Ex Parte Albrecht

Patent Trial and Appeal Board

Mar 26, 2013

10943218 (P.T.A.B. Mar. 26, 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.
10/943,218 09/17/2004 Thomas E. Albrecht END-5181 1741
21884 7590 03/27/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
HALL, DEANNA K
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/27/2013 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 THOMAS E. ALBRECHT
__________

Appeal 2011-010131
Application 10/943,218
Technology Center 3700
__________

Before DONALD E. ADAMS, JACQUELINE WRIGHT BONILLA, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims directed to a low-profile stop-cock valve
structure for a trocar assembly. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-010131
Application 10/943,218

2
STATEMENT OF THE CASE
Claims 1 and 3-7 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 18-20). Claim 1 is representative of
the claims on appeal, and reads as follows:
1. A trocar assembly, comprising:
a trocar sleeve including a trocar housing and a trocar cannula,
the trocar sleeve including a longitudinal axis;
the trocar sleeve includes a stop-cock valve positioned for
selectively controlling the passage of an insufflation fluid into the
trocar cannula and the stop-cock valve includes a valve lever, the
valve lever rotates about an axis substantially parallel to the
longitudinal axis of the trocar sleeve; and
wherein the trocar housing includes a recess shaped and
dimensioned for receiving and covering at least a portion of the valve
lever therein.
The following ground
1
of rejection is before us for review:
The Examiner has rejected claims 1 and 3-7 under 35 U.S.C. § 103(a)
as unpatentable over Wing
2
in view of Lampropoulos.
3

As Appellant does not argue the claims separately, we focus our
analysis on claim 1, and claims 3-7 stand or fall with that claim. 37 C.F.R.
§ 41.37 (c)(1)(vii).
ISSUE
The Examiner acknowledges that Wing does not disclose a stopcock
that rotates substantially parallel to the longitudinal axis of the trocar.

1
The Examiner has withdrawn the rejection of claims 8-12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Wing,
Lampropoulos, Kulkashi et al. (US 5,098,388), and Easton et al. (US
5,343,775) (Ans. 3).
2
Daniel M. Wing et al., US 7,344,519 B2, issued Mar. 18, 2008.
3
Fred P. Lampropoulos et al., US 6,170,785 Bl, issued Jan. 9, 2001.
Appeal 2011-010131
Application 10/943,218

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However, the Examiner finds that this modification would be obvious in
view of Lampropoulos in order to “prevent accidental engagement by the
user.” (Ans. 4.)
Appellant asserts that “Lampropoulos does not disclose that the trocar
sleeve includes a longitudinal axis and that the lever arm rotates about an
axis substantially parallel to the longitudinal axis of the trocar sleeve.
Lampropoulus discloses a different location for a lever arm, but does not
disclose the claimed location.” (App. Br. 13.) Appellant’s position is that:
[T]here is ultimately no good rationale for the modification
being suggested by the Examiner as the modification being
suggested by the Examiner would ultimately make the device of
Wing more difficult to use. The Examiner does not counter this,
but merely indicates that orientations could be changed.
However, the fact that structure could be changed does not
indicate it would have been obvious for one skilled in the art to
make the change.
(Reply Br. 3.)
The issue is: Has the Examiner set forth a prima facie case of
obviousness for the re-positioning of the lever from the side of the device to
the top of the device?

FINDINGS OF FACT
FF1. Wing disclosed a trocar with a stopcock comprising a lever.
The “trocar system 10 generally includes a cannula 100 having a cannula
head 110 and a cannula tube 300.” (Wing, col. 4, ll. 38-40.) Figure 1 is
reproduced below:
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Application 10/943,218

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(Wing, Fig. 1.) Wing’s “FIG. 1 is a perspective view of a dilating trocar
system in accordance with [Wing’s] … invention” (Wing, col. 3, ll. 5-6).
FF2. Wing disclosed a trocar assembly with a stopcock, Figure 16 is
reproduced below:

(Wing, Fig. 16; Ans. 3.) Figure 16 shows:
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Application 10/943,218

