Ex Parte Rodrigues

Patent Trial and Appeal Board

May 31, 2017

13231123 (P.T.A.B. May. 31, 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.
13/231,123 09/13/2011 Anibal Rodrigues JR. H-US-03093 (203-8227) 1450
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
06/02/2017 EXAMINER
PLIONIS, NICHOLAS J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANIBAL RODRIGUES JR.
Appeal 2016-0042621
Application 13/231,123
Technology Center 3700
Before FRANCISCO C. PRATS, TAWEN CHANG, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a surgical
apparatus for accessing a body cavity. The Examiner rejected the claims for
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 1—17, 19, and 20, under 35 U.S.C. § 103(a), for obviousness over
Shelton,2 Schaller,3 and de la Torre4 (Ans. 2—7).
1 Appellant states that the real party in interest “is Covidien LP . . . . The
ultimate parent of Covidien LP is Medtronic, PLC.” App. Br. 1.
2 US 2010/0261974 A1 (published Oct. 14, 2010).
Appeal 2016-004262
Application 13/231,123
Claim 1 is representative and reads as follows (App. Br. 14 (emphasis
added)):
1. A surgical apparatus for positioning within a tissue tract
accessing an underlying body cavity comprising:
a flexible sleeve defining a longitudinal axis, a proximal
end, a distal end, and a passage for reception of an object, the
proximal end for location outside the body cavity, the distal end
for insertion into the body cavity, the proximal and distal ends
being open to provide access to the body cavity, the flexible
sleeve configured to form a sealing relationship with the tissue
tract;
one end of a cord attached to the proximal end of the
flexible sleeve, the remainder of the cord being unrestrained,
the cord configured to be entirely disposed exterior to the body
cavity when the proximal end of the sleeve is located outside the
body cavity and the distal end of the sleeve is inserted into the
body cavity; and
an access device insertable into the flexible sleeve.
OBVIOUSNESS
The Examiner’s Prima Facie Case
The Examiner cited Shelton as disclosing a surgical apparatus for
accessing a body cavity, the apparatus having essentially all of the features
required by claim 1, including a flexible sleeve, but differing from claim 1 in
that “Shelton fails to disclose one end of the cord attached to a proximal end
of the flexible sleeve, the cord configured to be entirely disposed exterior to
the body cavity.” Ans. 3.
As evidence that the surgical apparatus of claim 1 would nonetheless
have been obvious to an ordinary artisan, the Examiner first pointed to
3 US 5,368,545 (issued Nov. 29, 1994).
4 US 2002/0038077 A1 (published Oct. Mar. 28, 2002).
2
Appeal 2016-004262
Application 13/231,123
Shelton’s disclosure that “cord 260 can be coupled to the retractor 218 ‘in a
variety of ways’ (see paragraph [0060]), and that the cord 260 ‘can have a
variety of shapes, sizes, and configurations[’] (see paragraph [0058]).” Ans.
3.
Additionally, the Examiner noted Schaller’s disclosure of “a surgical
device wherein a flexible sleeve (20) includes a cord (24) attached at
proximal end of the flexible sleeve for wrapping around the sleeve and
reducing its diameter (see col. 5, lines 46-52), the cord entirely disposed
exterior to the body cavity (see Fig. 2).” Id.
The Examiner also noted de la Torre’s disclosure of a flexible sleeve
(116) “that is part of a surgical apparatus wherein an end portion of a cord or
other wrappable tightening mechanism (130/135/150; see Figs. 14-20) is
attached to an end of the flexible sleeve and remains entirely disposed
exterior to a body cavity (see Fig. 14, for example, and paragraph [0045]).”
Id.
Based on the references’ combined teachings, the Examiner reasoned
as follows:
It would have been prima facie obvious to a person of ordinary
skill in the art at the time of the invention to modify the
apparatus of Shelton to attach an end of the cord 260 at a
proximal end of the flexible sleeve and leave the rest of the cord
unrestrained and exterior to the body cavity as suggested by
Schaller and de la Torre in order to allow easier access to the
cord by the user by locating it as proximally as possible so that
it can [be] tightened around the sleeve as desired by the user;
because Shelton suggests the cord can be coupled ‘in a variety
of ways’ (see paragraph [0060]); and the cord coupling
configurations suggested by Schaller and de la Torre involve[] a
simple substitution of known cord attachment configurations
for another known cord attachment configuration without any
3
Appeal 2016-004262
Application 13/231,123
unpredictable results while still allowing for a cord to wrap
around the flexible sleeve and change the diameter of the
sleeve. Additionally, it would have been obvious matter of
design choice to attach the cord to the proximal end of the
sleeve via an end portion, as the same tightening function could
be achieved by the cord regardless of what portion of the cord is
attached to what portion of the flexible sleeve.
