Ex Parte Conston et al

Patent Trial and Appeal Board

Dec 17, 2012

10496254 (P.T.A.B. Dec. 17, 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.
10/496,254 05/20/2004 Stanley R Conston 336-1074US 7842
23429 7590 12/18/2012
GREGORY SMITH & ASSOCIATES
3900 NEWPARK MALL ROAD, 3RD FLOOR
NEWARK, CA 94560
EXAMINER
SHUMATE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/18/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STANLEY R. CONSTON and RONALD K. YAMAMOTO
____________

Appeal 2011-011758
Application 10/496,254
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 4, 17-21, and 24
(App. Br. 3).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a microcannula based microsurgical system
designed to operate within a tissue tract of the eye. Claim 1 is representative
and is reproduced in the Claims Appendix of Appellants’ Brief.

1
Pending “[c]laims 2, 3, 5-16, 22, and 23 … [stand] withdrawn from
consideration” (App. Br. 3).
Appeal 2011-011758
Application 10/496,254

2
Claims 1, 4, 17-21, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schaaf.
2

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. For clarity, we reproduce Schaaf’s FIG. 1 below:

“FIG. 1 is a schematic illustration of a device with an endoscope and a
probe for carrying out microsurgery on an eye” (Schaaf 1: ¶ [0011]).
FF 2. Schaaf suggests
[A] microcannula-based surgical system comprising a flexible
tubular outer sheath (30), a proximal connector (25) for the
introduction of materials and tools, an inner member (35) with a
proximal end and distal tip (36) wherein the tip is restricted
from advancement past a predetermined length from the outer

2
Schaaf et al., US 2001/0053873 A1, published December 20, 2001.

Appeal 2011-011758
Application 10/496,254

3
sheath … [and] the inner member fits slidably within the outer
sheath.

(Ans. 4.)
FF 3. Examiner finds that Schaaf does “not explicitly teach or disclose a
microcannula having an outer sheath having a diameter of less than 250
micrometers,” but instead suggests a probe having a width of about 2.41 mm
(2,410 micrometers) (id. at 5; Schaaf 4: ¶[0055]).
FF 4. Examiner relies on FIBER OPTICS3 as evidence that “it was known
that optical fibers could have a diameter as small as 8.3-10 microns,
allowing multiple fibers to be included in the probe of the size claimed” (id.
at 6).
FF 5. For clarity, we reproduce Schaaf’s FIG. 3A below:

“FIG. 3A is a sectional top view of a part of the probe [30] configured in the
shape of a hollow needle and having an optical channel [43] and a working
channel [33],” wherein a “guide tube 34 and a surgical tool 35 [e.g., a knife]
… are disposed in [the] working channel” (Schaaf 1: ¶ [0013] and ¶ [0048];
see generally Ans. 5-6).

3
FIBER OPTICS a Tutorial,
http://replay.waybackmachine.org/19980112190725/http://www.arcelect.co
m/fibercable.htm, accessed April 15, 2011.
Appeal 2011-011758
Application 10/496,254

4
ANALYSIS
Based on Schaaf Examiner concludes that, at the time Appellants’
invention was made, it would have been prima facie obvious to “to vary the
size of a surgical tool (such as making it smaller) … [to] reduce[] the
amount of trauma and degree of invasiveness of a procedure” (Ans. 5).
Examiner reasons that Schaaf’s “device requires only that the optical fibers
pass into the probe portion,” therefore, “the diameter of the optical fibers …
is the limiting factor” (id. at 5-6). In this regard, Examiner asserts “that as
early as 1998, it was known that optical fibers could have a diameter as
small as 8.3-10 microns, allowing multiple fibers to be included in the probe
of the size claimed” (id.; see FF 4). We are not persuaded.
Initially, we agree with Examiner that a presumption of obviousness
may exist when a claimed and a prior art device differ only in size. Gardner
v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984); In re Rose, 220 F.2d
459 (CCPA 1955). This, however, is not the case before us on this record.
Instead, the claimed device on this record comprises, inter alia, (1) a flexible
tubular outer sheath with an outer diameter of 0.250 mm or less and (2) an
inner member sized to slidably fit within the outer sheath (Claim 1). In
contrast, the prior art device, Schaaf’s probe, has a diameter of 2.41 mm
“having an optical channel [43] and a working channel [33]” (FF 3 and 5).
According to Examiner, since optical fibers could have a diameter as small
as 8.3-10 microns, the optical channel of Schaaf’s device could be reduced
in size (Ans. 6). This reasoning does not, however, address the size of the
remaining elements of Schaaf’s probe, e.g., the working channel 33 and the
elements disposed within this channel (see FF 5; Cf. Ans. 6). Stated
differently, the Examiner proposes to change one component of the Schaaf’s
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Application 10/496,254

5
probe (i.e. optical channel 43) but not other components. Therefore, even if
a probe consisting of a single optical fiber channel may be configured to
have a diameter of 0.250 mm or less, Examiner failed to establish that by
reducing the diameter of Schaaf’s optical channel 43, the resulting probe
will have a diameter of 0.250 mm or less, which is “an entire order of
magnitude” smaller than Schaaf’s 2.41 mm diameter probe (see generally
App. Br. 8-9).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1, 4, 17-21, and 24 under
35 U.S.C. § 103(a) as unpatentable over Schaaf is reversed.

REVERSED

cdc