Ex Parte Lang et al

Board of Patent Appeals and Interferences

Sep 22, 2006

10196109 (B.P.A.I. Sep. 22, 2006)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIETER LANG, UWE BACHER and FRIDOLIN ANDERS
____________

Appeal No. 2006-2053
Application No. 10/196,109
Technology Center 3700
____________

HEARD: September 13, 2006
____________

Before FRANKFORT, CRAWFORD and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1-5, 9-
12 and 33. Claims 6-8 stand allowed. No other claims are pending in the
application.
We REVERSE.
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Application No. 10/196,109

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BACKGROUND
The appellants’ invention relates to a medical instrument for dissecting
tissue in the human or animal body (specification, p. 1) and has as its primary
objective the provision of a force transmission element therein that is flexible
enough to follow the path of a bent shaft and yet capable of transmitting a force
from at least one movable grip to at least one movable tool. A copy of the claims
under appeal is set forth in the appendix to the appellants’ brief.
The examiner relies upon the following as evidence of unpatentability:
Chin US 5,582,618 Dec. 10, 1996
Recuset US 5,741,286 Apr. 21, 1998

The rejections of claims 1-5, 9 and 33 under 35 U.S.C. § 102(b) as being
anticipated by Recuset and claims 10-12 under 35 U.S.C. § 103(a) as being
unpatentable over Recuset in view of Chin are before us for review in this appeal.
Rather than reiterate in their entirety the conflicting viewpoints advanced by
the examiner and the appellants regarding this appeal, we make reference to the
examiner's answer (mailed June 1, 2005) for the examiner's complete reasoning in
support of the rejections and to the appellants’ brief (filed March 1, 2004) and
reply brief (filed July 14, 2005) for the appellants’ arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, to the applied prior art, and to the
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respective positions articulated by the appellants and the examiner. For the reasons
that follow, we cannot sustain either of the examiner’s rejections.
Appellants’ independent claim 1 requires a reciprocal force transmission
element, configured as a helical spring, having its proximal end operatively
interconnected to the at least one movable grip element and its distal end
operatively interconnected to the at least one movable tool for transmitting a force
from the at least one movable grip element1 to the at least one movable tool. The
proximal end of Recuset’s coil 12 is engaged in the distal end of the throughbore of
the stationary member 23 of actuation handle 18 and is not operatively
interconnected with the movable member 24 of the handle 18. Furthermore, while
the distal end of Recuset’s coil is coupled to the clevis 60 to which the jaws 56, 58
of the end effector are pivotably attached by a clevis pin passing through the
transverse bore 70 in each jaw 56, 58, the coil 12 does not transmit any force from
the movable member 24 of the handle to either of the movable jaws 56, 58 or to the
clevis. Rather, it is the control wire 16, which passes through the lumen formed
within the coil 12, that transmits force from the movable member to the movable
jaws 56, 58 of the end effector 20. Specifically, the control wire 16 is secured
within the axial bore 42 of the rack member 36 and is moved translationally along
with the rack member 36 upon pivoting of movable member 24 with respect to the
stationary member 23. The pulling movement/force of the control wire 16 is

1 The term “grip” in claim 1 (last occurrence, penultimate para.) should be followed by “element” for consistency
with earlier recitations of that element in the claim.
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translated to the jaws 56, 58, which are coupled to the split end of the control wire
by proximal tangs 62, 64.
The examiner’s contention on page 4 of the answer that a force is
transmitted via the movable grip 18 (movable member 24) via the shaft (control
wire 16) to the tool (jaws 56, 58) which in turn applies an equal and opposite force
via the clevis to the reciprocal force transmission element (coil 12), even if true,
does not respond to the limitation that the coil be operatively interconnected to the
at least one movable grip element and to the at least one movable tool for
transmitting a force from the movable grip element to the at least one movable tool.
The examiner is describing a force transmitted from the movable member 24 via
the control wire 16 to the jaws 56, 58 and a force transmitted via the clevis 60 to
the coil 12 and presumably to the stationary member 23. Neither of these forces is
a force transmitted from the movable grip member through the coil to the movable
tool, as called for in claim 1.
In light of the above, the rejection of claim 1 as being anticipated by Recuset
cannot be sustained. It follows that the like rejection of claims 2-5, 9 and 33
depending from claim 1 also cannot be sustained.
The examiner’s application of Chin in the rejection of the remaining
dependent claims 10-12 for its teaching of an end effector tool having first and
second members that move axially relative to each other provides no cure for the
deficiency of Recuset discussed above. The rejection of claims 10-12 as being
unpatentable over Recuset in view of Chin thus likewise cannot be sustained.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-5, 9-12 and 33
is reversed.

REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 10/196,109

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