Ex Parte Beckman et alDownload PDFPatent Trial and Appeal BoardOct 14, 201411790885 (P.T.A.B. Oct. 14, 2014) 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. 11/790,885 04/27/2007 Andrew T. Beckman END-5820 2187 21884 7590 10/14/2014 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER EREZO, DARWIN P ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 10/14/2014 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 ANDREW T. BECKMAN, DAVID E. HAVENS, KRISTIN MUCKLEY, and MATTHEW C. EVERHART __________ Appeal 2012-004727 Application 11/790,885 Technology Center 3700 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a hand assisted laparoscopic seal apparatus. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Ethicon Endo-Surgery, Inc. (see App. Br. 1). Appeal 2012-004727 Application 11/790,885 2 Statement of the Case Background “During laparoscopic procedures, it is often desirable for the surgeon to place his or her hand within the patient in a manner manipulating the instruments positioned within the patient” (Spec. 1). The Specification teaches that “it is desirable to separate the external environment from the internal portion of the patient” (id.). The Specification teaches that “a seal apparatus 10 for permitting hand assisted laparoscopic procedures is disclosed” (id. at 6). The Claims2 Claims 1–4 and 6–17 are on appeal. Claim 1 is representative and reads as follows: 1. A hand assisted laparoscopic seal apparatus, comprising: a seal body shaped and dimensioned to create a gas tight barrier around an arm of a physician when inserted through the seal body and create a gas tight barrier between an interior abdominal space and an external environment when a hand of physician is not inserted through the seal body; a housing supporting the seal body; wherein the seal body includes a core composed of a fast recovery foam and a flexible membrane covering the core; the core being in the shape of a disk with a central slit shaped and dimensioned to permit passage of a hand of a physician therethrough while also providing a complete seal when the hand is removed; and 2 The Examiner has withdrawn the rejection of claim 17 under 35 U.S.C. § 103(a) and added a New Grounds of Rejection under 35 U.S.C. § 112, second paragraph (see Ans. 9). Appeal 2012-004727 Application 11/790,885 3 wherein the flexible membrane is composed of a synthetic fiber matrix impregnated with an elastomer resin for reinforcement and provision of a smooth surface for insertion of a physician’s hand through the central slit. The issues A. The Examiner rejected claims 1–4, 6–11, and 16 under 35 U.S.C. § 103(a) as obvious over Butler,3 Wenchell,4 and Chin5 (Final Rej. 2–5). B. The Examiner rejected claims 12–15 under 35 U.S.C. § 103(a) as obvious over Butler, Wenchell, Chin, and Willis6 (Final Rej. 5–7). C. The Examiner rejected claim 17 under 35 U.S.C. § 112, second paragraph as indefinite (Ans. 9). A. 35 U.S.C. § 103(a) over Butler, Wenchell, and Chin The Examiner finds that Butler teaches a laparoscopic seal apparatus, comprising: a seal body (Figure 5); a housing (20) supporting the seal body (Fig 5); wherein the seal body (Fig 5) includes a core (6) composed of fast recovery foam (par 0135, par 0169 discloses the sealing members can be composed of neoprene which is a fast recovery foam), constructed in a disk shape with a central slit (2) shaped and dimensioned to permit the passage of a physician’s hand there through while also providing a complete seal when the hand is removed. (Final Rej. 2). The Examiner finds that Butler “fails to disclose a flexible membrane composed of a synthetic fiber matrix impregnated with an elastomer resin covering the core” (id.). The Examiner finds that “Wenchell discloses a 3 Butler et al., US 2006/0161050 A1, published July 20, 2006. 4 Wenchell, T., US 7,153,261 B2, issued Dec. 26, 2006. 5 Chin, A.K., US 2004/0102804 A1, published May 27, 2004. 6 Willis et al., US 2005/0187524 A1, published Aug. 25, 2005. Appeal 2012-004727 Application 11/790,885 4 flexible membrane covering the seal that is used in order to facilitate smooth passage of a hand through the seal” (id. at 3). The Examiner finds that “Chin discloses a laparoscopic tool (par 0006) that utilizes a band 980 made out a synthetic fiber matrix impregnated with an elastomer resin to create a desired flexibility and tension” (id.). The Examiner finds it obvious to “provide a flexible membrane with the seal of Butler as taught by Wenchell in order to facilitate easy passage of a hand through the seal” (id.). The Examiner further finds it obvious to “provide the flexible membrane out of a synthetic fiber matrix impregnated with an elastomer resin such as that by Chin, since both medical devices are utilizing the type of material to create a desired combination of flexibility and tension” (id.). