Ex Parte Reznik

Patent Trial and Appeal Board

Feb 22, 2018

11415308 (P.T.A.B. Feb. 22, 2018)

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.
11/415,308 05/02/2006 Alan M. Reznik A-9645 3988
21884 7590 02/22/2018
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
02/22/2018 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 ALAN M. REZNIK
Appeal 2017-003663
Application 11/415,308
Technology Center 3700
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003663
Application 11/415,308
STATEMENT OF CASE
The following claim is representative.
1. A combined arthroscopic multifunction suture passer,
grasper forceps and tissue manipulation apparatus, comprising
a handle;
a shaft having a first end portion and a second end portion
extending from said handle, said first end portion being adjacent
said handle;
a pair of jaws attached to said second end portion of said
shaft, said pair of jaws comprising:
a lower jaw and an upper jaw, said upper and lower jaw
connected to one another at a single hinge, said single hinge
being located near the second end portion of the shaft, the
second end portion of the shaft comprises:
a first section in close proximity to the single hinge
having a plurality of serrations on the upper and lower
jaws, the upper and lower jaws coming into contact when
the jaws are in a closed position to firmly grasp a suture
needle or other arthroscopic instrument;
a second section of the pair of jaws, adjacent the
first section wherein the first section includes a wall
facing the second section, which functions as a suture
passer, the upper and lower jaws spaced from one another
in the second section with a full opening forming there
between to facilitate the smooth passage of one or more
sutures, when the jaws are in the closed position, the
second section having a length of 2.9 mm and a width of
1 mm when the upper and lower jaws are closed allowing
multiple sutures to be passed smoothly therethrough and
where the upper and lower jaws do not touch when the
upper and lower jaws of the second section are in the
closed position; and
a third section of the pair of jaws, adjacent the
second section wherein the third section includes a wall
facing the second section and the wall of the first section,
the third section narrows in height and width in a v-shape
from a first wide part adjacent said second section to a
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narrowed blunt pointed tip at an end farthest from said
second section, and
having a plurality of serrations on the upper and lower jaw
next to said second section, the upper and lower jaws of
the third section coming into contact when the jaws are in
a closed position to firmly grasp a suture, and wherein
said first section is closer to the hinge than said second
section and said second section is closer to the hinge than
said third section; and
wherein the wall of the first section includes rounded
comers and the wall of the third section includes rounded
comers, the rounded comers of the wall of the first section
and the wall of the third section facilitating the passage of
a suture through the second section, the upper and lower
jaws of the first section have a tighter grip on the sutures
placed therebetween than sutures placed be the upper and
lower jaws of the third section allowing a surgeon to tug
and pull with greater force without the suture becoming
free of the jaws due the first section being in close
proximity to the single hinge.
Cited References
Clarke
Thomason
Moon
US 5,383,877 Jan. 24, 1995
US 5,827,299 Oct. 27, 1998
US 2010/0145381 A1 June 10, 2010
Grounds of Rejection
1. Claims 1 and 6 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Thomason in view of Clarke and Moon.
2. Claims 1 and 6 are rejected under 35 U.S.C. §112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter
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which the inventor or a joint inventor, or for pre-AIA the applicant
regards as the invention.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 3—8, and Examiner’s Answer at pages 2—3.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Obviousness Rejection
The Examiner finds that Thomason teaches each element claimed
except, “Thomason et al. do not expressly disclose a plurality of serrations
on the upper and lower jaw in the first section and in the third section.”
Final Act. 4—5. To make up for this deficiency, the Examiner relies on
Clarke for teaching, “a forceps having a pair of jaws 30, 36 having a first
section having a plurality of serrations on the upper and lower jaw (proximal
to grooves 60 and 62), and a third section (distal to grooves 60 and 62)
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having a plurality of serrations which may firmly grasp a suture.” Final Act.
5-6.
In addition, Thomason et al. do not disclose that the wall of the
first section includes rounded comers and the wall of the third section
includes rounded comers, the rounded comers facilitating the passage
of a suture through the section section.
In Figures 1-4 Moon teaches a forceps having multiple sections
(Figure 2) with a first section having rounded comers (see inner wall
surfaces 40c, 42c in Figure 3) and a third section having rounded
comers (see inner wall surfaces 52e, 50e in Figure 4).
It would have been obvious to one of ordinary skill in the art at
the time of invention to provide rounded wall comers in the first and
third sections of Thomason et al., as taught by Moon, in order to
facilitate contact with tissue while reducing or precluding the
possibility of injuring tissue (Moon; paragraph 25).
Final Act. 6.
Appellant contends that, “In contrast to the claimed invention,
