Ex Parte O

Board of Patent Appeals and Interferences

Jun 26, 2006

10646675 (B.P.A.I. Jun. 26, 2006)

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and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte PETER T. O’HEERON
___________

Appeal No. 2006-1603
Application No. 10/646,675
___________

ON BRIEF
___________

Before FRANKFORT, OWENS and FETTING, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's final
rejection of claims 8, 9 and 18, which are all of the claims pending and under
consideration in this application. Claims 15-17 have been restricted by the examiner,
but have not been cancelled.

We AFFIRM IN PART, ADD A NEW GROUND OF REJECTION, AND REMAND.
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Application No. 10/646,675

BACKGROUND

The appellant's invention relates to a kit of obturators for use in endoscopic
surgery. An understanding of the invention can be derived from a reading of exemplary
claim 18, which is reproduced below.
18. A medical procedure kit, comprising:
(a) at least one disposable, shield-less obturator for use in
endoscopic surgery, each said obturator comprising (i) a
proximal end where the obturator is grasped, (ii) a distal end
having a tip which is used either to cut or to separate the tissue
of a patient, (iii) a shaft between the proximal and distal ends,
the proximal end and distal ends [sic] and the shaft being
formed as a monolithic structure, and (iv) an orientation
indicator located near the proximal end which enables a user to
determine by touch the relative position of the tip at the distal
end; and

(b) a case for enclosing said at least one obturator.

PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Johnson 5,118,297 Jun. 2, 1992

Vidal et al. (Vidal) 5,405,328 April 11, 1995

Metcalf et al. (Metcalf) 5,453,094 Sep. 26, 1995
In addition, we make the following references of record:

Burchette, Jr. (Burchette) 5,057,082 Oct. 15, 1991
(Burchette is incorporated by reference within Metcalf)

Hickle et al. (Hickle) US2003/0074223 Apr. 17, 2003

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REJECTIONS

Claims 18 and 8 stand rejected under 35 U.S.C. § 102(b), or, in the alternative,
under 35 U.S.C. § 103, as being unpatentable over Vidal.
Claims 18 and 9 stand rejected under 35 U.S.C. § 103, as being unpatentable
over Johnson in view of Metcalf.

Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the
examiner's answer (mailed January 31, 2006) for the examiner's reasoning in support of
the rejections, and to appellant's brief (filed October 26, 2005) and reply brief (filed
March 6, 2006) 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
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations that follow.
Claim Construction
The examiner and the appellant have differing views on 2 of the limitations in
claim 18.
1. The appellant argues (Brief, p. 12) that the limitation of an obturator for
use in endoscopic surgery has patentable weight as a structural limitation
of the shield-less obturator, when contrasted with the obturator of
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Application No. 10/646,675

Johnson, which is for use in an endodonic filler application, i.e. a root
canal procedure. The appellant further argues that this distinction is
supported by the claim limitation that the obturator has a distal end with a
tip that is used either to cut or separate tissue. The examiner argues
(Answer p. 11) that this phrase is of no patentable moment because in
order to further limit the claim there must be some distinction based upon
the intended use recited. The examiner further argues that, in apparatus,
article, and composition claims, intended use must result in a structural
difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art.
2. The appellant argues (Brief p. 10) that the limitation of the shaft being
formed as a monolithic structure is a structural limitation. The examiner
argues (Answer p. 9) that the limitation is a product by process limitation
because the claim phrase “being formed as” is a manner in which a series
of operations, actions, functions or steps proceeds.
With regard to the first claim construction issue, use for endoscopic surgery, we
first note that functional limitations in an apparatus claim are met by prior art if the
structure shown in the art inherently has the capacity to perform that function. In re
Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed Cir 1997). Endoscopic surgery itself
requires cutting or separation of tissue to make the portion of the anatomy to be
subjected to endoscopic surgery accessible. The specification at p. 2, Vidal at col. 1,
lines 32-35 and Metcalf col. 1, lines 30-33 all teach that an obturator, as used in
endoscopic surgery, is, and therefore must be capable of being, placed in a bore
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(referred to as the lumen or access tube) in a trocar and used in cutting or separating
tissue.
Therefore, the claim limitation of use in endoscopic surgery adds structural
narrowing to the claimed obturator in that the obturator must have a structure which is
capable of fitting in a trocar and of cutting or separating tissue.
With regard to the second claim construction issue, the claim explicitly requires
that the proximal end, distal ends and the shaft are formed as a monolithic structure.
While it is true that, as the examiner asserts, this means that the formation process
must be such as to make the obturator monolithic, this limitation affects the scope of the
resultant structure at least as much as the process that achieves that structure. That is,
the claimed “being formed as” implies being formed to result as, and so we conclude
the claimed obturator must structurally be monolithic.
Having resolved the claim construction issues, we now turn to the rejections.

Claims 18 and 8 stand rejected under 35 U.S.C. § 102(b), or, in the alternative,
under 35 U.S.C. § 103, as being unpatentable over Vidal.

As noted above, the limitation of “the proximal end and distal ends [sic] and the
shaft being formed as a monolithic structure” is a structural limitation. None of the
obturators taught by Vidal are monolithic, but instead are comprised of multiple parts.
This includes the prior art obturators that have a safety shield, because the safety shield
negates any otherwise monolithic character of the obturator.
Accordingly, we do not sustain the rejection of claims 18 and 8 under 35 U.S.C.
§ 102(b) as being unpatentable over Vidal.
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We note that the examiner asserted an alternate rejection under 35 U.S.C. § 103
(Answer p. 4). The examiner argued (Answer p. 10) that one of ordinary skill in the art
would have been motivated to form an obturator as a monolithic structure so as to make
what is separate, integral, which makes for ease of assembly and use. The appellant
has not argued or provided any evidence that one of ordinary skill would not have had
such a motivation to form an obturator as a monolithic structure and therefore the
examiner’s statement of essentially notoriously well known construction techniques is
sufficient evidence to meet the burden of establishing this element of the claim 18
subject matter1.

The appellant argues (Brief p. 11) that Vidal fails to show the claim limitation of
an orientation indicator located near the proximal end which enables a user to
determine by touch the relative position of the tip at the distal end. The examiner
responds (Answer p. 4 and 8) that defining a raised surface at the proximal end is
manifestly capable of functioning as an orientation indicator, and enables a user to
determine by touch the relative position of the tip at the distal end. To this, the appellant
responds (Reply Brief p. 3) that the difference in diameters is substantially the same for
all points around the circumference of the shaft and handle and the only information that
can be obtained by touch from this difference in diameters is that a change in diameter
exists near the most proximal part of the obturator.

1 We note that Metcalf, applied in the other rejection under 35 U.S.C. § 103 in this appeal, is issued to the
same assignee, Minnesota Mining and Manufacturing Company, with one inventor, i.e. Gerald L. Metcalf,
in common with Vidal. Fig. 4 of Metcalf shows a monolithic obturator for use in endoscopic surgery,
supporting the examiner’s assertion that monolithic obturators would be within the capacity of one of
ordinary skill in the art.
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From this exchange we surmise that the appellant is arguing that Vidal shows no
indicator such that one can know the axial rotation degree along the axis of the shaft
(Reply Brief p. 4), whereas the examiner is arguing that the claim is more broad. We
note in particular that the phrase “the relative position of the tip” contains no criterion
from which to measure the relative position, i.e. the position may be relative to anything.
Although not explicitly stated by the examiner, we surmise the examiner’s arguments
suggest that the tip position, as argued by the examiner, is relative to three dimensional
space, for surely, a grip on the raised surface of the Vidal obturators enables a user to
determine in which direction the tip is pointing in three dimensional space.
The absence of an explicit limitation on what the relative position is relative to
results in a claim of broader scope than that which the appellant argues, and such a
broader scope encompasses a relative position as argued by the examiner.
Because this is the only limitation argued by the appellant against the rejection
under 35 U.S.C. § 103 over Vidal, we sustain the examiner’s rejection of claim 18
under 35 U.S.C. § 103 over Vidal.
The appellant has argued that claim 8 is patentable because its underlying claim
18 is patentable and has provided no separate arguments for patentability of claim 8.
Accordingly, claim 8 falls with claim 18 and we similarly sustain the rejection of claim 8,
although we make no opinion regarding the merits that might have been presented
regarding the separate patentability of claim 8.
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Claims 18 and 9 stand rejected under 35 U.S.C. § 103, as being unpatentable over
Johnson in view of Metcalf

