Ex Parte Cosmescu

Patent Trial and Appeal Board

Jul 11, 2013

11164712 (P.T.A.B. Jul. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte IOAN COSMESCU
__________

Appeal 2012-000423
Application 11/164,712
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal
1
under 35 U.S.C. § 134 involves claims to a swivel device
that can be attached to the exhaust port of an electro-surgical unit (ESU)
pencil. The Examiner entered rejections for anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Ioan Cosmescu is the real party in interest (App. Br. 2).
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STATEMENT OF THE CASE
“The use of ESU pencils for cutting tissue and coagulating blood
vessels in surgical procedures is well known. When an ESU pencil is used
for cutting or coagulation, smoke is produced” (Spec. ¶ 3).
Appellant‟s invention is directed to a swivel apparatus that connects a
vacuum tube to the exhaust port of an ESU pencil‟s smoke evacuation
system (see id. at ¶ 6). When attached to the ESU pencil, the swivel
apparatus allows the vacuum tube to rotate without twisting the pencil (see
id.).
Claims 1-20 stand rejected and appealed (App. Br. 2). Claims 1 and
20 illustrate the appealed subject matter and read as follows:
1. A swivel device comprising, in combination:
a fixed member capable of removable attachment to an exhaust
port of at least one of an ESU pencil with an integrated smoke
evacuation system or an ESU pencil smoke evacuation shroud
attachment; and
a rotating member coupled to and surrounding at least a portion
of an outer surface of the fixed member for connecting the fixed
member to a vacuum tube and for allowing rotation of the vacuum
tube without rotation of at least one of the ESU pencil with an
integrated smoke evacuation system or the ESU pencil smoke
evacuation shroud attachment.

20. A method for making a swivel-based surgical pencil
comprising the steps of:
a) attaching a distal end of a fixed member to an exhaust port of
at least one of an ESU pencil with an integrated smoke evacuation
system or an ESU pencil smoke evacuation shroud attachment;
b) attaching a proximal end of the fixed member to a distal end
of a rotating member such that the rotating member surrounds at least
a portion of an outer surface of the fixed member; and
c) attaching a proximal end of the rotating member to a distal
end of a vacuum tube.
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The following rejections are before us for review:
(1) Claims 1-19, under 35 U.S.C. § 102(b) as anticipated by
Abramson
2
(Ans. 4-5); and
(2) Claim 20, under 35 U.S.C. § 103(a) as obvious over Olsen
3
and
Abramson (Ans. 5-6).
ANTICIPATION
Appellant argues that the Examiner erred in finding that Abramson
anticipates claim 1 because Appellant‟s claimed device
includes a fixed member attached to a piece of equipment, such
as an exhaust port of at least one of an ESU pencil with an
integrated smoke evacuation system or an ESU pencil smoke
evacuation shroud attachment, and a rotating member coupled
to and surrounding at least a portion of an exterior surface of
the fixed member.

(App. Br. 12; see also Reply Br. 2.)
Thus, Appellant explains, the “fixed member of Appellant‟s claimed
invention does not rotate because it is removably attached to either an
exhaust port of an ESU pencil with an integrated smoke evacuation system
or the exhaust port of an ESU pencil smoke evacuation shroud attachment”
(App. Br. 12).
Appellant argues that, in contrast to having a fixed male member
surrounded by a rotating female member as required by claim 1, Abramson
discloses throughout that, in its device, the “male member freely swivels
inside the female member” (id.; see also Reply Br. 2). Therefore, Appellant

