Ex Parte Cosmescu

Patent Trials and Appeals Board

Jan 31, 2019

14198877 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/198,877 03/06/2014 loan Cosmescu
95996 7590 02/04/2019
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
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.
30359.3100 3564
EXAMINER
FOWLER, DANIEL WAYNE
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
lzemanmullen@zmfiplaw.com
ktopolewski@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IOAN COSMESCU1
Appeal2018-004431
Application 14/198, 877
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
loan Cosmescu ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, LC. Medical Inc., which the Appeal Brief
identifies as the real party in interest. Appeal Br. 2.
Appeal2018-004431
Application 14/198, 877
CLAIMED SUBJECT MATTER
The claims are directed to an argon beam assisted electrosurgery
pencil with smoke evacuation. Spec. ,r 2. Claims 1, 8, and 15 are
independent. Claim 1, reproduced below, with emphasis added, is
illustrative of the claimed subject matter:
1. A surgical pencil comprising:
a handpiece having a conduit contained therein and at least
one electrical contact element;
a hollow tubular member comprised of a conducting
material wherein said hollow tubular member is concentrically
contained within said conduit such that it extends along an entire
length of said handpiece and such that there is a space between
an inner circumference of said handpiece and an outer
circumference of said hollow tubular member along an entire
length of said handpiece, and said at least one electrical contact
element is in contact with said hollow tubular member;
an electrode connected to said hollow tubular member;
means for connecting an energy source to said at least one
electrical contact;
means for providing a coagulating material supply to said
hollow tubular member; and
means for supplying a vacuum to said space between said
handpiece and said hollow tubular member.
Appeal Br. 14 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cosmescu
"Cosmescu '125"
Cosmescu
"Cosmescu '539"
US 6,458,125 Bl Oct. 1, 2002
US 2009/0018539 Al Jan. 15, 2009
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Appeal2018-004431
Application 14/198, 877
REJECTIONS
I. Claims 1, 3-6, 8, 10-13, 15, 16, 18, and 19 are rejected under
35 U.S.C. § 102(a)(l) as anticipated by Cosmescu '125
II. Claims 2, 9, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Cosmescu '125 and Cosmescu '539.
III. Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Cosmescu '125.
OPINION
Rejection I
Appellant argues that Cosmescu '125 does not anticipate claim 1
because "conductive hollow tubular member 105 does not extend along the
entire length of the handpiece 122." Appeal Br. 9. Appellant asserts that
because Cosmescu '125 refers to element 122 as a "handpiece," the
Examiner cannot define that element "as something that is different than
what the patentee defined or disclosed as the same element," and cannot
"arbitrarily broaden the definition" of that element. Appeal Br. 1 O; see also
Reply Br. 2--4.
The Examiner replies that the term "handpiece is not recognized by
the prior art to have any specific qualities other than it is grasped by a hand."
Ans. 2. The Examiner concludes the proffered definition is "its plain
meaning," and that "the definition has not been 'arbitrarily broadened'
because ( 1) the change in definition is not arbitrary, being one of many
reasonable definitions of 'handpiece,' and (2) the definition has not been
broadened, merely changed to another that falls within the general scope of
the term." Ans. 3.
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Appeal2018-004431
Application 14/198, 877
Although we agree with the Examiner that a handpiece is an element
that is grasped by a hand, the Examiner does not explain adequately how a
user would grasp the pencil apparatus of Cosmescu '125 so that hollow
tubular member 105 extends over the entire portion being grasped. That is,
it appears that the Examiner arbitrarily chooses a portion of the pencil
apparatus being grabbed, but does not provide objective evidence or
persuasive technical reasoning to support that any particular portion grasped
by the hand is a handpiece consistent with how one of ordinary skill in the
art would construe the term handpiece. Here, the pencil apparatus 121 of
Cosmescu '125 having handpiece 122 and hollow tubular member 105 is
depicted in Figure 5 of Cosmescu '125, reproduced below.
Figure 5 of Cosmescu '125 is a cross-sectional view of an ESU-argon
beam coagulator pencil apparatus. Cosmescu '125, col. 5, 11. 45--4 7.
In describing the pencil apparatus, Cosmescu '125 discloses that the
outside of the handpiece has two hand switches 104 and 150 that
respectively regulate the supply of RF energy and the flow of argon to the
inlet port 162. Cosmescu '125, col. 8, 11. 29-33. Cosmescu '125 does not,
however, disclose the specific length of the apparatus. Nonetheless, in order
for a user to operate both switches 104 and 150 during a surgical operation, a
reasonable interpretation of the placement of the user's hand with respect to
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Appeal2018-004431
Application 14/198, 877
the switches would require the switches to be spaced so that the user could
comfortably reach both switches with the user's thumb, and with the user's
hand to the right of switch 150, in Figure 5 above. Based on this
interpretation and the relative size of an average user's hand, a fair reading
ofCosmescu '125 is that the user's hand would grasp the device about
where the lead line for element 122 is located.
In view of this, one of ordinary skill the art would understand that
Cosmescu '125 fairly discloses that the portion being grasped by the hand
includes part of the surgical pencil that includes hatching extending at an
angle from the upper-right to lower-left at 103 and part of the surgical pencil
that includes hatching extending from the upper-left to lower-right near 113
of Figure 5, which does not include hollow tubular member 105 therein.
This is consistent with the disclosure of Cosmescu '125, specifically Figure
5, which depicts element 122 that is labeled "handpiece 122" as that portion
of the surgical device without cross-hatching that extends from below
reference numeral 105 to reference numeral 114. Thus, although we agree
with the Examiner's definition of a handpiece as that portion grasped by a
hand, implicit in that definition is the requirement that when the user grasps
the apparatus, the user can use the apparatus in its intended manner.
Because the Examiner has not adequately established that the user would or
could grasp the apparatus in the location suggested by the Examiner and still
operate the device as intended, the Examiner has not adequately established
that hollow tubular member 105 of Cosmescu '125 extends along an entire
length of the handpiece.
Accordingly, we do not sustain the Examiner's rejection of claim 1
and claims 3---6 depending from claim 1 as anticipated by Cosmescu '125.
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Appeal2018-004431
Application 14/198, 877
The Examiner relies on the same findings and reasoning for the rejection of
independent claims 8 and 15. See Final Act. 2-3. Appellant advances the
same arguments for claims 8 and 15. See Appeal Br. 9-10. For the same
reasons discussed above for claim 1, we also do not sustain the Examiner's
rejection of claims 8 and 15 and of claims 10-13 depending from claim 8
and of claims 16, 18, and 19 depending from claim 15.
Rejections II and III
The Examiner does not rely on Cosmescu '539 and the modification
of Cosmescu '125 in any way that would remedy the deficiency in Rejection
(I) discussed above. See Final Act. 4--5. Accordingly, we reverse the
rejection of claims 2, 9, and 17 as unpatentable over Cosmescu '125 and
Cosmescu '539, and reverse the rejection of claims 7, 14, and 20 as
unpatentable over Cosmescu '125.
DECISION
I. The Examiner's decision to reject claims 1, 3-6, 8, 10-13, 15,
16, 18, and 19 as anticipated by Cosmescu '125 is reversed.
II. The Examiner's decision to reject claims 2, 9, and 17 as
unpatentable over Cosmescu '125 and Cosmescu '539 is reversed.
III. The Examiner's decision to reject claims 7, 14, and 20 as
unpatentable over Cosmescu '125 is reversed.
REVERSED
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