Ex Parte Suslov et alDownload PDFPatent Trial and Appeal BoardMay 3, 201611482580 (P.T.A.B. May. 3, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111482,580 0710712006 Nikolay Suslov 20583 7590 05/03/2016 Jones Day 222 East 41st St New York, NY 10017 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 11773-002-999 6530 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3742 MAILDATE DELIVERY MODE 05/03/2016 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 NIKOLA Y SUSLOV and IGOR RUBINER Appeal2013-010961 Application 11/482,580 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nikolay Suslov and Igor Rubiner (Appellants) 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-8, 10, 11, 13-18, and 20-27. Appeal Br. 5. An oral hearing was held on April 21, 2016. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Plasma Surgical Investments Limited. Appeal Br. 1. Appeal2013-010961 Application 11/482,580 THE CLAIMED SUBJECT MATTER Claims 1 and 20 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A plasma surgical device having an operational end, the plasma surgical device comprising: an anode at the operational end of the plasma surgical device, the anode having a hole therethrough; a cathode; an intermediate electrode, having a hole therethrough, the intermediate electrode being arranged between the cathode and the anode; an end sleeve forming an outer casing of the operational end of the plasma surgical device, the end sleeve having an outer diameter of less than 5 mm; wherein the hole through the intermediate electrode and the hole through the anode, at least in part, form a first channel for conducting plasma and discharging a plasma jet through an external outlet opening at the operational end of the plasma surgical device; and wherein a gap between the end sleeve and the intermediate electrode and a gap betv,reen the end sleeve and the anode, at least in part, form a second channel for conducting a coolant for cooling the intermediate electrode and the anode for discharging the coolant through one or more external outlet openings at the operational end of the plasma surgical device. THE REJECTIONS2 Claims 1-8, 10, 11, 13-18, and 20-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Suslov (WO 96/06572; pub. Mar. 7, 1996), Takakiyo (US 3,534,388; iss. Oct. 13, 1970), and Eggers (US 5,697,882; iss. Dec. 16, 1997). 2 If there is further prosecution following this Decision, the Examiner and Appellants should be aware that claim 10 currently depends from canceled claim 9, which should be corrected. Appeal Br. 26 (Claims App.). 2 Appeal2013-010961 Application 11/482,580 Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Suslov, Takakiyo, Eggers, and Sagara (US 4,029,930; iss. June 14, 1977). ANALYSIS Claims 1--8, 10, 11, 13-18, and 20--27- Obviousness over Suslov, Takakiyo, and Eggers Independent claim 1 and dependent claims 2-6, 8, 10, 11, 13-16, 18, 24, 26, and 27 Regarding independent claim 1, the Examiner found, inter alia, that Suslov discloses the claimed plasma surgical device, wherein Suslov' s channels 12 correspond to the claimed second channel for conducting a coolant for cooling device elements such as intermediate electrodes 8, 9, anode 10, and gas heating channel 17. Final Act. 3--4 (citing Suslov, Abstract, Figs. 6a, 7, 7a; see also Suslov, p. 12, 1. 31-p.13, 1. 3). The Examiner also found that "a second channel having external outlet openings is known in the art and, in support, relied on Takakiyo's holes 8, 29. Id. at 6. 3 The Examiner further found that an express advantage of Takakiyo's second channel with external outlet openings is to cool the workpiece's surface to increase the plasma generating device's operational efficiency. Id. at 7 (citing Takakiyo, col. 2, 11. 18-24; col. 3, 11. 53-74). The Examiner reasoned that it would have been obvious "to modify Suslov with the second 3 Additionally, the Examiner found that Suslov discloses that the second channel has outlet openings 19 for discharging the coolant. Id. at 4 (citing Suslov, Figs. 8, 8A). Nevertheless, we understand the rejection to rely on Takakiyo for teaching external outlet openings for the second channel because Suslov's openings 19 may not discharge the coolant externally from the device. Id. at 6. 3 Appeal2013-010961 Application 11/482,580 coolant channel and outlet configuration [] of Takaki yo ... to provide a means to ... cool the surface of the work [ (tissue)] being cut ... , thereby increasing the operational efficiency of the plasma generating device." Id. Regarding the limitation of claim 1 that requires the end sleeve to have an outer diameter of less than 5 mm, the Examiner relied on Eggers for disclosing an electrosurgical device with an end sleeve of 5 mm or less to advantageously adapt the device for minimally invasive surgery. Final Act. 8 (citing Eggers, col. 8, 11. 1-20, col. 16, 11. 