Ex Parte Nohilly

Patent Trial and Appeal Board

Jan 12, 2015

11502339 (P.T.A.B. Jan. 12, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/502,339 08/10/2006 Martin J. Nohilly 1284-20 7471
33769 7590 01/13/2015
Gerald T. Bodner
BODNER & O''ROURKE, LLP
425 BROADHOLLOW ROAD, SUITE 120
MELVILLE, NY 11747
EXAMINER
FISHBACK, ASHLEY LAUREN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
01/13/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN J. NOHILLY
____________

Appeal 2012-007967
Application 11/502,3391
Technology Center 3700
____________

Before JEFFREY N. FREDMAN, JUSTIN T. ARBES, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to an anti-coring device for a surgical morcellator and method of use. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is Ethicon, Inc. (App.
Br. 2).

Appeal 2012-007967
Application 11/502,339

2
STATEMENT OF THE CASE

Claims 1–20 are pending and on appeal. Independent claims 1 and 10
are representative and read as follows:
1. A surgical morcellator including a rotatable cylindrical
cutting blade having a distal end and a sharpened edge situated at the
distal end; and an anti-coring device comprising:
a shield situated at the distal end of the cutting blade and axially
moveable with respect thereto, the shield including a main body
having a bore formed axially therethrough for receiving a portion of
the cutting blade, and a protrusion extending axially from the main
body and partially about the circumference of the cutting blade, the
shield being axially positionable on the cutting blade in a first position
in which the main body thereof is disposed axially in alignment with
the sharpened edge of the rotatable cutting blade to substantially cover
the entire circumference of the sharpened edge of the cutting blade,
and at least a second position in which the protrusion is disposed
axially in alignment with the sharpened edge of the rotatable cutting
blade to cover a selected arcuate first portion of the circumference
thereof and to expose and not cover a second portion of the
circumference of the sharpened edge of the rotatable cutting blade, the
surgical morcellator further comprising an actuator coupled with the
shield for controlling axial movement of the shield relative to the
distal end of the cutting blade.

10. A method of laparoscopically transecting tissue from an
anatomical body of a patient during a surgical procedure, which
comprises the steps of:
using a surgical morcellator having an anti-coring device, the
surgical morcellator including a rotatable cylindrical cutting blade
having a distal end and a sharpened edge situated at the distal end, and
further including an outer sleeve having a bore formed axially
therethrough for receiving at least a portion of the rotatable cutting
blade, the outer sleeve having a distal end situated in proximity to the
distal end of the cutting blade, the outer sleeve being axially moveable
on the rotatable cutting blade, the anti-coring device including a shield
situated on the distal end of the outer sleeve and axially moveable
Appeal 2012-007967
Application 11/502,339

3
therewith to selectively cover and at least partially uncover the
sharpened edge of the rotatable cutting blade, the shield including a
main body having a bore formed axially therethrough for receiving a
portion of the cutting blade, and a protrusion extending axially from
the main body and partially about the circumference of the cutting
blade, the shield being axially positionable on the cutting blade in a
first position in which the main body thereof is disposed axially in
alignment with the sharpened edge of the rotatable cutting blade to
substantially cover the entire circumference of the sharpened edge of
the cutting blade, and at least a second position in which the
protrusion is disposed axially in alignment with the sharpened edge of
the rotatable cutting blade to cover a selected arcuate first portion of
the circumference thereof and to expose and not cover a second
portion of the circumference of the sharpened edge of the rotatable
cutting blade, the surgical morcellator further comprising an actuator
coupled with the outer sleeve for controlling axial movement of the
shield relative to the distal end of the cutting blade;
moving the actuator distally for positioning the shield of the
anti-coring device in the first position in which the shield substantially
covers the entire circumference of the sharpened edge of the rotatable
cutting blade;
inserting the distal end of the outer sleeve of the surgical
morcellator into a patient;
moving the actuator proximally for positioning the shield of the
anti-coring device in the at least second position in which at least the
second portion of the circumference of the sharpened edge of the
rotatable cutting blade is exposed; and
engaging the second portion of the sharpened edge of the
morcellator cutting blade exposed by the shield when the shield is in
the at least second position with the anatomical body of the patient for
transecting tissue from the anatomical body.

