Ex Parte Chin et al

Patent Trial and Appeal Board

Sep 13, 2016

13344545 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,545 01/05/2012
102261 7590 09/15/2016
Vista IP Law Group - Interlace Medical
Nancy Rushton
14375 Saratoga Ave.
Suite 203
Saratoga, CA 95070
FIRST NAMED INVENTOR
Albert Chun-Chi Chin
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.
70.012US 5419
EXAMINER
EASTWOOD, DAVID C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
nnr@viplawgroup.com
Amanda.Callahan@hologic.com
sp@viplawgroup.com
PTOL-90A (Rev. 04/07)
Appeal2014-005481
Application 13/344,545
lJt.rITED STATES PATENT AND TRADE~v1ARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT CHUN-CHI CHIN, MATTHEW JOHN WHITNEY, and
ROY HEWITT SULLIV AN 1
Appeal2014-005481
Application 13/344,545
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert Chun-Chi Chin et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's final rejection of claims 1-20. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Hologic, Inc. is identified as the Real Party in Interest. Appeal Br. 2.
2 Appellants purport to appeal only the rejection of claims 8-19 under
35 U.S.C. § 103(a). Id. at 2, 4. However, pursuant to 37 C.F.R. § 41.3 l(c),
an appeal is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by Appellants and entered
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Application 13/344,545
CLAHv1ED SUBJECT ~v1ATTER
The invention concerns a tissue removal system. Spec., Abstract.
Claim 8 is illustrative of the subject matter on appeal, and recites:
8. A tissue removal system, comprising:
an outer tubular member having a closed distal end and a
tissue resection window proximal to the distal end;
an inner tubular member disposed within the outer tubular
member and configured to rotate and translate axially relative to
the outer tubular member, wherein the resection window is
closed when the inner tubular member is in a distal position
relative to the outer tubular member;
a housing coupled to a proximal end of the outer tubular
member, wherein a proximal end of the inner tubular member is
disposed within, and configured to rotate and translate axially
relative to, the housing;
a reversible motor comprising a rotatable output shaft
operatively coupled to the inner tubular member, such that
rotation of the output shaft in a first direction causes the inner
tubular member to translate axially in a distal direction, and
wherein rotation of the output shaft in a second direction opposite
to the first direction causes the inner tubular member to translate
axially in a proximal direction, wherein the inner tubular member
automatically oscillates axially relative to the outer tubular
member during operation of the tissue removal system;
a first motor control switch disposed within the housing,
wherein the inner tubular member or a structure coupled to the
inner tubular member contacts to thereby actuate the first motor
control switch when the inner tubular member is in a distal
position relative to the housing; and
a second motor control switch disposed external to the
housing and configured for being actuated by a user,
wherein the first and second motor control switches are
operatively coupled to motor control circuitry that is operatively
coupled to the motor, the motor control circuitry configured such
by the Office. No such amendment has been filed or entered. Accordingly,
each ground of rejection presented by the Examiner is before us on appeal.
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Application 13/344,545
that, when the second rnotor control switch is actuated, actuation
of the first motor control switch causes the motor output shaft to
reverse direction, and when the second motor control switch is
not actuated, actuation of the first motor control switch causes
the motor to tum off
Appeal Br. 8 (Claims App.) (emphasis added). Independent claim 13
contains similar limitations, requiring internal and external motor control
switches, "wherein actuating the internal motor control switch causes the
motor to tum off or the motor output shaft to reverse direction of rotation,
depending on whether the external motor control switch is actuated." Id. at
9--10 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. 3
II. Claims 1, 3-8, 10-15, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Thompson (US 2004/0249307 Al, pub. Dec.
9, 2004) and Viola (US 2001/0011156 Al, pub. Aug. 2, 2001). 4
III. Claims 9 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Thompson, Viola, and Burdorff (US 6,428,487 Bl, iss. Aug. 6,
2002).
3 The Examiner indicates claims 2 and 20 would be allowable if rewritten to
overcome this rejection under Section 112, and to include the limitations of
their base claim and any intervening claims. Final Act. 4.
4 Although the heading for this rejection includes claim 2, that claim is not
treated in the body of the rejection, and the Examiner has indicated it to
contain allowable subject matter. See Final Act. 4, 8-19. Accordingly, we
understand this rejection to not include claim 2.
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Application 13/344,545
ANALYSIS
Written Description
As noted above, Appellants request that the Board review only the
rejection of claims 8-19 under 35 U.S.C. § 103(a). Appeal Br. 2, 4; see
supra n.2. However, because an appeal is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment, the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph,
is before us on appeal. 3 7 C.F .R. § 41.31 ( c ).
In view of Appellants' failure to provide any argument directed to this
rejection, we summarily affirm the Examiner's rejection of claims 1-20
under 35 U.S.C. § 112, first paragraph.
Obviousness over Thompson and Viola
Claims 1 and 3-7
As noted above, Appellants request that the Board review only the
rejection of claims 8-19 under 35 U.S.C. § 103(a). Appeal Br. 2, 4; see
supra n.2. However, because an appeal is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment, the
Examiner's rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) as
unpatentable over Thompson and Viola is before us on appeal.
In view of Appellants' failure to provide any argument directed to the
rejection of these claims, we summarily affirm the Examiner's rejection of
claims 1 and 3-7 under 35 U.S.C. § 103(a) as unpatentable over Thompson
and Viola.
Claims 8, 10-15, and 17-19
With respect to independent claims 8 and 13, the Examiner finds that
Thompson discloses a tissue removal system comprising outer tubular
