Ex Parte Adams

Board of Patent Appeals and Interferences

Sep 2, 2010

11332443 (B.P.A.I. Sep. 2, 2010)

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.
11/332,443 01/13/2006 Ronald D. Adams 10121/01203 2452
30636 7590 09/02/2010
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
CHEN, VICTORIA W
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
09/02/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RONALD D. ADAMS
____________________

Appeal 2009-008619
Application 11/332,443
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008619
Application 11/332,443
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-13, and 15. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection of claims 12, 13 and
15.

The claims are directed to endoscopic resection devices and related
methods of use. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A tissue resection system, comprising:
a guide element;
a resection head comprising a guide channel slidably
receiving the guide element and an endoscope channel sized to
slidably receive an endoscope therein, so that, when the
resection head is slid along the guide element, the endoscope
and the resection head follow a path defined by the guide
element;
a positioning mechanism moving the resection head
relative to a distal end of the endoscope between a first position
in which the distal end of the endoscope extends distally out of
the endoscope channel and a second position in which the distal
end of the endoscope is received within the endoscope channel;
and
an actuating mechanism moving a portion of an outer
wall of the resection head to open and close a resection
chamber defined by the outer wall.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaji
McGuckin
Khurana
US 6,142,931
US 6,264,086 B1
US 6,821,264 B1
Nov. 7, 2000
Jul. 24, 2001
Nov. 23, 2004
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Application 11/332,443
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REJECTIONS
Claims 1, 3, 4, 6-10, 12, 13 and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McGuckin and Khurana. Ans. 3.
Claims 2 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGuckin, Khurana, and Kaji. Ans. 5.

OPINION
Regarding the rejection of claim 1, Appellant’s argument that “a
positioning mechanism” does not reasonably include a human hand is
persuasive. App. Br. 5-7; Reply Br. 4, see also Ans. 6. All of the exemplary
positioning mechanisms described in the Specification are machines. One of
ordinary skill in the art would have understood Appellant’s usage of the term
“etc.…” in the Specification to indicate that the positioning mechanism can
be other types of machines. Just as a human being cannot be construed as a
“means”, see, e.g., Default Proof Credit Card v. Home Depot USA, 412 F.
3d 1291, 1300 (Fed. Cir. 2005) (citing In re Prater, 415 F.2d 1393, 1398
(CCPA 1969)), we hold that it is unreasonable to construe a human hand as a
“mechanism”. Since the Examiner’s conclusion of obvious regarding the
subject matter of claim 1 is based upon an unreasonable claim construction,
we are constrained to reverse the rejection of claim 1, along with dependent
claims 3, 4, and 6-10 under 35 U.S.C. § 103(a) as being unpatentable over
McGuckin and Khurana. Since Kaji, as applied by the Examiner, does not
cure this deficiency, the rejection of claims 2 and 11 must also be reversed.
Regarding the rejection of claim 12, where Appellant merely points
out what is claimed, this does not amount to an argument of patentability.
Appellant asserts that the Examiner erred in rejecting claim 12 for the same
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Application 11/332,443
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reasons argued regarding claim 1. Since claim 12 does not include a
positioning mechanism, this argument is not relevant to claim 12. The only
arguments advanced regarding claim 1 that are also relevant to claim 12
relate to “moving the resection head distally relative to the endoscope” and
“a guide element.” Appellant argues that McGuckin achieves the position
wherein a distal end of the capsule 12, read as the claimed “resection head,”
“extends beyond a distal end of the endoscope” by moving the endoscope
216 proximally relative to the capsule 12, rather than “moving the resection
head distally relative to the endoscope” as required by claim 12. App. Br. 6-
7; McGuckin fig. 31, col. 27, ll. 37-43. The Examiner contends “there is no
limitation which defines whether the endoscope or the resection head is
stationary while the other one is moved.” Ans. 6-7. We disagree with the
Examiner. The claim requires “moving the resection head.” Given its
ordinary meaning, one of ordinary skill in the art would understand the term
to require movement of the resection head. While the final relative position
of the head and endoscope resulting from the claimed method is the same as
the final relative position of McGuckin’s capsule and endoscope, the claim
requires more than this—a particular movement to achieve that position.
Additionally, it is not reasonable to read “moving the resection head relative
to the endoscope” to include any motion wherein the resection head appears
to move as observed from the perspective of a moving endoscope. Since the
Examiner’s conclusion of obviousness was based upon an unreasonable
claim construction, we are constrained to reverse the rejection of claim 12,
along with its dependent claims 13 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over McGuckin and Khurana.

Appeal 2009-008619
Application 11/332,443
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NEW GROUND OF REJECTION
While, as discussed above, the Examiner’s rejection must be reversed
because it relies upon an improper interpretation of the phrase “moving the
resection head distally relative to the endoscope,” we find that this step
would have been an obvious modification to McGuckin. One of ordinary
skill in the art would have recognized that the ultimate arrangement of
McGuckin’s capsule and endoscope could have been just as effectively
achieved by moving the capsule distally rather than moving the endoscope
proximally. Such a modification amounts to no more that the simple
substitution of one known method of moving components for another to
achieve the same predictable final position and therefore would have been
obvious to one having ordinary skill in the art. Although we rely upon the
same prior art, since the rationale articulated herein changes the thrust of the
Examiner’s rejection we enter a rejection of claims 12, 13 and 15 under 35
U.S.C. § 103(a) as being unpatentable over McGuckin and Khurana as a new
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b) in
order to afford Appellant a fair opportunity to respond.
We have carefully considered Appellant’s remaining argument
regarding the alleged lack of a reason with a rational underpinning to include
Khurana’s guide element, but have found it unpersuasive. App. Br. 7-8;
Reply Br. 5. McGuckin specifically suggests that the device may also be
used in “catheter guided fashion.” Col. 28, ll. 37-38. Khurana demonstrates
guidewires are well-known in the art for allowing a user to locate a catheter
or endoscope. Col. 11, ll. 61-65. While McGuckin makes use of tubular
transmission means 220 housing the endoscope 216, (col. 27, ll. 9-10), one
of ordinary skill in the art would have recognized that other guide elements
Appeal 2009-008619
Application 11/332,443
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could be used in place of or in addition to this transmission means in order to
predictably guide the capsule to the desired location.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 4, 6-
10, 12, 13 and 15 as unpatentable over McGuckin and Khurana is reversed.
For the above reasons, the Examiner’s rejection of claims 2 and 11 as
unpatentable over McGuckin, Khurana and Kaji is reversed.
We enter a rejection of claims 12, 13 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over McGuckin and Khurana as a new ground of
rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

Appeal 2009-008619
Application 11/332,443
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FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK NY 10038