Ex Parte Ott

Patent Trial and Appeal Board

Feb 23, 2017

12829072 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
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.
12/829,072 07/01/2010 Douglas E. Ott 075097.0110 7865
5073 7590 02/27/2017
RAKFR ROTTST T P
EXAMINER
2001 ROSS AVENUE IWAMAYE, ANDREW MICHAEL
SUITE 600
DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS E. OTT
Appeal 2015-004296
Application 12/829,072
Technology Center 3700
Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1—7, 9-17, 19, 20, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-004296
Application 12/829,072
CLAIMED SUBJECT MATTER
The claims are directed to a surgical method for performing a
coronary blood vessel bypass. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A surgical method for performing a coronary blood vessel
bypass, comprising:
making a first incision in a limb of a patient;
receiving a gas from a source;
humidifying and warming the gas received from the
source;
delivering the humidified and warmed gas into the first
incision;
separating one or more blood vessel branches from a blood
vessel using at least one surgical instrument inserted through a
second incision in the limb of the patient;
removing a blood vessel segment from the patient through
a third incision in the limb of the patient, wherein the blood
vessel segment was in contact with the humidified and warmed
gas delivered into the first incision prior to the removal; and
attaching at least a portion of the blood vessel segment to
a coronary blood vessel.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Ott US 5,411,474 May 2, 1995
US 2004/0254524 A1 Dec. 16, 2004
US 2005/0107767 A1 May 19, 2005
US 2006/0074444 A1 Apr. 6, 2006
US 2008/0243050 A1 Oct. 2, 2008
Spearman
Ott ’767
Lin
Power
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Appeal 2015-004296
Application 12/829,072
REJECTIONS
Claims 1—3, 7, 9-13, 15—17, 20, and 22—23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Lin, Ott and Spearman
Claims 4—6 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lin, Ott, Spearman and Ott ’767.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lin, Ott, Spearman, and Power.
OPINION
Independent claims 1, 22, and 23 are argued as a group, for which
claim 1 is representative. 37 C.F.R. § 41.37(c)(l)(iv). Dependent claims are
argued based only on dependency without any additional subgroupings
according to the rejections. App. Br. 14.
There does not appear to be any disagreement between Appellant and
the Examiner concerning the content of the prior art cited against claim 1.
Lin discloses a basic endoscopic vein-harvesting technique employing
carbon dioxide (CO2) gas to insufflate the dissected tunnel. Non-Final Act.
2—3 (citing Lin paras. 5, 34, 48—55 and Figs. 3A-3D). In Ott, Appellant’s
prior patent, it was taught that humidification and warming of insufflating
CO2 helped mitigate problems associated with drying of exposed tissue
surfaces within the abdomen, and the possibility of adhesion formation
within the peritoneal cavity. Non-Final Act. 4 (citing Ott col. 2,11. 31 44).
Ott was, at the time, primarily concerned with laparoscopy but stated more
generally, “[t]he procedure is preferably endoscopy such as laparoscopy,
colonoscopy, gastroscopy, bronchoscopy, and thoracoscopy.” Ott, col. 10,11.
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Application 12/829,072
60-62. Spearman also recognizes problems associated with CO2 used for
insufflation:
the use of medical gas, which is often referred to as an
insu[f]flation gas, can cause additional trauma to the body
resulting in cell stress or cell death. The trauma caused by the
medical gas is due to the properties or state of the medical gas
that is delivered to the body cavity. For example, the temperature
of the gas as well as the moisture content of the gas can produce
cell desiccation, cell stress, inflammation and cell death which
can result in adhesions as well as pain to the patient and
consequently a longer recovery time.
Spearman, para. 5; see also Non-Final Act. 4 (citing Spearman paras. 5, 29).
Spearman continues, “[t]he system is particularly useful in laparoscopic
surgery although other types of surgeries requiring insufflation can benefit
by the present invention which can prevent peritoneal cell damage,
evaporation and desiccation effects.” Spearman para. 26.
Appellant is correct in the sense that no single reference cited by the
Examiner teaches using humidified CO2 specifically for vein harvesting.
See App. Br. 9-10. However, identifying each and every step recited in a
method claim, or a particular subcombination of steps, in a single prior-art
reference has never been a requirement for supporting a rejection under
§ 103(a). Ans. 2 (“Appellant is arguing the references individually.”). The
Examiner articulated a rational basis for combining the prior-art teachings,
which was taken directly from Spearman: “in order to limit or inhibit cell
stress, cell desiccation, cell death, and/or inflammation and consequently
reduce patient discomfort/pain and recovery times.” Non-Final Act. 4.1
1 We note that to the extent the Examiner previously relied on discouraging
adhesion formation as a motivation to combine the teachings of the prior art,
the Examiner no longer relies on such a motivation. See Non-Final Act.
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Application 12/829,072
While we recognize that Ott and Spearman were particularly concerned with
laparoscopy, we are not apprised of any reason why cell stress, desiccation,
and death would not also be a concern in an endoscopic vein harvesting
procedure, such as Lin’s.
Appellant contends that “Appellant discovered that dry insufflation
gas was causing problems associated with endoscopic vein harvesting.”
App. Br. 10-11 (citing Dec’l para. 6, Spec. para. 4, and Culclasure* 2); see
also Dec’l para. 5. Appellant further contends to have “discovered that the
use of humidified and warmed insufflation gas relieves these problems.”
App. Br. 12—13 (citing Dec’l paras. 8—9, Spec. para. 4, and Culclasure.
Appellant relies heavily on a quote from In re Sponnoble, 405 F.2d 578, 585
(CCPA 1969), reproduced in the MPEP § 2141.02 (III): “‘[A] patentable
invention may lie in the discovery of the source of a problem even though
the remedy may be obvious once the source of the problem is identified.
This is part of the ‘subject matter as a whole’ which should always be
considered in determining the obviousness of an invention under 35 U.S.C. §
103.’” See App. Br. 10, 13.
In Sponnoble, the appellant recognized that permeability of a vial plug
itself, as opposed to the tightness of the plug’s seal with its mating surfaces,
was allowing unwanted transmission of moisture therethrough. 405 F.2d at
585—6. The court pointed out that none of the cited prior-art references
“suggests that greater impermeability to liquid water is desired or
6—7. This renders the points raised in paragraph 4 of the Keuler Declaration
moot.
2 “Prevention of Vessel Desiccation and Maintenance of Normal
Morphology During Endovascular Harvesting Using Humidified Warmed
Gas,” Talley F. Culclasure et al., (2012)
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Appeal 2015-004296
Application 12/829,072
necessary.” Id. at 586. The court held, in effect, due to the absence of prior
recognition of the problem, there was no motivation to choose the claimed
solution. Id. Based on this and other factors, including secondary
considerations, the court reversed a decision of obviousness. Id.
Appellant does not specifically inform us as to how the present case
is analogous to Sponnoble. In Sponnoble there was an identified problem
with an incorrectly identified source. Section 2141.02 (III) of the MPEP
relied on by Appellant and quoted above goes on to state:
However, ‘discovery of the cause of a problem [.] . . does not
always result in a patentable invention.... [A] different situation
exists where the solution is obvious from prior art which contains
the same solution for a similar problem. ’ In re Wiseman, 596
F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (emphasis
in original).
Here, Ott and Spearman already recognized the problems associated
with CO2 insufflation during endoscopic procedures. See, e.g., Cross
Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005) (distinguishing Sponnoble based on knowledge of the
problem within the art). The results obtained via Appellant’s method (Dec’l
paras. 8, 9) are undoubtedly beneficial. However, Appellant did not
discover a new problem or identify a previously unknown source of an
existing problem as in Sponnoble. Ans. 3—5. Rather, Appellant applied the
knowledge and techniques generally available in the prior art to a specific
type of procedure. Appellant’s reliance on Sponnoble is misplaced.
Concerning Appellant’s argument regarding the age of the references
(App. Br. 14—15), the Examiner cites the familiar rule that age, or length of
time between the issuance of, references, without more, is generally not
indicative of nonobviousness. Ans. 5—6; see MPEP §§ 2145(VII) (citing,
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Application 12/829,072
inter alia, In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“The mere age
of the references is not persuasive of the unobviousness of the combination
of their teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem.”) reaffirmed by In re
Ethicon, Inc., 844 F.3d 1344, 1352 (Fed. Cir. 2017)). Appellant has not
entered any objective evidence to show, for example, failure of others, long-
felt need, or unexpected results, nor does the Examiner predicate the
rejection on an “obvious to try” rationale as in Leo. See, e.g., In re Ethicon,
supra', see also Arlington Indus. Inc. v. Bridgeport Fittings, Inc., 581 F.
App’x 859, 864 (Fed. Cir. Aug. 29, 2014) (nonprecedential).
On the totality of the record currently before us, the evidence of
obviousness outweighs the evidence against.
DECISION
The Examiner’s rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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