FRANCE CHIRURGIE INSTRUMENTATION SAS (FCI)Download PDFPatent Trials and Appeals BoardMar 26, 202013935632 - (D) (P.T.A.B. Mar. 26, 2020) Copy Citation 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. 13/935,632 07/05/2013 Stéphane URION CAC.P0089 6417 26360 7590 03/26/2020 Renner Kenner Greive Bobak Taylor & Weber Co., LPA Huntington Tower, Suite 400 106 South Main Street Akron, OH 44308-1412 EXAMINER ANDERSON, GREGORY A ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 03/26/2020 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 STÉPHANE URION Appeal 2019-004756 Application 13/935,632 Technology Center 3700 Before JENNIFER D. BAHR, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 5 and 7–14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as France Chirurgie Instrumentation SAS (FCI). Appeal Br. 3. Appeal 2019-004756 Application 13/935,632 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to an intubation system comprising an intubation cannula, a guide wire, and a probe designed to be inserted into a tear duct. Spec. 1:4–10. Claim 8, reproduced below, is illustrative of the claimed subject matter. 8. An assembly comprising a cannula and a resilient wire, wherein said cannula is made of a first material and said wire is made of a second material which is more resilient than said first material, said wire extending between a wire free end and a wire opposed end, said wire opposed end being connected to a probe to be inserted into a tear duct, said cannula comprising an elongated hollow cylindrical body and extending along a longitudinal axis between a front end and a rear end, said body having a front end opening at said front end, said front end opening allowing passage therethrough of said wire free end, a slot extending from said front end of opening towards said rear end, said slot having a slot width as measured perpendicularly to said longitudinal axis and being terminated by a lateral opening having a lateral width larger than said slot width so as to allow passage therethrough of said wire free end, said lateral opening being distant from said rear end, wherein said cannula comprises an inner wall closing the space of the cannula between the lateral opening and said rear end, wherein said inner wall forms at said lateral opening an angle of less than 90° with said longitudinal axis, to thus form a guide ramp for the wire free end toward the outside of the cannula through said lateral opening, said wire having at least a first portion extending itself along said longitudinal axis inside said body from said front end to said lateral opening, a second portion extending itself outside said cannula from said lateral opening, and a third portion extending from said probe to said front end. Appeal 2019-004756 Application 13/935,632 3 EVIDENCE The prior art relied upon by the Examiner is: Name Reference Date Ritleng US 5,501,232 Mar. 26, 1996 Snow US 5,863,366 Jan. 26, 1999 Ryan US 6,042,581 Mar. 28, 2000 Tamplenizza US 2004/0204704 A1 Oct. 14, 2004 REJECTIONS Claims 8–14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ritleng, Tamplenizza, and Ryan. Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ritleng, Tamplenizza, Ryan, and Snow. OPINION Obviousness Based on Ritleng, Tamplenizza, and Ryan The Examiner finds that Ritleng discloses an assembly comprising most of the features of claim 8. Ans. 3–4; Final Act. 2–4. The Examiner finds that Ritleng discloses a wire (filament 6) made of prolene (a second material), but does not specify a particular material (a first material) for the cannula, “and thus does not disclose the second material being more resilient than the first material.” Ans. 3–4; Final Act. 2–3. The Examiner also finds that Ritleng fails to disclose an inner wall closing the space of the cannula between the lateral opening and the rear end forming an angle of less than 90 degrees with the longitudinal axis, thus forming a guide ramp, as called for in claim 8. Ans. 4; Final Act. 3–4. The Examiner relies on Tamplenizza for a rigid or semi-rigid cannula material, which is less resilient than a flexible prolene wire. Ans. 4; Final Appeal 2019-004756 Application 13/935,632 4 Act. 3. Appellant does not specifically contest the Examiner’s determination that it would have been obvious to use the material taught in Tamplenizza for Ritleng’s cannula, nor does Appellant contest that this would satisfy the claim limitation that the second material be more resilient than the first material. See Ans. 4; Final Act. 3; Appeal Br. 6. The Examiner relies on Ryan for a teaching of a cannula having a lateral opening (side facing aperture 50) and an inner wall (deflecting surface 48) closing the space between the lateral opening and the rear end of the cannula, wherein the inner wall forms an angle of less than 90 degrees with the longitudinal axis, thus forming a guide ramp. Ans. 4; Final Act. 4. The Examiner determines it would have been obvious “to modify the device of Ritleng in view of Tamplenizza . . . with the sloped wall of Ryan . . . in order to deflect the wire as taught by Ryan. Ans. 5; Final Act. 4 (citing Ryan 6:28–31). Appellant submits: The device as envisioned by Ritleng is a well-known and popular device in the art. However, its use at times is very traumatic for the patient. Ritleng does not acknowledge this problem and it was only the inventor of the subject application who recognized the reason for the problem and provided a solution for it. Appellant notes that the Ritleng device dates back to 1996, and such is a long time for the cause of the trauma to be unknown. However, the inventor understood the cause of the trauma which was that the wire end of the device could get trapped in the end of the cannula. The inventor’s proposed solution is to fight the trapping by providing