Ex Parte Wells et al

Board of Patent Appeals and Interferences

Sep 23, 2005

09865774 (B.P.A.I. Sep. 23, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TIMOTHY WELLS and DAVID RACENET
__________
Appeal No. 2005-2607
Application No. 09/865,774
__________
ON BRIEF
__________
Before GARRIS, WARREN, and JEFFREY T. SMITH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-10.
The subject matter on appeal relates to a trocar assembly
comprising an obturator having first and second ends with a
sharpened tip positioned on the first end and a hand grip
positioned on the second end and wherein a cushioned member is
positioned on at least one pressure contact surface of the hand
Appeal No. 2005-2607
Application No. 09/865,774
1 As reflected on page 3 of the brief, the appellants have
grouped and argued the appealed claims together. Accordingly, in
our disposition of this appeal, we need focus on claim 1 only
which is the sole independent claim before us. See 37 CFR
§ 1.192(c)(7)(2003).
2 On pages 1 and 2 of the surreply brief filed June 4, 2004,
the appellants correctly point out that the supplemental
examiner’s answer mailed April 15, 2004 was not permitted under
the regulation then in existence (i.e., prior regulation 37 CFR
§ 1.193(b)(1); compare current regulation 37 CFR § 41.43 (Sept.
(continued...)
2
grip. This appealed subject matter is adequately represented by
independent claim 1 which reads as follows:
1. A trocar assembly comprising:
an obturator defining a longitudinal axis and having first
and second ends,
a sharpened tip positioned on the first end of the obturator
and a hand grip positioned on a second end of the obturator
opposite the first end, and a cushioned member positioned on at
least one pressure contact surface of the hand grip.
The references relied upon by the examiner as evidence of
obviousness are:
Ott 5,674,237 Oct. 7, 1997
Silber et al. (Silber) 5,928,154 Jul. 27, 1999
All of the appealed claims are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ott in view of Silber.1
We refer to the various briefs and answers for a complete
exposition of the opposing viewpoints expressed by the appellants
and by the examiner concerning the above noted rejection.2
Appeal No. 2005-2607
Application No. 09/865,774
2(...continued)
2004) which expressly permits a supplemental examiner’s answer).
However, this error on the examiner’s part is harmless since,
from our perspective, the supplemental answer merely reiterates
positions previously advanced by the examiner in the answer.
3
OPINION
For the reasons expressed in the answer and below, we will
sustain this rejection.
The independent claim on appeal distinguishes from the Ott
patent by requiring “a cushioned member positioned on at least
one pressure contact surface of the hand grip.” The trocar
handle 110 of Ott’s trocar assembly 20 is not disclosed as having
any such cushioned member. We agree with the examiner, however,
that it would have been obvious for an artisan with ordinary
skill to provide patentee’s trocar handle with a grip layer of
the type and for the reasons taught by Silber.
According to the appellants, no reason exists for combining
these reference teachings in the above proposed manner. We
cannot agree. As more fully explained in the answer, an artisan
would have been motivated to so combined these reference
teachings in order to provide the trocar handle of Ott with the
several advantages taught by Silber to attend use of his grip
layer such as reduced fatigue and occupational injuries due to
minimalization of gripping force (e.g., see lines 1-10 in column
Appeal No. 2005-2607
Application No. 09/865,774
4
3 and lines 37-51 in column 5 of Silber). We have no doubt but
that the artisan would have appreciated the applicability of such
advantages to the trocar assembly of Ott.
The appellants further argue that Silber’s grip layer is not
tantamount to the here claimed cushioned member since the former
is disclosed as being non-compressible and rigid. This is
incorrect. The examiner has rightly explained that Silber
actually teaches that his grip layer is “substantially” non-
compressible (see line 18 in column 3) and “substantially” rigid
(see line 60 in column 3), thus indicating that the layer is
compressible and non-rigid to at least some extent. More
importantly, the examiner has correctly pointed out that
patentee’s grip layer and the appellants’ cushioned member are
both made of the same types of materials such as Santoprene™
(e.g., see lines 28-60 in column 8 of Silber in comparison with
the first full paragraph on specification page 4) and possess
overlapping durometer values (e.g., see line 58 in column 7
through line 27 in column 8 of Silber in comparison with lines 1-
9 on specification page 5).
Contrary to the appellants’ apparent belief, these
circumstances provide adequate, reasonable support for the
examiner’s determination that Silber’s grip layer inherently
Appeal No. 2005-2607
Application No. 09/865,774
5
possesses the “cushioned” characteristic of the appealed claim 1
“cushioned member.” See Ex parte Levy, 17 USPQ2d 1461, 1463-64
(Bd. Pat. App. & Int. 1990). Moreover, it is here appropriate to
reiterate the examiner’s well taken point that neither appealed
claim 1 nor the specification disclosure contains any
requirements as to the degree of this “cushioned” characteristic
or the thickness of this “cushioned member.”
In light of the foregoing and for the reasons well stated by
the examiner in her answer, it is our ultimate determination that
the examiner has established a prima facie case of obviousness
which the appellants have failed to successfully rebut with
argument or evidence of nonobviousness. We hereby sustain,
therefore, the section 103 rejection of claims 1-10 as being
unpatentable over Ott in view of Silber. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
The decision of the examiner is affirmed.
Appeal No. 2005-2607
Application No. 09/865,774
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2005-2607
Application No. 09/865,774
7
Kimberly V. Perry
United States Surgical, a Division of
Tyco Healthcare Group LP
150 Glover Avenue
Norwalk, CT 06856