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Application 13/344,545
member 80, resection window 86, inner tubular member 104, housing 50/52,
a reversible motor, and external motor control switch 72 ("rocker switch").
Final Act. 8-10 (regarding claim 1), 13-18 (incorporating, for claims 8 and
13, the findings of fact and conclusions of law made with respect to claim
1 ). The Examiner finds that Thompson discloses that rocker switch 72 is
actuated to control the direction of axial translation of the inner tubular
member. Id. at 9-10. The Examiner finds that Thompson does not disclose
an internal motor control switch disposed within the housing. Id. at 10. The
Examiner finds that Viola discloses internal motor control switch 104/116
disposed within a housing and operatively coupled to a motor such that
structure 88, coupled to inner tubular member 34, contacts and actuates the
switch when the tubular member is translated to a distal position. Id. The
Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of invention to modify the device of Thompson with the
internal motor control switch as disclosed by Viola such that
activation of the internal switch of Viola sends a signal to the
controller as disclosed by Thompson that the cutting tube has
reached the distal end of translational drive shaft . . . to
automatically reverse the direction of the translational drive shaft
of Thompson via signals sent from the switch of Viola ... to the
control unit in order to initiate a signal from the controller to the
motor to either stop or reverse direction which would
automatically reduce strain between the translational shaft 142,
carriage 136 and spring 170 once it reaches the distal end of
threads on the shaft 14 2.
Id. at 10-11. The Examiner states that "the device controllers as disclosed
by Thompson as modified [by] Viola are capable of being programed such
that when the second motor control switch is actuated, actuation of the first
motor control switch causes the motor output shaft to reverse direction, and
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when the second motor control switch is not actuated, actuation of the first
motor control switch causes the motor to tum off and are therefore capable
of performing the functions as claimed." Id. at 15; see also id. at 18.
Appellants contend, inter alia, that the combination of Thompson and
Viola does not render obvious the motor control circuitry of claim 8, which
is "configured such that, when the second motor control switch is actuated,
actuation of the first motor control switch causes the motor output shaft to
reverse direction, and when the second motor control switch is not actuated,
actuation of the first motor control switch causes the motor to tum off."
Appeal Br. 6-7 (also addressing claim 13). Appellants argue that "absent
hindsight ... there is no rationale for programming or otherwise modifying
the motor control circuitry of Thompson and/or Viola" to perform in the
manner required by claims 8 and 13. Id. at 6-7; Reply Br. 2-3.
We are persuaded by Appellants' argument. Thompson discloses a
tissue removal system in which inner tubular member 104 translates in distal
and proximal directions. Thompson i-f 53, Fig. 5. Thompson discloses that
external motor control switch 72 ("rocker switch") is actuated to control this
distal and proximal movement. Id. at i-f 50, Fig. 1. Viola also discloses a
tissue removal system in which inner tubular member 34 translates in distal
and proximal directions. Viola i-f 52. Viola discloses that internal motor
control switch 104 is actuated when inner tubular member 34 is at its distal-
most position. Id. at i-fi-1 50, 61. Specifically, rack 88 is connected to inner
tubular member 34, such that when rack 88 reaches its distal-most position,
it contacts switch 104, causing sensor 116 to send signals to electrical
subassembly 48, which slows rotation of the inner tubular member 34 and
shuts off the vacuum supply. Id. at i-fi-1 50, 61.
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In light of these teachings, even if it would have been obvious to
incorporate Viola's internal switch into Thompson's device, such a
combination would result in a tissue removal system with an external switch
that controls distal and proximal translation of the inner tubular member (see
Thompson i-f 50) and an internal switch that controls rotation of the inner
tubular member and the vacuum supplied to the device (see Viola i-f 61 ).
The Examiner provides no reasoning to explain why it would have been
obvious to program the motor control circuitry of such a combined device
such that actuation of the internal switch (taught by Viola) causes the motor
to tum off or causes the motor output shaft to reverse direction, depending
on whether the external rocker switch (taught by Thompson) is actuated.
See Final Act. 15, 18; Ans. 17-18. Indeed, the Examiner does not provide
adequate reasoning to explain how or why these two separate switches
interact to provide different outcomes depending on the position of the
rocker switch. Furthermore, even if the intended relationship between the
external rocker switch and the internal switch were explained sufficiently,
neither Thompson nor Viola teach turning the motor off, upon actuation of a
switch. As such, the Examiner provides insufficient factual underpinning to
support the conclusion that it would have been obvious to program the
circuitry of the combined device as claimed. Even if motor control circuitry
is capable of being programmed as claimed, this does not demonstrate that it
would have been obvious to have programmed the circuitry in that manner,
without supporting reasoning. See Ans. 17-18.
For these reasons, we reverse the Examiner's rejection of independent
claims 8 and 13, and claims 10-12, 14, 15, and 17-19, which depend
therefrom.
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Application 13/344,545
Obviousness over Thornpson, Viola, and Burdorff
Claims 9 and 16 depend from independent claims 8 and 13. The
Examiner's reliance on Burdorff does not cure the defects discussed above,
with respect to claims 8 and 13. Therefore, we reverse the Examiner's
rejection of claims 9 and 16.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, is
AFFIRMED.
The rejection of claims 1 and 3-7 under 35 U.S.C. § 103(a) is
AFFIRMED.
The rejections of claims 8-19 under 35 U.S.C. § 103(a) are
REVERSED.
AFFIRMED
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