for an inner wall closing the space of the cannula between the lateral opening and the rear end of the cannula. The inner wall forms at the lateral opening an angle of less than 90° with the longitudinal axis, to thus form a guide ramp for the wire free Appeal 2019-004756 Application 13/935,632 5 end toward the outside of the cannula through the lateral opening. Appeal Br. 6. To the extent that Appellant may be asserting the age of Ritleng as evidence of non-obviousness, we note that “mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (quoting In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)), overruled on other grounds, Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1296 n.1 (Fed. Cir. 2017). Here, Appellant submits that at times use of Ritleng’s device is traumatic for the patient, but Appellant does not present any evidence that this was a problem recognized in the art, nor does Appellant present evidence that the art tried and failed to solve the problem. Thus, Appellant’s comments regarding the age of Ritleng fail to indicate non-obviousness of the claimed invention. Appellant argues that Ritleng does not acknowledge the problem recognized only by the inventor of the present application, namely that the use of Ritleng’s assembly “at times is very traumatic for the patient.” Appeal Br. 6. According to Appellant, only the inventor of the present application understood that “the cause of the trauma . . . was that the wire end of the device could get trapped in the end of the cannula” and “[t]he inventor’s proposed solution is to fight the trapping by providing an inner wall closing the space of the cannula between the lateral opening and the rear end of the cannula” at “an angle of less than 90o with the longitudinal axis, to thus form a guide ramp for the wire free end toward the outside of Appeal 2019-004756 Application 13/935,632 6 the cannula through the lateral opening.” Id. Appellant contends that because none of Ritleng, Tamplenizza, or Ryan addresses “the trauma problem solved by the inventor herein,” the Examiner’s reasoning in determining that the claimed subject matter would have been obvious is “hindsight reasoning.” Id. at 6–7. Appellant also points out that Ryan “is not related to the present invention in which a cannula is delicately inserted into a tiny tear duct,” and, contends that, thus, “a person of skill in the cannula art would have no reason, starting with Ritleng combined with Tamplenizza, to consider Ryan to solve a problem of which the person of skill in the art was not even aware existed prior to the creation of the present invention.” Appeal Br. 7. Appellant contends further that “the hindsight nature of this rejection is compounded by the fact that Ryan relates to a different art” (transmyocardial revascularization, rather than ophthalmology). Id. According to Appellant, “Ryan itself is totally silent regarding the fact that a ramp would make things less traumatic for a patient. So the only suggestion to combine Ritleng with Tamplenizza and Ryan has come from the Examiner and not the cited art.” Id. Appellant further states that “one skilled in the art, starting from Ritleng, . . . and working to improve the way the wire can be extracted from the cannula, would not turn to Ryan which is silent on this problem and which only provides a ramped lateral opening for assisting the entry of a channeling catheter into myocardium.” Id. at 7–8. In sum, Appellant argues that (a) Ryan is non-analogous art and (b) the Examiner has applied impermissible hindsight reasoning in combining Ryan with Ritleng. For the reasons that follow, these arguments are not persuasive. Appeal 2019-004756 Application 13/935,632 7 Our reviewing court has explained that “[t]he analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). Criteria for determining whether prior art is analogous may be summarized as “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). The Examiner characterizes the problem addressed by Appellant as “facilitating proper exiting of the wire end of the device from the cannula.” Ans. 11. As noted above, Appellant states that “one skilled in the art, starting from Ritleng . . . and working to improve the way the wire can be extracted from the cannula, would not turn to Ryan which is silent on this problem” (Appeal Br. 7–8), thereby acknowledging that Appellant addresses the problem of how to improve the way a wire can be extracted from a cannula. Further, Appellant’s Specification evidences that Appellant addresses the problem of how to facilitate proper exiting of the end of an inserted member (the wire) from the cannula or, more specifically, how to facilitate proper exiting of the end of the inserted member (the wire) from the cannula through a lateral opening in the cannula. See Spec. 2:6–10, 17–31. The Specification states that “[a]lthough this Ritleng system represented a clear advancement for the introduction of the silicone tube probe into tear ducts, it is desirable to improve the insertion further, in particular to make the task Appeal 2019-004756 Application 13/935,632 8 easier for the surgeon and less traumatic for patient.” Spec. 2:6–10. In describing Appellant’s invention, the Specification also discloses: [W]hen a surgeon slides the guide wire into the cannula for it to come out at the free end on the side of the nasal cavity through the opening, he will not find it difficult to access the free end, which contrary to the case of cannulas from the prior art . . . , cannot get trapped in the inner cavity of the cannula beyond the opening at the opposite side of the introduction opening of the wire between the opening and the base of the cannula, the inner base of the cannula being at the end of the opening and forming a guide ramp for the wire towards the outside. The