Ex parte Fossum

Board of Patent Appeals and Interferences

Jul 7, 1999

08496604 (B.P.A.I. Jul. 7, 1999)

Application for patent filed June 29, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GREGORY T. FOSSUM
__________
Appeal No. 98-2779
Application 08/496,6041
___________
ON BRIEF
___________
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 13, all the claims pending in
the application.
Appeal No. 98-2779
Application 08/496,604
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Appellant’s invention relates to a surgical clamp useful
for removing foreign bodies during surgical procedures.
Independent claim 1 is representative of the subject matter on
appeal and a copy of that claim, as reproduced from the
Appendix to appellant’s brief, is attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
English 2,618,268 Nov. 18, 1952
Schlein 3,981,308 Sep. 21, 1976
Kurwa 4,574,804 Mar. 11, 1986
Claims 1 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kurwa in view of Schlein and
English.
Rather than reiterate the examiner's full statement of
the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the
rejection, we make reference to the final rejection (Paper No.
5, mailed
Appeal No. 98-2779
Application 08/496,604
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November 7, 1996) and the examiner's answer (Paper No. 12,
mailed November 12, 1997) for the examiner's reasoning in
support of the rejection, and to appellant’s brief (Paper No.
11, filed
August 7, 1997) and reply brief (Paper No. 13, filed
January 16, 1998) for appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Preliminary to treating the examiner’s rejection of the
appealed claims, we note that on page 3 of the brief appellant
has indicated that for purposes of this appeal, “claims 1-13
may be grouped together.” In such an instance, we would
normally select a claim as being representative of the claimed
Appeal No. 98-2779
Application 08/496,604
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subject matter (e.g., independent claim 1) and proceed to
decide the appeal on the basis of that claim alone (See 37 CFR
§ 1.192(c)(7)). However, in this case, in both the brief and
reply brief, appellant has made separate arguments that go to
the propriety of the examiner’s combination of Schlein with
Kurwa (applicable, for example, to claims 1 and 2) and English
with Kurwa (needed to additionally address the limitations of
claims 3 through 13). The examiner, in her answer, has
separately responded to each of appellant’s lines of argument.
Accordingly, since the examiner and appellant have both
provided their positions on the propriety of the respective
combinations of prior art noted above, we deem it appropriate
to review each of those combinations in deciding this appeal.
We hasten to add that inconsistencies between appellant’s
grouping of the claims and separate arguments presented in the
brief, like those noted above, should normally be resolved
prior to the application being forwarded to the Board for our
treatment of the appeal.
In reviewing the examiner's prior art rejection of the
appealed claims, the only difference we perceive between the
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Application 08/496,604
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surgical clamp of Kurwa and that defined in claim 1 on appeal
is the requirement in appellant’s claim 1 of a jaw portion on
each of the intersecting arms which includes a “diamond grid
gripping surface.” As set forth in Kurwa, at column 2, lines
45-46, the jaw portions (18a, 18b) of the surgical clamp are
described as having “serrated facing surfaces 24." As seen in
Figure 6a, the serrated facing surfaces of the jaws of the
clamp in Kurwa are used to grip an object, i.e., the optic
nerve (D), during enucleation (a surgical procedure involving
the removal of a diseased eyeball). Recognizing that the
surgical clamp of Kurwa lacks the specific type of gripping
surface set forth in appellant’s claim 1, the examiner has
turned to the surgical clamp of Schlein for such a teaching.
On pages 3-4 of the final rejection, the examiner has
indicated that
“Schlein discloses a surgical clamp having jaw
portions, 10, 12 comprising diamond grid gripping
surfaces 22.
It would have been obvious to one having
ordinary skill in the art at the time the invention
was made to use the diamond surfaces as taught by
Schlein, since Schlein states at column 2, lines 51-
58 that such a modification would insure [sic] a
firm grip on the tissue being selected.”
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Like the examiner, we are of the opinion that it would
have been obvious to one of ordinary skill in the art at the
time of appellant’s invention to use the diamond grid gripping
surfaces as taught by Schlein as the serrated facing surfaces
(24) in Kurwa so as to “insure [sic] a firm and positive grip
on the work-piece” as suggested in Schlein (col. 2, line 51-
52). Both Kurwa and Schlein describe the jaws of their
surgical clamps as being “serrated,” with Schlein expressly
disclosing that such serrations are preferably in the form of
diamond-shaped teeth which, as seen in Figure 7, provide a
diamond grid gripping surface on each jaw. Thus, we view the
collective teachings of the applied references as evidencing
knowledge in the art regarding known alternative forms of
serrated jaws used for surgical clamps, and as being
suggestive to one of ordinary skill in the art of using the
type of serrations disclosed and taught in Schlein on other
surgical clamps with serrated jaws, i.e., such as the surgical
clamp seen in Kurwa, as a means for ensuring a firm and
positive grip on a work-piece during surgery.
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Appellant’s arguments against the use of the diamond grid
gripping surfaces of Schlein in the clamp of Kurwa, in our
opinion, are misplaced. The arguments in the brief (page 6)
and reply brief seem to seek some express teaching in either
Kurwa or Schlein that the gripping surfaces of the jaws in
Kurwa are inadequate before a substitution of the specific
form of gripping surfaces in Schlein can be made for the
serrations of Kurwa. We know of no such requirement. In this
regard, we note that where two known alternatives are
interchangeable for their desired function, an express
suggestion of the desirability of the substitution of one for
the other is not needed to render such substitution obvious.
See In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982); In re Siebentritt, 372 F.2d 566, 567, 152 USPQ 618, 619
(CCPA 1967).
While we have fully considered the arguments advanced by
appellant, we are not convinced thereby that the examiner's
conclusion of obviousness as it applies to claim 1 on appeal
