Ex Parte Ravikumar

Board of Patent Appeals and Interferences

Nov 12, 2009

11420927 (B.P.A.I. Nov. 12, 2009)

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.
11/420,927 05/30/2006 Sundaram Ravikumar RAV-024 1834
36822 7590 11/13/2009
GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE 407
STAMFORD, CT 06902
EXAMINER
LANG, AMY T
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
11/13/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SUNDARAM RAVIKUMAR
__________

Appeal 2009-009819
Application 11/420,927
Technology Center 3700
__________

Decided: November 12, 2009
__________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
surgical assembly. The Patent Examiner rejected the claims for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
Appeal 2009-009819
Application 11/420,927

2
STATEMENT OF THE CASE
The invention “relates [to] minimally invasive surgical instruments
incorporating a needle and a working device which extends through and
beyond the needle and which can be retracted into the needle.” (Id.) The
invention is said to have particular application to laparoscopic-type surgery,
although not limited thereto. (Id.) Claims 1-8, 10-17, 26 and 27, which are
all the pending claims, are on appeal.
The representative and separately argued claims read as follows:
1. A surgical assembly consisting essentially of:

a) a hollow needle having an outer diameter of substantially 2mm or
smaller and a sharp distal end for creating a puncture incision in the human
body; and

b) a surgical instrument consisting essentially of a shaft, end effectors
connected to said shaft at a first end of said shaft, said end effectors having
opposed distal tips, and a proximal handle or knob coupled to a second end
of said shaft, said surgical instrument having no wires extending through
said shaft or about said shaft for manipulating said end effectors, said shaft
extending through said hollow needle, said surgical instrument being
movable relative to said hollow needle, and said end effectors are biased to a
first position such that when said end effectors extend out of said needle said
end effectors automatically open relative to each other with said opposed
distal tips substantially separated from one another in a first position, and
when said hollow needle extends over said end effectors, said needle
operates on said end effectors to automatically force said end effectors into a
second position with said opposed distal tips disposed in proximate contact
to one another in said second position, and wherein said end effectors are
moveable relative to said outer hollow needle to a retracted position wherein
said distal tips of said end effectors are positioned proximal relative to said
sharp distal end of said outer hollow needle to thereby expose said sharp
distal end of said hollow needle.

3. A surgical assembly consisting essentially of:

Appeal 2009-009819
Application 11/420,927

3
a) a hollow needle having an outer diameter of substantially 2mm or
smaller and a sharp distal end for creating a puncture incision in the human
body;

b) a surgical instrument consisting essentially of a shaft, end effectors
connected to said shaft at a first end of said shaft, said end effectors having
opposed distal tips, and a handle or knob coupled to a second end of said
shaft, said surgical instrument having no wires extending through said shaft
or about said shaft for manipulating said end effectors, said shaft extending
through said hollow needle, said surgical instrument being movable relative
to said hollow needle, wherein said end effectors are biased to a first
position such that when said end effectors extend out of said needle said end
effectors automatically open relative to each other with said opposed distal
tips substantially separated from one another in a first position, and when
said hollow needle extends over said end effectors, said needle operates on
said end effectors to automatically force said end effectors into a second
position with said opposed distal tips, disposed in proximate contact to one
another in said second position, and wherein said end effectors are moveable
relative to said outer hollow needle to a retracted position wherein said distal
tips of said end effectors are positioned proximal relative to said sharp distal
end of said outer hollow needle to thereby expose said sharp distal end of
said hollow needle; and

c) at least one of
(i) a first fixing means coupled to said surgical instrument and said
needle for fixing a relative location of said surgical instrument and said
needle, and
(ii) second fixing means coupled to and movable relative to said
needle for fixing a relative location of said needle to a patient.

15. A surgical assembly according to claim 1, wherein:

the needle has a central axis, and the sharp distal end of said needle
has an end wall angled at substantially 35° relative to the central axis.

26. A surgical assembly according to claim 1, wherein:

the end effectors are moveable relative to the outer hollow needle to a
partially-extended position wherein the distal tips of the end effectors are
Appeal 2009-009819
Application 11/420,927

4
positioned outside but close to the sharp distal end of the outer hollow
needle such that the end effectors act as an obturator for protecting against
accidental trauma caused by the sharp distal end of the outer hollow needle.

27. A surgical assembly consisting of:

a) a hollow needle consisting essentially of a sharp distal end for
creating a puncture incision in the human body and a proximal handle or
knob;

b) a surgical instrument consisting essentially of a shaft, end effectors
connected to said shaft at a first end of said shaft, said end effectors having
opposed distal tips, and a handle or knob coupled to a second end of said
shaft, said surgical instrument having no wires extending through said shaft
or about said shaft for manipulating said end effectors, said shaft extending
through said hollow needle, said surgical instrument being movable relative
to said hollow needle, wherein said end effectors are biased to a first
position such that when said end effectors extend out of said needle said end
effectors automatically open relative to each other with said opposed distal
tips substantially separated from one another in a first position, and when
said hollow needle extends over said end effectors, said needle operates on
said end effectors to automatically force said end effectors into a second
position with said opposed distal tips, disposed in proximate contact to one
another in said second position, and wherein the end effectors are moveable
relative to the outer hollow needle to a retracted position wherein said distal
tips of said end effectors are positioned proximal relative to said sharp distal
end of said outer hollow needle to thereby expose said sharp distal end of
said hollow needle; and

c) at least one of
(i) a first fixing means coupled to said surgical instrument and
said needle for fixing a relative location of said surgical instrument and said
needle, and
(ii) second fixing means coupled to and movable relative to said
needle for fixing a relative location of said needle to a patient.

Appeal 2009-009819
Application 11/420,927

5
The Examiner rejected the claims as follows:
• claims 1, 2, 11-17 and 26 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Levin1 and Hasson;2
• claims 3-8 and 27 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Levin, Hasson, and Hamel3 or Sterman;4 and
• claim 10 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Levin, Hasson, Hamel or Sterman, and Bark.5
Claims 2, 11-14, 16 and 17 have not been argued separately and
therefore stand or fall with claim 1; claims 4-8 have not been argued
separately and therefore stand or fall with claim 3. 37 C.F.R.
§ 41.37(c)(1)(vii).

OBVIOUSNESS
Principles of Law Relating to Claim Interpretation
“In simple terms, a drafter uses the phrase ‘consisting of’ to mean ‘I
claim what follows and nothing else.’ A drafter uses the term ‘comprising’
to mean ‘I claim at least what follows and potentially more.’” Vehicular
Technologies Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 1383 (Fed.
Cir. 2000). The phrase “consisting essentially of” in a patent claim “has
long been understood to permit inclusion of components not listed in a

1 Pub. No. US 2003/0130693 A1, by John M. Levin et al., published Jul. 10,
2003.
2 U.S. Patent No. 4,174,715, issued to Harrith M. Hasson, Nov. 20, 1979.
3 U.S. Patent No. 7,001,333 B2, issued to Ross J. Hamel et al., Feb. 21,
2006.
4 Pub. No. US 2003/0145865 A1, by Wesley D. Sterman et al., published
Aug. 7, 2003.
5 U.S. Patent No. 5,354,283, issued to Jeffrey E. Bark et al., Oct. 11, 1994.
Appeal 2009-009819
Application 11/420,927

6
claim, provided that they do not ‘materially affect the basic and novel
properties of the invention.’” AK Steel Corp. v. Sollac, 344 F.3d 1234,
1239 (Fed. Cir. 2003) (citations omitted).

Principles of Law Relating to Obviousness
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Findings of Fact
1. Levin described a surgical assembly for laparascopic procedures that
comprised a hollow needle 104 and a surgical instrument 20. (Fig. 7.)
2. Levin’s needle had “a width, for example, about 14 gauge.” (Levin,
¶ 31.)
3. Levin taught that the instrument could be retracted in the hollow
needle, as shown by the position of the forceps in Fig. 9. (Id., ¶ 35.)
4. Hasson’s patent is entitled “MULTI-PRONGED LAPAROSCOPY
FORCEPS.”
5. Hasson disclosed that “the preferred instrument includes an internal
elongated shaft coupled to the prongs, and an outer elongated tubular
Appeal 2009-009819
Application 11/420,927