2
U.S. Patent No. 4,152,017 (issued May 1, 1979).
3
U.S. Patent No. 5,055,100 (issued Oct. 8, 1991).
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argues, “element 20 [of Abramson‟s device] is the fixed member, not the
rotating member as argued by the Examiner” (App. Br. 13).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellant‟s arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner‟s prima facie case of anticipation as
to claim 1.
Contrary to Appellant‟s arguments, claim 1 does not require the fixed
member of the claimed device to be actually attached to the exhaust port of
an ESU pencil or an ESU pencil smoke evacuation shroud attachment.
Rather, claim 1 only requires the device‟s fixed member to be “capable of
removable attachment” to such an exhaust port (App. Br. 17 (emphasis
added)).
Thus, while claim 1 uses the term “fixed member” to describe the
element which is coupled to, and is at least partially surrounded by, the
rotating member (see id.), claim 1 does not require the fixed member to be
fixed to anything. Similarly, while claim 1 states that the rotating member is
“for connecting the fixed member to a vacuum tube and for allowing
rotation of the vacuum tube without rotation of at least one of the ESU
pencil” (id.), claim 1 does not actually require the rotating member to be
fixed to a vacuum tube, or to connect the fixed member to the vacuum tube.
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We thus interpret claim 1 as encompassing a swivel device that has a
first element whose outer surface is partially surrounded by a second
element, the first and second elements being rotatable with respect to each
other. The first element must be capable of attachment to the exhaust port of
an ESU pencil or an ESU pencil smoke evacuation shroud attachment. The
second element must be capable of connecting the first element to a vacuum
tube.
Abramson discloses a “swivel type junction fitting for an endotracheal
tube or the like formed of hollow cylindrical male and female members
telescoped together” (Abramson, abstract). Appellant points to no clear or
specific error in the Examiner‟s finding (see Ans. 8-9) that Abramson‟s
swivel type junction is capable of being connected to the exhaust ports
recited in claim 1.
We note, as Appellant argues, that the inner member of Abramson‟s
swivel junction is described as being the rotating element (see Abramson,
col. 2, ll. 9-12 (“Fitted into the recess is a hollow male member 30 having a
first end 31 which freely swivels inside the end 21 of the female member . . .
.”)). However, this disclosure of the rotating relationship between the two
elements actually supports the Examiner‟s finding that the outer element of
Abramson‟s swivel junction would be rotatable about the inner member of
the swivel junction, as required by claim 1, if the inner member were fixedly
attached to an ESU exhaust port.
As our reviewing court‟s predecessor explained, “„[f]unctional‟
terminology may render a claim quite broad . . .[;] a claim employing such
language covers any and all embodiments which perform the recited
function.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (emphasis
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added). Accordingly, a functional limitation directed to an intended method
of use in the body of a product claim does not serve to distinguish the
claimed product from prior art products inherently capable of performing the
claimed function. See In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir.
1997) (holding that a prior art apparatus meeting all claimed structural
limitations was anticipatory because it was inherently capable of performing
the claimed function).
Thus, as Appellant‟s arguments do not persuade us that the Examiner
erred in finding that Abramson‟s swivel junction has all of the features
required by claim 1, we affirm the Examiner‟s anticipation rejection of claim
1 over Abramson.
As they were not argued separately, claims 2-4, 6, 8-14, 16, and 19
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
We also do not find persuasive Appellant‟s argument as to claims 5
and 15 (see App. Br. 13). Claim 5 recites:
5. The apparatus of claim [1 wherein the fixed member
comprises a hollow tubular member having an open distal end and an
open proximal end, and] wherein the hollow tubular member has a
proximal portion that fits precisely within a distal portion of the
rotating member, for preventing lengthwise movement of the fixed
member within the rotating member.

(App. Br. 17.)
As noted above, Abramson‟s swivel junction is “formed of hollow
cylindrical male and female members telescoped together” (Abramson,
abstract). As shown in Abramson‟s Figure 3, and as Appellant concedes
(see App. Br. 13), the inner surface of the outer member 20 of Abramson‟s
swivel junction has a groove 41 that accommodates an annular ridge 53 of
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inner member 30 (see Abramson, Fig. 3). As Abramson explains, when the
inner and outer elements are snapped together, “the ridge 53 click[s] past the
land surface 42, with detent action, into permanent register with the groove
41” (id. at col. 2, ll. 46-47).
Given Abramson‟s disclosure of a cooperating ridge and groove in the
inner and outer elements of its tubular swivel junction that keep the inner
and outer elements in place essentially permanently, Appellant‟s arguments
do not persuade us that the Examiner erred in finding that Abramson‟s
junction device has all of the features required by claim 5. We therefore
affirm the Examiner‟s rejection of claim 5 over Abramson. As Appellant
argued claim 15 in the same grouping as claim 5 (see App. Br. 13), we
affirm the Examiner‟s rejection of claim 15 for the same reasons.
We also do not find persuasive Appellant‟s argument as to claims 7,
17, and 18 (see App. Br. 13-14; see also Reply Br. 2-3). Claim 7 recites:
7. The apparatus of claim [1 wherein the fixed member
comprises a hollow tubular member having an open distal end and an
open proximal end, and] wherein the proximal end has an inverted
surface for creating a virtually airtight connection with an inverted
surface near a lengthwise center of the rotating member when a
vacuum source is applied.

