Ex Parte Fassuliotis et al

Patent Trial and Appeal Board

Feb 26, 2013

11586824 (P.T.A.B. Feb. 26, 2013)

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.
11/586,824 10/25/2006 Thomas M. Fassuliotis ST001 1400
87598 7590 02/26/2013
Morgan Law Offices, PLC
4635 S. Lakeshore Dr. Suite 131
Tempe, AZ 85282
EXAMINER
THOMAS, JR, BRADLEY G
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/26/2013 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 THOMAS M. FASSULIOTIS, GINGER E. LOWERY, and
JOHN D. WITZIGREUTER
__________

Appeal 2011 -007545
Application 11/586,824
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a surgical suction instrument. The Patent Examiner
rejected the claims for obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
Appeal 2011-007545
Application 11/586,824

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STATEMENT OF THE CASE
Claims 1, 7-10, 12, and 14 are on appeal. Claim 1 illustrates the
subject matter on appeal and reads as follows:
1. A surgical suction instrument capable of being bent by hand during a
surgical procedure to a desired shape and capable of remaining in the desired
shape for a desired period during the course of the surgical procedure to
create a custom-shaped suction device, comprising:
a first section including a suction tip;
a second section connected to the first section, the second section
bendable to the desired shape; and
a third section connected to the second section allowing fluid
suctioned from the suction tip, and through the second section, to be
removed;
wherein the second section includes a metal rod insert-molded into a
surgical cavity insertion tube; and
wherein the third section includes a handle and a suction tube
attachment fitting positioned directly in front of, and at an acute angle with,
the handle.

The Examiner rejected the claims as follows:
I. claims 1, 7, 10, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Burney1 and Fassuliotis;2
II. claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Burney
and Mahlmann;3
III. claim 15 under 35 U.S.C. § 103(a) as unpatentable over Burney,
Fassuliotis, and Malmin.4

1 Debra Burney, US 6,602,072 B2, issued Aug. 5, 2003.
2 Thomas M. Fassuliotis, US 6,638,240 B2, issued Oct. 28, 2003.
3 Lee A. Mahlmann, US 2006/0024641 A1, filed Aug. 2, 2004, published
Feb. 2, 2006.
4 Oscar Malmin, US 3,745,655, issued July 17, 1973.
Appeal 2011-007545
Application 11/586,824

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I
The Examiner’s position is that Burney’s suction instrument differed
from Appellants’ by not having a handle with suction tube attachment
positioned in front of, and at an acute angle with, the handle. (Ans. 4.)
Although Burney was “silent as to the process used to insert a metal rod,”
the Examiner treated claim 1’s “a metal rod insert-molded” as a product-by-
process limitation, and found Burney’s instrument the same in that respect.
(Id.) The Examiner concluded it would have been obvious to modify
Burney’s device with the handle and suction tube of Fassuliotis “for the
purpose of sufficiently maneuvering the device (via handle) without the
suction tube impeding the user.” (Id.)
Appellants allege that “inserting the metal rod before plastic is
injected yields a structurally different result from one produced by another
process.” (App. Br. A8; Reply Br. 1-2.) Specifically, “a device having a
metal rod produced by such a process will have a much tighter fit within the
plastic than one made by a process (for example) involving drilling a hole
into the plastic and then inserting the rod therein. Most importantly, the
process of insert molding the metal rod will yield a device that is far more
sterile.” (App. Br. A8.) These arguments are unpersuasive. Appellants
offer no evidence that an insert-molded rod would have a tighter fit than one
inserted by another process. Sterility is not a limitation defining the claimed
instrument, but Appellants also produce no evidence that there would be any
difference in sterility. What is needed on these points is evidence
distinguishing Burney’s instrument, not argument.
According to Appellants, “it would not have been obvious to
incorporate the suction tube attachment fitting structure disclosed in the
Appeal 2011-007545
Application 11/586,824

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Fassuliotis reference into Burney's dental aspirator, as the Examiner
asserts.” (App. Br. A8; Reply Br. 3.) More specifically, “Burney's tubing
arrangement does not apparently impede the user of the dental aspirator. It
[is] respectfully submitted that the asserted motivation is at best merely a
conclusory statement. Finally, there is no evidence on record that suggests
that the proposed combination/modification would actually increase
maneuverability during a dental procedure.” (App. Br. at A9-A10.) These
arguments are unpersuasive. We agree with the Examiner that the
convenience of Fassuliotis’ suction tube and handle configuration is
sufficient motivation.
In any event, Fassuliotis provides evidence that the claimed
configuration of the handle and suction tube fitting was an art-recognized
alternative to the configuration described in Burney. Using either
configuration therefore would have been obvious to a person of ordinary
skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“If a person of ordinary skill can implement a predictable variation [of a
known work], § 103 likely bars its patentability.”).
Claims 7, 10, 12, and 14 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

II
Dependent claim 8 limits the instrument of claim 1 to one having the
metal rod constructed of stainless steel. The Examiner found that Mahlmann
described a surgical aspirator analogous to Burney’s dental aspirator, and
having an embedded stainless steel rod where Burney described merely
metal. (Ans. 5-6.) The Examiner concluded that it would have been
Appeal 2011-007545
Application 11/586,824

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obvious to use stainless steel as Burney’s metal “so that it remains in its bent
configuration.” (Id. at 6.) We conclude that the Examiner established a
prima facie case for the obviousness of claim 8.
Appellants appeal the rejection of claim 8, but offer no explanation to
show the Examiner erred. (App. Br. A10-A11.) The Reply Brief observes
that “what is optimal for one application (surgery of the internal organs)
would not necessarily be optimal for another (dental procedures).” (Reply
Br. 4.) That may be so, but the possibility that stainless steel might not be
optimal is not the criterion. As we agree the evidence is sufficient to support
the obviousness of choosing Mahlmann’s stainless steel as the metal for
Burney’s rod, we affirm the rejection of claim 8.
Claim 9 limits the instrument of claim 8 to one having a stainless steel
metal rod about 0.093 inches in diameter. The Examiner concluded:
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to modify Burney’s device to include
a stainless steel metal rod with a 0.093 inch diameter being of
sufficient diameter to be properly bent without breakage and maintain
its desired shape, since it has been held that discovering an optimum
value of a result effective variable involves only routine skill in the
art.

(Ans. 6, citing In re Boesch, 617 F.2d 272 (CCPA 1980).)
Appellants observe that “it has also been held that a particular
parameter must first be recognized as a result-effective variable . . . before
the determination of the optimum or workable ranges of said variable might
be characterized as routine experimentation,” but do not dispute that
diameter was known to be a result-effective variable for adjusting
bendability and shape maintenance. (App. Br. A11.) According to
Appellants:
Appeal 2011-007545
Application 11/586,824

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More importantly, it is not clear why modifying Burney such that the
dental aspirator's metal rod has a diameter of about 0.093 inch would
have been optimal even if it were optimal for the Appellant's surgical
suction instrument used for surgery of the internal organs of the body.

(Id.; see also Reply Br. 4.) We find this argument unpersuasive because,
even assuming 0.093 would not have been optimal, there is no dispute that it
would have been workable in Burney’s instrument, and that it would have
been arrived at by routine experimentation.

III
We reverse the rejection of claim 15 for the reasons Appellants
provide. (See App. Br. A12; Reply Br. 4-5.)

SUMMARY
We affirm the rejection of claims 1, 7, 10, 12, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Burney and Fassuliotis.
We affirm the rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Burney and Mahlmann.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Burney, Fassuliotis, and Malmin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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