Ex Parte Wilk

Patent Trial and Appeal Board

Feb 23, 2016

11387522 (P.T.A.B. Feb. 23, 2016)

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.
11/387,522 03/23/2006 Peter J. Wilk W07-535 6984
28156 7590 02/23/2016
Cosud Intellectual Property Solutions, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605-1601
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
02/23/2016 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 PETER J. WILK
____________

Appeal 2013-008254
Application 11/387,522
Technology Center 3700
____________

Before NEAL E. ABRAMS, JILL D. HILL and
MARK A. GEIER, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Peter J. Wilk (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 12-16. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal No. 2013-008254
Application No. 11/387,522

2
THE INVENTION
The claimed invention is directed to a method of inserting a distal end
portion of a surgical instrument through a port device into the body of a
patient.
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
12. A surgical method comprising:
inserting a distal end portion of a surgical instrument
through a natural body opening of a patient into a natural body
cavity of the patient;
using said surgical instrument to form a temporary
artificial opening through a wall of an organ defining said natural
body cavity;
providing a surgical port device including a membrane, a
plurality of mutually spaced tubular members traversing said
membrane at different locations thereon to define respective
spaced insertion paths for medical instruments, and means for
attaching said membrane to a wall of an organ so that said tubular
members traverse a perforation in said wall;
inserting said port device through said natural body
opening into said natural body cavity; and
subsequent to the inserting of said port device, disposing
said port device so that said tubular members are entirely within
the patient and in said artificial opening to keep the same open.

THE REJECTION
Claims 12–16 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.1

1 The Examiner’s refusal to enter amendments to the specification and
drawings (Final Act. 3), was characterized by Appellant as a “New Matter
Appeal No. 2013-008254
Application No. 11/387,522

3
OPINION
It is the Examiner’s position that
[c]laim 12 states that the port device is contained entirely within
the patient when it is placed in the artificial opening of the natural
body cavity. Applicant states that support is provided for this
limitation in the drawings, however the drawings do not show
the port contained within a body cavity, the specification does
not mention specific body cavities (such as the stomach) nor are
the drawings to scale.
Final. Act. 5.
Among Appellant’s arguments in rebuttal is that Figure 4 “shows
Applicant’s port element (10) deployed in an artificial opening in a natural
body cavity” (Br. 6), and that “[c]learly, the linear dimensions of applicant's
port device 10, 24 are small in comparison to the lengths of instruments 56,
58. The tubular instrument port members (14, 16; 28, 30, 32) cannot extend
back out through the natural body opening.” (id. at 7). The Examiner’s
response is that the drawings are not disclosed as being drawn to scale, and
there is no support in the drawings or the Specification to support the
conclusion that the port devices are entirely within the patient when the port
device is placed through the artificial opening in the wall of the organ. Ans.
5. In this regard, the Examiner points out that some of the natural body
openings named in the Specification “are not a long distance from the
natural body orifice, meaning that the tubular members [of the port device]
are not necessarily entirely within the patient.” Id.

Rejection” (Br. 8). However, this action on the part of the Examiner is
petitionable under 37 C.F.R § 1.181, and therefore is not before us.
Appeal No. 2013-008254
Application No. 11/387,522

4
Appellant also argues that three passages from the Specification
“indicate that the entire surgical port device (10, 24) is inserted into the natural
body cavity, in contrast to the surgical instruments (56 and 58) of which only
the distal ends are inserted into the patient. These passages further inform the
reader of the meaning of Figure 4.” Appellant recites the following three
passages:
“Port devices 10 and 24 may each be deployed by disposing it in
a folded or collapsed configuration (not shown) in a distal end
portion of a delivery tube (not shown).” Paragraph bridging
pages 6 and 7.

“In carrying out the method, surgical port device 10 or 24 is
inserted through the natural body opening into the natural body
cavity.” Sentence bridging pages 7 and 8.

“Distal end portions of multiple surgical or medical instruments
56, 58 are inserted through the natural body opening, the natural
body cavity, respective ones of the tubular members 14, 16, 28,
30, 32, and the artificial opening into an internal space (e.g.,
abdominal cavity) inside the patient after the disposing of port
device 10, 24 in the artificial opening.” First full paragraph on
page 8.
Br. 7–8.
Regarding the first passage, the Examiner states that it does not
provide information about the length of the tubes in the surgical port device,
and “does not provide support that the tubular members are small enough in
length to fit entirely within the patient.” Ans. 7. With regard to the second,
the Examiner points out that it “does not provide any information about the
relative length of the tubular members.” Id. As for the third, the Examiner
takes the position that the stated sequence of insertion events merely
Appeal No. 2013-008254
Application No. 11/387,522

5
“indicate[s] that the instruments pass through the different elements in a
specific order.” Id. at 8. The Examiner then offers the conclusion that
The above passages do not indicate that the entire port device is
within the natural body cavity, as recited in the claims. Clearly,
the port device is disclosed as being inserted into the natural body
cavity, but Applicant has not provided any evidence showing that
the tubular members do not extend out of the natural body cavity.
Id.
Although we have carefully considered all of the arguments presented
by Appellant, we agree with the reasoning set forth by the Examiner that the
limitation in issue in claim 12 is not explicitly supported by the original
disclosure of Appellant’s invention, and that one of ordinary skill in the art
would not have understood from Appellant’s disclosure that the method set
forth in claim 1 inherently includes such a teaching. This being the case, the
rejection of independent claim 12 is sustained. It follows that the like
rejection of dependent claims 13–16 also is sustained.
DECISION
The rejection is sustained.
The decision of the Examiner is affirmed.
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