Ex Parte Wilk

Board of Patent Appeals and Interferences

Aug 31, 2012

11386504 (B.P.A.I. Aug. 31, 2012)

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.
11/386,504 03/22/2006 Peter J. Wilk W07-532US 5529
28156 7590 08/31/2012
COLEMAN SUDOL SAPONE, P.C.
714 COLORADO AVENUE
BRIDGE PORT, CT 06605-1601
EXAMINER
LE, LONG V
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER J. WILK
____________

Appeal 2010-008195
Application 11/386,504
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/386,504

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STATEMENT OF THE CASE
Peter J. Wilk (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject (1) claims 1 and 3-5 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement; (2) claims 1, 3 and 5 under 35 U.S.C. § 102(b) as being
anticipated by Silverstein (US 5,025,778, issued Jun. 25, 1991); and (3)
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Silverstein and Wilk
(US 5,398,685, issued Mar. 21, 1995). Claims 13-21 have been withdrawn
from consideration. Claims 2 and 6-12 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6. We AFFIRM.

THE INVENTION
Appellant’s invention relates to an endoscopic device for use in
minimally invasive medical procedures. Spec. 1, ll. 6-7 and fig. 2.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A medical device including:
an elongate flexible shaft, said shaft having
a diameter sufficiently small to insert said elongate
flexible shaft through a working channel of an
endoscope assembly;
a handpiece operatively connected to a
proximal end of said elongate flexible shaft;
steering controls disposed on said
handpiece, so that a distal end of said shaft may be
steered independently of the endoscope assembly;
a first electroacoustic transducer element
disposed at a distal end of said elongate flexible
shaft for converting an electrical energization
waveform into an ultrasonic pressure wave; and
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a second electroacoustic transducer element
disposed at said distal end of said elongate flexible
shaft for converting incoming ultrasonic pressure
waves into electrical signals.

OPINION
The § 112, first paragraph, rejection
Independent claim 1 recites steering controls disposed on a handpiece,
“so that a distal end of [the] shaft may be steered independently of the
endoscope assembly.” App. Br., Claims Appendix. The Examiner takes the
position that Appellant’s detailed disclosure, as originally filed, fails to
support this limitation. Ans. 3. Appellant argues that Figure 2 of
Appellant’s drawings, “pertains to a medical device (52) that is separate and
different from an endoscope (78), that has a handpiece (62) separate and
different from the handpiece (82) of an endoscope, and has its own steering
controls (64) separate and different from those on an endoscope handle.”
Reply Br. 4. Appellant further argues that, as shown in Figure 2 of
Appellant’s drawings, “[t]he language ‘so that a distal end of said shaft may
be steered independently of the endoscope assembly’ . . . clarifies or
explains that the steering controls on the handpiece of Appellant’s device are
separate and different from the steering controls on a handpiece of an
endoscope.” Id. We do not agree with Appellant’s position for the
following reasons.
At the outset, we agree with the Examiner that Appellant’s
Specification merely discloses that “[p]robe 52 may include a handpiece 62
connected to a proximal end of tubular member 58, the handpiece [62] being
provided with steering controls 64.” Ans. 7. See also, Spec., 7, ll. 20-21.
We could not find any portion of Appellant’s Specification, and Appellant
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has not pointed to any portion, that describes that steering controls 64 are for
steering a distal end of the shaft (probe 52) independently of the endoscope
assembly. As such, we further agree with the Examiner “Appellant does not
describe this feature in the specification.” Ans. 8. Moreover, although we
acknowledge that Figure 2 of Appellant’s drawings shows that probe 52 has
a handpiece 62 with steering controls 64 that are separate (independent) and
different from those of handpiece 82 of the endoscope 78, Figure 2 does not
show steering of a distal end of the shaft (probe 52) independently of the
endoscope assembly.
In conclusion, we find that Appellant’s Specification and drawings do
not convey with reasonable clarity to a person of ordinary skill in the art that
the steering controls 64 disposed on handpiece 62 of the shaft (probe 52) are
for steering a distal end of the shaft (probe 52) independently of the
endoscope assembly, as called for by independent claim 1.
For the foregoing reasons, the rejection of independent claim 1, and its
respective dependent claims 3-5, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, is sustained.
The anticipation rejection based upon Silverstein
The Examiner takes the position that steering controls 36 on
handpiece 32 of Silverstein’s endoscopic device 30 enable steering of the
control cable 122 (shaft) of functional pod 120 (instrument) independently
of the endoscope assembly. Ans. 4. See also, Silverstein, figs. 1 and 20.
We disagree with the Examiner’s position for the following reasons.
In this case, we agree with Appellant that, (1) “controls (36) [of
Silverstein] are for steering the insertion tube (34) of the endoscope;” and
(2) “[t]o the extent that the ultrasonic instrument (122, 120) [of Figure 20 of
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Silverstein] is steered, it is only through the steering [i.e., via controls 36] of
the host endoscope insertion tube (34).” App. Br. 5. See also, Silverstein,
col. 4, ll. 33-36 and col. 10, ll. 60-62 and figs. 1 and 20. As such, we further
agree with Appellant that Silverstein fails to teach steering controls for
steering the ultrasonic instrument (122, 120) independently of the endoscope
assembly, as required by claim 1. App. Br. 4-6. See also, Reply Br. 7.
Accordingly, Silverstein does not teach all the limitations of
independent claim 1 or its respective, dependent claims 3 and 5. Therefore,
the rejection of claims 1, 3 and 5 under 35 U.S.C. § 102(b) as anticipated by
Silverstein cannot be sustained.
The obviousness rejection over Silverstein and Wilk
The Examiner’s application of Wilk as a separate additional reference
in conjunction with Silverstein does not remedy the deficiencies of
Silverstein as described above. As such, the rejection of claim 4 under 35
U.S.C. § 103(a) as unpatentable over Silverstein and Wilk likewise cannot
be sustained.
DECISION
The decision of the Examiner to reject claims 1 and 3-5 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement, is affirmed.
The decision of the Examiner to reject claims 1 and 3-5 under §§ 102
and 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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