Ex Parte Earley et al

Board of Patent Appeals and Interferences

May 25, 2012

11105329 (B.P.A.I. May. 25, 2012)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
11/105,329 04/13/2005 Earley, Christopher

EXAMINER
FLYNN, THIEL, BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
Peffley, Michael
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE

05/29/2012 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPHER EARLEY and ANDREW HAMEL
__________

Appeal 2010-012272
Application 11/105,329
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-012272
Application 11/105,329

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STATEMENT OF THE CASE
Appellants‟ electrosurgical tool is said to solve several problems in the
art. One problem is the undesirable generation of bubbles which form on the
surface of the tool or probe tip which can interfere with the surgeon‟s view of
the surgical site. (See Spec. 2.) Another problem associated with minimally
invasive surgical techniques is providing tools which are as small as possible.
(See id. at 3.) Another problem is the structure “of the suction tube can cause
convective cooling at the periphery of the electrode, which can result in the
inability to rapidly ablate tissue.” (Id. at 4.)
The configuration of the claimed electrosurgical tool addresses these
problems by providing “a suction tube defining both a conduit for fluid
aspiration and an electrically conductive pathway to an active electrode
disposed at the distal end of the tool.” (Id. at 5.)
Appellants‟ claim 1 is representative and reads as follows:
1. An electrosurgical tool comprising:
a housing disposed at and defining a proximal end of said
tool; and
a lumen assembly projecting from a distal end of said
housing and including an elongated outer shaft defining a
hollow interior, a distal end of said outer shaft comprising
an electrically conductive material and defining a return
electrode, a suction conduit defined within said outer shaft
and in communication with a suction source, a suction tube
disposed within said hollow interior of said outer shaft and
defining a conduit therein forming part of said suction
conduit, said suction tube comprising an electrically
conductive material and being connected to a source of
electrical energy, an electrode element comprising an
electrically conductive material and having a distal end
defining an active, energy-delivering electrode at a distal
end of said lumen assembly and an electrically conductive
proximal end, and an insulator disposed between said return
Appeal 2010-012272
Application 11/105,329

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electrode and said active electrode, said proximal end of said
electrode element and an electrically conductive distal end of
said suction tube defining respective connectors which
cooperate to define a connection area directly between said
electrode element and said suction tube, said connection area
electrically connecting said electrode element to said suction
tube such that said suction tube delivers electrical energy to
said active electrode.

Cited References

The Examiner relies on the following prior art references:

Goble et al. US 6,482,202 B1 Nov. 19, 2002
Mulier et al. („487) US 6,764,487 B2 Jul. 20, 2004
Carmel et al. US 2005/0065510 A1 Mar. 24, 2005

Grounds of Rejection
 Claims 1, 2, 5-17, 19-24 and 32-36 are rejected under 35 U.S.C.
§ 103(a) for obviousness over Goble in view of Mulier.
 Claims 15-17, 19-24 and 35-36 are rejected under 35 U.S.C. §
103(a) for obviousness over Mulier in view of Goble.
 Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) for
obviousness over Goble in view of Mulier and Carmel.
 Claims 18 and 25 are rejected under 35 U.S.C. § 103(a) for
obviousness over Mulier in view of Goble and Carmel.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 3-
12.

Appeal 2010-012272
Application 11/105,329

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Discussion
ISSUE
The Examiner concludes that Goble teaches each element claimed
except delivering energy through a suction tube to the electrode. The
Examiner relies on Mulier to make up for this deficiency. The Examiner
concludes that
[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to modify the device of Goble such that the
suction tube is used as a means for delivering energy through a
connection area to the electrode, as disclosed in Mulier, as an
alternative to using lead (26) for the delivery of energy to the
electrode.

(Ans. 4.)

Appellants argue that the output of irrigation fluid is critical to the
Mulier „487 device and “the teaching of a conductive tube in Mulier „487 is
not related to usage of a conductive tube as a suction tube.” (App. Br. 11.)
Appellants argue that the “devices in Goble and Mulier are significantly
structurally different from one another such that modifying Goble in the
manner indicated … would certainly not have been obvious, and appears to
be the result of an improper hindsight analysis.” (Id. at 12.)
The issue is: Does the combination of Goble and Mulier (or Mulier
and Goble) support the Examiner‟s rejection of the claims for obviousness?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
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Application 11/105,329

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argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness 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)).
Under § 103, “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, it still
requires showing that “there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” (Id.) “We must still
be careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references
would be combined to produce the claimed invention.” Innogenetics, N.V. v.
Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

ANALYSIS
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Application 11/105,329

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Finding the above issue dispositive, we address all rejections
together. We do not find that the Examiner has provided evidence in the
prior art to support a prima facie case of obviousness.
Appellants argue that the output of irrigation fluid is critical to the
Mulier „487 device and “the teaching of a conductive tube” for irrigation
fluid in Mulier „487 “is not related to usage of a conductive tube as a suction
tube.” (App. Br. 11.) Appellants argue that Mulier „487 incorporates by
reference U.S. Patent No. 6,063,081 („081) which “additionally provides a
suction tube … to allow smoke or excess fluid to be removed from the
surgical fluid.” (Id. at 9.) This suction tube is non-conductive and is “about
the periphery of the conductive tube … [t]hus, the „081 patent does not
provide suction at the electrode tip.” (Id. at 10.) In sum, Appellants argue
that the “devices in Goble and Mulier are significantly structurally different
from one another such that modifying Goble in the manner indicated …
would certainly not have been obvious, and appears to be the result of an
improper hindsight analysis.” (Id. at 12.)
We are persuaded by Appellants‟ arguments. What is missing from
the Examiner‟s analysis is a showing that there was an apparent reason to
combine the known elements of Goble and Mulier in the fashion claimed.
For example,
In Mulier '487, the direction of fluid flow through the conductive tube
16 is outward from the distal tip of the electrode. Mulier '487 relies on
fluid flow through the electrode tip 14 disposed at the distal end of the
conductive tube 16 to prevent the tip from getting dirty and causing
burning or perforations. This fluid flow outwardly from the electrode
tip acts as a “virtual electrode.”

(Reply Br. 4.)
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Application 11/105,329

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“In Goble '202, the electrode tip, instead, provides a suction path
therethrough.” (Id. at 5.) “Appellants do not believe providing the
conductive tube of Mulier '487 in Goble '202 would result in the use of one
less electrical connector or lead” because if the lumen tube of Goble were
replaced with the conductive tube of Mulier „487, then the copper conductor
of Goble would still need to be connected to the conductive tube. (Id.)
The Examiner has not explained why one of ordinary skill in the art
would have found that the configuration of the conductive flow tube of the
virtual electrode of Mulier „487, would have suggested rewiring and use of a
conductive suction tube in an electrocautery device. In this instance we
agree with Appellants that the Examiner has impermissibly engaged in
hindsight reconstruction of Appellants‟ claimed invention, and has not
provided a reason why one of ordinary skill in the art would have combined
the cited art, as claimed.

CONCLUSION OF LAW
The cited references do not support the Examiner‟s obviousness
rejections and the rejections are reversed.

REVERSED
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