Ex Parte Slenker et al

Patent Trial and Appeal Board

Sep 15, 2015

11697789 (P.T.A.B. Sep. 15, 2015)

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.)
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Application 11/697,789
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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.
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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.
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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.
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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.
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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).
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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.
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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.
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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
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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.
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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.
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We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) based on
Jones ’908 and Kaneko.

REVERSED
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