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Butler, Wenchell, and Chin render the claims obvious? Findings of Fact 1. Figure 7 of Butler is reproduced below: Appeal 2012-004727 Application 11/790,885 5 Butler teaches “an open configuration to facilitate insertion of an object, such as the surgeon’s forearm 3 through the passageway 2 to access the abdomen 4 (FIG. 7)” (Butler 4 ¶ 121). 2. Butler teaches that the device 1 may in the case of a laparoscopic procedure be employed to effect a seal around a laparoscopic instrument inserted through the device 1 into an abdomen to maintain insufflation gas pressure within the abdomen. . . . . The device 1 comprises a planar first sealing member 5 and a planar second sealing member 6. The second sealing member 6 has a passageway 2 extending therethrough through which an object, such as a laparoscopic instrument or a surgeon’s hand/forearm 3, may be inserted to access an interior space, such as an insufflated abdomen 4. The planar first sealing member 5 may be employed to seal the passageway 2. (Id. ¶¶ 119–120). 3. Butler teaches that In one embodiment the device 1 is of a gelatinous elastomeric material. . . . . The gel material preferably has the properties of high tear strength to resist tearing of the attachment of the first sealing member 5 to the second sealing member 6, and high flexibility to enable the first sealing member 5 to be retracted for passage of an object through the passageway 2 into the abdomen 4. (Id. at 5 ¶¶ 135–136). 4. Butler teaches that: On insertion of an object the slit can be opened just sufficiently to allow the object to pass therethrough with no substantial loss of gas pressure. The lip seal 2 now seals to the object, such as the surgeon’s wrist, maintaining pneumoperitoneum. When the Appeal 2012-004727 Application 11/790,885 6 object, such as the hand/forearm 3 is removed, the overlap flap 5 returns to its original position blocking the lip seal hole 2. (Id. at 6 ¶ 139). 5. Butler teaches “a mounting ring 20 . . . is sufficiently rigid to enable the device 1 to be mounted to the retractor device in a stable manner” (id. ¶ 141). 6. Butler teaches that “sealing members 102, 103 are, in this case, of an elastic material such as a gel, neoprene” (Id. at 7 ¶ 169). 7. Wenchell teaches that the “hand access apparatus of the present disclosure provides a substantial seal between a body cavity of a patient and the outside atmosphere before, during and after insertion of an object e.g., a hand, through the apparatus” (Wenchell, col. 2, ll. 59–62). 8. Wenchell teaches that Seal 104 is preferably a fabric seal and is desirably arranged so as to have a constriction. . . . Each end 110 of seal 104 is secured to housing 102 by positioning the respective seal end 110 within a slot defined between each end cap 108 and main body 106 and thereafter securing the end cap 108 to the main body 106 via the aforedescribed compression fit. (Id. at col. 3, ll. 28–35). 9. Wenchell teaches that Seal 104 preferably includes a fabric material, such as woven material, a braided material, or a knitted material. . . . seal 104 may include a coating of an elastomeric material which is impermeable to the insufflation gas or at least a portion of the seal 104 may be coated. In addition, the fabric may be coated on its interior with urethane, silicon or other flexible lubricious materials to facilitate passage of the hand and arm through the fabric seal 104. Appeal 2012-004727 Application 11/790,885 7 (Id. at col. 3, ll. 38–56). 10. Wenchell teaches that the “fabric is desirably molded, extruded, sprayed, dipped, corrugated or otherwise formed with an elastomeric material such as thermoplastic elastomers (‘TPE’), polyurethane, polyisoprene, silicone, monprene, stanoprene” (id. at col. 4, ll. 4–8). 11. Chin teaches “[e]ndoscopic harvesting of the gastroepiploic artery for coronary artery bypass surgery has also been described, involving standard laparoscopic techniques of gas insufflation and introduction of laparoscopic forceps, scissors, and staplers” (Chin 1 ¶ 6). 