retrieval operation by the practitioner of the end of the wire is thus less traumatic for the patient and the surgeon does not need to fumble around in the nasal cavity to look for the wire caught in the cannula. The operation is therefore also simpler for the surgeon. Spec. 2:17–31. Appellant contends that a person of ordinary skill in the art would glean from Appellant’s Specification only one problem, namely, trauma. Reply Br. 6–7. Appellant submits that the problem identified by the Examiner, namely, avoiding trapping or facilitating proper exiting of the wire end of the device from the cannula, “is in fact the solution provided by” Appellant, not the problem to be solved. Id. at 7 (emphases omitted). Difficulty in proper exiting of the end of the wire from the lateral opening in the cannula is a problem in the tear duct intubation process because, if the wire does not exit properly, the surgeon must fumble around in the nasal cavity to retrieve the end of the wire from the cannula, which causes trauma to the patient. See Spec. 2:17–31. However, the problem itself is how to facilitate proper exiting of the end of the inserted member (the wire) from the lateral opening in the cannula, and Appellant’s solution to that problem Appeal 2019-004756 Application 13/935,632 9 is to provide an inner wall closing the space between the lateral opening and the distal end of the cannula forming an angled guide ramp to guide the end of the wire from the lateral opening. See Ans. 10–11. Ryan, like Appellant, also addresses the problem of how to facilitate proper exiting of the end of an inserted member (channeling catheter 35) from a lateral opening (side facing aperture 50) in a cannula (deflecting catheter 34). See Ryan, Fig. 7; 6:14–33 (teaching deflecting catheter 34 comprising deflecting tip 37 having deflecting surface 48 oriented at an angle of less than 90° with the longitudinal axis of deflecting catheter 34 in order to direct the distal tip of channeling catheter 35 to exit deflecting catheter 34 at an angle from the longitudinal axis). Thus, Ryan is reasonably pertinent to the particular problem with which Appellant is involved and would have commended itself to a person of ordinary skill in the art in designing an intubation cannula for a Ritleng system. Ryan, therefore, is analogous art. Appellant’s arguments alleging impermissible hindsight on the part of the Examiner also are predicated on Appellant’s insistence that none of the applied references expressly recognizes trauma as a problem. See Appeal Br. 6–7; Reply Br. 7. This line of argument is not persuasive for the reasons discussed above. Moreover, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining Appeal 2019-004756 Application 13/935,632 10 elements in the manner claimed.” Id. at 420. As discussed above, Ryan, like Appellant’s Specification, recognizes the problem of how to facilitate proper exiting of the end of an inserted member from a lateral opening in a cannula. The Examiner articulates a reason, derived from Ryan’s teachings, why one of ordinary skill in the art would have been prompted to use Ryan’s technique (providing an inner wall or deflecting tip having a deflecting surface oriented at an angle of less than 90° with the longitudinal axis to guide the inserted member out of the cannula through a lateral opening in the cannula) in Ritleng, and Appellant does not persuasively rebut this reasoning. See Final Act. 4; Ans. 8–9; Appeal Br. 6–9; Reply Br. 4–7. In short, Appellant does not identify any flaw in the Examiner’s reasoning or point to any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention, thereby failing to support Appellant’s hindsight assertion. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). Appellant also contends that Ritleng’s wire does not equate to Ryan’s channeling catheter 35. Appeal Br. 8. According to Appellant, “what equates to the catheter 35 of Ryan in Ritleng, is the tube probe, and not the wire, as proposed by the Examiner.” Id. Appellant points out that Ritleng’s “tube probe is not to be passed through the opening.” Id. This line of Appeal 2019-004756 Application 13/935,632 11 argument is not persuasive. The Examiner’s rejection analogizes Ryan’s deflecting catheter 34 to Ritleng’s cannula 1 and Ryan’s channeling catheter 35 (i.e., the flexible device introduced into the deflecting catheter) to Ritleng’s wire/prolene filament 6 (i.e., the flexible device introduced into the cannula). See Ans. 12. Appellant does not persuasively explain why this analogy is unreasonable. For the above reasons, Appellant does not apprise us of error in the rejection of claim 8. Accordingly, we sustain the rejection of claim 8, as well as dependent claims 9–14, for which Appellant does not present any separate arguments (see Appeal Br. 6–9) and which, thus, fall with claim 8, as unpatentable over Ritleng, Tamplenizza, and Ryan. Obviousness Based on Ritleng, Tamplenizza, Ryan, and Snow In contesting the rejection of claims 5 and 7, Appellant relies solely on the arguments presented against the rejection of claim 8, and submits that “[t]he teachings of Snow do not make up for the shortcomings of Ritleng in view of Tamplenizza and in view of Ryan as applied to claim 8.” Appeal Br. 10. For the reasons discussed above, Appellant’s arguments fail to apprise us of error in the rejection of claim 8 and, likewise, fail to apprise us of error in the rejection of claims 5 and 7 as unpatentable over Ritleng, Tamplenizza, Ryan, and Snow, which we, thus, sustain. Appeal 2019-004756 Application 13/935,632 12 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–14 103(a) Ritleng, Tamplenizza, Ryan 8–14 5, 7 103(a) Ritleng, Tamplenizza, Ryan, Snow 5, 7 Overall Outcome 5, 7–14 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation