Ex Parte Trabada et alDownload PDFPatent Trial and Appeal BoardSep 24, 201211644384 (P.T.A.B. Sep. 24, 2012) 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. 11/644,384 12/21/2006 German Trabada 10121/01307 (99-0090US2) 6261 30636 7590 09/24/2012 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER HUGHES, SAMUEL T ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 09/24/2012 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 GERMAN TRABADA, RUSSELL F. DURGIN, JR., and ROBERT SAKAL __________ Appeal 2011-012524 Application 11/644,384 Technology Center 3700 __________ Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 involving claims directed to a tissue resection device, which the Examiner has rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-012524 Application 11/644,384 2 STATEMENT OF THE CASE Claims 1-8 are on appeal, and can be found in the Claims Appendix of the Appeal Brief (App. Br. 9-10). Claim 1 is the only independent claim and is representative of the claims on appeal, and reads as follows (emphasis added): 1. A modular device for tissue resection, comprising: a housing including a guide track receiving lumen extending therethrough; a motor mounted within the housing, the motor being selectively engageable with and rotatable about a guide track received within the guide track receiving lumen to move the modular device therealong; a tissue receiving chamber formed within the housing; a grabbing mechanism drawing a selected portion of tissue into the tissue receiving chamber; and a resection mechanism resecting the selected portion of tissue. The following grounds of rejection are before us for review: The Examiner has rejected claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Richter 1 in view of McAllister 2 and either Kindlein 3 or Ziegler. 4 ISSUE The Examiner has rejected claims 1-8 as obvious based on Richter in view of McAllister and either Kindlein or Ziegler. The Examiner finds that Richter disclosed a modular device disposed over a guide track within an 1 Richter, EP 0 976 417 A1, published Feb. 2, 2000. 2 McAlister et al., US 2002/0065523 A1, published May 30, 2002. 3 Kindlein, US 7,229,401 B2, issued Jun. 12, 2007. 4 Ziegler et al., US 6,971,990 B2, issued Dec. 6, 2005. Appeal 2011-012524 Application 11/644,384 3 internal lumen of the housing. (Ans. 4.) The motor is mounted within the housing and selectively engages with the guide track to move along the track. (Id.) Richter did not disclose a stapling unit within the housing. (Id.) McAllister disclosed a modular device that moves along a guidewire, with a tissue receiving chamber and a grabbing mechanism. (Id.) The Examiner asserts that it would have been obvious to combine the devices of Richter and McAllister to arrive at a tissue resection device that travels along a guidewire into position without causing it to buckle which can occur during pushing. (Id. at 5.) The Examiner takes the position that “[b]oth Kindlein and Zeigler show one element rotating with respect to another to produce motion,” (id. at 7) and this would read on the motor rotatable about a guide track. Appellants contend “that both Kindlein and Ziegler disclose a motor that includes gears that turn relative to a length of a longitudinal element received through a lumen thereof.” (App. Br. 4.) “[T]he motor of the needle insertion device [of Kindlein] does not rotate about the needle to move the needle insertion device longitudinally therealong.” (Id. at 5.) “Neither Kindlein nor Ziegler show or suggest a motor rotatable about a guide track to move the device longitudinally therealong.” (Id.) Does the preponderance of the evidence support the Examiner‟s conclusion that the references teach a modular device with a motor that is engageable with and rotatable about a guide track received within the guide track receiving lumen to move the modular device there along? Appeal 2011-012524 Application 11/644,384 4 FINDINGS OF FACT FF 1. A guide track may be, “for example, straight guidewire or shaft, a catheter, a coiled guidewire or metal shaft or any like device.” (Spec. 5 ¶14.) FF 2. A portion of the modular device “includes a threaded portion to allow modular device 110 to move along coiled guide track 120a. The threaded portion is preferably a threaded hole 117b in an end of modular device 110 which intermeshes with the coils of track 120a.” (Spec. ¶ 16.) FF 3. The Specification provides that in one embodiment the motor is made up of a rotor and stator were the “[r]otor 132 is positioned within the modular device 110 to engage and rotate about guide track 120b, which is embodied as a coiled guidewire or shaft.” (Spec. ¶ 17.) “[T]he coils of the guide track 120b provide a substantial helical threaded surface which is engaged by the corresponding threaded portions 111a, 111b of the lumen extending through the modular device 110.” (Spec. ¶ 17.) PRINCIPLES OF LAW “In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the Supreme Court emphasized “an expansive and flexible approach” to the obviousness question, it also reaffirmed the importance of determining “whether there was an apparent reason to combine the known elements in 5 Substitute Specification submitted December 21, 2006. Appeal 2011-012524 Application 11/644,384 5 the fashion claimed by the patent at issue.” Id. at 418 (emphasis added.) Thus, “[o]bviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Instead, “[i]n determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). ANALYSIS Claim 1 is directed to a tissue resection device where the resection mechanism is part of a housing comprising a mounted motor with the “the motor being selectively engageable with and rotatable about a guide track received within