Ex Parte Wyman et al

Board of Patent Appeals and Interferences

Aug 14, 2012

10679438 (B.P.A.I. Aug. 14, 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.
10/679,438 10/07/2003 Jeffrey Wyman A8130.0157/P157 3674
24998 7590 08/14/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
SONNETT, KATHLEEN C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
08/14/2012 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 JEFFREY WYMAN and ROBERT M. WEBER
____________

Appeal 2011-007865
Application 10/679,438
Technology Center 3700
____________

Before DONALD E. ADAMS, ERIC GRIMES, and JACQUELINE
WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-5, 11, and 12
(App. Br. 2; Reply Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to an arthroscopic instrument. Claims 1 and
11 are representative and are reproduced in the Claims Appendix of
Appellants‟ Brief.

Appeal 2011-007865
Application 10/679,438

2
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Nord,
1
Miller,
2
and Schmidt.
3

Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nord and Dingler.
4

We affirm.

The combination of Nord, Miller, and Schmidt:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants disclose that during surgery, surgeons do not utilize the
finger loops on a conventional medical instrument for retrieving sutures
through tissue, “but instead prefer to activate the instrument jaw by simply
pushing on the outside of the moveable finger loop” (Spec. 2: ¶ [0004]).
FF 2. Nord‟s FIG. 1 is reproduced below:

“FIG. 1 is a side elevation of a suture retriever according to . . . [Nord‟s]
invention” (Nord, col. 2, ll. 28-29).

1
Nord, US 6,074,403, issued June 13, 2000.
2
Miller, US 2,518,994, issued August 15, 1950.
3
Schmidt et al., US 5,456,684, issued October 10, 1995.

4
Dingler et al., US 6,071,299, issued June 6, 2000.

Appeal 2011-007865
Application 10/679,438

3
FF 3. Nord suggests “an arthroscopic instrument comprising a shaft having
a sharp distal tip (4) for capturing and retrieving suture within a patient‟s
body, an articulating mechanism (8) disposed on the shaft and in
communication with the sharp tip and a handle extending from the shaft”
(Ans. 3).
FF 4. Examiner finds that “Nord fails to disclose the claimed single lever
handle, the rod, and the spring” (id.).
FF 5. Miller‟s Fig. 1 is reproduced below:

“Fig. 1 is a side elevational view of a forceps tool constructed in accordance
with . . . [Miller‟s] invention” (Miller, col. 2, ll. 3-4).
FF 6. Miller suggests
[A] handle used to manipulate jaws at the end of a medical
instrument wherein the handle . . . comprises a single lever (25)
disposed pivotably on the handle and manipulable by a user‟s
thumb, while the handle is held across the user‟s palm and the
handle is gripped in the user‟s hand and the shaft extends
distally away from the user‟s thumb.

(Ans. 3.)
FF 7. Examiner finds that Miller‟s “handle (10) . . . includes a grip portion
(11) and bearing portion (12), the bearing portion having a bore (13) and slot
Appeal 2011-007865
Application 10/679,438

4
(14) . . . [wherein] the lever (25) is disposed on the bearing portion [(12)] of
the handle” (Ans. 7).
FF 8. Examiner finds that Miller suggests the
use [of] a rod linking an end effector with an actuating lever
wherein the lever includes a cam mechanism (surface 27) that
engages and cooperates with the rod (17) to move the rod
longitudinally within the shaft, thereby actuating the jaws . . .
[and] a spring (22) that pushes the rod against the cam surface.

(Id. at 3.)
FF 9. Examiner finds that while Miller‟s lever “toggles between two
positions . . . these two positions are not symmetric with respect to each
other relative to a direction transverse to a longitudinal axis of the shaft” (id.
at 4).
FF 10. Schmidt‟s FIG. 2 is reproduced below:

“FIG. 2 is a [side] sectional view of the handle assembly of . . . [Schmidt‟s
minimally invasive surgical] instrument” (Schmidt, col. 2, ll. 55-59).
FF 11. Examiner finds that Schmidt suggests “a trigger lever (31) that
toggles between two positions that are symmetric as shown in figure 2 (note
Appeal 2011-007865
Application 10/679,438

