Ex Parte Chin et al

Board of Patent Appeals and Interferences

Apr 19, 2012

11297786 (B.P.A.I. Apr. 19, 2012)

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.
11/297,786 12/08/2005 Yem Chin 10121/04701 3068
30636 7590 04/19/2012
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
STIGELL, THEODORE J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
04/19/2012 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 YEM CHIN, PAUL SCOPTON, and ROBERT DEVRIES
__________

Appeal 2010-011997
Application 11/297,786
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
endoscopic instrument and a method of forming a needle for use in
endoscopic procedures. The Patent Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Claims 1-3, 6-15 and 18-24 are on appeal. Claims 1 and 13 are
representative and read as follows:
Appeal 2010-011997
Application 11/297,786

2
1. An endoscopic instrument comprising:
a first flexible insertion member sized for insertion through a body
lumen to a target site; and
a needle coupled to the insertion member for penetration of tissue, the
needle including a plurality of flexibility enhancing grooves formed therein
along at least a first portion of the length of the needle, wherein at least one
of the grooves comprises a first needle wall thickness that is less than a
second needle wall thickness at a portion of the needle in which the grooves
are absent, the first needle wall thickness at the at least one of the grooves
preventing fluidic communication between a bore of the needle and the at
least one of the grooves, and wherein each of the grooves extends around
only a part of a circumference of the needle so that midpoints of the groove
extend along a substantially helical path.

13. A method of forming a needle for use in endoscopic procedures
comprising:
fabricating a needle of a material having a first stiffness;
forming a plurality of grooves in at least a first portion of the needle to
increase the flexibility of the first portion, wherein at least one of the
grooves comprises a first needle wall thickness that is less than a second
needle wall thickness at a portion of the needle in which the grooves are
absent, the first needle wall thickness at the at least one of the grooves
preventing fluidic communication between a bore of the needle and the at
least one of the grooves, and wherein each of the grooves extends around
only a part of a circumference of the needle so that midpoints of the groove
extend along a substantially helical path.

The Examiner rejected the claims as follows:
• claims 1, 3, 6-9, 11, 12, 21 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Bates,1 Donadio,2 and Kerby;3

1 Patent Application Publication No. US 2004/0133124 A1 by Brian L.
Bates et al., published Jul. 8, 2004.
2 US Patent No. 5,741,429 issued to James V. Donadio, III et al., Apr. 21,
1998.

Appeal 2010-011997
Application 11/297,786

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• claims 1, 2 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Mark,4 Donadio, and Kerby;
• claims 13-15 and 18-20 under 35 U.S.C. § 103(a) as unpatentable
over Sennett,5 Donadio, and Kerby;
• claims 22 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Bates, Sennett, Donadio, Kerby, and Hilgers.6

OBVIOUSNESS
For each of the rejections, the Examiner’s relied on Kerby as teaching
a plurality of apertures 44, i.e., grooves, being partially circumferenced
around the shaft of a medical device with midpoints extending along a
substantially helical path. (Ans. 5)(citing Kerby Fig. 1).
Appellants contend that Kerby’s Figure 1 “shows only a single side
plan view such that it is inherently impossible to determine whether the
midpoints of the apertures extend along a substantially helical path and no
such path is described or suggested therein.” (App. Br. 9.)
In the Response to Argument, the Examiner asserts that “a plurality of
grooves can be selected such that their midpoints extend along a
substantially helical path.” (Ans. 12)(Emphasis added). However,

3 Patent Application Publication No. US 2006/0264904 A1 by Walter Lynn
Kerby et al., published Nov. 23, 2006.
4 Patent Application Publication No. US 2003/0208136 A1 by Joseph L.
Mark et al., published Nov. 6, 2003.
5 Patent Application Publication No. US 2005/0216018 A1 by Andrew R.
Sennett, published Sep. 29, 2005.
6 Patent No. US 6, 702,791 B1 issued to Michael Edward Hilgers et al., Mar.
9, 2004.

Appeal 2010-011997
Application 11/297,786

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independent claims 1 and 13 require that “each of the grooves extends
around only a part of a circumference of the needle so that midpoints of the
groove extend along a substantially helical path.” (App. Br. 13, 15, Claims
App’x)(Emphasis added). In other words, the midpoint of each groove must
extend along a substantially helical path, rather than the midpoint of only
some selected grooves. Consequently, the Examiner has not established that
Kerby taught or suggested grooves extending as recited in the claims.
Accordingly we reverse each of the obviousness rejections.

REVERSED

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