Ex Parte Slenker et alDownload PDFPatent Trial and Appeal BoardSep 15, 201511697789 (P.T.A.B. Sep. 15, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DALE E. SLENKER, JOHN R. PRISCO, CECIL O. LEWIS, GEROULD W. NORMAN, ROBERT K. VACCARO, and ISAAC C. PERRY1 ____________________ Appeal 2012-011845 Application 11/697,789 Technology Center 3700 ____________________ Before MELANIE L. McCOLLUM, ULRIKE W. JENKS, and JACQUELINE T. HARLOW, Administrative Patent Judges. HARLOW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a surgical instrument, system, and method for biofilm removal. The claims stand rejected as anticipated and obvious, as well as for statutory double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the Real Party in Interest is Medtronic Xomed, Inc. (App. Br. 3.) Appeal 2012-011845 Application 11/697,789 2 STATEMENT OF THE CASE “Bacterial biofilms develop in a variety of bodily cavities, including those of the ear, such as the middle ear, and of the nose, such as the frontal or maxillary sinuses, for example” (Spec. ¶ 2). These biofilms “interfere[] with the body’s natural immune response as well as traditional methods of treatment” (Spec. ¶ 3). The Specification teaches a system and method for bacterial biofilm removal, “including an instrument for removing bacterial biofilm from the target site” (Spec. ¶ 7). Claims 1–27 are on appeal. Claim 1 is illustrative and reads as follows (emphasis added): 1. A system for removal of bacterial biofilm from a target site of a human patient, the system comprising: a surgical instrument for removing bacterial biofilm from the target site, the instrument comprising: an elongate introducer adapted for minimally invasive surgical insertion into a human patient, the introducer including a proximal portion and a distal portion terminating at a distal end, the distal portion being transitionable between a plurality of bend angles relative to the proximal portion, wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion; an irrigation duct for conveying irrigant; and a nozzle in fluid communication with the irrigation duct, the nozzle being maintained relative to the distal end of the introducer and being adapted to dispense pressurized fluid from the irrigation duct toward a layer of bacterial biofilm to disrupt the bacterial biofilm from the target site. Appeal 2012-011845 Application 11/697,789 3 The claims stand rejected as follows: I. Claims 1–27 stand provisionally rejected under 35 U.S.C. § 101 as being unpatentable over claims 1–19 of co-pending Application No. 11/680,781.2 II. Claims 1–4 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Jones ’908.3 III. Claim 10 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Jones ’817.4 IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Julian.5 V. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908, Julian, and Engel.6 VI. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Boulais.7 VII. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Kaneko.8 2 Slenker et al., US 2008/0214891 A1, published Sept. 4, 2008 (hereinafter “the ’781 Application”). Claims 1–13 issued as US 8,206,349 B2 on June 26, 2012. 3 Jones, US 5,201,908, issued Apr. 13, 1993 (hereinafter “Jones ’908”). 4 Jones, US 5,386,817, issued Feb. 7, 1995 (hereinafter “Jones ’817”). 5 Julian et al., US 2003/0158463 A1, published Aug. 21, 2003. 6 Engel et al., US 2005/0033265 A1, published Feb. 10, 2005. 7 Boulais et al., US 2006/0106285 A1, published May 18, 2006. 8 Kaneko et al., US 2003/0187349 A1, published Oct. 2, 2003. Appeal 2012-011845 Application 11/697,789 4 I. Issue The Examiner has provisionally claims 1–27 under 35 U.S.C. § 101 as being unpatentable over claims 1–19 of the ’781 Application. On June 26, 2012, subsequent to the Examiner’s Response to Argument, but prior to submission of Appellants’ Reply Brief, claims 1–13 of the ’781 Application issued as US 8,206,349 B2 (“the ’349 Patent”).9 Accordingly, we treat this rejection as a rejection over claims 1–13 of the ’349 Patent. In explaining the double patenting rejection, the Examiner states, without elaboration, that the “prior art concerned is further limited than the current application, therefore the prior art meets the application’s claim limitations” (Ans. 11). Appellants contend that the claims of the ’781 Application, claims 1– 13 of which subsequently issued as the ’349 Patent, recite “an imaging channel terminating at a viewing window and within an insertion portion,” a requirement not present in the claims of the instant Application (App. Br. 8). The issue presented is whether claims 1–27 of the instant Application claim the same invention as claims 1–13 of the ’349 Patent. Analysis We agree with Appellants that the claims on appeal are not directed to the same invention as claims 1–13 of the ’349 Patent. The test for “same invention” double patenting is whether the claims of the issued patent could be literally infringed without infringing the 9 Slenker et al., US 8,206,349 B2, issued June 26, 2012. Appeal 2012-011845 Application 11/697,789 5 application’s claims, and vice versa. If one set of claims can be infringed without infringing the other set, the claims are not directed to the same invention and a double patenting rejection under § 101 is improper. See In re Vogel, 422 F.2d 438, 441 (CCPA 1970). The first question in the [double patenting] analysis is: Is the same invention being claimed twice? 