Ex Parte Morozov

Patent Trials and Appeals Board

Jan 31, 2019

14715772 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/715,772 05/19/2015
25223 7590 02/04/2019
WHITEFORD, TAYLOR & PRESTON, LLP
ATTN: GREGORY M STONE
SEVEN SAINT PAUL STREET
BALTIMORE, MD 21202-1626
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Vadim Morozov
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
081829.00019 8224
EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@wtplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte V ADIM MOROZOV
Appeal 2018-002921
Application 14/715, 772
Technology Center 3700
Before MICHAEL J. FITZPATRICK, SUSAN L. C. MITCHELL, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-3, 5, and 9-11. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies the University of Maryland, Baltimore, as the real
party in interest. Appeal Br. 1.
Appeal2018-002921
Application 14/715, 772
STATEMENT OF THE CASE
The Specification
The claimed invention "relates generally [to] the field of surgical
devices, and more particularly the invention relates to an improvement to a
uterine manipulator device used for total laparoscopic hysterectomy
procedures." Spec. 1: 13-15. "The present invention is an improvement of a
pre-existing uterine manipulator. The improvement involves the addition of
a retractable electrosurgical needle into the uterine manipulator." Id. at 6:6-
8.
Figure 1 is reproduced below.
I ro ELecmicALi GENERATOR 1
Fioure 1 b
Figure 1, reproduced above, shows "a combination uterine manipulator and
electrosurgical element according to an embodiment of the present
invention." Id. at 5:7-8. This combination surgical instrument is used "to
perform a colpotomy, the separation of the uterus 30 and cervix 32 from the
vagina 24." Id. at 8:12-13, Fig. 3.
The instrument includes manipulator tube 18, which Appellant
corresponds to the "elongated tube" recited in claim 1 and which includes
manipulator shaft 14 therein. Id. at 6:10-13; Appeal Br. 3. "A cervical cup
12 is molded to a manipulator tube 18 that surrounds the manipulation shaft
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14." Id. at 6:13-14. Retractable and flexible electrosurgical needle 26
traverses the manipulator tube 18 from a proximal (physician) end of the
instrument to a distal (working) end of the instrument. Id. at 6: 14, 7:20-23,
Fig. 1. The needle can extend from within the cervical cup distally beyond
the cup and can bend as seen in Figure 1. The needle is rotatable about the
axis of the manipulator tube and shaft. Id. at 9:3--4.
The Rejected Claims
Claims 1-11 are pending. Final Act. 1. Of them, claims 1-3, 5, and
9-11 are rejected, with claims 4 and 6-8 being objected to. Final Act. 1.
Claim 1, the sole independent claim, is representative and reproduced below.
1. An electrosurgical element and uterine
manipulator comprising:
an elongate tube having a proximal end and a distal end;
a cervical cup fixed to said elongate tube and opening
toward said distal end of said elongate tube; and
an electrosurgical needle retractably mounted in and
extensible from said cervical cup.
Appeal Br. 16.
The Appealed Rejection
The following rejection under 35 U.S.C. § 103 is before us for review:
claims 1-3, 5, and 9-11 over Donnez2 and Kjeken. 3 Final Act. 5.
2 US 2001/0021854 Al, published Sept. 3, 2001 ("Donnez").
3 US 2008/0287857 Al, published Nov. 20, 2008 ("Kjeken").
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Application 14/715, 772
DISCUSSION
Independent Claim 1
Donnez discloses a uterine manipulator. Donnez, at [57]. The
Examiner found that the Donnez uterine manipulator includes: "a. an
elongate tube having a proximal end and a distal end (Fig. 1, 2); b. a cervical
cup fixed to said elongate tube and opening toward said distal end of said
elongate tube (Fig. 1, 3); and c. an electrosurgical needle (4, [0074])." Final
Act. 5; see also id. at 2 (identifying Donnez's cupula 3 as cervical cup and
finding that "the electrosurgical needle (4) of Donnez is axially movable and
rotates around the cupula in a 360 degree fashion [and] also moves in a
longitudinal direction (up and down) relative to the arm as described in
paragraph [0074]"). Id. at 2. In an Advisory Action mailed April 28, 2017,
and well as the Answer, the Examiner refined the rejection to assert that
shaft 8 of Donnez, which extends within arm 2, is the structure asserted to be
an "elongate tube." Advisory Act. 2; Ans. 3. In total, the Examiner relied
on Donnez as teaching all of the subject matter of claim 1 except for the
recitation in claim 1 that the electrosurgical needle be "retractably mounted
in and extensible/ram said cervical cup." Id. at 6 (emphasis added).