is in error. Although appellant points to alleged
distinctions between the prior art and the invention of claim
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1 based upon use of the surgical clamp set forth in claim 1
for gripping a foreign object and the problem which the
invention solves, we note that it is clear that the purpose
proposed as the reason why the artisan would have found the
claimed subject matter to have been obvious based on the prior
art need not be identical to the purpose or problem which
appellant indicates to be the basis for having made the
invention in order to establish a prima facie case of
obviousness. As long as some reasonable motivation or
suggestion to combine the references is provided by the prior
art taken as a whole, as we believe there is in this case, the
law does not require that the references be combined for the
reasons contemplated by appellant. See In re Beattie, 974
F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re
Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990)(en banc), cert. denied, 500 U.S. 904 (1991) and In re
Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976).
In addition, the fact that appellant may have recognized an
advantage which would flow naturally from following the
suggestions of the prior art cannot be the basis for
patentability when the difference would otherwise have been
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Application 08/496,604
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obvious. See Ex parte Obiaya, 227 USPQ 58 (BPAI 1985), aff’d.
mem., 795 F.2d 1017 (Fed. Cir 1986).
Thus, for the above reasons, we will sustain the
examiner’s rejection of claim 1 under 35 U.S.C. § 103. Since
no separate argument has been made by appellant regarding
dependent claim 2, we consider that claim 2 will fall with
claim 1.
Appellant’s arguments in the brief and reply brief
directed to the feature of the invention relating to the use
of a rat tooth (10) at the distal end of the jaw portion of
the clamp are not relevant to independent claim 1, since no
such recitation appears in claim 1. Likewise, those arguments
are not relevant to dependent claim 2 which also has no such
feature recited therein. However, given that appellant has
argued this feature in both the brief and reply brief, we will
treat it. We first note that the examiner has addressed this
aspect of the claimed subject matter (e.g., claims 3 through
13) by relying on the teachings of English, which shows a
surgical clamp that includes a rat tooth structure (17, 19) at
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Application 08/496,604
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the distal end of the jaw portion of the clamp in combination
with a series of longitudinal corrugations (at 23) located on
the gripping portion of the clamp therein. English also shows
or discloses latching means (14) on the clamp members (10, 11)
for holding the members (10, 11) closed together when desired.
According to the examiner (final rejection, page 4),
“It would have been obvious to one having
ordinary skill in the art at the time the invention
was made to use a latching means and rat tooth jaws
as taught by English, since English states at column
3, lines 19-28 that such a modification would enable
the jaw members to be held in the position desired
by the surgeon and since English states at column 4,
lines 18-33 that the rat tooth jaw arrangements
prevent side slip of the tissue being grasped by the
surgeon.”
While we certainly share the examiner’s view with regard
to the latching means of English, especially given that Kurwa
already includes a latch mechanism or catch at (22) for
allowing the handle portions (16) to be “releasably locked
together” (col. 2, lines 42-44), we must agree with appellant
that it would not have been obvious to one of ordinary skill
in the art to provide the distal ends of the jaws of the clamp
in Kurwa with a rat tooth structure like that of English. We
reach this conclusion because the offset portions of the ends
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Application 08/496,604
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(26) of the clamp of Kurwa would not lend themselves to a rat
tooth structure of the type seen in English. Note
particularly, the arguments found in appellant’s reply brief
(pages 2-4). The need in Kurwa for the smooth extension (28)
on the tip end of the jaw portion (18a) would preclude a rat
tooth arrangement like that of English from being used
therein, since at least the distal end of jaw portion (18a)
must remain free of obstructions to define the smooth flat
surface (29) that is critical to the disclosed use of the
clamp of Kurwa. Note specifically, Figures 3, 4a and 5a of
Kurwa and the disclosure at column 3, line 6, et seq.,
highlighting the significance of the smooth, rounded extension
(28) and smooth flat surface (29). Thus, the examiner’s
rejection of claims 3 and 4, the claims which depend
therefrom, and claims 11 through 13 relying on the combined
teachings of Kurwa, Schlein and English will not be
sustained.
To summarize our decision, we note that 1) the examiner's
rejection of claims 1 and 2 under 35 U.S.C. § 103 has been
sustained and 2) the examiner's rejection of claims 3 through
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Application 08/496,604
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13 under 35 U.S.C. § 103 has not been sustained. The decision
of the examiner is, accordingly, affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
Appeal No. 98-2779
Application 08/496,604
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)
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
CEF/kis
Paul K. Legaard
WOODCOCK, WASHBURN, KURTZ
MACKIEWICZ & NORRIS
One Liberty Place
46th Floor
Philadelphia, PA 19103
Appeal No. 98-2779
Application 08/496,604
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APPENDIX
1. A surgical clamp comprising:
a pair of intersecting arms and pivot means
interconnecting said arms for providing rotating motion about
a common axis;
said arms each comprising handle portion, jaw portion,
and shaft portion between said handle and jaw portions;
each handle portion further comprising finger loop and
latching means opposite said finger loop and in substantially
the same plane therewith;
each jaw portion further comprising diamond grid gripping
surface; and
said gripping surface on each jaw being operably opposed
and said latching means being operably engageable when said
handle portions are rotated toward each other for holding said
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handle portions in a fixed position, and operably engaging
said gripping surfaces.