Ex Parte Cuschieri et al

Patent Trial and Appeal Board

Jun 23, 2016

11452521 (P.T.A.B. Jun. 23, 2016)

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.
11/452,521 06/14/2006 Alfred Cuschieri 04182-P0009A 3074
131672 7590 06/23/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
LOUIS, RICHARD G
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
06/23/2016 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 ALFRED CUSCHIERI,
TIMOTHY GRAHAM FRANK, and STUART I. BROWN
________________

Appeal 2014-001542
Application 11/452,521
Technology Center 3700
________________

Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Alfred Cuschieri et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 4, and 5.1 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a medical instrument. Spec. ¶ 1.
Claim 1 is illustrative of the claims on appeal and is reproduced below.

1 An oral hearing was conducted on June 16, 2016.
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1. A medical gripping and/or cutting instrument with a shaft
having on its distal end a tool consisting of at least two jaw
members and on its proximal end a handle consisting of two
gripping members, namely a first gripping member for
supporting a thenar and a second gripping member for being
encompassed by remaining fingers opposite to the thenar, the
gripping members of the handle are coupled to a push-pull rod
for actuating the jaw members of the tool, with both gripping
members of the handle being pivotable with respect to each
other, and wherein at least one jaw member of the tool, for
opening and closing, can be displaced with respect to the other
jaw member by means of the pivotable configured gripping
members of the handle by means of the push-pull rod which is
coupled with the pivotable gripping members via swivel levers,
and wherein the second gripping member of the handle is of
bipartite construction, consisting of a rigid portion and a rotatable
portion, in such a way that the rotatable portion can rotate at least
partially around the rigid portion, distinguished in that the
rotatable portion is configured on said second gripping member
for being encompassed by remaining fingers opposite to the
thenar and in that at least two gripping indentations are
configured on the rotatable portion of the second gripping
member for being encompassed by the remaining fingers
opposite to the thenar and in that the rotatable portion of said
second gripping member of the handle can rotate around the
longitudinal axis of this gripping member, in such a way that the
position of this gripping member on an operator’s palm surface
is modified in order to relieve a hand that does the holding.
Appeal Br. 18.2
REFERENCES RELIED ON BY THE EXAMINER
Li US 5,575,805 Nov. 19, 1996
Parlowski US 5,659,959 Aug. 26, 1997
Szabo US 2005/0119692 A1 June 2, 2005

2 One online dictionary defines “thenar” as “1. the palm of the hand 2. the
fleshy area of the palm at the base of the thumb.” Collins (2016)
http://www.collinsdictionary.com/dictionary/english/thenar (last visited June
19, 2016).
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THE REJECTION ON APPEAL
Claims 1, 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Szabo, Li, and Parlowski.

ANALYSIS
The Examiner finds that Szabo, in combination with Li as proposed
by the Examiner, teaches most of the features recited in independent claim 1.
See Final Act. 2–3. We reproduce Figure 2 of Szabo, cited by the Examiner,
below.

