Ex Parte Eicoff

Board of Patent Appeals and Interferences

Mar 27, 2012

11409782 (B.P.A.I. Mar. 27, 2012)

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.
11/409,782 04/24/2006 Jeffrey A. Eicoff BIR-P-06-001 4173
7590 03/27/2012
PATENTS+TMS
A Professional Corporation
2849 W. Armitage Ave.
Chicago, IL 60647
EXAMINER
TYSON, MELANIE RUANO
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/27/2012 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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY A. EICOFF
____________

Appeal 2010-003786
Application 11/409,782
Technology Center 3700
____________

Before STEVEN D.A. MCCARTHY, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1-14. Claims 15-20 were withdrawn. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM.
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THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. An apparatus for cleaning a body orifice, the
apparatus comprising:
a body having a length defined between a first end and a
second end wherein the body has a diameter at the first end of
the body wherein the body has a maximum diameter located at
a first point between the first end of the body and the second
end of the body wherein the body is hollow;
a tip having a first portion and a second portion wherein
the second portion has a length defined between a distal end
and a proximal end wherein the distal end of the second portion
is positioned within the body at the first end of the body
wherein the second portion has a maximum diameter located at
a second point between the distal end of the second portion and
the proximal end of the second portion wherein the maximum
diameter of the second portion is less than the diameter of the
body at the first end of the body and further wherein the first
portion is integrally formed with the second portion wherein the
first portion has a length defined between a first side and a
second side wherein the second side of the first portion is
adjacent to the proximal end of the second portion wherein the
first portion has a diameter that varies between the first side of
the first portion and the second side of the first portion wherein
the first portion has a maximum diameter located at a third
point between the first side of the first portion and the second
side of the first portion wherein the maximum diameter of the
first portion is greater than the maximum diameter of the
second portion and the maximum diameter of the body wherein
the diameter of the first portion parabolically decreases along
the length of the first portion from the third point to the first
side of the first portion and from the third point to the second
side of the first portion; and
a plurality of protrusions that extend outward from the
first portion of the tip.
Appeal 2010-003786
Application 11/409,782

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REJECTIONS1
Claims 1 and 3-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christoudias (US 6,391,040 B1; iss. May 21, 2002) and
Smith (US 5,711,759; iss. Jan. 27, 1998).
Claims 2 and 9-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christoudias, Smith, and Millner (US 5,766,193; iss. Jun.
16, 1998).
ISSUES
Does Christoudias disclose a second portion integrally formed with a
first portion wherein the second portion has a maximum diameter that is less
than the diameter of the body at the first end as called for in claim 1?
Do the combined teachings of Christoudias, Smith, and Millner render
obvious a tip with a peripheral surface and a first protrusion defined by a
first perimeter that abuts the peripheral surface and a second protrusion
defined by a second perimeter that abuts the peripheral surface wherein the
second perimeter is greater than the first perimeter as called for in claim 9?
ANALYSIS
Claims 1 and 3-8 as obvious over Christoudias and Smith
Claim 1
The Examiner found that Christoudias discloses a cleaning apparatus
with a body 3, parabolically-shaped tip 1, and threaded connector 7 but lacks
a plurality of integral protrusions extending from a first portion of the tip as
called for in claim 1. Ans. 3-4. The Examiner found that Smith discloses a
cleaning apparatus with a plurality of integral protrusions extending from a

