Ex Parte Fischer

Patent Trial and Appeal Board

Feb 27, 2013

11719567 (P.T.A.B. Feb. 27, 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.
11/719,567 05/17/2007 Klaus Fischer E7900.2051/P2051 8908
24998 7590 02/28/2013
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
02/28/2013 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 KLAUS FISCHER
__________

Appeal 2011-011008
Application 11/719,567
Technology Center 3700
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
endoscopic mucosa resection device. The Examiner has rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 11 and 13-22 are pending and on appeal (App. Br. 2). We will
focus on independent claims 11 and 21, which read as follows:
11. A device for endoscopic mucosa resection, comprising:
a facility for endoscopic water-jet surgery comprising a nozzle for
discharge of a fluid jet;
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a control device for regulating the pressure with which the fluid jet is
discharged from the nozzle to obtain a predetermined amount of energy;
an adjusting means for setting the pressure of the fluid jet to a first
pressure value, at which the fluid jet penetrates the mucosa to lift the mucosa
from underlying muscularis by formation of a fluid deposit, and to a second
pressure value, different from the first pressure value, at which the fluid jet
sectionally cuts through the mucosa; and
a first starting switch, wherein the adjusting means is configured to
discharge a predetermined amount of fluid from the nozzle when the
pressure is set to the first pressure value and the first starting switch is
actuated.
21. A device for endoscopic mucosa resection, comprising:
a facility for endoscopic water-jet surgery comprising a nozzle for
discharge of a fluid jet;
a control device for regulating the pressure with which the fluid jet is
discharged from the nozzle to obtain a predetermined amount of energy; and
an adjusting means for setting the pressure of the fluid jet to a first
pressure value, at which the fluid jet penetrates the mucosa to lift the mucosa
from underlying muscularis by formation of a fluid deposit, and to a second
pressure value, different from the first pressure value, at which the fluid jet
sectionally cuts through the mucosa,
wherein the adjusting means has a ratio setting mechanism adapted to
set a predetermined ratio of the first pressure value relative to the second
pressure value.
Claims 11, 14, and 17-20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Yoder et al. (US 5,871,462, Feb. 16, 1999) in view of Hecker
et al. (US 2001/0008961 A1, Jul. 19, 2001) (Ans. 4).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over
Yoder in view of Hecker and Gonon (US 6,423,027 B1, Jul. 23, 2002)
(Ans. 5).
Claims 15, 16, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
obvious over Yoder in view of Hecker and Prowald (US 4,097,219, Jun. 27,
1978) (Ans. 5).
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PRINCIPLES OF LAW
A claim “composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
relevant question is “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.” Id.
I
The Examiner relies on Yoder for disclosing
a device comprising a facility for endoscopic water-jet
surgery 40 comprising a nozzle . . . for discharge of a fluid jet, a
control device for regulating the pressure 22, an adjustment
means . . . for setting the pressure of the fluid jet to a first
pressure value . . . and to a second pressure value, different
from the first pressure value, to cut through tissue.
(Ans. 4.)
The Examiner relies on Hecker for teaching “a device having a
starting switch . . . , wherein the adjusting means is configured to discharge a
predetermined amount of fluid 48” (id.).
The Examiner concludes that it would have been obvious “to modify
the device of Yoder et al. to include the switch of Hecker et al. in order to
limit the quantity of fluid dispensed” (id.). In particular, the Examiner finds:
The limiting of fluid to a predetermined amount is a well-
known means in the art to control fluid flow. The advantage of
modifying the device, of Yoder, with the switch, of Hecker, is
that the user will be able to control the amount of fluid
delivered to the target tissue and such will result in the
unnecessary waste of fluid.
(Id. at 7.)
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The Examiner also finds that Yoder “discloses the device for surgical
procedures to cut bone or tissue, or even simply wash away blood and
debris” (id. at 4). The Examiner concludes, therefore, that it would have
been obvious “to have the fluid jet at the first pressure value penetrating the
mucosa to lift the mucosa from underlying muscularis and the second
pressure value to sectionally cutting through the mucosa” (id.).
“Appellant submits that one skilled in the art would not be motivated
to combine Hecker with Yoder in the manner asserted by the Examiner”
(App. Br. 6). In particular, Appellant argues that “one would not be
motivated to limit the quantity of fluid dispensed to a particular
predetermined amount, in a device where this fluid is merely used to target
the portion to be excised and has no other function” (id. at 7). In addition,
Appellant argues that Yoder and Hecker do “not disclose, or render obvious,
that „the fluid jet [at the first pressure value] penetrates the mucosa to lift the
mucosa from underlying muscularis by formation of a fluid deposit‟” (id. at
8).
Findings of Fact
1. Yoder discloses “a fluid jet cutting system” (Yoder, col. 1, l. 6).
2. Yoder also discloses:
The pressure and velocity of the fluid arc is selectively
controllable allowing the user to pin-point a visually observable
low pressure beam, having no significant cutting affect (from
10 to 1,000 p.s.i., and, preferably, about 200 p.s.i., depending
on the material which is subject to cutting) on the cutting site
before increasing the pressure of the fluid to within the cutting
range (from 1,000 to 50,000 p.s.i. and, preferably, from 5,000
to 30,000 p.s.i., again depending on the material being cut).
(Id. at col. 3, ll. 10-18.)
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3. In addition, Yoder discloses that “[s]elective variation of the jet
stream pressure allows the surgeon to cut hard bone, soft bone, cartilage and