Ans. 3^4.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellant does not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion that the apparatus of claim 1
would have been obvious to an ordinary artisan in view of Shelton, Schaller,
and de la Torre. To the contrary, we agree with the Examiner’s findings of
fact, and conclusion of obviousness derived therefrom, and adopt them as
our own. We include the discussion below for emphasis.
The Examiner relies primarily on the embodiment shown in Shelton’s
Figure 11. As the Examiner found, and Appellant does not dispute, the
embodiment in Shelton’s Figure 11 includes mechanically adjustable
retractor 218, which corresponds to claim 1 ’s flexible sleeve, and a “housing
(not shown),” which corresponds to claim l’s insertable access device.
Shelton 155; see also id. at Fig. 11.
As the Examiner found, the embodiment in Shelton’s Figure 11 also
includes an actuation member 260, which “in an exemplary embodiment [is]
4
Appeal 2016-004262
Application 13/231,123
a flexible and biocompatible cable” (Shelton 158) and thus corresponds to
the cord of Appellant’s claim 1. Shelton explains that actuation member 260
is “disposed around a perimeter of a retractor 218. Generally, the actuation
member 260 can be configured to selectively effect a change in a diameter of
the retractor 218 such that the retractor 218 changes in cross-sectional shape
and/or size.” Id. 1 57.
As seen in Shelton’s Figure 11, actuation member 260 is attached to a
proximal portion (upper portion in Figure 11) of retractor 218, with the
proximal portion of the actuation member 260 being disposed exterior to the
device, thus being configured to be exterior to the body cavity, as required
by Appellant’s claim 1. See id. at Fig. 11; see also id. 1 60 (actuation
member 260 can be “coupled to the retractor 218 in a variety of ways”
including being coupled to “outside surface 2280” of retractor 218).
In addition to having an attachment point at the proximal portion of
the retractor 218, actuation member 260 is shown in a spiral configuration
“around an entire longitudinal length of the retractor’s inner elongate portion
228 to allow adjustment of a diameter 228D of the inner elongate portion
228, which can correspond to a diameter of an inner pathway or working
channel 234 extending through the retractor 218.” Id. 1 59; see also id at
Fig. 11. Thus, as Appellant contends (App. Br. 10), the embodiment
illustrated in Shelton’s Figure 11 shows actuating member 260 looping
around the inner portion of retractor 218 multiple times, to the extent that a
significant portion of actuating member 260 would be inside the body cavity
when the device is deployed, rather than outside the body cavity, as
Appellant’s claim 1 requires.
5
Appeal 2016-004262
Application 13/231,123
Contrary to Appellant’s contention that the multi-loop configuration is
critical, however (see App. Br. 10-11), Shelton discloses that actuation
member 260 “can loop any number of times, including less than one time,
around the perimeter of the retractor 218 . . . Shelton | 59 (emphasis
added). Given Shelton’s teaching that the actuating member 260 can loop
around the retractor 218 less than one time, Appellant does not persuade us
(see App. Br. 10—11) that the multi-loop spiral configuration shown in
Shelton’s Figure 11 is critical to the function of the device, or that changing
the spiral configuration would render Shelton’s device unsatisfactory for its
intended purpose.
To the contrary, the Examiner has provided evidence, in the form of
Schaller and de la Torre, that when adjusting the diameter of a flexible
surgical access device spanning a body wall, the adjustment can be made
using cord elements that loop only one time, or less than one time, around
the flexible device, exterior to the body cavity as required by Appellant’s
claim 1.
In particular, as seen in Schaller’s Figure 2, a single-loop cord 24
disposed entirely exterior to the tissue being traversed by a surgical device is
used to decrease the diameter of the flexible tissue-traversing portion of the
device, plastic receptacle 20. See Schaller, Fig. 2; see also id. at 5:47—52
(“The receptacle [20] is composed of a spherical section 21 and a cylindrical
section 22. In the area of the free end 23, a cord 24 is integrated in the
cylindrical section 22 which, when pulled together in the direction indicated
by arrow 25, safely closes the cylindrical section 22.”).