Claims 8 and 11, the other independent claims, contain limitations
similar to those of claim 1.
Appeal 2012-007967
Application 11/502,339

4
THE ISSUE

The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as being
obvious over Seeh2 and Zisterer3 (Ans. 4–14).
The Examiner finds that Seeh discloses a surgical morcellator having
an anti-coring device (see, e.g., id. at 4–5), and a corresponding method of
use (id. at 10–11), wherein the anti-coring device comprises a shield with a
main body having a bore for receiving a cutting blade and a protrusion
extending partially around the cutting blade (see, e.g., id. at 4–5). The
Examiner finds that the shield is axially positionable on the cutting blade in
a first position that substantially covers the entire circumference of the
cutting blade and a second position that covers a selected arcuate portion of
the blade and exposes a second portion of the blade (id.). The Examiner
acknowledges that Seeh does not disclose an actuator for controlling axial
movement of the shield (see, e.g., id. at 5). The Examiner relies on Zisterer
to supply this limitation and concludes that it would have been obvious to
modify Seeh’s device and method by providing an actuator as taught by
Zisterer, “for the purpose of allowing the operator the greatest possible
freedom of movement through the use of a single button actuator to expose
or cover the blade during a surgical procedure” (see, e.g., id. at 5–6).
The issue is: Does the evidence of record support the Examiner’s
conclusion that Seeh and Zisterer render the claims obvious?

2 Seeh, D., US 2006/0189920 A1, filed Dec. 21, 2005, published Aug. 24,
2006.
3 Zisterer et al., US 2002/0035372 A1, published Mar. 21, 2002.
Appeal 2012-007967
Application 11/502,339

5
FINDINGS OF FACT

FF1. Seeh’s Figure 4 is reproduced below.

Figure 4 shows a side view of a “morcellator, for cutting biological and
especially human tissue, [which] consists essentially of a hollow cutting tube
[2] mounted rotatably in handle 1” (Seeh ¶¶ 35, 42).
FF2. Seeh discloses that:
the cutting tube 2 . . . is coaxially surrounded . . . by an outer
tube formed for instance as a trocar sleeve 5, whose distal end,
while forming a point 5a running at an angle in the longitudinal
direction, in such a way that the trocar sleeve 5 overhangs the
cutting tube 2 at least in the area of the point 5a on the distal
side. Besides holding open the access way to the operating
area, the trocar sleeve 5 serves to allow cover at least partially
the blade 2a of the cutting tube 2, for instance upon introducing
the morcellator into the operating area, in order to cause no
unintentional damage on tissue that is to be protected.
(id. ¶ 43).
FF3. Seeh discloses that the trocar sleeve 5 “can be mounted between
a position concealing the blade 2a and a position exposing the blade 2a in
the direction of the longitudinal axis 4 of the cutting tube 2” (id. ¶ 43).
Appeal 2012-007967
Application 11/502,339

6
Specifically, the cutting tube 2 can be “mounted between a position
overhanging the point 5a of the trocar sleeve 5 and a position withdrawn
behind the point 5a of the trocar sleeve 5 in the direction of the longitudinal
axis of the instrument” (id. ¶ 44).
FF4. Zisterer discloses a morcellator with an outer tube 2 and a
cutting tube 3 (Zisterer ¶ 17). Zisterer discloses that the “distal end of the
cutting tube 3 is designed as the blade 5 for cutting biological and notably
human tissue” (id. ¶ 17).
FF5. Zisterer’s Figures 1a and 1b are reproduced below.

Figures 1a and 1b show the morcellator in the initial and working positions,
respectively (id. ¶¶ 14–15), wherein, in Figure 1a, “the outer tube 2
protrudes beyond the distal end of the cutting tube 3 in such a way that the
Appeal 2012-007967
Application 11/502,339

7
blade 5 of the cutting tube 3 is entirely covered by the outer tube 2” and
wherein, in Figure 1b, “the blade 5 of the cutting tube 3 protrudes from the
distal end of the outer tube 2, so that the blade 5 can be used for cutting
tissue” (id. ¶¶ 18–19).
FF6. Zisterer discloses:
To displace the morcellator 1 from the initial position shown in
FIG. 1a to the working position of FIG. 1b, the cutting tube 3 in
this illustrated model is immovably fixed to the manipulator 4
in the longitudinal direction, whereas the outer tube 2 is
displaceable in relation to the cutting tube 3 axially to
longitudinal axis 7. In the initial position, the outer tube 2 is
blocked against displacement in the axial direction by a
blocking element 8 which contacts the proximal end of the
outer tube 2. The blocking element 8 can be released by means
of an actuator button 9 positioned on the manipulator 4. To do
this, the actuator button 9 is pressed against the force of a
pressure spring 10 into the housing of the manipulator 4 . . . .
[and] upon pressure on the actuator button 9, the blocking
element 8 is pulled downward, by means of the pin 13
positioned in the curved track 12, against the force of a pressure
spring 14, out of the position that blocks the outer tube 2.
(Id. ¶ 22).
FF7. Zisterer discloses that the invention provides “the greatest
possible freedom of movement because displacing the outer tube from the
initial position to the working position requires only a single pressure on the
actuator button in order to release the blocking element that is in contact
with the proximal end of the outer tube” (id. ¶ 9).
Appeal 2012-007967
Application 11/502,339

