Ex Parte Gomez et al

Board of Patent Appeals and Interferences

Aug 30, 2012

11595545 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARIO P. GOMEZ, ILDEFONSO GONZALEZ,
and DIMAS JOEL RULLAN
__________

Appeal 2011-004812
Application 11/595,545
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a
phacoemulsification cannula for use in ophthalmic surgery. The Examiner
entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
It is well known to use “phacoemulsification cannulas in ophthalmic
surgery and especially in cataract surgery” (Spec. [0002]). “The purpose of
the phacoemulsification cannula is to transfer ultrasonic energy from a
Appeal 2011-004812
Application 11/595,545

2
phacoemulsification handpiece in order to break-up cataracts in the eye and
then aspirate fluids and the cataract tissue through the lumen of the cannula”
(id.).
Appellants disclose that, by providing a phacoemulsification cannula
with a venturi-shaped lumen at its distal end, “a significant increase in
suction power at a given aspiration level is achieved as compared to prior art
phacoemulsification cannulas that have either a straight, stepped, or tapered
bore at the distal end” (id. at [0012]).
Claims 5-10 stand rejected and appealed (App. Br. 3). Claim 5, the
only independent, is representative and reads as follows:

5. A phacoemulsification cannula for use in ophthalmic surgery
comprising:
a hub for engagement with an ophthalmic surgical instrument;
an elongated needle having a proximal end attached to the hub
and a distal end;
wherein the needle has an aspiration lumen with a first diameter
spanning a majority of a length of the needle from the
proximal end towards the distal end;
wherein the needle has a venturi lumen formed from the distal
end to the aspiration lumen, wherein the venturi lumen
includes a first venturi section having a maximum
diameter, and a second venturi section having a minimum
diameter, and a third venturi section ending at a place
connecting the aspiration lumen to the venturi lumen; and
wherein the venturi lumen includes structure forming smoothly
varying transitions between each of the first, second, and
third venturi sections.

Appeal 2011-004812
Application 11/595,545

3
The sole rejection before us for review is the Examiner’s rejection of
claims 5-10 under 35 U.S.C. § 103(a) as obvious over Stahl
1
and Evans
2

(Ans. 3-14).
DISCUSSION
The Examiner found that Stahl disclosed a phacoemulsification
cannula substantially as recited in claim 5, “except for smoothly varying
transitions between the first, second, and third venturi sections” (Ans. 7).
The Examiner reasoned, however, that an ordinary artisan would have
considered it obvious “to form smoothly varying transitions as taught by
Evans in the lumen sections of Stahl in order to reduce accumulation of
tissue fragments during aspiration of tissue through the lumen” (id. at 10).
Appellants argue, among other things, that the Examiner incorrectly
concluded that Stahl’s “bore 36” corresponded to claim 5’s “first diameter of
the cannula spanning a majority of a length of the needle” (App. Br. 11; see
also Reply Br. 5).
The Examiner responds that “bore 36 extends through connecting
member from the end of the working tip 22 and through the handpiece and
bore 36 performs the function of an aspiration lumen and has tip 22
comprising venturi structures” (Ans. 21). Thus, the Examiner contends,
“[bore] 36 is a hole in the connecting member, and it also extends from the
tip through the entire aspiration needle and thus meets the claim as presently
written” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):

1
U.S. Patent No. 5,464,389 (issued November 7, 1995).
2
U.S. Patent No. 7,299,707 B1 (filed July 17, 2006).
Appeal 2011-004812
Application 11/595,545

4
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . . After evidence or
argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to
persuasiveness of argument.

As the Federal Circuit has further noted, “obviousness requires a suggestion
of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d
1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA
1974)).
We are not persuaded that the preponderance of the evidence supports
the Examiner’s finding that the cited references teach or suggest a
phacoemulsification cannula having all of the features recited in claim 5.
Specifically, claim 5 recites a phacoemulsification cannula that has a
hub for engagement with an ophthalmic surgical instrument. The cannula
has an elongated needle with a proximal end attached to the hub, and a distal
end.
The needle, in turn, has “an aspiration lumen with a first diameter
spanning a majority of a length of the needle from the proximal end towards
the distal end” (Claim 5). The needle also has a venturi lumen “formed from
the distal end of the needle to the aspiration lumen” (id.). Thus, the
aspiration lumen of claim 5’s needle must run distally from the hub to the
venturi lumen.
Appellants’ Figure 1, reproduced below, shows an embodiment of
Appellants’ invention encompassed by claim 5:

Appeal 2011-004812
Application 11/595,545

5

Figure 1 shows hub 12, for engagement with an ophthalmic surgical
instrument, aspiration lumen 20 as dashed lines spanning from the hub
towards the distal end 18 of the needle 14, and venturi lumen 22, spanning
from the distal end of the needle to the aspiration lumen 20 (see Spec. 8).
Figure 3 of Stahl is reproduced below:
Appeal 2011-004812
Application 11/595,545

6

Figure 3 shows the working tip 22 of Stahl’s device installed on the
handpiece of the surgical instrument by way of “externally threaded first end
26 which is removably coupled to the internally threaded end 28 of the
connecting member [24]” (Stahl, col. 3, ll. 36-38).
The Examiner found that the threaded end 26 of Stahl’s working tip
22 corresponded to the claimed hub, and that “bore 36 extending through the
connecting member 24” (id. at col. 3, ll. 54-55) corresponded to the claimed
aspiration lumen (Ans. 4, see also id. at 21).
However, as Appellants urge, and as noted above, claim 5’s aspiration
lumen must run distally from the hub to the differently-diametered venturi
lumen. In contrast, Stahl’s bore 36 runs proximally from the hub, away
from the differently-diametered section of Stahl’s tip, through the
connecting member. Thus, we agree with Appellants that bore 36 does not
have the features that claim 5 requires of the aspiration lumen. Moreover,
the Examiner has not explained why an ordinary artisan would have
modified Stahl’s device to have, spanning the segment from the hub to the
Appeal 2011-004812
Application 11/595,545

7
differently-diametered section, an aspiration lumen that constituted a
majority of a length of the needle from the proximal end towards the distal
end, as claim 5 requires.
Accordingly, as we agree with Appellants that the Examiner has not
adequately explained why Stahl and Evans would have rendered a
phacoemulsification cannula having all of the features of claim 5 obvious to
an ordinary artisan, we reverse the Examiner’s rejection of that claim, as
well as its dependents, over those references.

REVERSED

alw