Ex Parte Manhes

Board of Patent Appeals and Interferences

Jan 27, 2006

09214875 (B.P.A.I. Jan. 27, 2006)

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for publication and is not binding precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HUBERT MANHES
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Appeal No. 2005-1568
Application No. 09/214,875
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HEARD: DECEMBER 14, 2005
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Before PATE, MCQUADE, and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 24 to 31,
which are all of the claims pending in this application. Claims 1 to 23 have been
canceled.
The appellant's invention relates to a trocar sleeve for endoscopic applications
(specification, p. 1). A copy of the claims under appeal is set forth in the appendix to
the appellant's brief.
Appeal No. 2005-1568
Application No. 09/214,875
Page 2
The prior art
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Sorensen et al. (Sorensen) 5,320,627 June 14, 1994
Ko 5,354,302 Oct. 11, 1994
The rejections
Claims 24, 25, and 28 to 31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by and, in the alternative, under 35 U.S.C. §103 as being unpatentable over
Ko.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ko in view of Sorensen.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection mailed May 16, 2003 and the answer mailed December 16, 2003 for the
examiner's complete reasoning in support of the rejections, and to the brief filed
September 29, 2003 for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
Appeal No. 2005-1568
Application No. 09/214,875
Page 3
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 24, 25, and 28 to 31 under
35 U.S.C. § 102 (b) as being anticipated by and in the alternative as being obvious
under 35 U.S.C. § 103 in view of Ko. The examiner is of the opinion that Ko describes
the invention as claimed (see answer at page 2 ). In regard to the recitation in claim 24
that "end portions of the pivotal parts form a pointed tip which permits the cutting of the
body wall," the examiner states:
. . . the pivotable parts/wings/wedges 22a-22d made of
metal/plastic (column 9, lines 64-68) do form a pointed tip
which permit cutting/penetrating/piercing at least at some
degree of a body wall/tissue by itself (final rejection at page
2, Paper No. 26).
We agree with the appellant that Ko does not describe or suggest a pointed tip
which permits the cutting of a body wall without an additional trocar mandrel. To the
contrary, Ko describes a blunt tip, rather than a pointed tip. In addition, Ko discloses
that the blunt tip is inserted only after an opening is made by a cutting instrument (col. 5,
lines 35; col 8, lines 37 to 41).
Therefore, we will not sustain this rejection as it is directed to claims 24, and 25
and claim 28 dependent thereon. We will also not sustain this rejection as it is directed
to claim 30, and claim 31 dependent thereon, because claim 30 also recites a pointed
tip which permits the cutting of the body wall without an additional trocar mandrel.
Appeal No. 2005-1568
Application No. 09/214,875
Page 4
We will likewise not sustain the examiner's rejection of claims 26 and 27 under
35 U.S.C. § 103 as being unpatentable over Ko in view of Sorensen. Claims 26 and 27
are dependent on claim 24 and thus include the subject matter of a pointed tip which
permits the cutting of the body wall without an additional trocar mandrel. We have
reviewed the disclosure of Sorensen and find that this disclosure does not cure the
deficiencies noted above for Ko.
The decision of the examiner is reversed.
REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC/cam
Appeal No. 2005-1568
Application No. 09/214,875
Page 5
Wesley W. Whitmyer, Jr.
St. Onge Steward Johnston & Reens
986 Bedford Street
Stamford, CT 06905-5619