubular member;
a connector at a proximal end of said tubular member;
an outlet port for light energy provided in said tubular
member at said distal end thereof; and
a fiber-optic light guide embedded in said tubular
member and extending to said outlet port,
said outlet port comprising a translucent element attached
to said tubular member at said distal end thereof, said
translucent element being annular and defining an enclosed
space at said distal end of said tubular member, said translucent
element being provided on a cylindrical outer surface with a
reflective coating for illuminating said enclosed space.

Appeal 2019-005919
Application 14/939,668

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REJECTIONS

I. The Examiner rejects claims 1–4 under 35 U.S.C. § 103 as
being unpatentable over Reynard.2
II. The Examiner rejects claims 5, 6, 8, and 9 under 35 U.S.C.
§ 103 as being unpatentable over Reynard and Jones.3

ANALYSIS
Rejection I
Appellant argues that Reynard does not disclose “a fiber-optic light
guide embedded in a sidewall of a tubular member and extending through
the sidewall from a connector at a proximal end of the tubular member to an
outlet port at the distal end thereof,” as required by independent claim 1.
Appeal Br. 6 (underlining omitted). Appellant further notes that as per claim
2, which depends from independent claim 1, “the optical fiber is embedded
in the wall of the tubular member from the inlet end to the outlet end, that is,
in its entirety.” Id. at 10 (emphasis added). In contrast, Appellant asserts
“Reynard discloses a tubular member (40, 64, 91) with an optical fiber (60,
69, 70, 96, 97) that passes through a transverse wall (at 52 in FIG. 7) and
extends through a central lumen (65, 93) of the tubular member (40, 64,
91).” Id. at 6.
The Examiner responds that in addition to the embodiment illustrated
in Reynard’s Figure 7, the rejection also relies on the embodiments of
Figures 4–6. See Ans. 8.4 Thus, the Examiner finds that Reynard discloses

2 Reynard, US 5,651,783, issued July 29, 1997.
3 Jones, US 2010/0312312 A1, published Dec. 9, 2010
4 Examiner’s Answer, dated June 5, 2019.
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Application 14/939,668

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optical sleeve 3 (tubular member) having either optical fiber 15 embedded in
its entirety in a sidewall extending from connector 19 to outlet port 18, as
per Figure 4, or optical guide 20 defined by inner and outer walls 21, 22
extending from connector 19 to outlet port 5, as per Figure 5. See id.
In response to the Examiner’s findings in the Answer, “Appellant . . .
withdraws claims 1-4 from consideration by the Board.” Reply Br. 1.5 As
withdrawing claims after filing an appeal is not permitted in this situation,
we understand Appellant’s statement to mean that the arguments submitted
in regards to the rejection of claims 1–4 are withdrawn. See 37 C.F.R.
§§ 41.33(b), (c).6 Therefore, for the foregoing reasons, we sustain the
rejection under 35 U.S.C. § 103 of claims 1–4 as unpatentable over Reynard.

Rejection II
Claims 5 and 6
Independent claim 5 requires, inter alia, an annular translucent
element attached at a distal end of a tubular element to define an enclosed
space and “provided on a cylindrical outer surface with a reflective coating
for illuminating said enclosed space.” Appeal Br. 12, Appendix A.
The Examiner finds that Reynard does not disclose the above noted
limitation. See Final Act. 4–5. Nonetheless, the Examiner finds Jones’s
fiber optic 200 is tube shaped and, thus, constitutes the tubular element; tip
section 230 is attached to tube shaped fiber optic 200 to define an enclosed

5 Appellant’s Reply Brief, filed Aug. 5, 2019.
6 Under 37 C.F.R. §§ 41.33(b) and (c), an amendment filed after the date of
filing a brief pursuant to § 41.37 may be admitted only to either cancel
claims or to rewrite dependent claims into independent form.
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Application 14/939,668