(App. Br. 18.)
Appellant does not point to, nor do we see, any definition of inverted
surface in the Specification. The Specification does, however, identify the
angled surface 26 at the proximal end of the inner member 12 shown in
Appellant‟s Figure 2 as an “inverted proximal end 26” (Spec. ¶ 23; see also
Appellant‟s Figure 2).
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As the Examiner points out (see Ans. 10), Abramson‟s Figures 3 and
4 show Abramson‟s ridge 53 as having an angled portion or “chamfer 54”
(Abramson, col 2, l. 49), similar to that shown in Appellant‟s Figure 2, the
angled portion/chamfer allowing the ridge 53 to be pushed into place in the
groove 41 in the inner surface of the outer member (see id. at col. 2, ll. 48-
66).
As the chamfer 54 on Abramson‟s ridge 53 has the same angled
structure as the inverted surface on the proximal end of the device shown in
Appellant‟s Figure 2, we are not persuaded that the Examiner erred in
finding that the inner member of Abramson‟s swivel junction has an inverted
surface.
Moreover, as Appellant concedes, the groove 41, into which the
chamfered ridge 53 fits “could be considered to be an inverted surface”
(App. Br. 13; see also Reply Br. 3). Further, Abramson discloses that upon
application of pressure to the junction, the groove and ridge interact to
ensure airtightness of the junction:
[A]fter all connections have been made so that a slight pressure
exists in the tube, it is found that the effect of the slight pressure
is to expand the assembly so that the male member 31 moves
outwardly to create a seal S as indicated in FIG. 5 between the
ridge 53 and the outer ledge of the groove 41.

(Abramson, col 3, ll. 32-37.)
Thus, given the interaction between two surfaces which can be
considered inverted surfaces, so as to produce a sealing effect in Abramson‟s
swivel junction device, Appellant‟s arguments do not persuade us that the
Examiner erred in finding that Abramson‟s device has all of the features
required by claim 7. We therefore affirm the Examiner‟s rejection of that
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claim as anticipated by Abramson. As claims 17 and 18 were argued in the
same claim grouping as claim 7 (see App. Br. 13), those claims fall with
claim 7.
OBVIOUSNESS
In rejecting claim 20 as obvious over Olsen and Abramson, the
Examiner found that Olsen described a process having the steps recited in
claim 20 “except for the joint attaching the vacuum tube to the exhaust port
being a fixed member/rotating member swivel connection joint” (Ans. 5).
To address that deficiency, the Examiner cited Abramson as teaching that it
was known in the art “to use this type of swivel connection joint as set forth
in paragraphs at columns 1-3 to provide a swivel fitting to avoid cocking and
binding effects (kinks)” (id.).
Based on the references‟ combined teachings, the Examiner reasoned
that an ordinary artisan would have considered it obvious to “modify the
system as taught by OLSEN with a swivel joint as taught by ABRAMSON
since such a modification would provide the system with a fixed
member/rotating member swivel connection joint for providing a swivel
fitting to avoid cocking and binding effects (kinks)” (id. at 5-6).
Appellant argues that the Examiner failed to make a prima facie case
of obviousness because neither Olsen nor Abramson “recite[s] all of the
claim elements of Appellant‟s claimed invention. Moreover, there is no
suggestion in any of the prior art references cited by the Examiner (or
elsewhere in the prior art) to combine or modify the references to achieve
Appellant‟s claims” (App. Br. 15; see also Reply Br. 3-4).
We again find that Appellant‟s argument is not supported by a
preponderance of the evidence.
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As the Examiner found, Olsen describes a clip-on attachment for a
hand held surgical device that uses an electrode to ablate tissue, the clip-on
attachment “act[ing] to withdraw smoke, fumes or other fluids that may be
produced in the region of . . . the electrode by contact with living tissue”
(Olsen, abstract). As seen in Figure 1 of Olsen, the proximal end of the
smoke-evacuating attachment has an enlargement 42 allowing the
attachment to be connected to a vacuum tube (see id. at Fig 1; also col. 4, ll.
58-60).
While the Examiner conceded that Olsen does not connect the tubing
to the smoke-evacuating attachment by the steps recited in claim 20,
Abramson‟s swivel type fluid coupling is deployed by clicking the male and
female members together in the manner recited in claim 20 (see Abramson,
col. 2, ll 40-47). Moreover, as the Examiner pointed out, Abramson
describes one advantage of its swivel type fluid coupling as the avoidance of
“cocking or binding” in the coupled tubing (Abramson, abstract).
Given these teachings, Appellant‟s arguments do not persuade us that
the Examiner erred in finding that the cited references disclose all the
features of claim 20, nor are we persuaded that the Examiner failed to
advance an adequate art-based rationale for combining the two references‟
teachings. We therefore affirm the Examiner‟s obviousness rejection of
claim 20 over Olsen and Abramson.
SUMMARY
We affirm the Examiner‟s anticipation rejection of claims 1-19 over
Abramson.
We also affirm the Examiner‟s obviousness rejection of claim 20 over
Olsen and Abramson.
Appeal 2012-000423
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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).

AFFIRMED

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