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Stopcock valve 170 includes lever 172, a tubular member
174 comprising a passageway 176 therein and having a slot 178
(only half of which is shown in FIG. 16) at the end of the
tubular member, and an aperture 175 extending through tubular
member 174. A downwardly-depending detent 177 may be
provided to engage the cannula housing forming opening 152 in
a snap-fit manner to attach stopcock 170 to cannula housing
130 in second passageway 150.
(Wing, col. 6, ll. 38-45.)
FF3. Lampropoulos disclosed a manifold adaptor bracket that
enables convenient access to ports and valves. “The configuration of the
adaptor bracket creates a significant space between a manifold and the lid of
the reservoir on which a receiving socket is mounted. This enables
convenient manipulation of stop-cocks, valves, and ports, such as
when exchanging tubing on the ports.” (Lampropoulos, col. 2, l. 64 to col.
3, l. 1.) Figure 6, reproduced below, shows the manifold and valves:

(Lampropoulos, Fig. 6; Ans. 3) Figure 6 shows a “manifold which can be
selectively coupled to adaptor bracket 100. Manifold 130 comprises a fluid
flow tube 132 and first, second and third valves 134, 136, 138 coupled in
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Application 10/943,218

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fluid communication with fluid flow tube 132. . . . Valves 134, 136, 138 are
stopcock-actuated valves. A variety of different valves and numbers of
valves may be employed in a manifold compatible with adaptor bracket
100.” (Lampropoulos, col. 5, ll. 20-32.)

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Based on the combination of Wing and Lampropoulos, the Examiner
concludes, at the time of Appellant’s invention was made, it would have
been prima facie obvious to “have modified the stop-cock of Wing with the
stop-cock as taught by Lampropoulos so as to prevent accidental
engagement by the user” (Ans. 4.)
We are not persuaded by Appellant’s contention that “[n]either
Lampropoulos nor Wing provides any rationale for why one would take the
valve lever 172 of Wing and position it at a different location, such as that
disclosed by Lampropoulos.” (App. Br. 10; see also Reply Br. 3.) The
Examiner concludes that the positioning of the valve as taught by
Lampropoulos is obvious for the purpose of “preventing accidental
engagement by the user” (Ans. 4). The Examiner also finds that “the
modification would not destroy the purpose and use of Wing. The grip
orientation of the hand in Wing could easily be changed to accommodate
ease of use of the lever arm in the other direction as taught by the
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Application 10/943,218

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modification with Lampropoulos” (Ans. 5). Under KSR, it is obvious to
substitute one element for another as long as it produces a predictable result.
KSR at 416. Here, shifting the valve lever from the side, as disclosed in
Wing, to the top, as disclosed in by Lampropoulos and suggested by the
Examiner, would not modify the operation of the trocar device because the
lever would still function to control the stop-cock valve. Our reviewing
Court has held that it is not inventive to change the position of a part. In re
Japikse, 181 F.2d 1019, 1023 (CCPA 1950)(“[T]here would be no invention
in shifting the starting switch . . . to different position since the operation of
the device would not thereby be modified”).
We are also not persuaded by Appellant’s contention that
“Lampropoulos does not disclose that the trocar sleeve includes a
longitudinal axis and that the lever arm rotates about an axis substantially
parallel to the longitudinal axis of the trocar sleeve. Lampropoulus discloses
a different location for a lever arm, but does not disclose the claimed
location.” (App. Br. 13.) “The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Changing the
position of a lever is an obvious modification and does not change the
operation of the lever. See Japikse at 1023.
We find that the preponderance of the evidence of record supports the
Examiner’s conclusion that the combination of Wing and Lampropoulos
renders obvious the trocar assembly with a valve lever that rotates about the
axis parallel to the longitudinal axis of the trocar sleeve of claim 1. We thus
affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious,
and claims 3-7 fall with claim 1. 37 C.F.R. § 41.37 (c)(1)(vii).
Appeal 2011-010131
Application 10/943,218

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SUMMARY
We affirm the rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a)
as unpatentable over Wing in view of Lampropoulos.

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)

AFFIRMED

cdc