35 U.S.C. § 101 prevents two patents from issuing on the same invention. . . . A good test, and probably the only objective test, for “same invention,” is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention. . . . If it is determined that the same invention is being claimed twice, 35 U.S.C. § 101 forbids the grant of the second patent. Id. Claims 1–13 of the ’349 Patent require an “endoscope having an insertion portion terminating at a working end, the insertion portion forming an imaging channel terminating at a viewing window disposed at the working end” (emphasis added). Claims 1–27 of the instant Application include no such requirement. Although claims 2 and 21 of the instant Application recite an endoscope for imaging, the recited endoscope is not required to be part of the introducer as recited in claims 1–13 of the ’349 Patent. This difference between the pending and patented claims is sufficient to defeat a rejection for “same invention” double patenting. Accordingly, the rejection under 35 U.S.C. § 101 is reversed. Conclusion of Law A preponderance of the evidence of record does not support the Examiner’s conclusion that claims 1–27 are unpatentable under 35 U.S.C. § 101 based on claims 1–13 of the ’349 Patent. Appeal 2012-011845 Application 11/697,789 6 II. Issue The Examiner has rejected claims 1–4 under 35 U.S.C. § 102(b) as being anticipated by Jones ’908. We focus our discussion on independent claim 1. The Examiner finds that Jones ’908 teaches a system for removal of bacterial biofilm from a target site of a human patient, including, “an endoscope (10) having an elongated insertion tube defining a working end adapted to facilitate imaging the target site” (Ans. 6). Appellants contend that Jones ’908 does not anticipate claim 1 because it “merely operates as a conventional endoscopic control knob which does not independently maintain a distal portion at each of the plurality of bend angles” (App. Br. 9). The issue presented is whether Jones ’908 teaches the “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” aspect of claim 1. Analysis Claim Interpretation Claim 1 requires a surgical instrument that is “adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion.” The Examiner concludes that the “the claim limitations of the application only require the ability to have a plurality of bend angles. . . . The limitation does not say the bend angle need be sustainable when a user is not influencing the device” (Ans. 11). Appeal 2012-011845 Application 11/697,789 7 We do not agree. Claim 1 requires that the surgical instrument be adapted to independently maintain the recited bend angles. In the context of claim 1 and the Specification, the broadest reasonable interpretation of the phrase “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” requires that the surgical instrument must not only be capable of maintaining more than one bend angle, but that it must be able to maintain such bend angles independently, without further input from the device operator. The Examiner’s interpretation of claim 1 improperly reads the term “independently” out of the larger clause “adapted to independently maintain the distal portion at each of the plurality of bend angles.” The Examiner’s interpretation is also inconsistent with the Specification, which teaches that the “spatial, angular orientation of the distal end 94, and thus of the nozzle 54, can be selected and altered by a user via the first actuator assembly 56 (and in particular manipulation of the control knob 208)” (Spec. ¶ 60). The Specification further teaches that first actuator assembly 56 affords the user the ability to dictate a desired position or angle of attack of the distal end 94, and thus the nozzle 54 retained thereby, via operation of the control knob 208. This, in turn, allows selectively adjusting the nozzle 54 through, and independently maintaining the nozzle 54 at, a plurality of angles of attack. (Id. ¶ 57.) The Specification’s teachings that a bend angle can be “selected” and subsequently “altered” (id. ¶ 60), and that a user can “dictate a desired position or angle of attack,” thereby “selectively adjusting” and “independently maintaining” the bend angle (id. ¶ 57) are contrary to the Examiner’s claim interpretation. Appeal 2012-011845 Application 11/697,789 8 Accordingly, we conclude that the broadest reasonable interpretation of “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” requires that the surgical instrument must be able to maintain bend angles independently, without further input from the device operator. Anticipation We agree with Appellants that the Examiner has not pointed to evidence or provided sound reasoning to show that Jones ’908 teaches the “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” aspect of claim 1. The Examiner finds that Jones ’908 teaches “an endoscope (10) having an elongated