Ex Parte DePond

Patent Trials and Appeals Board

May 9, 2019

12925575 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/925,575 10/25/2010
23464 7590 05/13/2019
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Robert Todd DePond
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.
503 3700
EXAMINER
WEISBERG, AMY REGINA
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT TODD DEPOND
Appeal2017-008665
Application 12/925,575 1
Technology Center 3700
Before LINDA E. HORNER, STEP AN ST AI CO VICI, and
EDWARD A. BROWN, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1 and 2. Final Office Action (July 26, 2016,
"Final Act."). Appellant's representative presented arguments at an oral
hearing on April 25, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected the claims as failing to comply with the written
description requirement and as being anticipated by the prior art. Appellant
1 Appellant identifies West Virginia University as the real party in interest.
Corrected Appeal Brief (February 22, 2017, "Appeal Br.") 1.
Appeal2017-008665
Application 12/925,575
contests these rejections. For the reasons explained below, we find that the
written description adequately supports the claimed subject matter. We also
find that the prior art discloses all the elements of the claims.
Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a clamping device for
clamping tissue that provides a smooth bulbous form on the distal surface of
the clamp. Specification (October 25, 2010, "Spec.") ,r,r 6, 9. Claim 1 is the
sole independent claim and is reproduced below.
1. A clamp for gripping viscera comprising
a first arm having a first proximal handle and a first distal
tissue engaging member, wherein said first distal tissue
engaging member is extended distally and has a bulbous tip
having a smooth surface, and wherein said first arm has a
length,
a second arm having a second proximal handle and a
second distal tissue engaging member, wherein said second
distal tissue engaging member is extended distally and has a
non-bulbous tip, and wherein said second arm has a length, and
wherein said first distal tissue engaging member and said
second distal tissue engaging member are disposed towards
each other,
a pivot interconnecting said first arm and said second
arm, wherein said first distal tissue engaging member and said
second distal tissue engaging member extend distally from said
pivot, and
a locking means having a first portion attached to said
first arm and a second portion attached to said second arm
wherein said first portion of said locking means and said second
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Application 12/925,575
portion of said locking means are interengaged when said first
arm and said second arm are in a clamping engagement,
wherein said first distal tissue engaging member and said
second distal tissue engaging member are in contact along the
entire length of said first arm and said second arm distal to said
pivot when said first and second arms are in said clamping
engagement, and
wherein said bulbous tip of said first arm extends beyond
said non-bulbous tip of said second arm when said first and
second arms are in said clamping engagement, and
wherein said bulbous tip of said first arm extends above
and below and on either side of said non-bulbous tip of said
second arm when said first and said second arms are in said
clamping engagement, and
wherein said bulbous tip covers said non-bulbous tip
when said first and said second arms are in said clamping
engagement, and
wherein a distal surface of the engaged clamp is the
smooth surface of the bulbous tip.
Appeal Br. 13-14 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Gimpelson (US 5,922,008, issued July 13, 1999).
ANALYSIS
Written Description
The Examiner found that the limitation "wherein said bulbous tip of
said first arm extends above and below and on either side of said
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Application 12/925,575
non-bulbous tip" in claim 1 does not have support in the original disclosure.
Final Act. 3--4 (finding that the views provided in the Figures cannot show
the full extent of the edges of the bulbous tip of the first arm vis-a-vis the
non-bulbous tip of the second arm). Appellant contends that the description
of the bulbous tip provided in Appellant's Specification conveys with
reasonable clarity to one skilled in the art that the inventor had possession of
the claimed subject matter at the time of filing the Application. Appeal
Br. 5-6 ( citing Spec. ,r 9).
We agree with Appellant that the description in the Specification
provides adequate written description support for the claim limitation at
issue. Paragraph 9 of Appellant's Specification describes that the bulbous
tip "protrudes such that it covers the distal tip of arm 1 thereby preventing
the non-bulbous distal tip of arm 1 from contact with tissue when the clamp
is in the engaged position." Paragraph 9 further describes that "[t]he distal
surface of the engaged clamp is therefore the smooth bulbous form 11 at the
distal end of arm 2." For the bulbous tip to "cover" the non-bulbous distal
tip to prevent the non-bulbous distal tip from contact with tissue, we
understand the Specification to describe that the bulbous tip completely
covers, i.e., protrudes distally of, the non-bulbous tip on the top, bottom, and
each side of the non-bulbous tip. The claim limitation at issue is described
with reasonable clarity in the Specification to convey that the inventor had
possession of the claimed subject matter at the time of filing of the
application. Thus, we do not sustain the rejection of claims 1 and 2 under
35 U.S.C. § 112, first paragraph.
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Application 12/925,575
Anticipation
The Examiner found that Gimpelson discloses a clamp containing
each claim element including a bulbous tip (34) on one arm that extends
above and below and on either side of a non-bulbous tip on another arm and
covers the non-bulbous tip when the arms are in clamping engagement.
Final Act. 4-6 ( citing Gimpelson 3 :26-43). The Examiner found that Figure
1 of Gimpelson shows the non-bulbous tip much narrower than the bulbous
