FRANCE CHIRURGIE INSTRUMENTATION SAS (FCI)

Patent Trials and Appeals Board

Dec 31, 2020

2020002473 (P.T.A.B. Dec. 31, 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.
13/935,612 07/05/2013 Stéphane URION CAC.P0088 6045
26360 7590 12/31/2020
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
3700
MAIL DATE DELIVERY MODE
12/31/2020 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 2020-002473
Application 13/935,612
Technology Center 3700
Before KEVIN F. TURNER, BRETT C. MARTIN, and
MICHAEL L. WOODS, Administrative Patent Judges.
MARTIN, 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 1–6 and 8–10. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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. Appeal Br. 3.
Appeal 2020-002473
Application 13/935,612
2
CLAIMED SUBJECT MATTER
The claims are directed “to a monocanalicular or bicananlicular
system, known as a Ritleng system, which comprises an intubation cannula,
a guide wire and a pobe, in particular in the form of a tube, in particular
made of silicone, the latter being designed for insertion into the tear duct.”
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An intubation assembly consisting of:
an intubation probe designed to be positioned in a tear duct
in the shape of a tube (9) made of a flexible, biocompatible
material, said probe having a front probe surface, a rear probe
surface and an external lateral probe surface extending between
said front and rear probe surfaces; and
a wire (7) made of a flexible material and fixed to the
intubation probe, said probe being pulled to be moved into
position in the tear duct by means of said wire;
said wire extending between a free end and an opposite
end, said wire having an external wire surface extending between
said free end and said opposite end, said external wire surface
comprising a first surface section received into said probe and a
second surface section outside said probe;
wherein said assembly has an external assembly surface
consisting of said outer external wire surface section and said
external lateral probe surface, said external assembly surface
being continuous without a sharp edge which could get stuck in
a wall of the tear duct during the displacement of the probe pulled
by the wire.
REFERENCES
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

Appeal 2020-002473
Application 13/935,612
3
REJECTIONS
Claims 1, 5, 6, and 8–10 are rejected under pre–AIA 35 U.S.C. § 102b
as being anticipated by Ritleng 5,501,232. Final Act. 4.
Claims 2–4 are rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over Ritleng in view of Snow 5,863,366. Final Act. 5.
OPINION
Ritleng
The Examiner’s rejections each rely on the Examiner’s interpretation
of the Ritleng reference as teaching the claimed “external assembly surface
is continuous without a sharp edge.” According to the Examiner, “the probe
end [in Retling] is not ‘sharp’ in the broadest reasonable interpretation.”
Final Act. 4. The Examiner cites to Merriam-Webster as defining “sharp” to
mean “adapted to cutting or piercing such as having a thin keen edge or fine
point.” Id. According to the Examiner, Retling’s “probe 9 has a blunt, flat,
distal edge and is made of flexible silicone designed for insertion into the
body with less trauma.” Id.
Appellant takes issue with this reliance on the definition used by
the Examiner and we agree. It is notable that in this particular situation,
Appellant’s Specification is described as a Ritleng system. In other words,
Appellant is attempting to improve on the prior art system devised by
Ritleng, which is the prior art used against the claims. The Specification
points out that such prior art Ritleng systems “have a complicated structure
and cause bleeding during the insertion of the tube probe into the tear duct”
and that the present invention is designed to eliminate this drawback of the
prior art Ritleng system. Spec. 2.
Appeal 2020-002473
Application 13/935,612
4
Although the Examiner asserts to be using only a customary and
ordinary definition of the terms “sharp” or “sharp edge,” it is clear that ta
primary objective of Appellant’s invention was to devise a probe that
overcomes the drawbacks of Ritleng’s probe system. In that regard,
whatever the terms mean, they clearly cannot cover both the prior art and
Appellant’s invention designed specifically to overcome the disadvantages
of the prior art. As explained in the Specification, “contrary to the probes of
the prior art (see for example those described in FR 2704749 or US
6117116), the exterior surface of the tube probe, that is the surface of the
probe designed to come into contact with the internal wall or walls of the
tear duct by sliding against the latter during insertion of the probe into the
duct, does not have a sharp edge which could jam or get stuck in the wall.”
Spec. 3 (emphasis added). We decline to settle on any specific definition of
the terms, but merely conclude that the Examiner erred in finding that
“without a sharp edge” can apply to the prior art Ritleng device when that is
the device specifically noted in the Specification as being contrary to the
invention, which does not have a sharp edge. Accordingly, we do not
sustain the Examiner’s rejections.
CONCLUSION
The Examiner’s rejections are REVERSED.
More specifically,
Appeal 2020-002473
Application 13/935,612
5
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8–10 Ritleng 1, 5, 6, 8–10
2–4 Ritleng, Snow 2–4
Overall
Outcome
1–6, 8–10

REVERSED