insertion tube defining a working end adapted to facilitate imaging the target site,” but does not elaborate on this finding (Ans. 6). In the Response to Argument, the Examiner states that the independently maintaining limitation of claim 1 “does not say the bend angle need be sustainable when a user is not influencing the device” and thus determines that the “prior art meets the limitations of the application’s claims” (id. at 11). As explained above, we disagree with the Examiner’s interpretation of the “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” aspect of claim 1. Accordingly, because the Examiner makes no finding that Jones ’908 teaches a surgical instrument able to maintain bend angles independently, without further input from the device operator, we reverse the obviousness determination. Appeal 2012-011845 Application 11/697,789 9 Conclusion of Law A preponderance of the evidence of record does not support the Examiner’s conclusion that Jones ’908 anticipates claim 1. Because they depend from claim 1, the rejection of claims 2–4 is also reversed. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). III. Issue The Examiner has rejected claim 10 as anticipated by Jones ’817. Appellants contend that the Examiner has not presented a prima facie rejection because “no evidence has been presented in Jones ‘817 as it relates to claim[] 1 or claim 9,” from which it depends (App. Br. 9–10). Appellants further contend that this rejection fails because Jones ’817 makes no mention of “rotating a nozzle or having an actuator assembly that rotates a nozzle” (id. at 10). The issue presented is whether Jones ’817 anticipates claim 10. Analysis We agree with Appellants that the Examiner has not pointed to evidence or provided sound reasoning to show that Jones ’817 anticipates claim 10. In particular, we agree with Appellants that the Examiner has not presented evidence or provided reasoning to support a finding that Jones ’817 teaches the “wherein the instrument is adapted to independently maintain the distal portion at each of the plurality of bend angles relative to the proximal portion” aspect of claim 1, from which claim 10 ultimately depends. Indeed, to the extent the Examiner can be said to have addressed this claim aspect at all, the Examiner relies on the same incorrect claim Appeal 2012-011845 Application 11/697,789 10 interpretation discussed above regarding the rejection over Jones ’908 (Ans. 11). We further agree with Appellants that the Examiner has not made findings sufficient to support a prima facie case of anticipation of claim 10 because the portion of Jones ’817 relied on by the Examiner as teaching an “actuator assembly adapted to selectively rotate the nozzle relative to the introducer” as required by claim 10 “merely discusses delivering fluid to a viewing area. No mention is made of rotating a nozzle or having an actuator assembly that rotates a nozzle” (App. Br. 10). Conclusion of Law A preponderance of the evidence of record does not support the Examiner’s conclusion that Jones ’817 anticipates claim 10. IV. The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Julian. However, as the Examiner has pointed to no clear or specific teaching in Julian that addresses the deficiencies discussed above of Jones ’908 with respect to claim 1, from which claim 5 depends, we reverse this rejection as well. V. The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908, Julian, and Engel. However, as the Examiner has pointed to no clear or specific teaching in Julian or Engel that addresses the deficiencies discussed above of Jones ’908 with respect to claim 1, from which claim 6 depends, we reverse this rejection as well. Appeal 2012-011845 Application 11/697,789 11 VI. The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Boulais. However, as the Examiner has pointed to no clear or specific teaching in Boulais that addresses the deficiencies discussed above of Jones ’908 with respect to claim 1, from which claim 7 depends, we reverse this rejection as well. VII. The Examiner has rejected claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Jones ’908 and Kaneko. However, as the Examiner has pointed to no clear or specific teaching in Kaneko that addresses the deficiencies discussed above of Jones ’908 with respect to claim 1, from which claim 8 depends, we reverse this rejection as well. SUMMARY We reverse the rejection of claims 1–27 under 35 U.S.C. § 101 for claiming the same invention as claims 1–13 of the ’349 Patent. We reverse the rejection of claims 1–4 under 35 U.S.C. § 102(b) based on Jones ’908. We reverse the rejection of claim 10 under 35 U.S.C. § 102(b) based on Jones ’817. We reverse the rejection of claim 5 under 35 U.S.C. § 103(a) based on Jones ’908 and Julian. We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) based on Jones ’908, Julian, and Engel. We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) based on Jones ’908 and Boulais. Appeal 2012-011845 Application 11/697,789 12 We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) based on Jones ’908 and Kaneko. REVERSED bar Copy with citationCopy as parenthetical citation