Ex Parte Feygin et al

Patent Trial and Appeal Board

Dec 19, 2012

10807016 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID FEYGIN and CHIH-HAO HO
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Appeal 2010-006314
Application 10/807,016
Technology Center 3700
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Before: JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006314
Application 10/807,016
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STATEMENT OF THE CASE
David Feygin and Chih-Hao Ho (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 4-7, 13-19, 21-25,
28, and 33-40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus comprising:
pseudo skin;
a receiver, wherein said receiver receives an end effector
through an insertion region in said pseudo skin; and
a first device for performing a first skin-interaction
technique that is used in conjunction with a simulated vascular-
access procedure, wherein the first skin-interaction technique is
selected from the group consisting of palpation and occlusion
and is performed on the pseudo skin at a first skin-interaction
region of the pseudo skin, and further wherein:
(a) said receiver and said first device are disposed
beneath said pseudo skin and are covered by said pseudo skin;
and
(b) said insertion region of said pseudo skin is closer to a
user than said first skin-interaction region of said pseudo skin
when said user is using said apparatus.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Cunningham
Pugh
US 6,470,302 B1
US 2003/0031993 A1
Oct. 22, 2002
Feb. 13, 2003
Rosenberg US 6,654,000 B2 Nov. 25, 2003
Appeal 2010-006314
Application 10/807,016
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Rejections
The Examiner rejects claims 1, 4-7, 13-19, 21-25, 28, and 33-40 under
35 U.S.C. § 112, second paragraph, as indefinite.
The Examiner rejects claims 1, 35, and 38-40 under 35 U.S.C.
§ 103(a) as unpatentable over Rosenberg and Pugh.
The Examiner rejects claims 4-7, 13-19, and 21-24 under 35 U.S.C.
§ 103(a) as unpatentable over Rosenberg, Pugh, and Cunningham.
The Examiner rejects claims 36 and 37 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg.
The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Cunningham and Rosenberg.1
The Examiner rejects claims 28, 33, and 34 under 35 U.S.C. § 103(a)
as unpatentable over Cunningham, Rosenberg, and Pugh.2
OPINION
Indefiniteness
The Examiner’s indefiniteness rejection is predicated on the
Examiner’s perception that there is an inconsistency between the recitation
of an apparatus in which the mechanisms (e.g., first device, receiver, and
mechanism for simulating a skin-stretch technique) are located “beneath” the
pseudo skin and are “covered” by the pseudo skin (claim 1), are “completely
within said housing” and “covered” by the pseudo skin (claim 25), or are
“under” and “covered by” the pseudo skin (claim 35) and the recitation of
use of the mechanisms for performing techniques “on” the pseudo skin.
Ans. 3-4, 17. The Examiner ostensibly construes claims 1, 25, and 35 as
requiring that the mechanisms recited in the claims act “on top of” the skin,

1 The Examiner identifies this as a new ground of rejection. Ans. 2, 12.
2 The Examiner identifies this as a new ground of rejection. Ans. 2, 14.
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and thus insists that they should be placed on top of the skin. Id. at 17.
Claims 1, 25, and 35 contain no such requirements. Rather, the claims
allude to techniques performed “on” the pseudo skin, not “on top of” the
pseudo skin. Moreover, the claims do not require that the recited
mechanisms themselves act on the pseudo skin. Thus, we do not sustain the
Examiner’s rejection.
Obviousness based on Rosenberg and Pugh
In contesting the rejection of claim 1 as unpatentable over Rosenberg
and Pugh, Appellants argue, inter alia, that the Examiner erred in finding
that Rosenberg’s trocar 24, on which the Examiner reads the claimed
“receiver,” and gimbal 25, on which the Examiner reads the claimed “first
device,” are “disposed beneath” and “covered by” the pseudo skin
(Rosenberg’s barrier 22), as required by claim 1. App. Br. 15; Ans. 5.
Appellants also argue that the Examiner erred in finding that Rosenberg’s
gimbal 25 and trocar 24 are “disposed under” and “covered by” the pseudo
skin (barrier 22), as called for in claim 35. App. Br. 21; Ans. 6. We agree
with Appellants. Rosenberg’s trocar 24 is inserted through the barrier 22
used to represent a portion of the skin covering the patient’s body, such that
a portion of the trocar is on the same side of the barrier as the gimbal 25 and
the remaining portion is on the other side of the barrier. Fig. 1; col. 5, ll. 40-
42. The trocar 24 provides an entry and removal point from the body for the
laparoscopic tool 18, and thus cannot be covered by the pseudo skin (i.e.,
Rosenberg’s barrier 22). Col. 5, ll. 42-45.
Appellants additionally argue that Rosenberg does not teach or
suggest a housing that contains the plurality of mechanisms, as called for in
claim 35. App. Br. 21. The Examiner acknowledges that Rosenberg’s
barrier 22 is not a housing. Ans. 22. Relying on Rosenberg’s disclosure that
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the gimbal 25 and trocar 24 are within the body of the patient, the Examiner
finds that these mechanisms “are within the body of the patient which is the
housing.” Id.
Appellants are correct that Rosenberg does not disclose a housing.
Rosenberg discloses an apparatus including a gimbal apparatus 25 and a
barrier 22 “used to represent [a] portion of the skin covering the body of a
patient,” but does not disclose any additional structure to represent other
portions of the body of the patient. Col. 5, ll. 41-42. In describing the trocar
being “inserted into the body of the patient” and a gimbal apparatus 25
“shown within the ‘body’ of the patient,” Rosenberg uses the term “body” to
describe the use of a standard trocar in the actual procedure (as distinguished
from the simulation) and to denote the portion of the apparatus on the same
side of the barrier 22 as the gimbal apparatus, not to denote a housing
structure enclosing that region. See col. 5, ll. 42-47, 54-56. Accord Reply
Br. 5.
Consequently, the Examiner’s rejection of claims 1 and 35 and of
claims 38-40, which depend from claim 35, is grounded in part on erroneous
findings and cannot be sustained.
Obviousness based on Rosenberg
We also cannot sustain the Examiner’s rejection of claims 36 and 37
as unpatentable over Rosenberg, which suffers from the same deficiencies as
the rejection of claim 35 discussed above.
Obviousness based on Rosenberg, Pugh, and Cunningham
The Examiner’s proposed additional modification of Rosenberg in
view of Cunningham to provide a second device in order to stretch the skin
(Ans. 7-8) does not remedy the shortcoming of the rejection of claim 1, from
which claims 4-7, 13-19, and 21-24 depend. Thus, we also cannot sustain
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the rejection of claims 4-7, 13-19, and 21-24 as unpatentable over
Rosenberg, Pugh, and Cunningham.
Obviousness based on Cunningham and Rosenberg
Claim 25 requires a plurality of mechanisms contained completely
within the housing and covered by the pseudo skin.
The Examiner explicitly acknowledges that the proposed combination
of Cunningham and Rosenberg still lacks the plurality of mechanisms being
contained completely within the housing and covered by the pseudo skin.
Ans. 13. The Examiner reasons that it would have been an “obvious matter
of design choice . . . to have wherein said plurality of mechanisms are
contained completely within said housing and are covered by said pseudo
skin” because, according to the Examiner, Appellants have not disclosed that
such an arrangement “provides an advantage, is used for a particular
purpose, or solves a stated problem.” Ans. 14. Furthermore, the Examiner
reasons that one of ordinary skill in the art would have expected
Cunningham’s system to “perform equally well” with the plurality of
mechanisms contained either partially or completely within the housing and
covered by the pseudo skin, because the mechanisms would perform the
same function in either case. Id.
For the reasons set forth on pages 8-11 of Appellants’ Reply Brief, the
Examiner erred in finding that Appellants’ Specification does not disclose
that the claimed arrangement (i.e., having the plurality of mechanisms
contained completely within the housing and covered by the pseudo skin)
provides an advantage, serves a particular purpose, or solves a stated
problem. The mechanisms of Appellants’ apparatus, when contained
completely within the housing and covered by the pseudo skin, are hidden
beneath the pseudo skin so as to more closely simulate a real vascular-access
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procedure than simulators in the prior art. Spec., paras. [0014], [0015],
[0056]. Consequently, the Examiner’s design choice rationale lacks rational
underpinnings.
Obviousness based on Cunningham, Rosenberg, and Pugh
The Examiner’s proposed additional modification in view of Pugh
does not remedy the deficiency of the rejection of claim 25, from which
claims 28, 33, and 34 depend. Thus, we also do not sustain the rejection of
claims 28, 33, and 34 as unpatentable over Cunningham, Rosenberg, and
Pugh.
DECISION
The Examiner’s decision rejecting claims 1, 4-7, 13-19, 21-25, 28,
and 33-40 is reversed.
REVERSED

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