40-50, Figs. 2A, 2B). The Examiner reasoned that it would have been obvious to combine the plasma-generating surgical device in view of Takakiyo with the end sleeve of the plasma surgical device having [an] outer diameter of less than 5 mm of Eggers for the purpose of forming a plasma surgical device that has dimensions to permit the surgical device to be introduced into a body cavity that is minimally invasive. Id. at 8. First, Appellants argue that "[t]he Examiner failed to make a prima facie case of obviousness of claim 1 because [Suslov, Takakiyo, and Eggers] individually or in combination fail to disclose or suggest "a second channel [ 1] for conducting a coolant for cooling the intermediate electrode and the anode and [2] for discharging the coolant through one or more external outlet openings at the operational end of the plasma surgical device." Appeal Br. 9. In particular, Appellants contend that Suslov's channel 12 does not have external outlet openings on the operational end of the device, as required by claim 1. Id. However, as stated supra, the Examiner relied on teachings from Takakiyo, in addition to Suslov, for disclosing a second channel with external outlet openings 8, 29, and therefore, Appellants' contention regarding Suslov alone does not address the rejection presented. 4 Appeal2013-010961 Application 11/482,580 Appellants also contend that "Takakiyo does not disclose [a second] channel ... 'for conducting coolant for cooling [elements of the device],' as required by claim 1." Id. at 10-11. However, as stated supra, the Examiner relied on Suslov, not Takakiyo, for disclosing second channel 12 for conducting a coolant for cooling device elements such as intermediate electrodes 8, 9, anode 10, and gas heating channel 17, and therefore, this contention by Appellants also does not address the findings relied on for the conclusion of obviousness. Appellants' arguments also fail to address the Examiner's proposed combination to modify Suslov's closed cooling system (i.e., channel 12), which cools the components of the device, to include an external outlet opening for the coolant at the operational end of the device, as taught by Takakiyo, and thus do not apprise us of error. Second, Appellants argue that Takakiyo is non-analogous art. Appeal Br. 13-14. Specifically, Appellants contend that Takakiyo is in a different field of invention than Appellants' invention and that, although Takakiyo has an open cooling system, Takakiyo does not address the problem of miniaturizing plasma surgical devices. Id. at 14--15. The Federal Circuit has explained that "[t]he analogous art inquiry is a fi1ctual one~ requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill [in the art]." Scient(.flc Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). "Criteria for determining whether prior art is analogous may be summarized as '(1) whether the art is from the same field of emieavori regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference stiU is reasonably pertinent to the particular problem with which the inventor is 5 Appeal2013-010961 Application 11/482,580 involved."' id at 1359 (citing Jn re C'fay, 966 F.2d 656~ 658----59 (Fed. Cir. 1992)). A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting Clay, 966 F.2d at 659); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard). Appellants' Specification discloses that the inventors were also solving the problems of improving the "accuracy of the plasma jet ... , for example, [so that] smaller areas can be affected by heat" and "obtain[ing] a plasma-generating device which gives limited action of heat around the area which is to be treated." Spec. i-f 7. Takakiyo is reasonably pertinent to this problem because it discloses preventing local over-heating of the work piece (especially at the shoulder of the cut into the workpiece) by supplying water for cooling the cut end of the workpiece. Takaki yo, Abstract, col. 3, 11. 53- 64. In other words, Takaki yo logically would have commended itself to the attention of an inventor who is considering cooling, and/or directing coolant to, a surface (e.g., a tissue surface) affected by a plasma-jet delivery device. Thus, Takakiyo is analogous art to the claimed subject matter and properly relied on in support of the Examiner's obviousness rejection. Third, Appellants present several arguments as to why there is no reason to combine Suslov and Takakiyo. Appeal Br. 15-17. 