1 The Examiner withdrew the rejection of claims 1-8 under 35 U.S.C. § 112,
second paragraph, as being indefinite. See Ans. 2.
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first portion of a tip. Ans. 4. The Examiner determined that it would have
been obvious to include Smith’s protrusions on Christoudias because both
devices are used to clean tissue in a body orifice and the combination would
achieve predictable results of providing an improved apparatus that would
optimize cleanliness. Ans. 4, 6.
Appellant argues that neither reference discloses a second portion
integrally formed with a first portion wherein the second portion has a
maximum diameter that is less than the diameter of the body at the first end
of the body as called for in claim 1. App. Br. 12, 13, 15. Appellant argues
that Christoudias teaches a cylindrical frame 8 with a maximum diameter
that is greater than the diameter of a recess 5 that has a sufficient diameter
and receptor threads 6 to accommodate the attaching screw 7 of dissector 1
and not the frame 8. App. Br. 12. This argument is not persuasive because
it does not address the Examiner’s findings that Christoudias discloses a
parabolically-shaped dissector 1 with a second portion (frame 8) integrally
formed with a first portion (plastic mesh 9) and having a maximum diameter
that is less than a diameter of the body (main stem 3) at the first end of the
body. Ans. 3, 5. The diameter of the frame 8 is less than the diameter of the
body/main stem 3 so that the frame 8 can be inserted in the main stem 3 as
shown in Figure 1 of Christoudias. Appellant’s argument that Smith fails to
teach a second portion formed integrally with a first portion (App. Br. 12-
13) is not persuasive because the Examiner relied on Christoudias to disclose
this feature (Ans. 3). Christoudias discloses a solid or tubular instrument
with a frame 8 and a plastic mesh tip 9 that is molded onto the working end
of the frame 8 (col. 2, ll. 28-43) to overcome the problem of prior art mesh
gauze balls that can escape from an instrument (col. 1, ll. 56-62). We agree
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with the Examiner that the plastic mesh tip 1 is formed integrally with frame
8 as called for in claim 1.2 See In re Morris, 127 F.3d 1048, 1055-56 (Fed.
Cir. 1997) (absent express definition in the specification, it is reasonable to
interpret “integral” to cover more than a unitary construction); In re Hotte,
475 F.2d 644, 647 (CCPA 1973) (“‘integral’ is sufficiently broad to embrace
constructions united by such means as fastening and welding.”); Advanced
Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074 (Fed. Cir.
1989) (nothing of record limited “integral” to “of one-piece” construction).
Appellant also argues that there is no reason to combine Christoudias
and Smith in the manner suggested by the Examiner (App. Br. 14) and the
apparatus of claim 1 would not have been obvious to a skilled artisan in light
of the teachings of Christoudias and Smith (App. Br. 15). These arguments
do not persuade us of error in the Examiner’s findings or conclusion of
obviousness that Christoudias and Smith disclose devices for cleaning tissue
in a body orifice and adding protrusions to Christoudias would provide an
improved apparatus that would optimize cleanliness. Ans. 4, 6.
Appellant further argues that Christoudias teaches away from having
outwardly-extending protrusions because such protrusions would impede the
ability to dissect, wipe and or clean tissue during endoscopic surgery. App.
Br. 13. Appellant also asserts that Christoudias teaches that the dissector 1
is insertable through a standard endoscopic port and adding protrusions may

