Ex Parte SolankiDownload PDFPatent Trial and Appeal BoardNov 8, 201712790938 (P.T.A.B. Nov. 8, 2017) Copy Citation 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. 12/790,938 05/31/2010 Daneshvari R. Solanki 19810-P021P1 1666 24504 7590 11/13/2017 THOMAS I HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 EXAMINER FAIRCHILD, AARON BENJAMIN ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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): uspatents @ tkhr.com ozzie. liggins @ tkhr.com docketing @ thomashorstemeyer. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANESHVARI R. SOLANKI Appeal 2015-005714 Application 12/790,938 Technology Center 3700 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and SEAN P. O’HANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daneshvari R. Solanki (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—5, 8—10, 22—25, and 27— 31.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies the Board of Regents of the University of Texas System as the real party in interest. Appeal Br. 1. 2 Claim 26 is cancelled, and claims 6, 7, and 11—21 are withdrawn from consideration. Final Act. 1,2. Appeal 2015-005714 Application 12/790,938 INVENTION Claim 1, reproduced below, is the sole independent claim and is representative of the claimed subject matter: 1. An integrated and reversibly stimulating anesthetizing endoscope apparatus for peripheral nerve blocks under direct visual control, said endoscopic apparatus comprising: an endoscope including a proximal end, a stem section and a distal end; a sheath including a proximal end and a distal end, where the sheath surrounds at least 50% of a length of the endoscope stem section and forms a channel between an exterior surface of the endoscope and an interior surface of the sheath, a light delivery assembly including at least one light delivery conduit, where each light delivery conduit is connected to a light source and terminates in the distal end of the endoscope, and at least one light receiving conduit, where each light receiving conduit is connected to an image processing and display unit and terminates in the distal end of the endoscope; a fluid delivery assembly connected to the sheath, wherein the fluid delivery assembly comprises at least one local anesthetic agent for delivery through the sheath; and a nerve stimulating assembly comprising: a nerve stimulating unit, a first stimulating electrode disposed at or near the distal end of an outside surface of the endoscope and movably associated with the endoscope, wherein the first stimulating electrode is separate from the sheath and disposed in the channel between the exterior surface of the endoscope and the interior surface of the sheath, and wherein the first stimulating electrode is connected via a first conducting member to the nerve stimulating unit, and a second electrode adapted to be placed on the skin of a patient and connected via a second conducting conduit to the nerve stimulating unit, where the stimulating unit is adapted to produce a voltage across the first and second electrodes to produce a current that stimulates a nerve 2 Appeal 2015-005714 Application 12/790,938 response when the first stimulating electrode is proximal a nerve, and wherein the endoscope apparatus is adapted for percutaneous insertion into a tissue site without surgical incision. Appeal Br. 15—16 (Claims App.). REJECTIONS 1. Claims 1—5, 8, 10, 22—25, and 27—31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yamamoto (US 6,585,638 Bl, issued July 1, 2003), Isse (US 5,681,262, issued Oct. 28, 1997), Hadzic (US 5,830,151, issued Nov. 3, 1998), and Trauthen (US 5,263,928, issued Nov. 23, 1993). 2. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yamamoto, Isse, Hadzic, Trauthen, and Morell (US 5,389,070, issued Feb. 14, 1995). ANALYSIS Rejection 1 Regarding claim 1, the Examiner finds that Yamamoto discloses an endoscopic apparatus for peripheral nerve blocks comprising endoscope 2, and a nerve stimulating assembly including a nerve stimulating unit, first stimulating electrode 12, and a second electrode. Final Act. 3^4. The Examiner finds that Yamamoto’s “endoscope apparatus is adapted for percutaneous insertion into a tissue site without surgical incision,” as claimed, because the apparatus “could be inserted into an open wound percutaneously.” Id. at 4. The Examiner finds that Yamamoto does not disclose the following claim limitations: (1) “a light delivery assembly,” (2) “a sheath . . . [which] 3 Appeal 2015-005714 Application 12/790,938 forms a channel between an exterior surface of the endoscope and an interior surface of the sheath,” (3) the first stimulating electrode is “separate from the sheath and disposed in the channel between the exterior surface of the endoscope and the interior surface of the sheath,” (4) “a fluid delivery assembly [which] comprises at least one local anesthetic agent for delivery through the sheath,” and (5) “the second electrode . . . connected via a second conducting conduit to the nerve stimulator unit.” Id. at 4—5. The Examiner