Thomason fails to disclose serrations on the upper and lower jaws of its
device. Thomason also fails to disclose the shape and stmcture of the jaws
that make up the invention as currently claimed.” AppBr. 10. Appellant
argues that, “The Examiner fails to provide any motivation to modify
Thomason with the teaching of Clarke. There is no reason to modify the
jaws of Thomason with serrations.” Id. Appellant additionally argues that,
“Clarke fails to disclose serrations located on the section which is in close
proximity to the single hinge.” App. Br. 11. Appellant argues that the
combination of Thomason and Clark does not disclose a “three tool type
device.” App. Br. 11. Appellant does not argue the features of the Moon
reference on the merits. App. Br. 12.
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ANALYSIS
Appellant does not argue individual claims separately in the Appeal
Brief, therefore we select claim 1 as representative. We agree with the
Examiner’s fact finding, statement of the rejection and responses to
Appellant’s arguments as set forth in the Answer. We find that the
Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s argument set forth in the Final Rejection and Answer.
We are not persuaded by Appellant’s argument that the Examiner has
provided no motivation to modify Thomason with the teaching of Clarke.
The Examiner indicated on this record that, “it would have been obvious to
one of ordinary skill in the art at the time of invention to modify the upper
and lower jaws of Thomason with serrations, as taught by Clarke, in order to
enhance gripping of items between the jaws (see Clarke; col. 3, lines 42-43,
col. 4, lines 7-8).” Ans. 2. We agree with the Examiner that the indicated
motivation in Clarke to incorporate serrations in order to enhance gripping
of items between the jaws, is a sufficient motivation in the prior art to
combine the teachings of Clarke with Thomason.
With respect to Appellant’s argument concerning the failure of Clarke
to teach the location of the serrations the jaws section which is in close
proximity to a single hinge, the Examiner relies on Thomason for the
teaching of the structure of a “first section in close proximity to the single
hinge (see Thomason; see section of jaws 102,104 closest to single hinge
106 in Figures 15-16).” Ans. 3. See In re Keller, 642 F.2d 413, 425 (CCPA
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1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”)
Nor are we persuaded by Appellant’s argument that the combination
of Thomason and Clarke does not disclose a “three tool type device”.
Thomason discloses a suture passing grasping probe. See, Title. Thomason
states that the invention is directed to a
surgical instrument, guide, and method capable of being
used for closure of peritoneum fascia, occlusion of bleeding
vessels such as inferior epigastric, and for all uses related to
accurately passing suture material through a guide into
tissue. A tip of a surgical instrument in a standard suture-/
needle-driving position with a sharp tip that opens and
closes with the surgeon grasping suture material with the
sharp tip is provided. Insertion of the tip/suture through
tissue until the tip is seen through the peritoneum by direct
vision begins the wound-closing procedure.
Abstract, italics added. Thus, Thomason alone reasonably appears to
describe a device for suture passing, grasping and tissue manipulation.
Moreover, it is “well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Thus, functional
limitations directed to intended uses of a claimed product do not serve to
distinguish the product from prior art products inherently capable of
performing the claimed function. See, id. at 1478—79 (holding that a prior
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art apparatus meeting all claimed structural limitations was anticipatory
because it was inherently capable of performing the claimed function).
Therefore, we agree with the Examiner (Final Act. 8) that the claim
preamble language “multifunction suture passer, grasper forceps and tissue
manipulation apparatus” is a recitation of intended use of the claimed
device, and Appellant has not indicated a structural difference between the
claimed invention and the prior art devices. Arguments not made by
Appellant are waived.
In view of the above, we affirm the obviousness rejection for the
reasons of record.
Claim Indefiniteness — Rejection 2
According to the Brief, the Examiner made a recommendation for
claim Amendment to correct claim indefiniteness issues, and Appellant
subsequently amended the claims after final rejection in accordance with the
suggested language of the Examiner. App. Br. 8.
The Examiner indicated that the Amendment after final rejection was
not entered in the Advisory Action dated December 2, 1016. The Examiner
did not indicated that the claim indefmiteness rejection set forth in the Final
Action was withdrawn in the Answer. Because the Examiner’s Answer is
deemed to incorporate all of the grounds of rejection set forth in the office
action from which the appeal is taken (Final Action) (see 37 CFR
§41.39(a)(1)), and because Appellant did not address the claim
indefmiteness on the merits in the Appeal Brief, we summarily affirm the
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claim indefiniteness rejection, and leave it to the Examiner to withdraw any
such rejection upon further prosecution of the application.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record. The claim indefmiteness
rejection is summarily affirmed. All pending, rejected claims fall.
AFFIRMED
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