FRANCE CHIRURGIE INSTRUMENTATION SAS (FCI)

Patent Trials and Appeals Board

Mar 26, 2020

13935632 - (D) (P.T.A.B. Mar. 26, 2020)

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.
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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.
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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
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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
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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
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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.
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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
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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
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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
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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
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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.
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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