8
PRINCIPLES OF LAW

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
ANALYSIS

We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–14; FF1–7) and agree that claims
1–20 would have been obvious over Seeh and Zisterer. We address
Appellant’s arguments below.
With respect to all independent claims, Appellant argues that Seeh
does not teach that trocar sleeve 5 is “axially movable” or “axially
positionable” in first and second positions (covering the entire blade or
covering only a selected portion of the blade, respectively) (App. Br. 9–13).
Regarding claim 10, Appellant also argues that Seeh does not disclose the
steps of “positioning the shield” in the first and second positions (id. at 13).
We disagree. Seeh states that trocar sleeve 5 “can be mounted
between a position concealing the blade 2a and a position exposing the blade
2a in the direction of the longitudinal axis 4 of the cutting tube 2” (FF3).
We are unpersuaded by Appellant’s argument that this disclosure merely
teaches that the trocar sleeve covers part of the cutting tube and exposes part
of the cutting tube (App. Br. 9). Such a reading ignores the language
“between a position concealing . . . and a position exposing the blade.” We
agree with the Examiner that Seeh discloses that the shield is axially
positionable “between” the two positions (Ans. 15).
Appeal 2012-007967
Application 11/502,339

9
Appellant argues that Seeh lacks any “structure that enables the trocar
sleeve to move distally and/or proximally relative to cutting tube 2” (App.
Br. 9).
We are not persuaded. As explained above, Seeh discloses moving
the trocar sleeve between two positions (i.e., the trocar sleeve is “axially
movable” between the positions). Moreover, even if true, such a deficiency
would not be dispositive. The claims are rejected under 35 U.S.C. § 103,
based on the combined teachings of Seeh and Zisterer, wherein Zisterer
teaches an actuator that controls axial movement of a shield relative to a
cutting blade (FF6). The test for obviousness is what the combined
teachings of the references as a whole would have suggested to those of
ordinary skill in the art, not merely what Seeh discloses. In re Keller, 642
F.2d 413, 425 (CCPA 1981). Here, the Examiner has put forth an articulated
reasoning with a rational underpinning to support the legal conclusion of
obviousness in light of these references (see, e.g., Ans. 5–6; see also FF7).
KSR, U.S. 398 at 418.
Additionally, Appellant argues that Zisterer does not teach an
“actuator . . . for controlling axial movement of the shield” because
Zisterer’s actuator 9 merely moves blocking element 8, after which the outer
tube 2 is moveable with respect to the cutting tube 3 by the application of
pressure to outer tube 2 (App. Br. 11).
We are not persuaded. Claim 1, for example, recites “an actuator
coupled with the shield for controlling axial movement of the shield.”4 The
claims do not require that axial movement of the shield be effectuated with a

4 The other independent claims contain similar language.
Appeal 2012-007967
Application 11/502,339

10
single movement. Rather, the claims require that the actuator “control[]”
movement of the shield. Zisterer’s disclosure of an actuator 9 that removes
blocking element 8 from the path of the outer tube 2 satisfies this language
(FF6–7).
Appellant also argues that Zisterer does not teach “moving the outer
tube to a position in which the outer tube covers a first part of the cutting
tube while uncovering a second part of the cutting tube” (App. Br. 11).
We are unpersuaded because, again, Appellant attacks the reference
individually, even though the Examiner has presented an obviousness
rejection. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The present rejection depends on the combination of
Zisterer and Seeh, wherein Seeh discloses the claimed positions (FF1, FF3).

Appeal 2012-007967
Application 11/502,339

11
CONCLUSION OF LAW

The evidence of record supports the Examiner’s conclusion that Seeh
and Zisterer render obvious claims 1–20.

SUMMARY

We AFFIRM the rejection of claims 1–20 on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb