Ex Parte Pandey

Patent Trial and Appeal Board

Feb 13, 2017

13437222 (P.T.A.B. Feb. 13, 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.
13/437,222 04/02/2012 Ashwini K. Pandey H-US-03016 (203-8198) 9181
759050855
Covidien LP
555 Long Wharf Drive
Mail Stop 8N-1, Legal Department
New Haven, CT 06511
02/15/2017 EXAMINER
WOO, JAE KYUN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
mail @ cdfslaw. com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHWINI K. PANDEY
Appeal 2015-004996
Application 13/437,2221
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—6. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, “[t]he real party in interest... is Covidien
LP.” Appeal Br. 1.
Appeal 2015-004996
Application 13/437,222
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A surgical camera assembly, comprising:
an elongated proximal member defining a longitudinal
axis;
an elongated distal member defining a pointed distal tip
configured to puncture tissue to permit insertion of the surgical
camera assembly at least partially into an internal surgical site,
the elongated distal member pivotably coupled to the elongated
proximal member and movable relative thereto between a first
position, wherein the elongated distal member is substantially
aligned with the elongated proximal member and the
longitudinal axis, and a second position, wherein the elongated
distal member is angled off of the longitudinal axis; and
first and second surgical cameras fixedly disposed within
the elongated distal member, each of the first and second surgical
cameras oriented to define a viewing area in a direction
extending from an outer lateral periphery of the elongated distal
member, the first and second surgical cameras fixed in position
relative to one another and longitudinally spaced-apart from one
another, the first and second surgical cameras configured to
produce first and second video images, respectively, that are used
in conjunction with one another to provide a three-dimensional
video image of the internal surgical site.
Rejections
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Minosawa (US 2007/0265502 Al, pub. Nov. 15, 2007), Kaali
(US 5,334,150, iss. Aug. 2, 1994), and Irion (US 6,450,950 B2, iss. Sept. 17,
2002).
Claims 3—6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Minosawa, Kaali, Irion, and Harrington (US 4,867,404, iss. Sept. 19, 1989).
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Appeal 2015-004996
Application 13/437,222
ANALYSIS
The Examiner determines that it would have been obvious to one
having ordinary skill in the art to modify Minosawa’s elongated distal
member (image pickup device) 142 in view of Kaali’s teaching of a pointed
distal tip because it allows Minosawa’s elongated distal member to be
inserted into a patient “without additional implements[,] which is a well-
known feature in the art.” Final Act. 2—3; see Minosawa, 1 88, Fig. 17;
Kaali, Fig. 6. The result of this modification appears to position or re­
position a puncturing device to the distal tip of Minosawa’s elongated distal
member 142. See Final Act. 2—3, 4; see also Advisory Act. 2; Ans. 2—3.
The Appellant argues that the Examiner’s rejection fails to include an
objective reason to combine the teachings of Minosawa and Kaali and as
such, the combination is improper and the rejection of independent claim 1
is inadequately supported. See Appeal Br. 6—8; Reply Br. 3. The
Appellant’s argument forces us to weigh the evidence to understand if it is
reasonable that a person of ordinary skill in the art would have modified
Minosawa’s elongated distal member 142 in view of Kaali’s pointed distal
tip because the result would not include “additional implements.” In other
words, is it reasonable that one of ordinary skill in the art would have
positioned or re-positioned a puncturing device to the distal tip of
Minosawa’s elongated distal member 142 merely because it does not add
additional implements.
In weighing the evidence, it is difficult to ascertain the resulting
features of the Examiner’s modification, particularly with regard to
Minosawa’s trocar 3. In the Final Office Action, the Examiner suggests that
the sensors associated with trocar 3 remain as a feature in the resulting
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Appeal 2015-004996
Application 13/437,222
combination of teachings. See Final Act. 4. However, in the Answer, the
Examiner suggests that the sensors of trocar 3 do not remain as a feature in
the resulting combination of teachings. See Ans. 2—3. The inclusion or
exclusion of the sensors of trocar 3 is relevant to understanding how the
Examiner modified Minosawa’s elongated distal member 142 in view of
Kaali’s teaching of a pointed distal tip and how we weigh the evidence and
technical reasoning presented by the Examiner and the Appellant. In light of
this confusion, and in fairness to the Appellant who argued with respect to
the position expressed by the Examiner in the Answer, we elect to rely on
the resulting combination of teachings of Minosawa and Kaali as presented
in the Answer.
The Appellant asserts that the result of the Examiner’s modification,
as presented in the Answer, would entail a replacement of Minosawa’s
trocar 3 with Minosawa’s elongated distal member 142 having a pointed
distal tip to puncture the skin of a patient; and, that this replacement incurs a
loss of functionality of Minosawa’s trocar 3 to aid in the automation of an
endoscope (i.e., endoscope 140). See Appeal Br. 6, 8; Reply Br. 3.
In response, the Examiner states that “[t]he automatic nature of the
trocar . . . can be discarded from the combination.'1'’ Ans. 2—3 (emphasis
added). However, discarding the automatic nature of Minosawa’s trocar is a
further modification of Minosawa’s teachings. But see id. at 2 (the
Examiner finds “Minosawa at least teaches a simple manual trocar by
disclosing a manual trocar that can be automated.”). And, to the extent the
Examiner provides a reason for this further modification, it would seem to
relate to the Examiner’s finding that the teachings of “Minosawa and Kaali
can be easily combined in a predictable manner by a skilled artisan into a
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Appeal 2015-004996
Application 13/437,222
configuration that provides an endoscope incorporated with a puncture tip”
(Ans. 3). However, the foregoing fails to adequately explain why a person
of ordinary skill in the art would discard the automatic nature of Minosawa’s
trocar.
Notably, the Examiner further modifies Minosawa’s teachings in view
of Irion’s disclosure of two surgical cameras. Final Act. 3. The reasoning
associated with this modification does not remedy the deficiency of the
Examiner’s rejection as discussed above. See id.
In summary, the Examiner’s rejection lacks adequate reasoning to
support the conclusion of obviousness. Thus, we do not sustain the
Examiner’s rejection of independent claim 1 and dependent claim 2 under
35 U.S.C. § 103(a) as unpatentable over Minosawa, Kaali, and Irion. The
remaining rejection based on Minosawa, Kaali, and Irion in combination
with Harrington relies on the same inadequately supported reasoning as
discussed above. As such, we do not sustain the rejection of dependent
claims 3—6 under 35 U.S.C. § 103(a) as unpatentable over Minosawa, Kaali,
Irion, and Harrington.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—6.
REVERSED
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