Ex Parte Uram

Patent Trial and Appeal Board

Jan 8, 2018

13084789 (P.T.A.B. Jan. 8, 2018)

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.
13/084,789 04/12/2011 Martin Uram 27861-005 (URAM P-18) 1766
32137 7590 01/10/2018
PATENT DOCKET CLERK
COWAN, LIEBOWITZ & LATMAN, P.C.
114 WEST 47th STREET
21st FLOOR
NEW YORK, NY 10036
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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):
sxd@cll.com
ram@cll.com
dxo@cll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN URAM
Appeal 2017-002323
Application 13/084,7891
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a laser
video endoscope for ophthalmologic surgery. The Examiner rejected the
claims on appeal under 35 U.S.C. § 103(a) as obvious.
We affirm.
1 According to Appellant, the real party in interest is Becton, Beaver-Visitec
International, Inc. App. Br. 1.
Appeal 2017-002323
Application 13/084,789
STATEMENT OF THE CASE
The Specification states: “This invention relates in general to a laser
video endoscope for use in ophthalmology operations and more particularly
to one in which the operating probe has a small diameter so that, for
example, it can be passed through a 23 gauge sleeve such as a trocar sleeve.”
Spec. 11. Prior art endoscopes have been employed with a probe “passing
through a 20 gauge tissue incision” which has been “a standard in the art.”
Id. 12. Recently, “a smaller 23 gauge sleeve has been employed.” Id. 13.
“The value of the 23 gauge sleeve is that it involves a smaller incision and
therefore quicker recovery time.” Id. “One problem is that a 23 gauge
probe is so small in diameter (25 mils) that it is fragile and tends to break.”
Id.
Accordingly, it is a major purpose of [Appellant’s] invention to
provide a design for a laser video endoscope that will permit the
probe to be designed so that it can be inserted through a 23
gauge sleeve and will maintain sufficient robustness so as to
minimize the amount of breaking and provide the possibility for
reuse of the instrument.
Id. 14.
An embodiment of the claimed probe is depicted in Figure 2
(reproduced below).
Figure 2 “illustrate[s] an embodiment of [Appellant’s] invention showing
probe 28, hand piece 34 and cable 35.” Id. 116. “The distal portion 32 of
the probe 28 has an outer diameter of 25 mils and will be able to extend
through a 23 gauge sleeve to provide illumination and laser energy delivery
within the eye during a surgical procedure and to transmit image from the
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Application 13/084,789
eye.” Id. 117. “This 25 mil diameter probe has to meet the need of
providing enough light and enough laser energy while maintaining an
adequate image guide.” Id. 118.
Obtaining a usable probe involves “trade-offs” with respect to various
light fiber functions, including “illumination energy, imaging and laser
energy.” Id. “What Applicant has done is to provide a particular trade-off
of dimensions for each of these light fibers.” Id. “Essentially, the trade-off
involves a standard minimum size image guide 36, a very much reduced
laser guide 38 having a 100 micron diameter instead of a 200 micron
diameter and a illumination light bundle 40 having only 210 fibers.” Id. |
19.
Claims 1—18 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A laser video endoscope for ophthalmologic surgery
comprising:
a hand piece;
a hollow rigid probe extending distally of the hand piece,
said probe having a distal portion and a proximal portion,
said distal portion of said probe having approximately a
25 mil outer diameter, at least approximately a 2 mil thick
sidewall and approximately a 710 mil length,
said proximal portion of said probe having at least an
approximately 35 mil outer diameter and at least an
approximately five mil thick sidewall,
said probe containing a laser guide fiber, an imaging
component and an illumination fiber bundle,
said laser guide fiber having a cross sectional first surface
approximately 100 microns in diameter,
said imaging component having an essentially contiguous
cross sectional second surface approximately 14 mils in
diameter,
wherein said first surface and said second surface do not
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Application 13/084,789
overlap, and the distal portion of said probe is adapted to pass
through a 23 gauge sleeve.
App Br. 16 (Claims App’x).
The Examiner rejected claims 1—18 as unpatentable under 35 U.S.C.
§ 103(a) over the combination ofUram,2 Toriya3 and Saitou.4
ANALYSIS
Appellant argues claims 1—18 together. We designate claim 1 as
representative.
As can be seen in Figures 1 and 2 (reproduced below) Uram discloses
a laser video endoscope for ophthalmologic surgery comprising a hand piece
(10) and a hollow probe (12) containing a laser guide fiber (22), an imaging
component (24) and an illumination fiber bundle (26). Uram, col. 2,11. 41—
64.