7
sleeve for slidably receiving the internal shaft and portions of the
flexible prongs.” (Col. 1, ll. 48-51.)
6. Hasson’s “forceps arms 18 are so mounted or formed on stem 12 as to
be normally resiliently biased outwardly, away from each other” (col.
3, ll. 5-7), and “[t]he elongated stem is slidable within the tubular
guide means such that the forceps arms 18 may be cammed by the
tubular sleeve 26 to draw their distal ends toward a clustered
relationship when the stem is moved rearwardly” (col. 3, ll. 18-23).
7. When operating Hasson’s instrument, “[m]ovement of the thumb-
operated actuator towards the finger grip means causes the stem to
move forward so that the prongs project to an open or expanded
position forwardly of the tubular guide tube.” (Col. 5, ll. 1-5.)
8. Hasson taught advantages of the spring loaded forceps were that
“[s]uch an instrument holds tissue securely with even tension and only
a minimal effort is necessary to maintain the held tissue in a stable
position.” (Col. 6, ll. 5-9.)

A. Rejection of claims 1, 15 and 26 over Levin and Hasson
The Issues
The Examiner’s position is that Levin described a surgical assembly
for laparoscopic procedures that comprised the elements claimed but for
forceps (“end effectors” as recited in claim 1) biased “automatically open”
when distally extended from the needle. (Ans. 3-4.) However, the
Examiner found that Hasson evidenced that forceps biased open were “well
known in the art,” and “advantageously require only minimal effort to hold
and maintain tissue in a stable position.” (Id. at 4.) The Examiner
Appeal 2009-009819
Application 11/420,927

8
concluded it would have been obvious to use Hasson’s forceps as an
instrument inserted through Levin’s needle. (Id. at 4-5.)
Appellant contends that each of Levin and Hasson teaches away from
the invention (App. Br. 16-17), and that the Examiner failed to address claim
limitations that (i) the instrument “consists essentially of” shaft, end
effectors, and a proximal handle; (ii) the instrument has no wires; and (iii)
the needle forces the end effectors into a second position (id. at 19-20).
Appellant argues that the combination of Levin’s needle with Hasson’s
forceps would have many more components than claimed. (Id. at 22.)
Further, “the distal tips of Hasson are not disposed in proximate contact to
one another as required by claim 1, and Hasson actually teaches away from
such proximate contact.” (Id. at 21.) Appellant contends that “the
Examiner’s stated incentive for combination is not supported by any
evidence,” and “the opposite may be true.” (Id. at 23.)
Appellant contends that claim 15’s “end wall angled at substantially
35° relative to the central axis” is not met by Levin’s needle (104), which
Appellant says “makes a 45 degree angle.” (Id. at 24.)
Appellant contends that claim 26 could not be obvious in the absence
of a “disclosure in Levin or Hasson to locate a forceps in an extended
position where the end effectors ‘act as an obturator.’” (Id. at 24-25.)6
The issues with respect to this rejection are
did Levin or Hasson teach away from the invention;

6 MERRIAM-WEBSTER’S MEDICAL DICTIONARY defines obturator as “a
device that blocks the opening of an instrument (as a sigmoidoscope) that is
being introduced into the body.” See , accessed Oct. 19, 2009.
Appeal 2009-009819
Application 11/420,927

9
did Hasson disclose distal forcep tips in proximate contact;
would the combination of Levin’s needle with Hasson’s forceps
necessarily require many more parts than claimed;
was the Examiner’s stated incentive for combination supported by
evidence;
did Levin’s needle have an end wall “angled at substantially 35°” as
recited in claim 15;
did Hasson disclose forceps in a position where the end effectors act
as an obturator?

Analysis
First, Appellant has not shown that the fact that the example
instrument Levin deployed through the needle had wires, clevis, pin, etc.,
would have discouraged a person of ordinary skill in the art deploying a
different instrument, such as Hasson’s, through the needle. Appellant did
not provide evidence that a person of ordinary skill would have understood
that Levin’s disclosure meant these elements (wires, clevis, etc.) were
necessary. To the contrary, Levin’s disclosure of instruments to deploy
through the needle was broad, and included clamps, dissectors, and other
surgical devices. See Levin Abstract. Nor has Appellant provided evidence
that the substitution of Hasson’s spring biased forceps for Levin’s illustrated
forceps would have been anything more than the substitution of one known
instrument for another, with results that would have been predictable.
We also do not agree with Appellant’s argument that replacing
Levin’s forceps with Hasson’s forceps would have produced an instrument
having at least four coaxial elements, in contrast to the claimed instrument
Appeal 2009-009819
Application 11/420,927