The appellant argues that Johnson does not show an obturator for use in
endoscopic surgery. As we discussed in claim construction above, to be for use in
endoscopic surgery, an obturator must be capable of being placed in a bore (referred to
as the lumen or access tube) in a trocar and of cutting or separating tissue. We note
that dental obturator is structurally similar to an endoscopic obturator, differing primarily
in size. Obturators used in endoscopic surgery and in dentistry as portrayed in Metcalf
and Johnson have the same structural characteristics as in the appellant’s claims, i.e.
they have proximal ends designed for grasping and distal ends with a tip, and with a
shaft connecting the two ends and an enlarged circumference at the grasping end that
provides orientation information relative to the tip, at least in three dimensional space.
Both references have at least one embodiment in which the tip is blunt [compare
Johnson fig. 1 and Metcalf col. 3 lines 64-67].
Associated with this argument of use in endoscopic surgery, the appellant argues
[See Brief p. 12; Reply Brief, p. 6] that the tip of a dental obturator is not used to cut or
separate tissue because it is covered with a filler material and designed to be inserted in
a pre-drilled canal in a tooth. The examiner argues (Answer p. 11) that such an
insertion is a cutting or separation of tooth tissue by virtue of such an insertion into such
tissue. Johnson’s blunt tip is capable of separating tissue as taught in the background
as filling and entombing, thus separating, the pulpal material (tissue) remaining in the
tooth. [See col. 1 lines 39-48]
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Thus, we find that the appellant’s arguments that the examiner failed to present a
prima facie case are unpersuasive and we sustain the examiner’s rejection of claim 18.
The appellant has argued that claim 9 is patentable because its underlying claim
18 is patentable and has provided no separate arguments for patentability of claim 9.
Accordingly, claim 9 falls with claim 18 and we similarly sustain the rejection of claim 9,
although we make no opinion regarding the merits that might have been presented
regarding the separate patentability of claim 9.
New Grounds of Rejection Under 37 CFR § 41.50(b)
Pursuant to 37 CFR § 41.50(b), we enter the following new ground of rejection:
Claims 18 and 8 are rejected under 35 U.S.C. § 102(b) as being unpatentable
over Metcalf, which fully incorporates the contents of Burchette by reference [See
Metcalf col. 5 lines 40-48].
Metcalf’s Fig. 4 and corresponding description at col. 5 lines 14-16, especially as
contrasted with its Fig. 5 and corresponding description at col. 5 lines 31-33, portray a
monolithic obturator with a pointed distal end for cutting tissue and an enlarged
circumference proximal end for grasping, and which enlarged circumference enables
the holder to apprehend the orientation of the tip in three dimensional space relative to
the grasped end. Metcalf shows a kit of such obturators. [See Fig. 1] As further textual
evidence of this anticipation, Burchette, fully incorporated by reference within Metcalf,
teaches an obturator that
is preferably a unitary, one-piece structure made of polymeric
material, either thermoplastic or thermoset and from a process which
results in the final manufacture as a single article of manufacture.
Examples of suitable polymeric materials include, without limitation,
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nylons, polyacetals, and polycarbonates. As shown in FIG. 2, the mandrel
16 is formed with a main shank portion 18, a knob-type handle 20 at
one end, and at the distal end a piercing and cutting end 22. The
knob 20 is made integral with the shank 18 and having an outer surface
24 of suitable shape for the palm of the user. The knob 20 is made of a
larger diameter than the shank 18 to permit the insertion of the shank 18
between the user's fingers for easy withdrawal of the obturator. [See col.
3 lines 22-36] (emphasis added)

As to claim 8, the kit shown by Metcalf [See Fig. 1 and col. 3 lines 59-67]
includes at least one embodiment of each of the three claimed styles of tips. We note
that claims 18 and 8 only require that at least one of the obturators in the kit meet the
monolithic structural limitations of claim 18.
REMAND TO EXAMINER
Pursuant to our authority under 37 CFR § 41.50(a)(1), we remand this application
to the Examiner to consider rejecting claim 9 over Metcalf, which fully incorporates the
contents of Burchette by reference, in view of Hickle.
Claim 9 depends from claim 18, the rejection of which under Metcalf, which fully
incorporates the contents of Burchette by reference, is shown above. Claim 9 further
adds the limitations of graphical and/or textural information that can assist in matching
an obturator with a trocar. As with claims 18 and 8, claim 9 is an apparatus claim, and
so the limitation regarding such assistance goes only to the structural capacity to
provide such assistance, and not to an actual performance of such assistance.
Hickle shows encoding information related to medical supplies and kits, the
information being marked on such supplies [See para. 2 and 11] and relates this to
medical supplies used in endoscopic surgery [See para. 5] where the information is
used to ensure proper form, fit and function [See para. 7].
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CONCLUSION
To summarize:
• The decision of the examiner to reject claims 18 and 8 under 35
U.S.C. § 102(b) as being unpatentable over Vidal is not sustained.
• The decision of the examiner to reject claims 18 and 8 under
35 U.S.C. § 103, as being unpatentable over Vidal is sustained.
• The decision of the examiner to reject claims 18 and 9 under
35 U.S.C. § 103, as being unpatentable over Johnson in view of Metcalf is
sustained.
• A new ground of rejection rejecting claims 18 and 8 under 35
U.S.C. § 102(b) as being unpatentable over Metcalf, which fully
incorporates the contents of Burchette, is newly entered.
• The appeal is remanded to the examiner to consider the applicability of
Hickle toward the issue of patentability of claim 9 when combined with the
teachings of Metcalf, which fully incorporates the contents of Burchette.
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides "[a]ppellant may
file a single request for rehearing within two months from the date of the original
decision of the Board."
In addition to affirming the examiner's rejection of one or more claims, this
opinion contains a new ground of rejection pursuant to 37 CFR § 41.50(b) and a
remand pursuant to 37 CFR § 41.50(e) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review." 37 CFR § 41.50(e) provides
that
[w]henever a decision of the Board includes a remand, that decision shall
not be considered final for judicial review. When appropriate, upon
conclusion of proceedings on remand before the examiner, the Board may
enter an order otherwise making its decision final for judicial review.
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
The effective date of the affirmance is deferred until conclusion of the
proceedings before the examiner unless, as a mere incident to the limited proceedings,
the affirmed rejection is overcome. If the proceedings before the examiner do not result
in allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejections, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 103 1.136(a)(1)(vi).
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AFFIRMED IN PART
NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(b)
REMAND TO EXAMINER UNDER 37 CFR § 41.50(a)(1)

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

AWF/ki
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Clarence Emile Ericksen
3200 Southwest Freeway, Suite 2355
Houston, TX 77027

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