Figure 1 is “a mechanical schematic longitudinal view of an embodiment to
[Uram’s] invention.” Id. at col. 2,11. 32—33. Figure 2 is “cross-sectional
view at the tip of the probe illustrating the relative deployment of the
2 Uram, US Patent No. 5,121,740, issued June 16, 1992 (“Uram”).
3 Toriya et al., US Patent Publication No. 2005/0192480 Al, published Sept.
1, 2005 (“Toriya”).
4 Saitou et al., US Patent No. 6,451,005 Bl, issued Sept. 17, 2002
(“Saitou”).
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Application 13/084,789
monofilament laser fiber 22, the 3,000 pixel image guide 24 and the multi­
fiber illumination zone 26.” Id. at col. 2,11. 34—37.
With respect to claim 1, the Examiner found that Uram disclosed all
of the components of the claimed laser video endoscope but did not disclose
the dimensions of certain of the claimed components. Final Act. 2—5. In
particular the Examiner found that Uram was “silent with respect to the
distal portion of the probe [being] adapted to pass through a 23 gauge sleeve
having a laser guide of approximately 100 microns in diameter” and
“fail[ed] to disclose proximal and distal portion[s of the probe] of the
specific size dimensions claimed.” Id. at 3.
The Examiner found that Toriya disclosed a laser endoscope “wherein
the laser guide comprises a core 3 with a diameter preferably in the range of
50-400 pm” and “the imaging bundle may range form 1000-100000 fibers.”
Id. More broadly, the Examiner found that Toriya demonstrated that it was
“well known in the art at the time of the invention to vary the overall
size/diameter of the probe and both the imaging bundle and laser fiber to
optimize the viewing capability of the device and efficiency of the laser.”
Id.
The Examiner further found that Saitou disclosed an “analogous
microscopic endoscop[e]” that “tapers toward a distal end of the insertion
shaft, to create variable stiffness along the length of the instrument.” Id. at
4. According to the Examiner, Saitou discloses that “the distal portion 4 of
the catheter may have a length from 1-30 cm . . . and ... a thickness of
approximately ,05mm to .15mm.” Id. The Examiner concluded that this
“demonstrate [s that] it was well known in the art at the time of the invention
to vary the size of vari[ous] portions of the catheter (i.e. distal and proximal
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Application 13/084,789
portions) as desired and dictated by the surgical procedures at hand.” Id.
The Examiner further found that Saitou taught that “the thickness of outer
layer 8 [of the probe] may decrease gradually toward the front end of the
body and thereby the rigidity of the catheter decreases continuously.” Id.
Based on the combined teachings of the cited art, the Examiner
concluded:
[I]t would have been obvious to one skilled in the art at the time
the invention was made to vary the size of the laser and
imaging components of Uram. Furthermore, it would have been
an obvious matter of design choice to vary the size of the laser
and imaging components, since such a modification would have
involved a mere change in the size of a component. . . . [I]t
would have been an obvious matter of design choice to provide
a distal portion of the probe with at least approximately a 2 mil
thick sidewall and approximately a 710 mil length and a
proximal portion of the probe with at least an approximately 35
mil outer diameter and at least an approximately five mil thick
sidewall, since such a modification would have involved a mere
change in the size of a component. . . . [I]t would have been
obvious to one skilled in the art at the time of the invention to
provide the probe of Uram and Toriya et al. with [a] proximal
portion having a larger sidewall and outer diameter than that of
the distal portion, to ensure the instrument has the desired
flexibility to allow it to be advanced along a curved or tortuous
tissue space with minimal tissue trauma, but with sufficient
axial stiffness or “pushability” to allow transfer of force to
advance the instrument as taught by Saitou et al.
Id. at 2—A. In support of these conclusions, the Examiner noted that “[a]
change in size is generally recognized as being within the level of ordinary
skill in the art.” Id. (citing In re Rose, 220 F.2d. 459 (CCPA 1955)).
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—5; Final Act. 2—7) and agree that
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Application 13/084,789
the claims would have been obvious over Uram, Toriya, and Saitou. We
address Appellant’s arguments below.
Appellant argues that Uram “discloses an endoscope with a 30
millimeters long uniform probe having an outer diameter of 950 microns
(about 37.4 mils) at its proximal and distal ends,” but does not “disclose or
even remotely suggest[] how to reduce the outer diameter of its probe to pass
through a 23 gauge sleeve while retaining the desired image quality and
rigidity of its probe.” App. Br. 12. We are not persuaded.
One cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
Here, Uram discloses an ophthalmologic endoscope comprising all of
the claimed elements with the exception that they are not sized as claimed.
Toriya teaches that components of the probe portion of an endoscope can
vary in size to reflect tradeoffs between variables such as “efficacy,”
“desired reduction in the diameter,” and ability to obtain a “sharp image.”