10
“consisting essentially of” a shaft, end effectors and a proximal handle.
(App. Br. 22.) The Examiner concluded that it would have been obvious to
use Hasson’s forceps with shaft 12 and end effectors 18, as the instrument in
Levin’s needle (Ans. 4-5), not that it would have been obvious to use
additional coaxial elements (24, 26, 29) from Hasson. We find Appellant’s
argument misdirected, and conclude that the Examiner did not ignore the
limiting “consisting essentially of” language.
We find the evidence supports the Examiner’s finding that Hasson
taught specific advantages of using the spring biased forceps (FF8), and we
therefore reject Appellant’s contention that the Examiner relied improperly
on hindsight. We also agree with the Examiner that Hasson’s opposed end
effectors tips may be in proximate contact, and would continue to so operate
if used in Levin’s needle. (See, e.g., Hasson at Fig. 13.)
In the Final Rejection, the Examiner found that Levin’s needle had an
end wall angled at “substantially” 35 degrees, and that Appellant’s claim 15
reciting this numerical value would have been obvious. (Fin. Rej. 6.)
Appellant argues that a measurement of the angle shown in Levin’s Fig. 7
shows a 45 degree angle, not a 35 degree angle, and that the Specification’s
definition of “substantially” means that 45 degrees cannot meet claim 15’s
“substantially 35 degrees” limitation. (App. Br. 24, citing Spec. ¶ 14.)
Spec. ¶ 14 states: “the term ‘substantially’, for purposes of this application
meaning ± 10%.” Applying the meaning given in the Specification, we
interpret the claim limitation “substantially 35 degrees” to mean the range
31.5 - 38.5 degrees. Appellant’s undisputed 45 degree measurement is not
within the claimed range. Although the Examiner’s Answer repeats the
finding from the Final Rejection, the Answer now inconsistently argues that
Appeal 2009-009819
Application 11/420,927

11
angle measurements taken from Levin’s figures “should not be
representative of [Levin’s] entire disclosed invention” (Ans. 13). We take
this as a concession by the Examiner that, contrary to the finding in the Final
Rejection, Levin did not disclose an angle of “substantially 35 degrees.”
The Examiner proposes no further explanation that 35 degrees would have
been obvious. We find that Appellant rebutted the original rejection, and
that the Examiner has not made a new case. Accordingly, we will reverse
the rejection of claim 15.
With respect to claim 26, we agree with the Examiner that Hasson’s
forceps are end effectors that act as the claimed “obturator.” (Ans. 8.)
Hasson’s Figures show forceps extending beyond the end of the shaft from
which they are deployed. (See e.g., Fig. 2, 5, 6, et al.) When deployed in
the manner shown by Hasson, the forceps impede the sharp end of the trocar
or needle from accidentally damaging tissue at least to some extent.
Appellant provides no reason to think Hasson’s forceps would not function
the same way if deployed through Levin’s needle. Appellant’s argument
about claim 26 merely observes that the term “obturator” does not appear in
either of Levin or Hasson. (App. Br. 24-25.) While neither Levin nor
Hasson used the term “obturator,” the evidence supports the Examiner’s
finding that Hasson’s forceps perform that function.

B. Rejection of claims 3 and 27 over Levin, Hasson, and Hamel or
Sterman
The Issues
The Examiner applied the same obviousness analysis to claim 3 as
applied to claim 1, but found that Levin and Hasson did not specifically
Appeal 2009-009819
Application 11/420,927