relies on Isse, Hadzic, and Trauthen to teach these limitations. Id. at 5—6. Appellant contends, inter alia, that Yamamoto does not teach an endoscope apparatus “adapted for percutaneous insertion into a tissue site without surgical incision,” as claimed. Appeal Br. 9. Appellant contends that “percutaneous insertion refers to insertion that involves ‘the passage of substances through unbroken skin. ’” Id. (citing Stedman’s Medical Dictionary 1456 (28th ed. 2006)). In contrast, Appellant contends, Yamamoto’s apparatus is adapted for “surgery operation[s].” Id. Appellant contends that any ability of Yamamoto’s endoscope apparatus to be inserted into an “open” or “pre-existing” wound would not be “percutaneous insertion.” Id.', see Final Act. 4. Appellant also asserts that the alternative definitions of “percutaneous insertion” cited by the Examiner, which include “‘performed through the skin,’ including through ‘a biopsy,”’ are consistent with Appellant’s definition. Appeal Br. 9—10 (citing Advisory Act. mailed Aug. 20, 2014). The Examiner responds that the alternative definitions of “percutaneous insertion” agree with the Examiner’s interpretation, which 4 Appeal 2015-005714 Application 12/790,938 encompasses inserting Yamamoto’s endoscope apparatus “through an open wound.” Ans. 3^4. Appellant’s contentions are persuasive. The recitation of “the endoscope apparatus is adapted for percutaneous insertion into a tissue site without surgical incision” in claim 1 (emphasis added) indicates that “percutaneous insertion” and insertion through a surgical incision are different from each other. Appellant’s Specification describes that video assisted procedures using an endoscope are known, but that all of these procedures require a surgical incision. Spec. 14. The Specification describes that the invention allows “introducing an endoscope percutaneously without a surgical incision into an animal including a human.” Id. 1 8. The Specification also describes, for example, that “the endoscope is adapted to be introduced percutaneously through a trocar or an introducer” and “no surgical incision is needed to introduce the endoscope.” Id. 134. In contrast, Yamamoto discloses that the invention “relates to an endoscope power supplying appliance of which an endoscope and an operational device can be inserted into a body from a same skin incision.'’'’ Yamamoto, col. 1,11. 40-43 (emphasis added). Yamamoto describes that the endoscopic power supplying appliance is “capable of endoscopic surgical operation with a single skin incision.'’’ Id. at col. 1,11. 8—10 (emphasis added). Yamamoto also describes that “[t]he appliance is effective for operations such as fine vessel coagulation under endoscope, in particular, it is possible to perform thoracic sympathetic nerve blocking operation under endoscope with only one skin incision.” Id. at col. 6,11. 7— 10 (emphasis added). Yamamoto further describes that “[w]hen the distal 5 Appeal 2015-005714 Application 12/790,938 end of the power appliance is used for incision, it is preferred to make the distal end sharp as a blade.” Id. at col. 2,11. 26—28 (emphasis added). Accordingly, Yamamoto repeatedly describes that the endoscopic device is inserted into the body (i.e., “into a tissue site”) with surgical incision. The Examiner does not direct us to any disclosure in Yamamoto that the endoscope apparatus is, nonetheless, adapted to be inserted “into a tissue site without surgical incision.” We agree with Appellant that the Examiner’s construction of “the endoscope apparatus is adapted for percutaneous insertion into a tissue site without surgical incision” to encompass insertion of Yamamoto’s endoscope apparatus “into an open wound percutaneously” is unreasonable. See Appeal Br. 9-10 (emphasis added). In that regard, Appellant asserts, and we agree, that the Examiner’s construction “does not make practical sense because relying on a pre-existing wound would lead to the improper conclusion that the physician could only perform a nerve block in circumstances and in bodily locations where the subject coincidentally also presented an open wound.'” Id. at 10 (emphasis added). Appellant notes that a “physician could create an open wound surgically, but this is precisely the procedure that the invention of claim 1 is designed to overcome.” Id. Because the Examiner’s finding that Yamamoto discloses the “percutaneous insertion” limitation recited in claim 1 is not supported by a preponderance of the evidence, and the Examiner does not rely on Isse, Hadzic, or Trauthen in any way that cures this deficiency, we do not sustain the rejection of claim 1, or its dependent claims 2—5, 8, 10, 22—25, and 27— 31. 6 Appeal 2015-005714 Application 12/790,938 Rejection 2 The Examiner’s reliance on Morell to teach the limitation of dependent claim 9 fails to cure the deficiency in the rejection of claim 1. Final Act. 10—11. Accordingly, we also do not sustain the rejection of claim 9. DECISION We reverse the rejections of claims 1—5, 8—10, 22—25, and 27—31. REVERSED 7 Copy with citationCopy as parenthetical citation