12. Chin teaches that “[e]lastic band 980 may be constructed from any flexible material, including but not limited to silicone rubber, nylon, polyurethane, polyester, polytetrafluoroethylene (PTFE), expanded PTFE (ePTFE), polypropylene, and impregnated elastomers such as nylon in polyurethane or nylon in silicone rubber” (id. at 18 ¶ 204). 13. The Specification teaches that “the seal body 12 includes a core 40 respectively composed of fast recovery open cell foam. In accordance with a preferred embodiment, the foam is Neoprene or EPDM, although other materials maybe used in accordance with a preferred embodiment” (Spec. 10). 14. The Specification teaches that the “flexible membrane 44, 144 is composed of a spandex matrix, that is, a synthetic fiber or fabric made from a polymer containing polyurethane to provide strength” (id. at 11). 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). Appeal 2012-004727 Application 11/790,885 8 Analysis We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Final Rej. 2–7; Ans. 11–12; FF 1–12) and agree that the claims are obvious over Butler, Wenchell, and Chin. We address Appellants’ arguments below. Claim 1 Appellants contend that “there must be a rationale for the combination being asserted by an Examiner and there is simply no reason to apply the teachings of Chin to Butler in view of Wenchell” (App. Br. 11). We are not persuaded. Butler teaches a laparoscopic seal to form a gas tight barrier around the arm of a physician inserted through the seal body into an interior abdominal space (FF 1–2). Butler teaches a housing supporting the seal body (FF 5). Butler teaches a sealing member which may be composed of materials including neoprene (FF 6), the identical material taught as a fast recovery foam by the Specification (FF 13). Wenchell teaches a seal with a core, where the core may “include a coating of an elastomeric material,” further teaching that one reason the core may be coated is “to facilitate passage of the hand and arm through the fabric seal 104” (Wenchell, col. 3, ll. 51–56; FF 9). The Examiner therefore reasonably relies upon Wenchell’s teaching to coat a core “in order to facilitate easy passage of a hand through the seal” (Final Rej. 3; FF 8) as providing a reason to coat Butler’s core with an elastomeric material. We also agree with the Examiner that, having established the obviousness of coating Butler’s core with Wenchell’s elastomeric material, the ordinary artisan would reasonably select known elastomeric materials for Appeal 2012-004727 Application 11/790,885 9 use in the coating (see Final Rej. 3). Chin evidences that synthetic fiber matrices such as polyurethane were known for use in medical devices (FF 11–12). We therefore agree with the Examiner that it would have been obvious to substitute the known equivalent elastomeric materials of Chin for the elastomeric material in Wenchell. See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”) Appellants contend that “Chin is not analogous to Butler and Wenchell, and as such does not consider similar problems and solutions” (App. Br. 12). Appellants contend that “Chin has nothing to do with facilitating easy passage of a hand through a seal nor does Chin have anything to do with the passage of anything through the material. Chin is only concerned with providing a resilient material for use in a laparoscopic tool” (id.). We are not persuaded. In Icon, the Federal Circuit explained that “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992). In other words, “familiar items may have obvious uses beyond their primary purposes.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742 . . . (2007). We therefore have concluded, for example, that an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other “housings, hinges, latches, springs, etc.,” which in that case came from areas such as “a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden Appeal 2012-004727 Application 11/790,885 10 furniture cabinet, or a two-part housing for storing audio cassettes.” Paulsen, 30 F.3d at 1481–82. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–1380 (Fed. Cir. 2007). Just as the different types of hinges and latches from entirely different types of devices in Icon would have been commended to the inventor, we agree with the Examiner that the ordinary artisan combining Butler and Wenchell to suggest a hand seal coated with a urethane elastomeric resin would have reasonably considered other known elastomers including the polyurethane elastomers of Chin (FF 9, 11–12). We therefore conclude that Chin is reasonably pertinent to the purposes of Wenchell. Claim 16 Appellants contend that “the entire basis of the Examiner’s argument is flawed in that Wenchell does not disclose a seal ‘covered with a plurality of stranded knitted together [sic].’ Wenchell at best discloses a coating applied to the seal 104” (App. Br. 14). Appellants contend that “the claims require that the edges of the flexible membrane be secured together” (Reply Br. 5). We are not persuaded. Claim 16 requires that “the flexible membrane includes edges that are secured together until the flexible membrane completely covers the core.” In the instant situation, Appellants do not identify any structural difference between the obvious product of Butler, Wenchell and Chin, but rather rely upon the process step embedded in product claim 16. The “secured together until” limitation is an attempt to import a method step into a product claim. However, the “addition of a method step in a product claim, which product is not patentably distinguishable from the prior art, cannot impart patentability to the old product.” In re Dilnot, 300 F.2d 945, 950 (CCPA 1962). Appeal 2012-004727 Application 11/790,885 11 Conclusion of Law The evidence of record supports the Examiner’s conclusion that Butler, Wenchell, and Chin render the claims obvious. B. 35 U.S.C. § 103(a) over Butler, Wenchell, Chin, and Willis Appellants contend that “there are exceptions to the rule set forth in In re Aller concerning the question of obviousness as it relates to optimizing an existing piece of equipment. The exceptions are found in situations where the results of optimizing are unexpectedly good” (App. Br. 16). We find this argument unpersuasive, because Appellants do not provide any evidence of any unexpected results. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (The “law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims . . . in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”) Appellants further contend that “although the materials claimed may be well known, their usage in a hand assisted laparoscopic seal assembly as claimed are previously unknown” (App. Br. 17). We are not persuaded. The Specification teaches that one foam option is neoprene (FF 13), a material specifically taught as suitable for the seal body of a hand assisted laparoscopic seal apparatus by Butler (FF 6). Therefore, at least one of the materials was not only generically well known, but was well known for the specific use claimed by Appellants (id.). Appeal 2012-004727 Application 11/790,885 12 C. 35 U.S.C. § 112, second paragraph Appellants state that “with regard to the new rejection of claim 17, Appellants opt to maintain the appeal without addressing the new ground of rejection regarding claim 17. As such, the appeal of claim 17 (that is, the claim subject to the new ground of rejection) is considered to be sua sponte dismissed” (Reply Br. 2). Appellants do not identify any error in the Examiner’s indefiniteness rejection. We therefore summarily affirm the indefiniteness rejection based upon the Examiner’s explanation and reasoning (Ans. 9). See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection of claims under 35 U.S.C. § 112, second paragraph, and on appeal the Federal Circuit affirmed the Board’s decision and found that the appellant had waived his right to contest the indefiniteness rejection by not presenting arguments as to error in the rejection on appeal to the Board). SUMMARY In summary, we affirm the rejection of claims 1 and 16 under 35 U.S.C. § 103(a) as obvious over Butler, Wenchell, and Chin. Pursuant to 37 C.F.R. § 41.37(c), we also affirm the rejection of claims 2–4 and 6–11, as these claims were not argued separately. We affirm the rejection of claims 12–15 under 35 U.S.C. § 103(a) as obvious over Butler, Wenchell, Chin, and Willis. We affirm the rejection of claim 17 under 35 U.S.C. § 112, second paragraph as indefinite. Appeal 2012-004727 Application 11/790,885 13 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 bar Copy with citationCopy as parenthetical citation