The Examiner found that "Kjeken discloses an electrosurgical needle
which is retractably mounted in and extensible from the center of a cup
(Fig. 5A, 10, [0020])." Id. The Examiner concluded that it would have been
obvious to modify Donnez to include a retractable electrosurgical needle by
Kjeken in order to penetrate and treat the tissue grasped within the cup. Id.;
see also Donnez i-f 5 ("In the particular case of a surgical operation, an
additional difficulty arises from the fact that the incision must be precise and
must avoid damaging the surrounding tissues.").
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Application 14/715, 772
Appellant argues that Donnez's cupula is not "a cervical cup fixed to
said elongate tube," as recited in claim 1, because it is not fixed directly to
Donnez's arm 2. Appeal Br. 8. According to Appellant, "Donnez shows
head 3 mounted to an interior shaft, which interior shaft is positioned within
outer arm 2. There is no connection whatsoever between Donnez' s head 3
and outer arm 2." Id. at 9. 4 This argument is not persuasive for multiple
reasons. First, there is no requirement in the claim that the fixation be direct
with no intervening structure. Second, and as discussed above, the
Examiner ultimately asserted, not Donnez's outer arm 2, but rather shaft 8
within it, as teaching an elongate tube. Advisory Act. 2; Ans. 3. The
Examiner explained:
In regards to the argument that Donnez's cupula is not fixed to
arm 8, the applicant appears to be defining that the cupula cannot
be fixed to arm 8 through the connection assembly near 22
because arm 8 is movable. Merriam-Webster defines "fixed" as
securely placed or fastened. Clearly Donnez shows that the
cupula is fastened to arm 8 in such a way that the cupula does not
detach from arm 8 through regular operation.
Advisory Act. 2; see also Ans. 3 (quoting Advisory Act. 2).
Appellant further argues that the Examiner cannot rely on inner
shaft 8 to meet both the limitation "elongate tube" of claim 1 and the further
limitation "an inner tube extending through said elongate tube" of dependent
claim 3. Appeal Br. 9-10. We agree, but we find that the Donnez shaft
meets the "elongate tube" of claim 1; it does not meet the "inner tube" of
claim 3, as further addressed below.
4 Donnez sometimes refers to "cupula 3" as "head 3." Compare Donnez
iF9, with id. i-f83. The Appeal Brief uses the latter term while the Examiner
and this Decision use the former term.
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Appellant argues that a person of ordinary skill in the art would not
make the asserted combination because Donnez "requires" that its
electrode 4 be mounted outside of the cupula 3. Appeal Br. 11. Appellant
explains:
The fact that a medical device, such as a hypodermic needle as
taught by Kjeken, may include a centrally positioned, extensible
electrode does not in any way provide a person of ordinary skill
in the art any motivation to move Donnez's sectioning device 4
inside of head [ cupula] 3. The sectioning device 4 of Donnez
must be positioned on the outside of head 3 in order to be able to
perform the intended rotational incision around the patient's
uterus.
Id. at 12. But Donnez does not state that its sectioning device must be
positioned outside of the cupula. Donnez's sectioning device (electrode 4) is
positioned outside the cupula 3 because that is where Donnez's rotating
means is located (i.e., "circular belt 5" to which the sectioning device is
mounted). See Donnez i-fi-f74-75, Figs. 9a-b.
Appellant's arguments regarding the position of Donnez's electrode
attacks that references individually instead of fairly responding to the
obviousness rejection, which is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole."). In other
words, that Donnez does not anticipate claim 1 because it does not teach "an
electrosurgical needle retractably mounted in and extensible from said
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cervical cup" does not mean that claim 1 is not obvious over Donnez and
Kjeken.
Appellant also argues that the proposed modification "would render
Donnez wholly unsatisfactory for its intended purpose." Appeal Br. 13.
That argument, however, is premised on an automaton blindly repositioning
Donnez' s electrode 4 from outside the cupula to within while leaving the
means for rotating the electrode (i.e., circular belt 5) outside the cupula.