2 The Examiner’s interpretation is consistent with the ordinary, customary
meaning of “integral” which includes “formed as a unit with another part”
(see MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY 650 (11th ed. 2005))
and Appellant’s Specification, which discloses that the base 10 may be
integrally formed with the tip 8 (Spec. 6, ll. 28-31; 7, ll. 15-16). See App.
Br. 3-4 (citing Spec. 6, ll. 28-31 and Fig. 2 as support for this limitation).
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inhibit a surgeon’s ability to insert the dissector 1 through an endoscopic
port. App. Br. 13. Appellant further contends that Christoudias teaches that
there is a limit on the dimensions of an instrument and prior art mesh gauze
ball that can pass through a standard endoscopic port. Reply Br. 4.
Appellant asserts that protrusions on the dissector of Christoudias would
impede passage of the dissector through a standard endoscopic port and
increase chances of snagging the dissector on a standard endoscopic port
during insertion or removal. Reply Br. 5, 6. These attorney arguments do
not adequately explain how the prior art’s problem with mesh gauze balls
criticizes, discredits, or discourages pursuit of the claimed subject matter.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). The Examiner reasonably found that adding
protrusions to Christoudias enhances the ability of the device to dissect and
clean tissues (see Smith, col. 2, ll. 11-35) and a surgeon can choose an
appropriate endoscope port size for a device with protrusions. See Ans. 5.
Claim 3
The Examiner found that Christoudias discloses a threaded connector
(screw 7) at the distal end of the second portion (frame 8) as called for in
claim 3. Ans. 6 (citing Fig. 1a). Appellant’s argument that the screw 7 is
located beyond the frame at a distal end of the attaching screw 7 (App. Br.
16) does not persuade us of error in the Examiner’s finding that the threaded
connector (screw 7) is at a distal end of frame 8 (see Figs. 1, 1a) as claimed.
Claim 4
The Examiner found that Smith discloses protrusions 28/30, 44/46
that vary in height as called for in claim 4. Ans. 6 (citing Figs. 3, 7).
Appellant argues that Smith merely teaches a taller nodule 28 and a smaller
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nodule 30 arranged on a nodule support surface 10 in alternating sequence.
App. Br. 17. Appellant has not persuaded us of error in the Examiner’s
findings, which are consistent with the plain language of claim 4 and
Appellant’s Specification, which discloses small protrusions 20 extending
outward a small distance 22 from the surface 18 of the tip 8 and large
protrusions 24 extending a large distance 26 from the surface 18 of the tip 8.
Spec. 7, ll. 19-23; fig. 2; see Smith, col. 4, ll. 30-37 (nodules vary in height).
Claim 5
The Examiner found that Christoudias discloses a threaded connector
(receptor threads 6) within the first end of the body 3 as called for in claim 5.
Ans. 6-7. Appellant argues that Christoudias teaches receptor threads 6 at an
intermediate position of the main stem 3. App. Br. 18. This argument is not
persuasive because Christoudias discloses receptor threads 6 at a first end of
the main stem 3 opposite a second end/handle 4 (see Figs. 1, 1a) as claimed.
Claim 6
The Examiner found that Christoudias discloses a hollow first portion
in Figures 3-6. Ans. 7. Appellant argues that Christoudias teaches a frame
21 with a central lumen rather than a hollow first portion. App. Br. 18-19.
Appellant has not persuaded us of error in the Examiner’s findings, which
are consistent with the plain language of claim 63 and Appellant’s
Specification, which discloses that “[t]he base 10 of the tip 8 may be hollow
(not shown).” See Spec. 6, ll. 21.