5
the recess 35 allows for symmetric toggling) in order to control longitudinal
movement of an elongated member” (Ans. 4 and 7; see also id. at 7
(“[E]xaminer has used Schmidt only to show that a modification of the lever
to toggle between two opposed symmetrical positions would have been
obvious”)).
ANALYSIS
The claims are not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Based on the combined suggestion of Nord, Miller, and Schmidt,
Examiner concludes, that at the time of Appellants‟ claimed invention, it
would have been prima facie obvious to a person of ordinary skill in this art
to substitute Miller‟s handle for the handle of Nord‟s device (Ans. 4).
According to Examiner, such a modification is nothing more than the
“substitution of one known end effector actuating handle for another known
end effector actuating handle with predictable results” (id.). Examiner
further reasons that “since Nord is silent on how movement of the handle is
translated to the articulating mechanism and Miller teaches a configuration
that is simple in construction, economical to manufacture, and highly
efficient in performing its intended function of removing foreign objects
from the body” a person of ordinary skill in this art at the time of
Appellants‟ claimed invention would have found it prima facie obvious to
“include a cam surface, push rod, and spring which cause the articulating
mechanism to open and close” in Nord‟s device as modified by Miller (id.).
Examiner also reasons that, at the time of Appellants‟ claimed
invention, it would have been prima facie obvious to a person of ordinary
skill in this art to modify the shape of Miller‟s lever to the shape suggested
Appeal 2011-007865
Application 10/679,438

6
by Schmidt “so that it may toggle between . . . symmetric positions because
such a modification can be considered a simple substitution of one known
pivoting trigger-type lever for another with predictable results” (id.; see also
id. at 7).
Nord is relied upon in combination with Miller and Schmidt;
therefore, we are not persuaded by Appellants‟ contentions as to what Nord
alone suggests to a person of ordinary skill in this art (App. Br. 5-7; Reply
Br. 3).
Appellants fail to establish an evidentiary basis on this record to
support a conclusion that the handle suggested by the combination of Nord,
Miller, and Schmidt is not capable of being held across a user‟s palm or
gripped in a user‟s hand (see Ans. 6-7; Reply Br. 3). Therefore, we are not
persuaded by Appellants‟ contention that Nord, Miller, and Schmidt all fail
to “suggest an instrument with a handle that is „held across the palm of the
user‟s hand‟”, wherein “the handle is gripped in the user‟s hand” (App. Br.
7).
Appellants‟ claim 1 does not exclude a device that comprises finger
loops. Accordingly, we are not persuaded by Appellants‟ contentions
regarding finger loops (App. Br. 7; see also App. Br. 11; Reply Br. 5 and 6).
We are not persuaded by Appellants‟ contention that Miller‟s “finger
lever 25 . . . is not located on a handle that is gripped by the user (while the
handle extends across the palm)” (App. Br. 8; Reply Br. 4). As Examiner
explains
It is possible for the user to pivot the lever (25) taught by Miller
with their thumb while the grip portion (11) of the handle
taught by Miller is held across the palm of the user and gripped
Appeal 2011-007865
Application 10/679,438

7
in the user‟s hand and therefore the device of Nord as modified
to include the handle of Miller meets the claim.

(Ans. 7; see also FF 7 (Notwithstanding Appellants‟ contention to the
contrary, Miller‟s “lever (25) is disposed on the . . . handle”).) The same
reasoning applies to Appellants‟ contentions regarding the design of
Schmidt‟s device (App. Br. 8-9; Reply Br. 5).
For the foregoing reasons, we are not persuaded by Appellants‟
contention that Miller suggests that “the finger lever 25 is depressed by the
index finger” (App. Br. 7). As Examiner reasons, Miller‟s device is capable
of being utilized without depressing lever 25 with an index finger (Ans. 7).
Further, Appellants acknowledge that those of ordinary skill in this art
recognize that instruments comprising finger loops can be used in a manner
that does not require placing a finger in the loop, suggesting that instruments
can be gripped and articulated in any number of ways (FF 1).
Miller is not relied upon to suggest a lever “designed to „toggle in an
arc between two opposed positions, the two opposed positions being
symmetric with respect to each other relative to a direction transverse to a
longitudinal axis of the shaft‟”; therefore, we are not persuaded by
Appellants‟ contention that Miller fails to suggest this feature (App. Br. 8;
Cf. FF 9).
Examiner articulated a reasonable interpretation of Schmidt, wherein
recess (35) of Schmidt‟s device allows for symmetric toggling of trigger
lever (31) in order to control longitudinal movement of an elongated
member (FF 11). Accordingly, we are not persuaded by Appellants‟
unsupported assertion that “[t]here is no indication or description in Schmidt
. . . that trigger 31 . . . can actually „toggle in an arc between two opposed
Appeal 2011-007865
Application 10/679,438

