Ex Parte Benning et al

Patent Trial and Appeal Board

Nov 15, 2018

13682548 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/682,548 11/20/2012 Christopher A. Benning
109610 7590 11/19/2018
Bookoff McAndrews, PLLC
2020 K Street, NW
Suite 400
Washington, DC 20006
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
06530-0524-00000 3128
EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
usptomail@bomcip.com
Kross@bomcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. BENNING, PAUL AQUILINO,
JOHN HUTCHINS, and SCOTT TUPPER
Appeal 2017-011127
Application 13/682,548
Technology Center 3700
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Christopher A. Benning, Paul Aquilino, John Hutchins, and Scott
Tupper ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 9, 11-15, 24--29, 31, 32, and 34.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Boston Scientific Scimed, Inc.
Appeal Br. 2.
Appeal 2017-011127
Application 13/682,548
STATEMENT OF THE CASE
The Specification
According to Appellants, the claimed invention relates to endoscopic
systems and "is directed to systems and methods to optimize visualization by
controlling distribution of light in a field of view within the body from
outside the body." Spec. ,rip--4. In particular, the claimed invention is
directed to a cap positioned on the distal end of an endoscope.
Figure 2 is reproduced below.
Figure 2, reproduced above, shows "an exploded view of a distal portion
[25] of the endoscopic device having a cap [32], according to a first
embodiment of the disclosure." Spec. ,II6.
Figures 3a and 3b are reproduced below.
FIG. 3A FIG, 38
2
Appeal 2017-011127
Application 13/682,548
Figures 3a and 3b, reproduced above, respectively show distal end 46
and proximal end 48 of cap 32. Id. i134. The cap includes ports extending
from the proximal end to distal end. Id. In this particular embodiment, they
are "working port 34a, an irrigation port 36a, an aspiration port 38a, a
viewing port 50, and a light port 40a." Id. The proximal end of the cap also
includes recess 52, which does not extend to the distal end. Id. An
illumination device may be configured to terminate in the recess. Id. i136.
The cap may be made of a translucent material and/or a material that scatters
light. Id. ,I52.
The Rejected Claims
Claims 9, 11-15, 24--29, 31, 32, and 34 stand rejected. Final Act. 1.
Independent claim 9 is representative and reproduced below.
9. A cap for an endoscope, comprising:
a body having a proximal end and a distal end;
a rim extending around a perimeter of the proximal end
of the body and projecting proximally from the body, wherein
the rim is dimensioned to receive a distal end of the endoscope
and position the distal end of the endoscope adjacent the
proximal end of the body, and wherein the rim is configured to
extend over and radially outward of the distal end of the
endoscope when the endoscope is received within the rim;
a lumen extending through the body from the proximal
end of the body to the distal end of the body; and
at least one recess extending into the body from the
proximal end and terminating at a position within the body
proximal of the distal end of the body, wherein the at least one
recess is defined by a proximally-facing wall of material
covering an entire distal end of the recess and extending to the
distal end of the body, wherein the material within the wall is
adapted to scatter light throughout the body, and a complete
3
Appeal 2017-011127
Application 13/682,548
cross-section of the body including the proximally-facing wall
consists of a uniform composition of the material.
Appeal Br. 19.
The Appealed Rejections
The following rejections are before us for review:
1. claims 9, 11, 14, 15, 24, 25, 28, 29, and 31, 32, and 34 under
35 U.S.C. § 102(b) (pre-AIA) as anticipated by Hoffman2 or, in the
alternative, under 35 U.S.C. § I03(a) (pre-AIA) as obvious over the same
(Final Act. 2); and
2. claims 12, 13, 26, and 27 under 35 U.S.C. § I03(a) (pre-AIA)
as obvious over Hoffman and Robertson3 (Final Act. 10).
DISCUSSION
Rejection 1
The Examiner rejected claims 9, 11, 14, 15, 24, 25, 28, 29, 31, 32, and
34 as anticipated by, or obvious over, Hoffman. Final Act. 2. Hoffman
discloses an endoscope assembly including a cap. Hoffman ip.
Figure 2 of Hoffman is reproduced below.
2 US 2007 /0066869 Al, published Mar. 22, 2007 ("Hoffman").
3 US 2010/0286475 Al, published Nov. 11, 2010 ("Robertson").