3 An ordinary, customary meaning of “hollow” includes “an unfilled space:
cavity, hole.” See MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY 593
(11th ed. 2005).
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Claim 7
The Examiner found that Christoudias discloses a second portion
(frame 8) that is cylindrical as called for in claim 7. Ans. 7. Appellant
argues that Christoudias does not disclose a cylindrical frame 8 between the
proximal and distal ends of the second portion because the distal end of the
frame 8 is not visible under the plastic mesh dissector 1. App. Br. 19. This
argument is not persuasive because the Examiner identified a portion of the
frame 8 that is cylindrical and is situated between a distal end (screw 7) and
a proximal end of the plastic mesh dissector 1 (see Figs. 1, 1a) as claimed.
Claim 8
The Examiner found that Smith discloses protrusions 12, 28, 30, 44,
46 that are integrally formed with a first portion as shown in cross-sectional
views of Figures 3, 5, and 7. Ans. 7. Appellant argues that Smith teaches a
plurality of nodules 12 extending from and supported by a nodule support
surface 10. App. Br. 20 (citing col. 3, ll. 56-58). This argument does not
persuade us of error in the Examiner’s finding because Smith's nodules
extend integrally from a support surface (see Figures 3, 5, and 7) as claimed.
Claims 2 and 9-14 as obvious over Christoudias, Smith, and Millner
The Examiner found that Christoudias and Smith disclose all the
features of independent claim 9 except a third protrusion separated from a
second protrusion by a distance that is greater than a distance between the
second protrusion and a first protrusion. Ans. 4. The Examiner found that
Millner discloses this feature in a device for cleaning a body orifice (mouth)
and determined that it would have been obvious to form such protrusions as
an obvious matter of design choice because Appellant has not disclosed any
advantage or purpose to this well-known, claimed arrangement. Ans. 4-5.
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Appellant argues that none of the references discloses a first
protrusion defining a first perimeter on the peripheral surface of the tip and a
second protrusion defining a second perimeter on the peripheral surface of
the tip that is greater than the first perimeter. App. Br. 23-24. This
argument is not persuasive because Smith discloses smaller nodules 30 and
larger nodules 28 that form perimeters on the nodule support surface 10 of
different diameters as shown in Figure 2 and 3. Figure 3 is a cross-sectional
view taken through the circular nodules of Figure 2. Smith, col. 3, ll. 28-29.
Claim 10
The Examiner found that Christoudias discloses threads on an external
surface of the body (screw 7) as called for in claim 10. Ans. 6, 8. Appellant
argues that the attaching screw 7 is located beyond the frame 8 and not on an
external surface of the plastic mesh dissector 1. App. Br. 27. This argument
is not persuasive of error because the Examiner’s findings are consistent
with claim 10 when interpreted in light of Appellant’s Specification, which
discloses that the tip 8 may have a threaded base 14. Spec. 7, ll. 1-3; fig. 2.
Appellant cites this portion of the Specification as support for claim 10. See
App. Br. 6 (“Dependent Claim 10 requires threads on the external surface of
the body.” (Page 7, lines 1-3 and Fig. 2.).”
Claim 11
The Examiner found that Christoudias discloses an external surface of
the base (frame 8) with no protrusions as called for in claim 11. Ans. 6, 8.
Appellant argues that Christoudias has an attaching screw 7 that protrudes
from the frame 8. App. Br. 27. This argument does not persuade us of error
in the Examiner’s findings, which characterize the screw 7 as a threaded
connector and rely on Smith for a disclosure of protrusions. Ans. 4, 6.
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Claim 12
The Examiner found that Smith discloses protrusions 44/46 of varying
shape as called for in claim 12. Ans. 8. Appellant argues that Smith teaches
a taller nodule 28 and a smaller nodule 30 on a nodule support surface 10.
App. Br. 28. This argument does not persuade us of error in the Examiner’s
findings, which are consistent with the plain language of claim 12 and
Appellant’s Specification, which discloses small protrusions 20 and large
protrusions 24 extending from a surface 18 of tip 8. Spec. 7, ll. 19-23.
Claim 13
The Examiner found that Smith discloses protrusions on a peripheral
surface of the body (28/30, 44/46) that vary in size as called for in claim 13.
Ans. 8 (citing figs. 3, 7). Appellant argues that Smith teaches a taller nodule
28 and a smaller nodule 30 on a nodule support surface 10 but does not teach
nodules that vary in size. App. Br. 29. This argument is not persuasive of
error in the Examiner’s findings which are consistent with the plain language
of claim 13 and Appellant’s Specification as discussed supra for claim 12.
Claim 14
The Examiner found that Smith discloses protrusions that are formed
integrally with the body as called for in claim 14. Ans. 7, 9. Appellant
argues that Smith teaches nodules 12 extending from and supported by a
nodule support surface 10. App. Br. 30. This argument is not persuasive of
error in the Examiner’s findings for the reasons discussed supra for claim 8.
CONCLUSION
Christoudias discloses a second portion integrally formed with a first
portion wherein the second portion has a maximum diameter that is less than
the diameter of the body at the first end as called for in claim 1.
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Application 11/409,782

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The combined teachings of Christoudias, Smith, and Millner render
obvious a tip with a peripheral surface and a first protrusion defined by a
first perimeter that abuts the peripheral surface and a second protrusion
defined by a second perimeter that abuts the peripheral surface wherein the
second perimeter is greater than the first perimeter as called for in claim 9.
DECISION
The rejection of claims 1 and 3-8 under 35 U.S.C. § 103(a) as being
unpatentable over Christoudias and Smith is AFFIRMED.
The rejection of claims 2 and 9-14 under 35 U.S.C. § 103(a) as being
unpatentable over Christoudias, Smith, and Millner 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)(1)(iv).

AFFIRMED

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