Figure 2 of Szabo depicts a medical instrument with detachable grips
installed. See Szabo ¶¶ 38, 43.
The Examiner relies on Parlowski to teach a second gripping member
that comprises a rotatable grip portion overlying a rigid grip portion. Final
Act. 3. The Examiner finds that Parlowski, in column 1, teaches that
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ergonomic benefits result from providing a rotatable outer grip on a handle,
and the Examiner reasons that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the second
gripping member of Szabo such that it comprises the rotatable bipartite grip
member 24 taught by Parlowski in order to achieve these ergonomic
benefits.” Final Act 3.
Appellants argue that Parlowski “would have actually led one skilled
in the art away from providing a rotatable gripping member on the second
gripping member which is encompassed by the four remaining fingers and
that the first gripping member for supporting the thenar is configured rigid
[sic].” Appeal Br. 14. In this regard, Appellants state, “Parlowski is
directed to a shears having a rotatable handle, which Parlowski explicitly
and repeatedly teaches is to be grasped by the thumb while the remaining
fingers are received by an oval shaped aperture in a second handle.” Appeal
Br. 14. After quoting various portions of Parlowski describing the rotatable
handle in use with the upper part of the hand, near the thumb, and the
benefits of this arrangement in Parlowski’s device (see Appeal Br. 14–16),
Appellants state, “Parlowski explicitly recognizes that it is a critical factor
that the handle to be grasped by the thumb rotates,” and Appellants argue
that it would not have been obvious to “construct shears having the handle to
be grasped by the fingers [be] rotatable” because Parlowski teaches away
from such a configuration (Appeal Br. 16).
In response, the Examiner states:
The examiner respectfully disagrees that Parlowski
explicitly recognizes it is critical that the handle to be grasp by
the thumb rotates. Parlowski does not disclose having a rotatable
grip encompassed by remaining fingers opposite the thenar is
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undesirable or would render the tool inoperable, and the
examiner respectfully submits there is nothing inherent about
any of the references of record or [Appellants’] disclosure which
would suggest such a conclusion.
Ans. 6–7. The Examiner also states that Appellants’ arguments relate to the
intended use of the claimed device, and “Parlowski discloses a rotatable
gripping member capable of being held by the fingers opposite the thenar.”
Ans. 4–5.
Appellants contend that there is a structural difference in the claimed
rotatable portion on the second gripping member inasmuch as “gripping
indentations are configured on the rotatable portion of the second gripping
member for being encompassed by the remaining fingers opposite to the
thenar” (Reply Br. 2), and “[t]he exact holding and guiding of the rotatable
second gripping member is improved by the gripping indentations which are
configured on the rotatable portion of the second gripping member, wherein
these indentations are configured as depressions for one or more fingers”
(Reply Br. 3).
We are not persuaded by Appellants’ arguments on these points.
“When a piece of prior art ‘suggests that the line of development flowing
from the reference’s disclosure is unlikely to be productive of the result
sought by the applicant’ the piece of prior art is said to ‘teach away’ from
the claimed invention.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 53 (Fed. Cir.
1994)). In Medichem, however, the Federal Circuit further explained:
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine. See
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[Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000)] (“The fact that the motivating benefit comes at
the expense of another benefit, however, should not nullify its
use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). Where the prior art
contains “apparently conflicting” teachings (i.e., where some
references teach the combination and others teach away from it)
each reference must be considered “for its power to suggest
solutions to an artisan of ordinary skill . . . consider[ing] the
degree to which one reference might accurately discredit
another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
Id.
Parlowski discusses the use of a rotatable handle or lever on
shears, stating, for example:
In an effort to increase the comfort to a user and allow the
user to more easily cut an object, shears have been developed
with a fixed upper lever engageable with a user’s thumb and a
freely rotatable bottom lever so that as the two levers are brought
together to cut an object, the bottom lever rotates and the fingers
engaged therewith naturally roll over so that a not quite-closed
fist is formed with the thumb that is engaged with the fixed upper
lever.
Although these shears are more comfortable to use,
extended and prolonged use can still cause a user to develop a
repetitive motion disorder because the shears still require a user’s
fingers to pull the bottom lever upward to the top lever.
Parlowski, col. 1, ll. 25–38 (emphasis added). Thus, Parlowski describes
shears with rotatable finger grips as more comfortable to use than shears
without such grips, i.e., Parlowski discloses rotatable finger grips as
providing at least one advantage. Parlowski then goes on to discuss some
disadvantages of this arrangement and the placement of the rotatable portion
on the upper grip rather than the lower grip as an improvement upon such
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known shears. See, e.g., Parlowski, col. 1, ll. 38–48; col. 5, ll. 9–19.
Weighing the benefits, lost and gained, of the Examiner’s modification to
Szabo, we disagree with Appellants’ argument that Parlowski would have
led a person away from such a modification. Rather, the Examiner’s
rationale for modifying Szabo (to achieve the ergonomic benefits taught by
Parlowski) is supported by rational underpinnings, as evidenced by
Parlowski’s discussion in column 1 quoted above, and, the advantages
provided by Parlowski’s improvement to prior art gripping members do not
make the Examiner’s proposed combination improper.
As for Appellants’ assertion that claim 1 recites a structural difference
(based on the requirement for at least two gripping indentions on the
rotatable portion) between the first and second gripping members (see Reply
Br. 2–3), the Examiner finds that Szabo discloses an indentation on both of
its gripping members. Final Act. 4. The Examiner reasons that it would
have been obvious to provide a second indentation to increase comfort when
gripping with multiple fingers. Final Act. 4. Appellants do not persuasively
explain why the Examiner’s findings or reasoning on this point are incorrect.
See Appeal Br. 10–17. Thus, Appellants arguments do not address the
Examiner’s proposed combination of Szabo, Li, and Parlowski inasmuch as
the recited gripping indentations are accounted for by the Examiner as part
of the Examiner’s proposed modification to Szabo. See Final Act. 4.
Appellants next assert that Parlowski’s rotatable member “makes it
difficult to guide an instrument in an exact operating position because, when
pressing the gripping members towards each other, the rotatable portion will
occur [sic] with movement of the thenar and therewith a pivotable
movement of the whole instrument.” Appeal Br. 16. We do not find this
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argument to be persuasive. Appellants do not persuasively explain why the
Examiner’s proposed combination of Szabo and Parlowski would have the
problem alleged to exist in Parlowski. Indeed, Appellants provide no
persuasive technical argument or objective evidence that such a problem
exists in Parlowski, even before combination with Szabo.
Appellants next argue that, “[s]ince the gripping member of the
Parlowski reference for being encompassed by the remaining fingers
opposite to the thenar is constructed as a closed ring with an oval aperture
for receiving the remaining fingers opposite to the thenar, one of ordinary
skill in the art would find no hint in the cited references how to modify this
gripping member for being partially rotatable.” Appeal Br. 16 (emphasis
added); see also Reply Br. 4 (discussing the oval shaped aperture in
Parlowski’s handle and arguing that the Examiner did not consider the prior
art as a whole).
We do not find this argument to be persuasive. As discussed above,
Parlowski explicitly states that providing a rotatable portion on the grip held
by the fingers provides an ergonomic benefit. See Parlowski, col. 1, ll. 25–
33. Thus, Parlowski not only provides a hint of an arrangement in which the
portion of the grip used by the fingers is rotatable, Parlowski expressly
discusses the merits of this arrangement. In any event, the Examiner’s
proposed modification is to the medical device disclosed in Szabo, not to the
device disclosed in Parlowski. See Final Act. 2–4. Accordingly,
Appellants’ argument on this point does not address the Examiner’s
proposed combination of the prior art.
We have considered all of Appellants’ arguments for the patentability
of claim 1, but we find them to be unpersuasive. Accordingly, we sustain
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the Examiner’s rejection of claim 1. Appellants do not make separate
arguments for the patentability of dependent claims 4 and 5. Accordingly,
these claims fall with independent claim 1. See 37 C.F.R. 41.37(c)(1)(iv)
(2015).

DECISION
We affirm the Examiner’s rejection of claims 1, 4, and 5 as
unpatentable over Szabo, Li, and Parlowski.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED