Ex Parte Voic

Patent Trial and Appeal Board

Dec 13, 2013

11986424 (P.T.A.B. Dec. 13, 2013)

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.
11/986,424 11/21/2007 Dan Voic M24-154US 2409
28156 7590 12/13/2013
COLEMAN SUDOL SAPONE, P.C.
714 COLORADO AVENUE
BRIDGE PORT, CT 06605-1601
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/13/2013 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 DAN VOIC
____________

Appeal 2012-001744
Application 11/986,424
Technology Center 3700
____________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-3, 5, 8, 9, 11, 13,
and 15-26 (App. Br. 2). Examiner entered rejections under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claims are directed to a surgical shield (claims 1-3, 5, 8, 9, 11, 13,
15-20, and 26) and a surgical method (claims 21-26). Independent claims 1,
19, and 21 are representative and are reproduced in the Claims Appendix of
Appellant’s Brief.

1 The Real Party in Interest is Misonix Inc. (App. Br. 1).
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Claims 1-3, 8, 11, 15, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Wenander2 and Lenhart.3
Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wenander, Lenhart, and de la Torre.4
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wenander, Lenhart, and Rubinstein.5
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, and Hart.6
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, Bose.7
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wenander and Rubinstein.
Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith.8
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Smith and de la Torre.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Smith and Strukel.9

2 Wenander, US 4,188,945, issued February 19, 1980.
3 Lenhart, US 4,581,538, issued April 8, 1986.
4 de la Torre et al., US 5,653,705, issued August 5, 1997.
5 Rubinstein et al., US 5,300,059, issued April 5, 1994.
6 Hart et al., US 5,848,992, issued December 15, 1998.
7 Bose, US 5,178,162, issued January 12, 1993.
8 Smith et al., US 2003/0191371 A1, published October 9, 2003.
9 Strukel et al., US 5,725,495, issued March 10, 1998.
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Application 11/986,424

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ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Wenander suggests “[a] surgical cloth intended as a protection of the
wound edges of an incision” (Wenander, Abstract).
FF 2. Wenander’s Figures 1-4 are reproduced below:

Wenander’s
FIG. 1 shows from above the surgical cloth according to . . .
[Wenander’s] invention, FIG. 2 shows on a larger scale the
encircled portion of FIG. 1, FIG. 3 is a perspective view of the
surgical cloth with a contracted central hole for introduction
into a wound cavity, FIG. 4 shows the surgical cloth applied at
a stomach operation.
(id. at col. 1, l. 53-col. 2, l. 5; Ans. 5.)
FF 3. Wenander’s “surgical cloth [1] is provided with a central hole [2],
which uncovers the operation area.” A hem 3 is arranged around the hole 2
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and a rigid but flexible thread 5 is introduced into the hem through an
opening 4 (id. at col. 1, ll. 3-4 and col. 2, ll. 9-14; Ans. 5).
FF 4. Wenander suggests that in use
The portion around the contracted central hole 2 is . . .
introduced into the wound cavity (incision), so that the ring-
shaped thread 5 in the hem 3 of the surgical cloth will be
located under the wound edges of the skin, and the central hole
2 is enlarged to a desired size, as is shown in FIG. 4. The
surgical cloth is after that placed over the skin area surrounding
the incision, so that the wound edges are effectively protected
from repeated contact and contamination at the same time as the
wound edges are visualized.
(Wenander, col. 2, ll. 33-42.)
FF 5. Examiner finds that Wenander suggests a shield support member that
consists of Wenander’s hem 3 and thread 5 (Ans. 5).
FF 6. Examiner finds that Wenander fails to suggest “an overlap zone” and
relies on Lenhart to make up for this deficiency in Wenander (id. at 5-6).
FF 7. Examiner finds that Wenander alone or in combination with Lenhart
fails to suggest “inner surfaces facing into the enclosure having a coating of
a hydrophilic composition” and relies on Rubinstein to make up for this
deficiency in Wenander alone or in combination with Lenhart (id. at 10 and
13).
FF 8. Examiner finds that the combination of Wenander and Lenhart fails
to suggest a shield support member and sheet member “made of a
transparent material” and relies on de la Torre to make up for this deficiency
in the combination of Wenander and Lenhart (id. at 9).
FF 9. Examiner finds that the combination of Wenander and Lenhart fails
to suggest a shield support member that “includes a central body or hub
formed with said aperture and further includes a plurality of outwardly
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radiating support fingers or ribs” and relies on Hart to make up for this
deficiency in the combination of Wenander and Lenhart (id. at 11).
FF 10. Examiner finds that the combination of Wenander and Lenhart fails
to suggest “a resilient coupling cuff provided at said aperture for forming a
seal with said one of said instrument and an appendage of a user” and relies
on Bose to make up for this deficiency (id. at 12).
FF 11. Smith’s invention “relates to devices, instruments and methods for
performing percutaneous surgeries” (Smith 1: ¶ [0001]).
FF 12. Smith’s Figures 1 and 12 are reproduced below:

Smith’s “FIG. 1 is a perspective view looking toward one side of a retractor
in an unexpanded configuration” (id. at ¶ [0005]). Smith’s “FIG. 12 is a
perspective view of the retractor of [Smith’s invention] . . . with the
expansion instrument . . . positioned therein to move the retractor to its
expanded configuration” (id. at ¶ [0016]).
FF 13. Examiner finds that Smith suggests a surgical “shield (20)
comprising a shield support member (28) in the form of an at least semi-
rigid sheet” (Ans. 14).
FF 14. Examiner finds that Smith’s device comprises “at least one flexible
sheet member (22) attached to said shield support member (28)” (Ans. 14;
see also Smith 2: ¶ [0028] (“Body 23 of first portion 22 can be flexible
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enough to extend around second portion 42 in form fitting relationship when
retractor 20 is [in] the unexpanded configuration”)).
FF 15. Smith discloses
[T]hat body 23 can be provided with a cross-sectional thickness
t1 that provides the desired flexibility, yet is sufficiently rigid to
maintain retraction of the skin and tissue. Body 43 of second
portion 42 can be provided with a thickness t2 that can be the
same or greater than thickness t1 of first portion 22. The
reduced thickness of body 23 provides it greater flexibility to
flex inwardly and outwardly expand around body 43 of second
portion 42. Thickness t2 provides second portion 43 greater
rigidity to resist bending or bowing under the forces exerted on
it by body 23 during and after movement of retractor 20 to its
expanded configuration.
(Smith 2: ¶ [0029]; see also Reply Br. 4.)
FF 16. Examiner finds that Smith’s instrument 60 is releasably coupled to
the Smith’s shield support member 28 (id.).
FF 17. Examiner finds that, in use, a user manipulates Smith’s “shield (20)
so as to place said open side (24) of said enclosure against a patient (into the
patient); thereafter operating said instrument (60) to perform a surgical
operation at a surgical site on the patient” (id. at 14-15; see id. at 15 (“during
operation of said instrument (60), manipulating said instrument (60) and said
shield (20) would maintain said free edge (24) of said at least one flexible
sheet member (22) in contact with the patient”); see also id. at 20 (“in order
for the retractor of Smith to be placed into the patient, it must also be placed
against, or in contact with, the patient”)).
ANALYSIS
Claims 1 and 19:
Based on the combination of Wenander and Lenhart, Examiner
concludes that, at the time Appellant’s invention was made, it would have
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been prima facie obvious to modify Wenander’s flexible sheet members
with Lenhart’s overlap zone to “more accurately conform to the contour of
the work area” (Ans. 6). Based on the combination of Wenander and
Rubinstein, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious to coat the interior of
Wenander’s device with a hydrophilic composition as suggested by
Rubinstein to absorb water and prevent irritation of the skin at the work area
(id. at 13).
We recognize, but are not persuaded by, Appellant’s contention that
Wenander’s surgical cloth “is not designed to attach to surgical instruments
or the surgeon’s arm” (App. Br. 11; Cf. FF 4). As Examiner explains,
Wenander’s device “is capable of attaching to surgical instruments or the
surgeon’s arm because the hole (2) of Wenander[‘s device] can be adjusted
to a desired size . . . in order to attach the device to surgical instruments or
the surgeon’s arm” (Ans. 19 (emphasis removed)).
We recognize, but are not persuaded by, Appellant’s contention that
“[n]either the [(a)] cloth nor the [(b)] thread of the Wenander device is a
rigid or semi-rigid sheet or web member” (App. Br. 11; Reply Br. 2-3).
Wenander’s hem 3 is a sheet or web member that is made rigid or semi-rigid
by Wenander’s rigid but flexible thread 5 (FF 3 and 5). We find no error in
Examiner’s conclusion that Wenander suggests a shield support member that
consists of Wenander’s hem 3 and thread 5 (FF 5; see Ans. 19 (“Appellant
does not require a specific configuration of the claimed ‘sheet’ which would
prohibit the structure of the support member (3, 5) from constituting the
claimed ‘sheet’”)). Notwithstanding Appellant’s contention to the contrary,
Wenander’s hem 3 and thread 5 combination reads on a shield support
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member that: (1) extends in at least two spatial dimensions, (2) takes the
form of an at least semi-rigid sheet or web member, (3) has an aperture
traversable by a surgical instrument, and (4) is capable of being releasably
connectable to at least one of an instrument and an appendage of a user (see
App. Br. 11-14; Reply Br. 2; Cf. Appellant’s claim 1; Ans. 19).
We recognize, but are not persuaded by, Appellant’s contention that
“nothing in Wenander suggests that the cloth is made of a transparent
material” and the “naturally occurring folds of the flexible Wenander
surgical sloth would interfere with the surgeon’s vision” (Reply Br. 2).
Initially, we note that Appellant’s claims 1 and 19 do not require the shield
support member and sheet members be transparent (Cf. Appellant’s claim 5,
which depends ultimately from claim 1 and requires the shield support
member and sheet members to be made of transparent material). See
Comark Communications Inc. v Harris Corp., 156 F.3d 1182, 1187 (Fed.
Cir. 1998) (“There is presumed to be a difference in meaning and scope
when different words or phrases are used in separate claims.”).
Nevertheless, a person of ordinary skill in this art would have found it
prima facie obvious to use a material that a surgeon could see through when
using Wenander’s device in a configuration wherein it is placed around the
surgical instrument or surgeon’s arm. It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”). Further, Appellant fails to establish an evidentiary
basis on this record to support a conclusion that a person of ordinary skill in
this art would find that the device suggested by the combination of
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Wenander and Lenhart or Rubinstein would fold in a manner that would
disrupt or restrict a “surgeon’s line of sight” (Reply Br. 2). Argument by
counsel cannot take the place of evidence. In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997).

Claims 5, 9, 16, and 17:
Appellant fails to establish a deficiency in the rejections based on the
combination of Wenander and Lenhart in combination with de la Torre,
Rubinstein, Hart, or Bose.

Claim 21:
Examiner finds that Smith makes obvious the surgical method set
forth in Appellant’s claim 21 (Ans. 14, 15, and 20).
Appellant contends that Smith fails to suggest “a flexible skirt or sheet
member” (App. Br. 16; Reply Br. 4). We are not persuaded (FF 14-15).
Simply stated, Appellant’s claim 21 does not require a particular degree of
flexibility, as such Smith suggests a flexible sheet member within the scope
of Appellant’s claimed invention (FF 14-15). Appellant failed to establish
an evidentiary basis on this record to support a conclusion that Smith’s
shield support member 28 is not “at least semi-rigid” (see App. Br. 16; Cf.
FF 13). Further, since Smith’s shield support member 28 extends in at least
two spatial dimensions, as is required by Appellant’s claim 21, we are not
persuaded by Appellant’s contention that Smith’s shield support member 28
is not a “sheet,” as one of ordinary skill in this art would understand that
term (see App. Br. 17).
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We are not persuaded by Appellant’s contention that Smith fails to
suggest placing “the free edge of the flexible sheet member – opposite the
shield support member . . . against a patient” (App. Br. 16; Reply Br. 5; Cf.
FF 17). We are also not persuaded by Appellant’s contention that Smith
fails to suggest releasably coupling an instrument to the shield support
member as required by claim 21 (see App. Br. 16-17; Reply Br. 5-6; Cf. FF
16-17).

Claims 22 and 24:
Appellant fails to establish a deficiency in the rejections based on the
combination of Smith in combination with de la Torre or Strukel.

CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander and Lenhart is affirmed. Claims 2, 3, 8,
11, 15, and 26 fall with claim 1.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, and de la Torre is affirmed.
Claim 13 falls with claim 5.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, and Rubinstein is affirmed.
Claim 18 falls with claim 9.
The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, and Hart is affirmed.
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The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander, Lenhart, Bose is affirmed
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wenander and Rubinstein is affirmed. Claim 20
falls with claim 19.
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Smith is affirmed. Claim 25 falls with claim 21.
The rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Smith and de la Torre is affirmed. Claim 23 falls
with claim 22.
The rejection of claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Smith and Strukel is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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