4
Appeal 2017-011127
Application 13/682,548
Figure 2 of Hoffman, reproduced above, shows "a schematic view of
an endoscopic cap" 200. Hoffman ,ri111, 22. The cap includes body 210
with a plurality of channels 201 extending from "first surface 203a"
( corresponding to claim 9 's "distal end") to "second surface 203 b"
(corresponding to claim 9's "proximal end"). Id. ,I23. The cap also includes
"second channel 201b extend[ing] partially through endoscope cap 200." Id.
i-f24. The second channel's sole opening is on the second surface or
proximal end. Id.
"At least a portion of endoscopic cap 200 may be translucent and/or
made of a translucent material." Id. ,I25.
The Examiner found that Hoffman discloses all of the limitations of
claim 9. Final Act. 2--4. Additionally, the Examiner found that the subject
matter of claim 9 would have been obvious over Hoffman, because even if
Hoffman does not disclose "a complete cross-section of the body including
the proximally-facing wall consists of a uniform composition of the
material," as recited in claim 9, such a feature would have been obvious.
Final Act. 4--5.
5
Appeal 2017-011127
Application 13/682,548
Appellants dispute that Hoffman discloses or suggests "a complete
cross-section of the body including the proximally-facing wall consist[ing]
of a uniform composition of the material," as recited in claim 9. Appeal Br.
10-16. Appellants do not dispute that Hoffman teaches all other limitations
of claim 9. Id.
The Examiner found that Hoffman teaches this limitation of claim 9,
citing paragraphs 4, 6, and 24--26 and claim 4 of Hoffman. Final Act. 4. In
particular, the Examiner relied on Hoffman's teachings that "the cap may be
translucent" (i-fi-f 4, 6), "the cap is translucent" ( claim 4 ), that "[ a ]t least a
portion of endoscopic cap 200 may be translucent and/or made of a
translucent material" (i-f25), and that the cap may be made using "injection
molding or machining" (i-f22). See Ans. 12-13. Based on these teachings, as
well as the illustration of the cap in Figure 2 as a single integral component,
the Examiner found that a person of ordinary skill in the art would
understand Hoffman to disclose a cap of uniform translucent material.
Ans. 12.
Appellants argue that the Examiner has failed to establish that
Hoffman inherently teaches "a complete cross-section of the body including
the proximally-facing wall consists of a uniform composition of the
material." Appeal Br. 11-14. Appellants' arguments are inapposite because
the Examiner's rejection did not rely on an inherent teaching. The
Examiner's rejection relied instead on explicit disclosure of Hoffman, which
sufficiently informs the person of ordinary skill in the art of the claimed
feature. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
( anticipatory "reference need not satisfy an ipsissimis verb is test").
6
Appeal 2017-011127
Application 13/682,548
We find no error in the Examiner's finding that Hoffman teaches "a
complete cross-section of the body including the proximally-facing wall
consists of a uniform composition of the material," as recited in claim 9. We
also find no error in the Examiner's determination that such a feature would
have been obvious over the same teachings of Hoffman.
Accordingly, we affirm the rejection of claim 9 as anticipated by, or
obvious over, Hoffman. Claims 11, 14, 15, 24, 2 8, 29, and 31, 3 2, and 34
were not separately argued and thus fall with claim 9. See 37 C.F.R.
§ 4I.37(c)(iv). Although claim 25 was argued separately, it was not argued
on a different basis. See Appeal Br. 17 ("Thus, for the same/similar reasons
as discussed above in regards to claim 9, the Section 102, or, alternatively,
Section 103, rejection of claim 25 based on Hoffman is improper and should
be reversed.").
We affirm Rejection 1.
Rejection 2
The Examiner rejected claims 12, 13, 26, and 27 as obvious over
Hoffman and Robertson.
Appellants argue against this rejection only on the basis that
Robertson fails to cure the purported deficiency in the Examiner's rejection
of base claims 9 and 25. See Appeal Br. 17-18. As discussed above, there
is no such deficiency.
We affirm Rejection 2.
CONCLUSION
For the reasons discussed, we affirm the Examiner's rejections of
claims 9, 11-15, 24--29, 31, 32, and 34.
7
Appeal 2017-011127
Application 13/682,548
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8