Ex Parte Diemunsch et al

Patent Trial and Appeal Board

Sep 17, 2013

11038325 (P.T.A.B. Sep. 17, 2013)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PIERRE DIEMUNSCH and PAVEL NOVAK
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Appeal 2012-001821
Application 11/038,325
Technology Center 3700
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Before ERIC GRIMES, JOHN G. NEW, and SHERIDAN K. SNEDDEN,
Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 1-7 and 9-21. The
Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as Storz Endoskop
Produktions GmbH. (App. Br. 2).
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Application 11/038,325

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STATEMENT OF THE CASE
Claims 1 and 17 are illustrative of the appealed subject matter and
read as follows (emphasis added):
1. An apparatus for insufflating a body cavity with an
insufflation gas, comprising
- an insufflation device, having
- a delivery line for delivering an insufflation gas to a body
cavity, and
- a withdrawal line for withdrawing a measuring gas from
the body cavity; and
- a measuring device for measuring an additional substance
contained in said measuring gas in addition to said insufflation
gas and for outputting a measuring signal as a function of said
additional substance, wherein said measuring device comprises
a gas sensor designed to detect a compound selected from the
group consisting of methane (CH4), nitrous oxide (N2O) and
mixtures thereof.

17. A method for measuring a state of an insufflation gas
comprising the following steps:
- providing an insufflation gas for delivery to a body cavity
by an insufflation device,
- providing a measuring gas withdrawn from said body
cavity for a measuring device by said insufflation device,
- measuring an additional substance contained in said
measuring gas in addition to said insufflation gas, and
- outputting a measuring signal as a function of said
additional substance, wherein said additional substance is
selected from the group consisting of methane (CH4), nitrous
oxide (N2O) and mixtures thereof.

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The sole rejection before us for review is the Examiner’s rejection of
claims 1-7 and 9-21 under 35 U.S.C. 103(a) as being unpatentable over
Koninckx ‘478,2 Koninckx ‘687,3 Garrison,4 and Drzewiecki.5
OPINION
Issue
The Examiner finds that “the prior art of record discloses a gas sensor
associated with measuring gas from a withdrawal line” (Ans.10).
Specifically, the Examiner finds as follows:
[Koninckx ‘478] discloses a withdrawal line (gas exhaust tube,
28). On that withdrawal line a control unit can be placed
between the exhaust (28) and coupling (30) as indicated in
figure 1. It is understood that the control unit is designed for
measuring gas in some capacity (c[ol.]2, l[ines]28-33). Garrison
further discloses a monitoring device (26) comprising a gas
sensor (134). The monitoring device comprise sensor lines (13)
which may be sample lines that withdraw gas from the thoracic
cavity and are sampled outside the body. Therefore, it is
understood that the gas sensor is associated with a withdrawal
line. Koninckz [sic] (‘687) teaches that nitrous oxide or air or
like gases have been tested for use as a distending medium for
laparoscopic surgery, but they are highly combustible and can
be dangerous in presence of cautery [0069 and 0081] so it is
known in the art that these gases are a factor in medical
procedures requiring insufflation of body cavities. Furthermore,
Drzewiecki teaches the use of multiple medical gas monitors to
continuously measure inspired and exhaled concentrations of
respiratory gases (c1, l50-52) inclusive of nitrous oxide (c8,l50-
56). The multiple medical gas monitors are configured to

