Ex Parte Sutter et al

Patent Trial and Appeal Board

Jan 17, 2013

11083766 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HERMANN SUTTER and
DIRK WEITKAMP
__________

Appeal 2011-004553
Application 11/083,766
Technology Center 3700
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Before ERIC GRIMES, FRANCISCO C. PRATS, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
coagulation forceps, which have been rejected for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
“[C]oagulation forceps . . . allow operations to be performed in
extremely tight spaces . . . especially for minimally invasive surgeries”
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(Spec. 1, ¶ 4). The Specification discloses a coagulation forceps in which
the
pivot element . . . attaches directly to the moving forceps leg
and that, arranged on or fixed to the fixed forceps leg as a pivot
support, there is an insulating body, which electrically insulates
the pivot element and the moving forceps leg from the fixed
forceps leg and on which the moving forceps leg is supported
by means of the pivot element.
(Id. at 2, ¶ 8.) The Specification’s Figure 10 is reproduced below:

Figure 10 shows an exploded view of the opened forceps legs of the
coagulation forceps (id. at 6, ¶ 33) and illustrates most of the elements
referred to in claim 1 (below).
Claims 1, 5-10, and 13-17 are on appeal. Claim 1 is representative
and reads as follows:
1. Bipolar coagulation forceps (1) comprising a fixed forceps leg
(2), with a pivot support (3), having a receiving bearing (7b) with a slot or an
open spacing (10b) located therebetween, and with a pivoting forceps leg
(4), which can pivot relative to the fixed forceps leg via a pivot element (11,
12) and which is electrically insulated from the fixed forceps leg, the forceps
legs (2, 4) being made from biocompatible metal, the pivot element (11, 12)
is integral with the pivoting forceps leg (4), comprises two end portions
separated by a slot (13) in the pivoting forceps leg (4), and is made from
biocompatible metal, the end portions are each supported in the receiving
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bearing (7b) of the pivot support (3) which is formed as an insulating body
(5b) and electrically insulates the pivot element (11, 12) and the moving
forceps leg (4) from the fixed forceps leg (2), the insulating body (5b) is
arranged on or fixed to the fixed forceps leg (2) as a pivot support (3), on
which the moving forceps leg (4) is supported by the pivot element (11, 12)
which is clipped into the receiving bearings (7b) of the insulating body (5b).

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1, 5, 6, 8-10, 13, 15, and 16, based on McBrayer,1 Goble,2
and Krzyzanowski3 (Answer 3);
• Claims 7 and 17, based on McBrayer, Goble, Krzyzanowski, and
Lutze4 (Answer 6); and
• Claim 14, based on McBrayer, Goble, Krzyzanowski, and Scarfi5
(Answer 7).
The same issue is dispositive for each of the rejections. The Examiner
finds that McBrayer discloses most of the limitations of claim 1, including
“a pivot element (26) . . . comprising two end portions separated by a slot in
the pivoting forceps leg and attache[d] directly to the moving forceps leg”
(Answer 3-4). The Examiner reasons that the pivot element (pin) in
McBrayer’s device “can be considered integral with the pivoting leg once
the device is constructed and the legs are attached to one another through the
pin. In other words, the entire device may be considered integral since it
makes up a single unit.” (Id. at 5.)

1 McBrayer et al., US 5,352,223, Oct. 4, 1994
2 Goble et al., US 2003/0139741 A1, July 24, 2003
3 Krzyzanowski, US 6,440,085 B1, Aug. 27, 2002
4 Lutze et al., US 2002/0183784 A1, Dec. 5, 2002
5 Scarfi, US 6,458,129 B2, Oct. 1, 2002
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The Examiner acknowledges that McBrayer does not disclose a pivot
element made of biocompatible metal or clipped into a receiving bearing (id.
at 4) but concludes that those limitations would have been obvious based on
Goble and Krzyzanowski, respectively (id. at 4-5).
Appellants argue that the claims require pivot elements (11, 12)
separated by a slot and integral with the pivoting forceps leg, whereas “in
the cited art, the pivot element passes through the pivoting leg” (Appeal
Br. 11). Appellants argue that “there is no way that McBrayer shows or
suggests a pivot element that is integral with the moving forceps leg and is
clipped into the receiving bearings of the insulating body as claimed” (id. at
13). Appellants also argue that McBrayer and Krzyzanowski cannot be
combined because they are incompatible (id. at 14) and, in any case, “the
combination fails to show the pivot element as integral with the pivoting
forceps leg and having two end portions separated by a slot in the pivoting
forceps leg as claimed” (id. at 15).
We agree with Appellants that the Examiner has not established that
the cited references would have made obvious a coagulation forceps with a
pivot element that is integral with the moving forceps leg, or a pivot element
having two ends separated by a slot, both of which are required by claim 1.
The Examiner identifies element 26 of McBrayer’s device as the pivot
element recited in claim 1 (Answer 3). McBrayer’s Figure 11a is shown
below:

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Figure 11a is an enlarged top view of axle pin 26 (McBrayer, col. 5,
ll. 1 and 41). McBrayer states that “[t]he axle pin 26 has a relatively wide
body 26a which extends through the insulator 32 and provides strength to
the bushing, and slightly narrower tips 26b, 26c. At least one of the tips
preferably has a small counterbore therein so that the tip may be spread in
the flared hole 87a of the clevis of jaw 16 by a riveting instrument during
assembly.” (Id. at col. 8, ll. 11-17.) Jaw 16 is the fixed jaw of McBrayer’s
device, not the movable jaw (see id. at col. 5, l. 37).
Thus, at best, the pivot element of McBrayer’s device could be
considered to be fixed to (or “integral with”) the fixed jaw of the device, but
it is not fixed to (“integral with”) the movable jaw, as required by claim 1.
In addition, as shown by McBrayer’s Figure 11a (above), the two ends of the
pivot element are not “separated by a slot,” as required by claim 1. We have
considered the Examiner’s interpretation of how these claims limitations are
met by McBrayer (Answer 4-5) but do not agree that a reasonable reading of
the claim language encompasses the configuration of McBrayer’s device.
The Examiner does not identify any disclosure in any of the other cited
references that would make up for the deficiencies of McBrayer.
We therefore reverse the rejection of claim 1. Claim 17, the only
other independent claim on appeal, also requires the pivot element to be
integral with the moving forceps leg and, for the reasons discussed above,
the Examiner has not shown that this limitation is taught or would have been
obvious based on the cited references. We therefore reverse the rejection of
independent claims 1 and 17 and dependent claims 5-10 and 13-16.
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SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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