the guide track receiving lumen to move the modular device therealong.” (Claim 1.) Richter disclosed a device that is pulled along a guidewire. “The micro-motor 1 is then energized so that it crawls along the guide wire 2 which pulls the catheter 15 into the proximity of the target area to be treated.” (Richter col. 5, ll. 51-54.) Because the catheter is “pulled” rather than “pushed” into position there is “reduced risk of trauma to the internal surface of the lumen” because there is less kinking of the catheter. (Richter col. 5, ll. 54-58.) The Examiner acknowledged that “Ritcher [sic] does not specifically disclose a modular devise as rotatable about the guide track” Appeal 2011-012524 Application 11/644,384 6 (Ans. 5) necessitating the addition of either Kindlein or Ziegler to show rotation about the guide track. The Examiner takes the position that the claim limitation of “the motor being selectively engageable with and rotatable about a guide track received within the guide track receiving lumen to move the modular device therealong” is met by having a wheel rotate along a guide track. (Ans. 5.) The Examiner contends that Kindlein disclosed a movable needle and “the movement is created by a drive wheel (33a) rotating about the needle guide track (10).” (Id.) The Examiner similarly contends that Ziegler advances an object using “[r]ollers (134) [that] rotate about material (106) to move the member with respect to the rollers.” (Id.) Appellants contend that “[n]either Kindlein nor Ziegler show or suggest a motor rotatable about a guide track to move the device longitudinally therealong.” (App. Br. 4-5.) Appellants assert that the term “„rotate‟ is defined as „to turn about an axis or center.‟” (Id. at 6.) “[A]s the claim language makes clear and as this language would be understood by those of skill in the art a „motor rotatable about a guide track‟ requires at least a portion of the motor to turn about the guide track such that the guide track defines an axis or center of this rotation.” (Reply Br. 4.) We agree with Appellants that the Examiner has not adequately explained how the ordinary artisan would have arrived at the device disclosed in claim 1 using the cited references. The claim requires that “the motor be[] selectively engageable with and rotatable about a guide track received within the guide track receiving lumen to move the modular device therealong.” Claim features must be read consistent with the Specification. Appeal 2011-012524 Application 11/644,384 7 The claim requires a motor with a receiving lumen to receive a guide track, and the motor must rotate around the guide track. The motor itself can spin around the guide track, for example, like in a rotor-stator motor (FF 3). Alternatively, the device that holds the motor can spin around the guide track as it moves along the track thereby rotating the motor about the guide track (FF 2). Claims are read in light of the Specification and with a view of what the ordinary artisan would understand. “Claims are not to be read in a vacuum[;] while it is true they are to be given the broadest reasonable interpretation during prosecution, their terms still have to be given the meaning called for by the specification of which they form a part.” In re Royka, 490 F.2d 981, 984 (CCPA 1974); see also In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). Here the claims recite that “the motor being selectively engageable with and rotatable about a guide track received within the guide track receiving lumen.” The Examiner interpreted this limitation to mean that wheels rotating on a guide track is sufficient to satisfy this limitation. Specifically, the Examiner asserts that “[b]oth Kindlein and Zeigler show one element rotating with respect to another to produce motion.” (Ans. 7.) The Examiner takes the position that “[t]he claims merely recite a motor „rotatable about a guide track‟ so that motor gears rotating around the guide track overlaps the instant claims.” (Id. at 8.) We find the Examiner position is not reasonable in light of the Specification. The ordinary artisan would understand that there is a difference between a motor, motor gear and a wheel. The claim requires that “the motor be[] selectively engageable with and rotatable about a guide track.” Appeal 2011-012524 Application 11/644,384 8 We find that the ordinary artisan would understand this to mean that the motor rotates around the guide track. A motor driving a wheel can be stationary and still able to rotate the wheel – this would not be encompassed by claims that require the motor to rotate about the guide track. Looking to the Specification we find that the Examples provided in Figures 1-4 all show a device that is mounted on a coiled guidewire. Thus, a motor with wheels that is set into a groove on a coiled guidewire would turn the motor housing around the guide track as required by the claims. The threading on either end of the device as shown in Figure 3 would also provide that the device with the enclosed motor would ensure that the motor travels around the guide wire. Any construction that provides that the device moves forward in a spiraling motion would ensure that the motor mechanism that is housed on the inside of the device rotates the motor around the guide track. For the reasons set out above we agree with the Appellants that the Examiner has not met the burden of setting out a prima facie case based on the cited references. CONCLUSION OF LAW We conclude that the Examiner has not met the burden of setting out a prima facie case. We reverse the obviousness rejection of claim 1 under 35 U.S.C. § 103(a), as well as its dependent claims 2-8. REVERSED cdc Copy with citationCopy as parenthetical citation