12
disclose a “fixing means” for fixing a relative location of the forceps and
needle. (Ans. 8.) However, Hamel and Sterman disclosed trocars with
various instrument fixing means to enhance manipulation. (Id.) The
Examiner concluded it would have been obvious to use a fixing means to
lock the forceps in place within Levin’s needle “to securely fasten the
forceps to the needle for easier manipulation.” (Id. at 9.)
Appellant restates the arguments relative to Levin and Hasson that
were presented against the rejection of claim 1, and argues that the Examiner
has not accounted for the “consisting essentially of” phrase in claim 3.
(App. Br. 25-31.) Appellant also argues that “Hamel and Sterman teach
fixing a surgical instrument relative to a blunt trocar tube, but not relative to
a needle,” and “there is no teaching to provide a fixing means which is
coupled to a needle.” (Id. at 31.)
For claim 27, Appellant reiterates arguments related to Levin, Hasson,
Hamel and Sterman, and argues further that the rejection did not account for
claim 27’s phrase “consisting of.” (Id. at 32-38.)
The issues with respect to this rejection are:
did the rejection properly account for the transitional phrase
“consisting essentially of”;
if the Hamel or Sterman teaching concerned a trocar, did the
Examiner err in applying it to the needle Levin taught in place of a trocar;
did the rejection properly account for claim 27’s transitional phrase
“consisting of”?
Analysis
For reasons already explained, we find Appellant’s “consisting
essentially of” argument unpersuasive because it is directed to a rejection the
Appeal 2009-009819
Application 11/420,927

13
Examiner did not make. The same reasoning applies to Appellant’s
“consisting of” argument.
Appellant’s other arguments apparently rely on the absence of an
anticipating reference to dispute the obviousness of using known fixing
means on the needle/instrument combination suggested by Levin and
Hasson. The Examiner stated a reason why a person skilled in the art would
have seen an advantage to using known trocar/instrument fixing means in
the suggested needle/instrument combination. Appellant’s arguments seem
to mean only that because the invention is novel (on this record) it would not
have been obvious. We are unpersuaded of error. The obviousness
rejection of claims 3 and 27 is affirmed.

C. Rejection of claim 10 over Levin, Hasson, Hamel or Sterman, and
Bark
The Issues
The Examiner found that Bark taught a trocar fixed to a relative
location on a patient by a stabilizing member (suction cups). (Ans. 10.) The
trocar was thus “advantageously stable during the medical procedure, but
can also be rotated to improve the surgeon’s view.” (Id.) The Examiner
concluded it would have been obvious to use Bark’s suction cup fixing
means on the device suggested by the references that rendered claim 3
obvious. (Id.)
In addition to the arguments presented against the rejection of claim 3,
Appellant contends that “Bark does not provide a teaching to provide a
fixing means which is coupled to a needle.” (App. Br. at 31-32.)
Appeal 2009-009819
Application 11/420,927

14
The issue with respect to this rejection is whether Bark’s alleged
failure to teach a fixing means coupled to a needle supports a conclusion of
nonobviousness.
Analysis
Appellant’s arguments are basically that because the invention is not
anticipated, it would not have been obvious. We find this argument
unpersuasive against the Examiner’s prima facie case. As explained above,
the Examiner explained why it would have been obvious to have used a
fixing means attached to the instrument and needle as claimed. The
rejection of claim 10 is affirmed.

CONCLUSIONS OF LAW
Rejection A.
Neither Levin nor Hasson taught away from the invention.
Hasson disclosed distal forcep tips in proximate contact.
The combination of Levin’s needle with Hasson’s forceps would not
have required many more parts than claimed.
The Examiner’s stated incentive for combining the Levin and Hasson
teachings was supported by evidence.
The Examiner did not establish with evidence that Levin’s needle had
an end wall “angled at substantially 35°” as recited in claim 15;
The evidence shows that Hasson’s forceps had end effectors that acted
as an obturator?

Rejection B.
Appeal 2009-009819
Application 11/420,927

15
We find that the Examiner’s rejection of claim 3 properly accounted
for the transitional phrase “consisting essentially of.”
Appellant has not shown the Examiner erred in combining the Hamel
or Sterman trocar/instrument fixing means teachings with Levin’s teachings.
We find that the Examiner’s rejection properly accounted for claim
27’s transitional phrase “consisting of.”

Rejection C.
Appellant has not shown that Bark’s failure to teach a fixing means
coupled to a needle rebutted the Examiner’s prima facie reason for using a
known trocar fixing means on Levin’s needle.

SUMMARY
We affirm the rejection of claims 1, 2, 11-14, 16, 17 and 26 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of Levin
and Hasson;
we reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Levin and Hasson;
we affirm the rejection of claims 3-8 and 27 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Levin, Hasson, and Hamel
or Sterman; and
we affirm the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Levin, Hasson, Hamel or
Sterman, and Bark.
Appeal 2009-009819
Application 11/420,927

16
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-IN-PART

lp

GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE 407
STAMFORD CT 06902