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space and transmit light 220, and, thus, constitutes the annular translucent
element; and cap 209 reflects light back down optical fiber 200 to illuminate
tip section 230, and, thus, constitutes the reflective coating. Final Act. 5
(citing Jones, paras. 62, 74, Figs. 9–11).
Appellant argues that photoluminescent member 201 “does not
surround or define an internal space,” and, thus, “radiate[s] light outwardly
not inwardly into an enclosed space or chamber.” Appeal. Br. 8. Appellant
notes that “Jones contemplate[s] that the internal space is occupied . . . and
does not constitute a space (as in empty, a chamber) at all.” Reply Br. 2.
We are not persuaded by Appellant’s arguments because the
Examiner does not rely on Jones’s photoluminescent member 201 to
disclose the claimed annular translucent element, but rather relies on tip
section 230, which includes a translucent portion (portion through which
light 220 is transmitted) and cap 209 “that reflects light inwardly into an
enclosed space.” See Ans. 10 (citing Jones, paras. 62, 74, Figs. 10, 11).
Furthermore, claim 5 does not require an “empty space,” i.e., a
chamber, but rather an “enclosed space.” Limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982). In this case, annular tip section 230 and cap 209 define
an “enclosed space,” defined by a plurality of layers surrounding optical
fiber 200 and cap 209, and which is illuminated because cap 209 is reflective
and “redirect[s] light back down . . . optical fiber [200].” Jones, para. 62,
Fig. 11; see also Final Act. 5. Thus, in contrast to Appellant’s position,
Jones’s device does project light “into a space within the device.” Reply Br.
2.
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Application 14/939,668

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In conclusion, for the reasons discussed supra, and because Appellant
does not separately argue claim 6, we sustain the rejection under 35 U.S.C.
§ 103 of claims 5 and 6 as unpatentable over Reynard and Jones.

Claims 8 and 9
In contrast to independent claims 1 and 5, independent claim 8 is
drawn to a “surgical method.” Appeal Br. 13, Appendix A.
The Examiner finds that because “the device in claims 1-6 perform
the method in claims 8-9 . . . claims 8-9 are being rejected for the same
reason as claims 1-6.” Final Act. 6 (citing Reynard, col. 3, ll. 30–45, col. 4,
ll. 60–67, claims 9, 13, 14, Figs. 1, 2). Thus, according to the Examiner, a
person of ordinary skill in the art would “[i]nsert the needle/device [of
Reynard, as modified by Jones] into an incision to hold the incision open
and perform ultrasound vibration treatment on patient’s lens tissue.” Id.
Appellant argues that because Jones’s device “radiate[s] light
outwardly not inwardly into an enclosed space or chamber,” Reynard, as
modified by Jones, does not disclose “performance of an operation within
that space.” Appeal Br. 9; Reply Br. 2.
We appreciate the Examiner’s position that Reynard discloses a
method for performing a surgical operation on a patient by inserting a needle
into an incision and applying ultrasound vibration to tissue. See Final Act.
6. We also appreciate that annular tip section 230 and cap 209 of Jones’s
device defines an illuminated “enclosed space,” because cap 209 is reflective
and “redirect[s] light back down . . . optical fiber [200].” Jones, para. 62,
Fig. 11. However, because “Jones’[s] device does not surround or define an
internal space capable of receiving surgical tools,” Appellant is correct that
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Application 14/939,668

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the combined teachings of Reynard and Jones fail to disclose “performing an
operation on tissues in said enclosed space,” as called for by independent
claim 8. Appeal Br. 9, 13 (Appendix A); see also Reply Br. 2. The
Examiner does not adequately explain how a person of ordinary skill in the
art would “perform[] an operation on tissue” in the illuminated “enclosed
space” of Reynard, as modified by Jones, because as discussed supra, the
“enclosed space is defined by a plurality of layers surrounding optical fiber
200 and cap 209.
Accordingly, we find that the Examiner’s legal conclusion of
obviousness is not supported by sufficient factual evidence, and thus, cannot
stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand.”). Therefore,
for the foregoing reasons, we do not sustain the rejection under 35 U.S.C.
§ 103 of claims 8 and 9 as unpatentable over Reynard and Jones.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–4 103 Reynard 1–4
5, 6, 8, 9 103 Reynard, Jones 5, 6 8, 9
Overall
Outcome
1–6 8, 9

AFFIRMED-IN-PART