Similarly, as seen in Figure 14 of de la Torre, elastic cords 130
disposed entirely outside of the body are used to secure flexible envelope
6
Appeal 2016-004262
Application 13/231,123
116 to tissue-traversing collar 112. See de la Torre, Fig. 14; see also id. 146
(“Connected to the proximal and distal arms adjacent their openings are
flexible bands, in this embodiment lengths of elastic cord 130 secured
adjacent the openings by sections of adhesive tape 132.”); id. 147 (“The
length of cord is then tightly bound around the envelope proximal arm 118
overlying the collar exterior groove 114 securely connecting the proximal
arm of the envelope to the collar.”).
Thus, as seen above, Shelton teaches that, when adjusting the
diameter of its body wall-traversing flexible surgical access device, the
adjustment can be made using cord elements that loop only one time, or less,
around the flexible device. As also seen above, Schaller and de la Torre
disclose that, when adjusting the diameter of a flexible surgical access
device spanning a body wall, using cord elements that loop only one time or
less around the device, it is suitable to maintain the cord exterior to the body
cavity.
Accordingly, given the references’ teachings, we agree with the
Examiner that an ordinary artisan would have considered it obvious, when
adjusting the diameter of Shelton’s flexible device, to use a single-loop cord,
and to maintain the cord exterior to the body cavity, as recited in Appellant’s
claim 1. As the Supreme Court has explained, “when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSRInt’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273
(1976)).
7
Appeal 2016-004262
Application 13/231,123
Given the discussed teachings in the references, moreover, Appellant
does not persuade us that the Examiner’s conclusion of obviousness lacks a
rational underpinning. Nor are we persuaded, for the reasons discussed, that
modifying Shelton’s device to have an entirely exteriorly-disposed cord, as
taught in Schaller and/or de la Torre, would render the device unsatisfactory
for its intended purpose, particularly given Shelton’s teaching, noted above,
that its cord element can loop around the flexible sleeve one time, or less.
We acknowledge Appellant’s contention that, because the elongate
portion of Shelton’s retractor defaults to an expanded state, substituting
Shelton’s spirally configured actuation member 260 for a single loop
element outside the body would render Shelton’s device unsatisfactory for
its intended purpose. Reply Br. 2—5 (citing Shelton | 64).
Shelton, however, does not disclose that defaulting to an expanded
state, i.e., an outwardly-biased state as shown in its Figure 11, is a required
configuration for its device. Rather, Shelton discloses that, “[although the
retractor 218 can be configured in any state as a default, the retractor 218 in
this illustrated embodiment is configured to be in the expanded state as a
default.” Shelton 164 (emphasis added). As noted above, moreover,
Shelton discloses that the multi-loop spiral configuration shown in its Figure
11, with the actuation member 260 disposed within the body cavity, is not a
required configuration, but instead, actuation member 260 “can loop any
number of times, including less than one time, around the perimeter of the
retractor 218 . . . .” Shelton 159 (emphasis added).
Thus, even assuming for arguments’ sake that configuring Shelton’s
actuation member 260 as an exteriorly-disposed cord would be
unsatisfactory for use with a device that defaults to an expanded state,
8
Appeal 2016-004262
Application 13/231,123
Shelton discloses that its device can be configured to default to non-
expanded states. Shelton, moreover, discloses that its actuation member can
be looped one or fewer times around the device, a configuration taught by
Schaller and de la Torre as being compatible with an exteriorly-disposed
cord, as discussed above. We are not persuaded, therefore, that the
modification of Shelton’s device posited by the Examiner would have
rendered Shelton’s device unsatisfactory for its intended purpose.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner failed to make out a prima facie case of obviousness as to
claim 1. Because Appellant does not advance any specific objective
evidence of nonobviousness to rebut the Examiner’s prima facie case, we
affirm the Examiner’s rejection of claim 1 over Shelton, Schaller, and de la
Torre. Because they were not argued separately, claims 2—17, 19, and 20
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1—17, 19, and 20 under 35 U.S.C. § 103(a), for obviousness over
Shelton, Schaller, and de la Torre.
TIME PERIOD
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
9