tip such that the bulbous tip extends on either side of the non-bulbous tip,
and Figure 3 of Gimpelson shows in the plan view that the bulbous tip
extends above and below the non-bulbous tip. Id. at 7; Examiner's Answer
(March 21, 2017, "Ans.") 7.
Appellant argues that Gimpelson's projection 34 extends at a
90 degree angle from, and is the same width as, lower jaw 22, and "in no
way resembles a bulbous shape." Appeal Br. 9. 2 Appellant further argues
that nothing in Gimpelson shows or suggests projection 34 extending below
each side of upper jaw 20 and, thus, Gimpelson's device cannot provide a
smooth distal surface of the clamp when the clamp arms are engaged. Id. at
10. Appellant also argues that the Examiner failed to consider Figure 2 of
Gimpelson, which shows that projection 34 does not extend on either side of
jaw 20, such that the device cannot provide a smooth distal surface of the
clamp when the clamp arms are engaged. Reply Brief (May 19, 2017,
"Reply Br.") 6-7.
2 Appellant's ordinary definition of "bulbous" includes "resembling a bulb
especially in roundness or the gross enlargement of a part" and an ordinary
definition of "bulb" includes "a rounded enlargement." Appeal Br. 6.
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Appeal2017-008665
Application 12/925,575
We begin with an interpretation of "bulbous tip." Appellant's
Specification describes that "[t]he bulbous tip is any shape on the end which
provides a smooth surface for the distal end of the clamp when engaged."
Spec. ,r 8 ( emphasis added). Thus, the Specification does not appear to limit
the "bulbous tip" to a shape necessarily "resembling a bulb," as Appellant
contends. In other words, although we agree with Appellant that the bulbous
tip can be rounded in order to provide a smooth surface for the distal end of
the clamp when engaged, we do not agree that the Specification necessarily
requires that the bulbous tip is enlarged or in the shape of a traditional
incandescent light bulb in order to be bulbous. Rather, we understand
"bulbous tip" in light of the Specification to be of a shape that is large
enough to provide a smooth surface for the distal end of the clamp when
engaged.
Figures 1, 3, and 4 of Gimpelson are reproduced below.
~:{] FIG 3
F/G.4
Figure 1 is a perspective view of a surgical forceps in use clamping a broad
ligament. Gimpelson 2:23-25. Figure 3 is a plan view of the surgical
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Application 12/925,575
forceps of Figure 1, and Figure 4 is a detail view taken along line 4-4 in
Figure 3. Id. at 2:29-32. Gimpelson describes that forceps 10 is constructed
from a pair of elongate arms 12, 14 that are pivotally connected to each
other. Id. at 2:52-56. Forceps 10 has jaws 20, 22 at the distal ends of arms
12, 14, respectively. Id. at 2:59-62. Gimpelson describes that jaws 20, 22
are "of uneven length with a projection 34 on longer jaw 22 starting
immediately at the end and extending above shorter jaw 20 when the jaws
are closed." Id. at 3:27-30. Gimpelson describes that end 36 of projection
34 is a guide for determining that the vascular tissue to be clamped is within
forceps 10 as a compressive force is applied. Id. at 3:30-33. "Projection 34
can be circular in cross-section or can have some other geometric shape, for
example, triangular, concave on a face opposing shorter jaw 20 for
complementary receipt of the distal end thereof, etc." Id. at 3:40-43.
As shown in the Figures above, end 36 of projection 34 is rounded.
As noted above, Gimpelson explicitly discloses that projection 34 extends
above and receives jaw 20 when the jaws are closed. Gimpelson also
describes that projection 34 can be circular in cross-section, which would
provide a rounded, i.e., bulbous tip, such that a distal surface of the engaged
clamp is the smooth surface of the bulbous tip. Also, projection 34 is
depicted in Figures 1 and 3 as longer and wider than the distal end of jaw 20,
such that when jaws 20 and 22 are in clamped engagement, projection 34
extends above and below and on either side of the distal tip of jaw 20. Thus,
Gimpelson discloses a clamp that anticipates the clamp of claim 1 including
a first arm with a bulbous tip (projection 34) having a smooth surface and a
second arm having a non-bulbous tip, wherein, when the arms are in
clamped engagement, the bulbous tip extends above and below and on either
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Application 12/925,575
side of the non-bulbous tip and covers the non-bulbous tip such that the
distal surface of the engaged clamp is the smooth surface of the bulbous tip.
Appellant's argument about Gimpelson's Figure 2 does not identify
error in the Examiner's reliance on the embodiment of Figures 1, 3 and 4 of
Gimpelson. Gimpelson describes that Figure 2 is "a detail, in plan and on an
enlarged scale, [view] showing the distal end of a second surgical forceps in
accordance with the present invention." Gimpelson 2:25-27 ( emphasis
added). Thus, Figure 2 shows a second surgical forceps embodiment, which
is different from the first surgical forceps of Figures 1, 3, and 4. Id. at 3:47-
50 Uuxtaposing gripping surface 32 of the second embodiment, which is
provided with rat-tooth 44, and gripping surface 32 of the first embodiment,
which is serrated 42). The Examiner relies on the embodiment depicted in
Figures 1, 3, and 4 and its accompanying description for finding that
Gimpelson anticipates claim 1. Final Act. 5 ( citing Gimpelson 3 :26-43 and
describing the embodiment of Figures 1, 3, and 4); Ans. 7 (discussing same
embodiment). Thus, Appellant has not identified error in the Examiner's
finding that Gimpel son's disclosure anticipates claim 1. Thus, we sustain
the rejection of claim 1 under 35 U.S.C. § 102(b ).
Appellant does not present separate arguments for the patentability of
dependent claim 2 over Gimpelson. Thus, claim 2 falls with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
Because we sustain the anticipation rejection of claims 1 and 2, the
decision of the Examiner of unpatentability is affirmed.
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)(l )(iv).
AFFIRMED
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