Toriya 29-33. In addition, Saitou discloses an analogous endoscope in
which the body tapers toward the distal end. Saitou, col. 13,11. 25—31, col.
15,11. 26—28. Saitou also teaches that the length and thickness of the distal
portion of the catheter can vary to reflect tradeoffs in “pressing
performance,” “torque transmission performance,” and spatial
considerations. Saitou, col. 8,11. 16—36, col. 11,11. 7—16.
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Application 13/084,789
Based on the disclosures of Uram, Toriya, and Saitou, we agree with
the Examiner that it was known “to vary the overall size/diameter of the
probe and both the imaging bundle and laser fiber to optimize the viewing
capability of the device and efficiency of the laser.” Ans. 3. We further
agree that “it was well known in the art at the time of the invention to vary
the size of variations portions of the catheter (i.e. distal and proximal
portions) as desired and dictated by the surgical procedures at hand.” Final
Act. 4. Finally, we agree with the Examiner’s conclusion that “it would
have been an obvious matter of design choice to vary the size of the laser
and imaging components, since such a modification would have involved a
mere change in the size of a component” (Ans. 4), and that it would have
been obvious to provide the Uram’s probe with a
proximal portion having a larger sidewall and outer diameter
than that of the distal portion, to ensure the instrument has the
desired flexibility to allow it to be advanced along a curved or
tortuous tissue space with minimal tissue trauma, but with
sufficient axial stiffness or “pushability” to allow transfer of
force to advance the instrument.
Final Act. 4. The Examiner “correctly found that there was no indication
that obtaining the claimed dimensions was beyond the capabilities of one of
ordinary skill in the art or produced any unexpectedly beneficial properties,
further supporting the . . . finding that the optimization of the dimensions
was obvious.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012).
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Application 13/084,789
Appellant argues that the teachings of Toriya are incompatible with
those of Uram. Figure 2 of the Uram (reproduced below left) and Figure 2
of Toriya (reproduced below right) help to illustrate Appellant’s argument.
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■8
Figure 2 of Uram is “is a cross-sectional view at the tip of the probe
illustrating the relative deployment of the monofilament laser fiber 22, the
3,000 pixel image guide 24 and the multi-fiber illumination zone 26.”
Uram, col. 2,11. 34—37. Figure 2 of Toriya is a “longitudinal section of an
example of the objective portion of a fiberscope which is to be used in the
endoscopic system of the [Toriya’s] invention.” Toriya 122.
Appellant argues that in Toriya the optic laser fibers 5 have a “circular
cross sectional surface diameter ‘D’ which overlaps laser fiber 2 having [a]
Targe-diameter’ cross sectional surface.” App. Br. 12. In contrast, in Uram
(and in the claimed endoscope), the cross sectional surface of the laser guide
does not overlap with the cross sectional surface of the imaging component.
Thus, according to Appellant, the skilled artisan “would not have been
motivated to combine the diametrically opposite teachings of Uram and
Toriya, let alone somehow modify independent non-overlapping laser and
image fibers of Uram with concentrically imbedded laser within image
fibers of Toriya to arrive at Appellant’s claimed invention.” Id. at 12—13.
We are not persuaded because, as the Examiner explains, “Toriya et
al. is NOT relied upon as a teaching regarding the internal configuration of
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the laser guide fibers and imaging component but rather as a teaching of
providing a laser video endoscope of varying overall dimensions.” Ans. 4.
Moreover we note that “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); and
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Appellant argues that “[w]hen combining Uram, Toriya and Saitou,
the Examiner focuses on specific dimensions of individual components
including illumination component, imaging component and laser component,
but ignores the required arrangement of these precisely dimensioned
components with respect to each other.” App. Br. 13. We are not
persuaded.
While we recognize that the claims recite the dimensions of multiple
individual components, for the reasons discussed above, it would have been
obvious to optimize the sizes of claimed individual components. Appellant
has not provided persuasive evidence establishing the criticality of the size
of the individual components with respect to each other. We note that,
consistent with the Examiner’s position, it has generally been held that
changes in sizes of shapes of known elements are within the level of skill in
that art, especially in the absence of unexpected results or criticality. Cf.
Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding
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Application 13/084,789
that, where the only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device was not patentably distinct from the prior art
device); see also In re Dailey, 357 F.2d 669, 672—673 (CCPA 1966) (change
in shape ordinarily prima facie obvious).
Accordingly, we affirm the Examiner’s rejection of claim 1. Because
they were not argued separately, claims 2—17 fall with claim 1.
DECISION
For these reasons and those set forth in the Examiner’s Answer, and
the Final Office Action, we affirm the Examiner’s final decision to reject
claims 1—18 under 35 U.S.C. § 103(a) as obvious over the combination of
Uram, Toriya, and Saitou.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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