Ex Parte AdamsDownload PDFPatent Trial and Appeal BoardSep 18, 201312005811 (P.T.A.B. Sep. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/005,811 12/28/2007 Kenneth M. Adams M190.395.101 / PD0000269. 5527 63496 7590 09/18/2013 DICKE, BILLIG & CZAJA, PLLC ATTN: MD MATTERS FIFTH STREET TOWERS, SUITE 2250 100 SOUTH FIFTH STREET MINNEAPOLIS, MN 55402 EXAMINER WU, VICKI H ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 09/18/2013 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 KENNETH M. ADAMS ____________________ Appeal 2012-001745 Application 12/005,811 Technology Center 1700 ____________________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and MARK NAGUMO, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 17-27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-001745 Application 12/005,811 2 The claims are directed to a method of fabricating an angled tissue cutting instrument. The instrument includes a flexible inner tubular member (Figs. 1-2 at 14). The method of fabricating the instrument includes forming a continuous helical cut, as shown at 46 in Figure 3, in the body 45 of inner tube 44 (Spec., ¶ 0046). Figure 3 is reproduced below: Broken side view showing helical cut (Spec., ¶ 0034) A coating of adhesive 58 is applied to the cut portion as shown in Figure 5 (Spec., ¶ 0049). Figure 5 is reproduced below: Broken side view showing adhesive (Spec., ¶ 0036) A heat shrinkable sleeve 62 is disposed over the adhesively coated and helically cut portion as shown in Figure 6, which is then heat shrunk as shown in Figure 7 (Spec., ¶¶ 0050-51). Figure 6 is reproduced below: Appeal 2012-001745 Application 12/005,811 3 Broken side view showing heat shrinkable sleeve (Spec. ¶ 0037) Figure 7 is reproduced below: Broken side view illustrating heat used to shrink the sleeve (Spec., ¶ 0038) The tubular body 45 of the tubular member 14 is inserted for rotation within an angled outer tubular member 12 to form the instrument 10 (Spec., p. 19 (unnumbered paragraph)). Figure 1 depicts the instrument parts, and is reproduced below: Appeal 2012-001745 Application 12/005,811 4 Exploded broken side view of the instrument (Spec., ¶ 0032) Claim 17 is the only independent claim and we reproduce this claim below (reference numerals from the above figures added for a better understanding of the claim): 17. A method of fabricating an angled tissue cutting instrument [10] having a flexible inner tubular member [14], comprising the steps of forming a continuous helical cut [46] along a length portion [42] of a solid wall elongate tubular body [45] to impart flexibility along the length portion [42]; applying a coating of adhesive [58] over an outer surface of the tubular body [45] along the entire helically cut length portion [42]; positioning a heat shrinkable sleeve [62] over the adhesively coated helically cut length portion [42] such that the entire length portion [42] is disposed within the sleeve [62]; applying heat to shrink the sleeve diametrically over the length portion [42] so that the sleeve [62] is disposed over the Appeal 2012-001745 Application 12/005,811 5 length portion [42] with a close diametric fit and the adhesive [58] bonds the sleeve [62] to the outer surface of the tubular body [45] along the length portion [42]; and inserting the tubular body [45] for rotation within an angled outer tubular member [12] with the length portion [42] disposed within a bend [26] of the outer tubular member [12] to conform to the configuration of the outer tubular member [12] while transmitting torque from a proximal end [32] of the tubular body [14] when the tubular body [14] is rotated in forward and reverse rotational directions within the outer tubular member [12] to rotate a cutting configuration connected with a distal end [30] of the tubular body [14] and exposed from a cutting port of the outer tubular member [12] to cut anatomical tissue, the sleeve [62] bonded to the tubular body [14] providing resistance to wind-up and unwinding of the helically cut length portion [42] while transmitting torque. (Claims App’x at Br. 13.) OPINION Claim 17 is the only independent claim on appeal. Claim 17 is rejected under 35 U.S.C. § 103(a) as obvious over Mitusina1 in view of Samson2 and further in view of Grinberg3 (Ans. 5). The Examiner adds various additional prior art references to reject the other claims. However, all of the rejections are deficient for the reasons Appellant advance against the rejection of claim 17 (Br. 8-10). In summary, the Examiner has not established that there was a sufficient reason to apply the adhesive of Samson to the cutting instrument of Mitusina (Br. 9). 1 Mitusina et al., US 6,533,749 B1, patented Mar. 18, 2003. 2 Samson, US 5,658,264, patented Aug. 19, 1997. 3 Grinberg, US 5,755,731, patented May 26, 1998. Appeal 2012-001745 Application 12/005,811 6 Mitusina’s rotary tissue cutting instrument has a pair of spirally wound strips 42 and 44 of elastic material superimposed over the spirally cut region of the inner tube (Mitusina, col. 4, ll. 26-31). There is no adhesive between the strips and underlying inner tube. Samson, unlike Mitusina, is directed to a catheter with a spiral wound stiffener ribbon to provide the catheter with a thin wall and controlled stiffness (Samson, col. 1, ll. 9-12). The stiffener ribbon is adhesively bonded to the flexible outer tubing member to produce a catheter section that is very flexible but highly kink resistant (col. 1, ll. 12-15). The catheter is produced by applying adhesive 204 onto the helically wound ribbon 202 and heat shrinking the outer tubing member 206 onto the adhesive 204 (Samson, col. 9, ll. 22-30). According to the Examiner, It would have been obvious to one ordinarily skilled in the art at the time the invention was made to incorporate the specific adhesive(s) of Samson in order to modify the method of fabricating the instrument of Mitusina. The rationale to do so would have been the motivation provided by the teaching of the advantages to incorporating said adhesive(s) of Samson; that said adhesive(s) exhibit desirable characteristics, including advantageously suitable softening / heat-shrinking temperature(s), and are excellent for securing a strong bond to the helical shaft (Samson: col. 9 lines 30-67). (Ans. 7-8.) Column 9, lines 30-67 of Samson, the portion of Samson cited to support the finding of a suggestion to provide adhesive in the angled tissue cutting instrument of Mitusina, merely discusses the types of heat shrinkable polymer and adhesive that one should select so that a strong bond Appeal 2012-001745 Application 12/005,811 7 is obtained between Samson’s ribbon and the heat shrunk outer tubing of Samson’s catheter. Samson’s catheter is not designed to allow rotation of a flexible inner member within an outer member. Grinberg, like Mitusina, teaches a cutting instrument. Grinberg’s cutting instrument has an inner member with flexible interengaging segments 60 with a heat shrunk flexible sheath 74 and no adhesive between the segments and sheath. Mitusina’s strips and Grinberg’s heat shrunk sheath allow a vacuum or partial vacuum to be maintained in the lumen (Mitusina, col. 4, ll. 37-41; Grinberg, col. 2, ll. 12-19). Given that neither Mitusina nor Grinberg teach or suggest incorporating adhesive in their respective rotary cutting instruments, and Samson is directed to a catheter not structured to perform a function similar to the cutting instruments of Mitusina and Grinberg, we agree with Appellant that the Examiner has not established why one of ordinary skill in the art would have added adhesive in the instrument of Mitusina. CONCLUSION We do not sustain the Examiner’s rejections. DECISION The Examiner’s decision is reversed. REVERSED cam Copy with citationCopy as parenthetical citation