8
positions, the two opposed positions being symmetric with respect to each
other relative to a direction transverse to a longitudinal axis of the shaft‟”
(Reply Br. 4).
Because Schmidt is relied upon in combination with Nord and Miller,
we are not persuaded by Appellants‟ contention that “Schmidt does not
actuate any jaws . . . „for capturing and retrieving suture within a patient‟s
body‟” (Reply Br. 5-6).
Schmidt suggests one of any number of triggers or actuators known to
those of ordinary skill in this art (see Ans. 4 (“a trigger type lever that
toggles between two . . . symmetric positions is known in the art”)).
Appellants fail to establish an evidentiary basis on this record to suggest that
a person of ordinary skill in this art would not have considered it prima facie
obvious to substitute “one known pivoting trigger-type lever for another
with predictable results” (Ans. 4). Accordingly, we are not persuaded by
Appellants‟ contention that “[t]here is simply no motivation for one skilled
in the art to select a particular, specific element of Schmidt (i.e., trigger 31)
out of a multitude of similar structure elements . . . to modify the lever of
Miller and further the lever of Nord” (Reply Br. 6).
In sum, Appellants fail to establish an evidentiary basis on this record
to support a conclusion that the device suggested by the combination of
Nord, Miller, and Schmidt is structurally different than the device set forth
in Appellants‟ claim 1.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nord, Miller, and Schmidt is affirmed.
Appeal 2011-007865
Application 10/679,438

9
Claims 2-5 are not separately argued and fall together with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).

The combination of Nord and Dingler:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 12. Examiner relies on Nord as set forth above (FF 1-2).
FF 13. Examiner finds that Nord fails to suggest a device with a “pliers-like
grip” (Ans. 5).
FF 14. Dingler‟s FIG. 1 is reproduced below:

“FIG. 1 [is] a lateral view of an instrument with an opened forceps tool”
(Dingler, col. 1, ll. 55-56).
FF 15. Examiner finds that Dingler suggests a plier-like grip having
[O]ne curved movable lever (11) and one curved stationary
handle (12) wherein the lever and handle have substantially
similar but opposite curved shapes and are substantially
symmetric relative to a longitudinal axis of the instrument when
in the closed position (figure 2) and wherein the handle and
Appeal 2011-007865
Application 10/679,438

10
lever are asymmetrical with respect to the longitudinal axis
when they are in the open position ([see Dingler‟s] figure 1).

(Ans. 5)
FF 16. Examiner finds that Appellants‟ claimed invention requires “that the
lever and handle are „substantially‟ symmetric and therefore the handle and
lever taught by Dingler meet this limitation, and the open position (figure 1)
is considerably asymmetric as compared to the closed position (see figures 2
and 5)” (id.)
FF 17. Examiner finds that Dingler‟s handle “includes a spring arrangement
(14) disposed between the curved stationary handle [(12)] and the curved
movable lever [(11)] to urge the instrument into a normally open position”
(id.; see also id. at 8).
FF 18. Examiner finds that Dingler‟s “ratchet mechanism (15, 16) holds the
handles in a certain position against the biasing of the spring but the spring
can still be considered to bias the handles away from each other” (Ans. 8).
FF 19. Examiner finds that Dingler suggests that “in order to close the jaws,
the movable handle arm (11) is pivoted to its closed position against the
effect of the spring. . . . Therefore, the spring is biasing the handles into
their normally open position” (id.).
FF 20. Examiner finds that Dingler‟s “ratchet mechanism may be released
by actuating lever (17), at which time the spring biases the handles away
from each other into their open position” (id.).
ANALYSIS
The claims are not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 11 is representative.
Appeal 2011-007865
Application 10/679,438

11
Based on the combined suggestion of Nord and Dingler, Examiner
concludes, that at the time of Appellants‟ claimed invention, it would have
been prima facie obvious to substitute Dingler‟s pliers-like grip for the
handle of Nord‟s device (Ans. 6). According to Examiner, such a
modification is nothing more than the “substitution of one known end
effector actuating handle for another known end effector actuating handle
with predictable results” (id.).
Nord is relied upon in combination with Dingler; therefore, we are not
persuaded by Appellants‟ contentions as to what Nord alone suggests to a
person of ordinary skill in this art (App. Br. 9).
For the reasons articulated by Examiner, we are not persuaded by
Appellants‟ contention that Dingler fails to “suggest an instrument with „a
curved stationary handle‟ and „a curved movable lever‟ with „a spring
arrangement disposed between the curved stationary handle and the curved
movable lever to urge the instrument into a normally open position‟” (App.
Br. 10; Cf. Ans. 8; FF 15 and 17-20).
We are not persuaded by Appellants‟ contention that “a person of
ordinary skill in the art would not have been motivated to combine the
forceps instrument . . . of Dingler with the suture manipulator of Nord”
(App. Br. 11). Appellants fail to establish an evidentiary basis on this record
to support a conclusion that Dingler‟s pliers-like grip could not have been
utilized as the handle for Nord‟s device and thereby actuate Nord‟s suture
manipulator (see Ans. 6).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 11 under 35 U.S.C. § 103(a) as
Appeal 2011-007865
Application 10/679,438

12
unpatentable over the combination of Nord and Dingler is affirmed. Claim
12 is not separately argued and falls together with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii).

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

alw