But, a claim is unpatenable under 35 U.S.C. § 103 if it "would have been
obvious ... to a person having ordinary skill in the art," not an automaton.
35 U.S.C. § 103; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421
(2007) ("A person of ordinary skill is also a person of ordinary creativity,
not an automaton.").
Appellants do not apprise us of error in the Examiner's rejection of
claim 1 over Donnez and Kjeken. We accordingly affirm it.
Dependent Claim 2
Claim 2 depends from claim 1 and further comprises "an occlusion
cup rotatably mounted to said elongate tube and opening toward said
proximal end of said elongate tube; wherein said elongate tube, said cervical
cup, and said electrosurgical needle are rotatable as a unit with respect to
said occlusion cup." Appeal Br. 16.
The Examiner rejected claim 2 as obvious over Donnez and Kjeken,
finding that:
Donnez discloses a uterine manipulator comprising: ... an
occlusion cup rotatably mounted to said elongate tube and
opening toward said proximal end of said elongate tube ( 42,
[0089]); wherein said elongate tube, said cervical cup, and said
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electrosurgical needle are rotatable as a unit with respect to said
occlusion cup ([0089]).
Final Act. 5.
Appellant makes two arguments in response. The first argument is
simply that "Donnez fails to disclose, teach or suggest at least (i) an
occlusion cup, or (ii) that the elongate tube, cervical cup, and electrosurgical
needle are rotatable as a unit." Appeal Br. 14. This argument is not
persuasive because it is a simple denial of the Examiner's findings without
any explanation as to why those findings are in error.
The second argument is that "in the Advisory Action of April 28,
2017, the Examiner agreed that such features of claim 2 distinguished from
the prior art, such that claim 2 is even further patentably distinguished."
Id. This argument is not persuasive because it is factually inaccurate. The
Examiner agreed that claim 2 would be patentably distinguishable over the
prior art if it were amended. See Advisory Act. 2 ("The applicant's
arguments in regards to claim 2 are persuasive and the rejection would be
removed if these claims were filed as a proper amendment."). Claim 2 was
not so amended. See Appeal Br. 16 ("2. (Original)").
For the foregoing reasons, we affirm the rejection of claim 2 over
Donnez and Kjeken.
Dependent Claims 3 and 5
Claim 3 depends indirectly from claim 1 and recites "an inner tube
extending through said elongate tube, wherein said elongated tube is free to
slide and rotate on said inner tube." Appeal Br. 16. Claim 5 depends from
claim 3. Id. at 17.
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The Examiner rejected claim 3 as obvious over Donnez and Kjeken,
finding that Donnez's shaft 8 meets the "inner tube" limitation. Final Act. 6.
As discussed above, however, the Examiner ultimately relied on shaft 8 to
meet the "elongate tube" of claim 1. We agree above with the Examiner's
finding that Donnez's shaft 8 meets the "elongate tube" limitation of claim
1. Accordingly, we disagree that it could also meet the "inner tube"
limitation of claim 3, which must "extend[] through said elongate tube." See
Appeal Br. 9--10 ( arguing that the shaft 8 cannot meet both limitations).
Indeed, in the Answer, the Examiner does not argue for affirming the
rejection of claim 3. Instead, the Examiner asserts ( erroneously) that the
rejection is moot, stating:
[T]he Examiner stated in the advisory action on 4/28/2017 that
following the arguments of 4/10/2017 made by the applicant,
claim 2 would be allowable over Donnez and Kjeken, which
would make claim 3 also allowable. Therefore this argument is
moot.
Ans. 3. But the amendment was not entered. Thus, the rejection of claim 3
is not moot.
For the foregoing reasons, we reverse the rejection of claim 3 over
Donnez and Kjeken. Claim 5 depends from claim 3, and we therefore
reverse the rejection of claim 5 for the same reasons.
Dependent Claims 9--11
For claims 9-11, Appellant does not present arguments for
patentability beyond that they ultimately depend from claim 1. Appeal
Br. 14. Thus, we affirm the rejection of claims 9-11 for the same reasons
we affirm the rejection of claim 1.
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CONCLUSION
For the reasons discussed, we affirm the Examiner's rejection of
claims 1, 2, and 9--11 and reverse the rejection of claims 3 and 5.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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