6 Appeal2013-010961 Application 11/482,580 Appellants argue that Suslov is concerned with coagulating tissues to stop bleeding, not cutting, and therefore, improving the quality of the cut would not provide a reason for modifying Suslov. Appeal Br. 16; see also Final Act. 7; Suslov Dec.4 i-f 16. However, this argument does not address the Examiner's additional reasoning that, because Takakiyo teaches cooling surfaces to prevent overheating, as stated supra, one skilled in the art would modify Suslov, in view of Takakiyo's teaching, to increase the operational efficiency of the device. See Final Act. 7. Although Appellants assert that "[ c ]ooling the tissue being coagulated would undermine the basic function of the devices disclosed in [Suslov]," Appellants do not provide any evidence, aside from a conclusory statement, in support of such an assertion, and therefore, this argument is also unpersuasive. Appeal Br. 16; see also Suslov Dec. i-f 17. Similarly, although Appellants argue that, in Takaki yo, "the water directed onto the material being cut disassociates into oxygen and hydrogen," wherein the oxygen "reacts chemically with the metal and generates heat," which would be "highly undesirable" in a surgical application, Appellants do not present technical arguments or evidence as to whether cooling water directed to treated tissue, or to tissue surrounding the treated tissue, would undesirably disassociate at the operating parameters of Suslov's device. Appeal Br. 17; see also Suslov Dec. i-f 24. Appellants further submit that "[i]t is unclear if Takakiyo would even work for its intended purpose if the electrical requirements are reduced to levels suitable, for example, for surgical applications," and that Takakiyo's plasma gas generating flow rate is unsuitable for surgical applications. 4 Declaration ofNikolay Suslov dated August 13, 2012; Appeal Br., Evid. App. (hereinafter "Suslov Dec."). 7 Appeal2013-010961 Application 11/482,580 Appeal Br. 16; see also Suslov Dec. iii! 21, 23. These arguments are not persuasive because Takaki yo' s electrical requirements and plasma gas generating flow rates are not relevant to the Examiner's proposed modification to Suslov' s cooling system. Similarly, Appellants argue that, in Takakiyo, the material being cut serves as the anode, which is unsuitable in a medical application; however, the Examiner relied on Suslov for disclosing anode 10, as claimed. Appeal Br. 16; see also Suslov Dec. if 22; Final Act. 3. Appellants also argue that these particularities with respect to Takakiyo's device teach away from the Examiner's modification, however, Appellants do not explain how Takakiyo would discourage one skilled in the art from modifying Suslov' s closed cooling system to be an open system as proposed by the Examiner. Moreover, Appellants' conclusion that "[i]n medical ... devices, the most critical consideration is safety, not operational efficiency" does not mean that Suslov's medical device is not also concerned with operational efficiency, which is the Examiner's articulated motivation for combining Takakiyo and Suslov. Appeal Br. 16; see also Suslov Dec. ir 18. In sum, Appellants' arguments do not establish that the Examiner's reasoning that it would have been obvious to modify Suslov with the second coolant channel and outlet configuration of Takaki yo to provide a means to cool the tissue being cut or coagulated lacks rational underpinning. Fourth, Appellants argue that "the Examiner committed an error of not giving proper weight to Mr. Suslov's declaration that presented evidence of non-obviousness." Appeal Br. 17. However, as discussed supra, Mr. Suslov's conclusions either do not address the Examiner's proposed combination or are assertions unsupported by factual evidence. 8 Appeal2013-010961 Application 11/482,580 Fifth, Appellants argue that the Examiner relied on impermissible hindsight by relying on Eggers for disclosing the claimed outer diameter of the end piece. Appeal Br. 18. Appellants contend that Eggers does not disclose a plasma surgical device and that "the energy that affects the tissue is electricity, light or both, not plasma." Id. at 18-19. However, Appellants' do not identify any knowledge that the Examiner relied upon that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Rather, the Examiner relied on Eggers's express teaching regarding the desirability of miniaturization, as stated supra, which contradicts Appellants' contention that there is no reason to combine a 5-mm end sleeve of an electro-surgical device with the plasma generating device of Suslov as modified by Takaki yo. Appeal Br. 19. Moreover, Appellants' Specification identifies laparoscopic surgery as requiring devices with small dimensions to allow accessibility without extensive surgery, which is precisely the procedure discussed with respect to miniaturization in Eggers. See Spec. i-f 6; Eggers, col. 8, 11. 7-13 ("[T]he shaft [of the device] will be a narrow-diameter rod or tube ... [to] permit it to be introduced into a body cavity ... through an associated trocar or cannula in a minimally invasive procedure, such as ... laparoscopic [procedures]."). Thus, we are not persuaded that the Examiner improperly relied on hindsight. To the extent Appellants are arguing that Eggers is non-analogous art, we disagree. Eggers addresses dimensioning a device for minimally invasive procedures, such as laparoscopic procedures, as described supra, and is, therefore, reasonably pertinent to the problem of miniaturization with 9 Appeal2013-010961 Application 11/482,580 which the inventors of the claimed subject matter were also involved, as stated by Appellants. Thus, Eggers is analogous art under the second prong of the analogous art test, as set forth supra. Accordingly, we sustain the Examiner's rejection of independent claim 1. Appellants do not present separate arguments for the patentability of claims 2---6, 8, 10, 11, 13-16, 18, 24, 26, and 27, which depend from claim 1, and therefore, we also sustain the Examiner's rejection of these dependent claims. Dependent claim 7 Although Appellants present an argument for the patentability of dependent claim 7 as rejected by the Examiner under 35 U.S.C. § 103(a) over Suslov, Takakiyo, Eggers, and Sagara, which is discussed infra, Appellants do not present any arguments against the Examiner's rejection of claim 7 as unpatentable under 35 U.S.C. § 103(a) in view of Suslov, Takakiyo, and Eggers. Specifically, the Examiner reasoned that angling the second channel at the external outlet openings away from the first channel, as required by claim 7, is an obvious matter of design choice. Final Act. 9. Appellants do not contest this. Accordingly, we also sustain the Examiner's rejection of dependent claim 7, which depends from independent claim 1. Dependent claim 17 Regarding dependent claim 17, the Examiner found that the cross- section of Takakiyo's external outlet openings 8, 29 are elongated, "in the length direction (vertical axis)." Ans. 7; see also Final Act. 6-7 (citing Takakiyo, Figs. 1, 4). Appellants argue that the cross-section of Takakiyo's second channel outlets are "round, not elongated," as required by claim 17. Appeal Br. 21. Appellants further argue that the Examiner's interpretation 10 Appeal2013-010961 Application 11/482,580 of claim 17 is unreasonable and inconsistent with the Specification. Reply Br. 10. In support, Appellants refer to paragraph 68 of the Specification, which states that Fig. 2c shows an alternative design of the outlet openings 125 of the coolant channel 123. Fig. 2c is a front view of the plasm- generating device 101 in Fig. 2a. In the embodiment shown in Fig. 2c, the outlet openings 125 are formed as four arched lead- ins which communicate with the coolant channel. Id. at 10-11 (including reproductions of Spec. i-f 68 and Fig. 2c ). Claim 17 requires the external outlet opening to have an elongated cross-section, however, claim 17 does not specify whether the cross-section is a cross-section of the opening taken at a plane that cuts through the opening perpendicularly to the longitudinal axis of the channel or at a plane that cuts through the opening parallel to the longitudinal axis of the channel (or that cuts through the opening at any other angle with respect to the longitudinal axis of the channel). For example, although Figure 2c of Appellants' Specification depicts a front plane view of the plasma- generating device, and paragraph 68 of the Specification describes openings 125 as having four "arched lead-ins," Figure 2a also depicts opening 125 as having an elongated cross-section at a plane that cuts through opening 125 parallel to the longitudinal axis of channel 123. To the extent Appellants argue that Takakiyo's openings 29 cannot have a longitudinal dimension, but that the Examiner's "vertical" cross- section of opening 29 includes the coolant channel, Appellants have not provided sufficient support for such a narrow interpretation of the claim term "opening." See Reply Br. 10. 11 Appeal2013-010961 Application 11/482,580 Thus, we are not apprised of error in the Examiner's finding, and we sustain the Examiner's rejection of claim 17. Independent claim 20 and dependent claims 21and23 The Examiner found that "during normal use and operation of the Suslov in view of Takaki yo ... combination, the method steps as broadly set forth ... in the claims [would] be performed by the Suslov in view of Takakiyo ... combination." Final Act. 8-9. The Examiner further relied on Eggers for disclosing a surgical tool that "discharges coolant near the spot of biological tissue through an outlet opening of the second channel." Ans. 8 (citing Eggers, col. 18; Fig. 1, numeral 83). First, Appellants argue that Suslov and Takakiyo "individually or in combination, fail to disclose 'discharging the coolant [that cools the electrodes of the plasma surgical device] near the spot of the biological tissue through an outlet opening of the second channel,"' as recited in claim 20. Appeal Br. 22; see also Reply Br. 9-10. However, as discussed with respect to independent claim 1 supra, Appellants' arguments are directed to Suslov and Takakiyo individually, without addressing the Examiner's proposed modification of Suslov in view ofTakakiyo's teachings, and thus do not apprise us of error. See also Ans. 7-8. Second, Appellants submit that the Examiner's rejection "relies on the principle that if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device." Appeal Br. 23 (citing MPEP § 2112.02, which cites In re King, 801F.2d1324 (Fed. Cir. 1986)). Appellants argue that "[h ]ere, ... the Examiner made an inherency rejection based on an obviousness combination of devices, without citing to any 12 Appeal2013-010961 Application 11/482,580 authority that allows for such an inherency rejection." Id. Appellants submit that "one cannot talk about a normal use and operation of a hypothetical combination," and therefore, "the Examiner failed to establish a primafacie case of obviousness." Id. We are not persuaded by Appellants' argument that the Examiner's obviousness rejection improperly relies on inherency. Rather, Suslov discloses the steps of discharging a plasma jet on a spot of biological tissue from an outlet opening of a first channel (Final Act. 3 (citing Suslov, p. 13, 11. 10-15)) and cooling electrodes of the plasma surgical device by passing a coolant through a second channel (id. at 4 (citing Suslov, Fig. 6, numeral 12)); and Takakiyo discloses the step of discharging the coolant from a second channel separate from the first channel near a spot of on the workpiece subject to the plasma jet (id. at 6 (citing Takakiyo, Figs. 1, 4). The Examiner established a prima facie case of obviousness by determining that modifying Suslov, in view of Takakiyo's teachings, to enhance cooling and efficiency, would have rendered the method steps of independent claim 20 obvious because Suslov's modified device would perform the claimed steps. Third, Appellants argue that the Examiner's reliance on Eggers "constitutes impermissible use of hindsight." Reply Br. 8. However, Appellants' conclusory statement does not identify any knowledge that the Examiner relied upon that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See McLaughlin, 443 F.2d at 1392. Accordingly, we sustain the Examiner's rejection of independent claim 20 and claims 21 and 23 depending therefrom. 13 Appeal2013-010961 Application 11/482,580 Claims 22 and 25 The Examiner found that Takakiyo discloses that "the discharged coolant [is] operable to restrict the discharged plasma jet radially and longitudinally." Final Act. 7 (citing Takakiyo, Fig. 4). Appellants argue that plasma jet flame 6 "would not be able to cut the metal to the depth shown in Figs. 1 and 4" if longitudinally restricted, and that Takakiyo's plasma jet flame 6 is not longitudinally restricted because plasma jet flame 6 "actually makes those cuts." Appeal Br. 24. We are not persuaded by Appellants' argument. An ordinary definition, in view of the Specification, of the claim term "restrict" (or "restricting") is "to set bounds or limits to." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, 1937 (1993). Notably, Takakiyo's angled coolant channels 29 are depicted as affecting plasma jet flame 6 in the same way Appellants' cooling channels 25 are angled to affect the plasma jet flame. See, e.g., Takaki yo, 4; Spec., Fig. 1 a. Appellants have not provided sufficient evidence to support the assertion that Takakiyo's angled coolant channels 29 do not, at least to some extent, limit plasma jet flame 6 longitudinally. Accordingly, we sustain the Examiner's rejection of dependent claims 22 and 25. Claim 7-0bviousness over Suslov, Takakiyo, Eggers, and Sagara This rejection is presented as an alternative to the rejection of claim 7, discussed supra, over Suslov, Takakiyo, and Eggers, and in stating this rejection, which includes Sagara, the Examiner relied on findings and reasoning that are different from the Examiner's rejection of claim 7 over Suslov, Takakiyo, and Eggers. Final Act. 9; see id. Final Act. 7-8. 14 Appeal2013-010961 Application 11/482,580 For this alternative rejection, Appellants argue that Sagara is non- analogous art. Appeal Br. 10-11. The Examiner responds that Sagara is reasonably pertinent to the problem addressed by the inventors of the claimed subject matter because Sagara involves a plasma-generating device discharging coolant. Ans. 7. However, Sagara does not involve discharging water for cooling, but rather discloses directing a high speed stream of water from a nozzle of a welding torch obliquely onto a member to be welded to form a flared-out curtain of water, such that gas injected into the volume enclosed by the curtain creates a gaseous atmosphere in which welding may be performed. Sagara, Abstract. Thus, we agree with Appellants that Sagara is not reasonably pertinent to a problem with which the inventors of the claimed subject matter were involved. Therefore, Sagara is non- analogous art under the second prong of the non-analogous art test, as set forth supra. Accordingly, we do not sustain the Examiner's alternative rejection of claim 7 under 35 U.S.C. § 103(a) over Suslov, Takakiyo, Eggers, and Sagara. DECISION The Examiner's decision to reject claims 1-8, 10, 11, 13-18, and 20- 27 under 35 U.S.C. § 103(a) as unpatentable over Suslov, Takakiyo, and Eggers is affirmed. The Examiner's decision to alternatively reject claim 7 under 35 U.S.C. § 103(a) as unpatentable over Suslov, Takakiyo, Eggers, and Sagara is reversed. 15 Appeal2013-010961 Application 11/482,580 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 16 Copy with citationCopy as parenthetical citation