tissue, to strip away tissue exposing underlying organs or vessels or, simply,
to wash away blood and debris created by the surgical procedure” (id. at
col. 3, ll. 47-51).
4. Hecker discloses that a “predetermined amount of the
therapeutic medicament or fluid may be delivered in response to, for
example, the manual operation of a switch . . . to drive a pump 48, such as a
syringe pump, which pumps into conduit 46 the desired amount of
medicament or fluid” (Hecker 6, ¶ [0078]).
Analysis
Hecker discloses a switch that actuates the discharge of a
predetermined amount of fluid (Finding of Fact (FF) 4). Yoder discloses “a
fluid jet cutting system” and a wide range of usable pressures (FF 1-3).
However, even if we assume that Yoder suggests a pressure that would
penetrate the mucosa to lift the mucosa from underlying muscularis, we
agree with Appellant that the Examiner has not adequately explained why
one of ordinary skill in the art would have included a switch that actuates the
discharge of a predetermined amount of fluid at such a pressure.
We conclude therefore that the Examiner has not set forth a prima
facie case that Yoder and Hecker suggest the device of claim 11. As a
result, we reverse the obviousness rejection of claim 11 and of claims 14 and
17-20, which depend from claim 11.
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II
With regard to claim 13, which depends from claim 11, the Examiner
relies on Yoder and Hecker as discussed above and additionally relies on
Gonon (Ans. 5). However, this rejection does not rectify the deficiency in
the rejection of claim 11 discussed above. We therefore also reverse the
obviousness rejection of claim 13.
III
With regard to claims 15, 16, 21, and 22, the Examiner relies on
Yoder and Hecker as discussed above and additionally relies on Prowald for
teaching “an adjusting means for a first pressure value 9 and second pressure
value 10 having a ratio setting mechanism 11” (Ans. 5-6). The Examiner
concludes that it would have been obvious “to modify the device of Yoder et
al. and Hecker et al. to include the ratio setting mechanism of Prowald in
order to preset different first and second pressure values and provide
automatic regulation of adjustable ratios” (id. at 6).
In addition to the arguments raised with regard to claim 11, Appellant
additionally argues that Prowald does not disclose or suggest “a „ratio setting
mechanism adapted to set a predetermined ratio of the first pressure value
relative to the second pressure value‟” (App. Br. 9-10). In particular,
Appellant argues that, “[w]hile the ratio setting mechanism of Prowald may
indirectly result in control of the pressure of the two gases (as asserted by
the Examiner, but which Appellant does not concede), the predetermined
ratio is not of the pressures (as claimed), but the ratio of the gases in the
mixture” (id. at 10).
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Findings of Fact
5. Yoder discloses:
Selective variation of the jet pressure allows the surgeon to
target precisely a visible low pressure stream on the portion of
the bone or tissue to be excised and then to cut the bone or
tissue with the already pin-pointed jet simply by increasing the
jet to a higher, cutting pressure.
(Yoder, col. 4, ll. 1-5.)
6. Yoder also discloses that “[d]ials or buttons on the console
allow the user to vary the parameters of the system” (id. at col. 4, ll. 19-20).
7. Prowald discloses “a device for the setting and automatic
regulation of the mixture ratio of a gas/air mixture for industrial furnaces
with two coaxially-arranged diaphragm pressure gauges, connected in
opposition via a ratio setting mechanism, for the gas and the air” (Prowald,
col. 1, ll. 5-10).
Analysis
Claims 15 and 16 depend from claim 11. In addition, the Examiner
does not explain how Prowald rectifies the deficiency in the rejection of
claim 11 discussed above. We therefore reverse the obviousness rejection of
claims 15 and 16 for the same reason.
However, independent claim 21 does not require a starting switch that
actuates the discharge of a predetermined amount of fluid and therefore
stands on different footing. Claim 21 does, however, require:
an adjusting means for setting the pressure of the fluid jet
to a first pressure value, at which the fluid jet penetrates the
mucosa to lift the mucosa from underlying muscularis by
formation of a fluid deposit, and to a second pressure value,
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different from the first pressure value, at which the fluid jet
sectionally cuts through the mucosa,
wherein the adjusting means has a ratio setting
mechanism adapted to set a predetermined ratio of the first
pressure value relative to the second pressure value.
Yoder discloses a device having an adjusting means for setting the
pressure of the fluid jet to a first low pressure value that “allows the surgeon
to target precisely a visible low pressure stream on the portion of the bone or
tissue to be excised” and to a second higher pressure value “to cut the bone
or tissue” (FF 5-6). However, as noted by Appellant, Yoder does not
disclose that this first pressure should “effect any change to the tissue” (App.
Br. 8). Thus, although Yoder may disclose pressures that would inherently
penetrate the mucosa to lift the mucosa from underlying muscularis (FF 2-
3), we do not agree that the Examiner has set forth a prima facie case that it
would have been obvious to include a ratio setting mechanism adapted to set
a predetermined ratio of a first pressure value, at which the fluid jet
penetrates the mucosa to lift the mucosa from underlying muscularis,
relative to a second pressure value different from the first pressure value, at
which the fluid jet sectionally cuts through the mucosa.
We conclude therefore that the Examiner has not set forth a prima
facie case that Yoder, Hecker, and Prowald suggest the device of claim 21.
As a result, we reverse the obviousness rejection of claim 21 and of
claim 22, which depends from claim 21.
SUMMARY
We reverse the rejection of claims 11, 14, and 17-20 as obvious over
Yoder in view of Hecker, the rejection of claim 13 as obvious over Yoder in
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view of Hecker and Gonon, and the rejection of claims 15, 16, 21, and 22 as
obvious over Yoder in view of Hecker and Prowald.

REVERSED

cdc