2 Koninckx et al. (US 5,139,478, issued Aug. 18, 1992)
3 Koninckx (US 2002/0183687 A1, published Dec. 5, 2002)
4 Garrison et al. (US 6,645,197 B1, issued Nov. 11, 2003)
5 Drzewiecki (US 6,305,212 B1, issued Oct. 23, 2001)
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measure nitrous oxide using IR absorption technology including
spectrometers (c2, l38-43 and 58-65).
(Id. at 9-10.)
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the
device of [Koninckx ‘478] with the gas sensor as taught by Garrison
designed to detect various gases in view of the teachings of Koninckz (‘678)
[sic, Koninckx ‘687] disclosing that it is common for nitrous oxide and
similar gases to be present and potentially combustible during laproscopic
[sic] surgery and to further modify the combination with the gas analyzer as
taught by Drzewiecki to monitor and verify the identity of gasses at a source
or point of delivery and to further alert a clinician of abnormalities in the gas
delivery system” (Ans. 6).
Appellants contend that “Koninckx (478), Garrison et al., and
Drzewiecki[,]contain no teaching related to methane and nitrous oxide used
as or in the context of insufflation gases” and that the “sole teaching in the
cited references with respect to methane and nitrous oxide would lead one of
ordinary skill in the art to seek to avoid any introduction of these gases into
the body” (Reply Br. 3). Specifically, Appellants contend that “[b]ecause
Koninckx (687) discloses only that explosive gases are sometimes
intentionally introduced as insufflation gases via the delivery line, it would
have been illogical for one of ordinary skill in the art to include a gas sensor
on the withdrawal line of the system of Koninckx (478) if he or she intended
to prevent explosive gases from building up at the surgical site” (id. at 7-8).
“[B]y measuring whether N2O is present in gases withdrawn from a body
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cavity it would be too late, as a dangerous situation might have already
arisen” (id. at 8).
The issue presented is: Does the evidence of record support the
Examiner’s finding that the cited prior art teaches or suggests a device or
method for measuring nitrous oxide on a withdrawal line of an insufflation
system?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Koninckx ‘478 discloses an insufflation system having “[a]
control unit 42 for the gas supply flow . . . arranged between the multi-way
tap 21 and the coupling 22” and “a control unit 43 for the gas discharge flow
. . . arranged between the exhaust 28 and the coupling 30” (Koninckx ‘478 at
col. 4, ll. 12-13).
FF2. Koninckx ‘478 discloses that
the control unit 42 functions as a first sensing means for
sensing gas supply flow in the gas delivery line, the control
unit 43 functions as a second sensing means for sensing gas
discharge flow in the gas exhaust tube 28, and the control
unit 44 functions as a feedback means for supplying an
output signal indicative of the difference between the sensed
gas supply and discharge flows. By this means a regulation
of the gas supply flow is possible, or alternatively an alarm
signal can be given when there is an inadequate gas
supply/discharge flow.
(Id. at col. 4, ll. 18-27.)
FF3. Koninckx ‘478 discloses that, “[a]s the insufflation gas, any gas
which is currently used, such as nitrous oxide, air, carbon dioxide, gas with a
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specific composition, or mixtures thereof, is suitable” (id. at col. 2, ll. 61-
63).
FF4. Koninckx ‘687 discloses “a method of treating or preventing
adhesion formation following a surgical procedure” (Koninckx ‘687,
abstract). “The invention relates also to a novel endoscopic insufflation
system with supplying means for O2” (id. at ¶ [0027]).
FF5. Koninckx ‘687 discloses as follows:
Laparoscopic surgery requires a pneumoperitoneum to
provide adequate space to work. CO2 gas is the most common
distending medium in laparoscopic surgery because its high
solubility and exchange rate in the lungs. CO2 absorbed across
the peritoneal surface can cause systematic effects such as
respiratory acidosis, hypercarbia and arrhytmia [sic]. Locally,
CO2 induces severe acidosis and some anoxemia in the
peritoneal surface. These disadvantages of CO2
pneumoperitoneum have led investigators to look for other
gases. Nitrous oxide and air have been tested but they can be
dangerous in presence of cautery. Gasless laparoscopy is
another alternative. The disadvantage is a more difficult
surgical procedure, since the visceras can interfere with a good
visualization. Helium is nonexplosive, inert and nontoxic but is
expensive. Our data suggest that the addition of oxygen is
useful in the preventing of adhesion formation.
(Id. at 5, ¶ [0081]; emphasis added.)
FF6. Koninckx ‘687 discloses that “[n]itrous oxide or air have been
used but they are potentially combustible or explosive in presence of
cautery” (id. at 4, ¶ [0069]).

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Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). “[O]bviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
Analysis
Koninckx ‘478 suggests that nitrous oxide can be used as an
insufflation gas and discusses measuring gas discharge flow. We agree with
Appellants, however, that the Examiner does not adequately explain why a
person of ordinary skill in the art would have modified the prior art
references to detect nitrous oxide on the withdrawal line as an additional
substance contained in a measuring gas. Because the rejection did not
resolve this difference between the claims and the combined prior art
teachings, it must be reversed. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).

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Application 11/038,325

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SUMMARY
We reverse the rejection on appeal.

REVERSED

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