GLENN MCALPINDownload PDFPatent Trials and Appeals BoardNov 24, 20212021001503 (P.T.A.B. Nov. 24, 2021) 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. 15/451,383 03/06/2017 GLENN MARK MCALPIN 381302-1010 6529 24504 7590 11/24/2021 THOMAS | HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 EXAMINER WARSI, YASMEEN S ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 11/24/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@thomashorstemeyer.com ozzie.liggins@tkhr.com uspatents@tkhr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GLENN MARK MCALPIN ____________ Appeal 2021-001503 Application 15/451,3831 Technology Center 3700 ____________ Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 2, 6–8, and 10–13. 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. The Appeal Brief does not contain a statement of the real party in interest. Therefore, we assume the real party in interest to be the named inventor. See 37 C.F.R. § 41.37(c)(1)(i). Appeal 2021-001503 Application 15/451,383 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a “surgical instrument for colorectal polyp removal.” (Spec., Title (typeface modified).) Claims 1, 6, and 10 are the independent claims on appeal. Claim 10 is illustrative. It recites (emphasis added): 10. A surgical instrument for polypectomy, comprising: an elongate flexible tubular sheath having a proximal end and a distal end; a snare having a loop and controlled by a pair of wires; a biopsy forceps having a pair of jaws sized to fit within the loop of the snare; a first control handle configured to control opening and closing of the loop of the snare; a second control handle configured to control opening and closing of the pair of jaws of the biopsy forceps, wherein the second control handle is mounted at a right angle relative to the first control handle at a rigid member of the surgical instrument; and wherein both the biopsy forceps and the snare are routed through the elongate flexible tubular sheath so that the loop of the snare and the pair of jaws exit the distal end of the elongate flexible tubular sheath. REJECTIONS Claims 1, 2, 6–8, and 10 are rejected under 35 U.S.C. § 103 as unpatentable in view of Stern (US 2011/0224492 A1, pub. Sept. 15, 2011), Hassidov (US 2018/0028217 A1, pub. Feb. 1, 2018), and Morizumi (JP 3743096 B2, pub. Feb. 8, 2006). Claims 11–13 are rejected under 35 U.S.C. § 103 as unpatentable in view of Stern, Hassidov, Morizumi, and Arts (US 2007/0208339 A1, pub. Sept. 6, 2007). Appeal 2021-001503 Application 15/451,383 3 ANALYSIS Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). With regard to the scope and content of the prior art, the Examiner finds that the relied-upon prior art does not explicitly disclose a second control handle mounted at a right angle to the first control handle. However, the Examiner finds that Hassidov teaches wherein the second control handle is mounted at an angle relative to the first control handle at a rigid member of the surgical instrument (Figure 22A). At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have wherein the second control handle is mounted at an angle relative to the first control handle at a rigid member of the surgical instrument (Figure 22A) as shown in Hassidov because applicant has not disclosed that having the second control handle is [sic] mounted at a right angle relative to the first control handle provides any advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Stern[] to perform equally well with either the . . . second control handle . . . mounted at an angle relative to the first control handle at a rigid member of the surgical instrument (Figure 22A) taught by Hassidov or the Appeal 2021-001503 Application 15/451,383 4 second control handle . . . mounted at a right angle relative to the first control handle. Therefore, it would have been prima facie obvious to modify Stern whose flexible shafts of the forceps and snare instruments provide the capability to mount the respective control handles at various desired positions in view of Hassidov to obtain the invention as specified because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Stern. (Non-Final Action 3–4.) Figure 22A of Hassidov is reproduced below. Figure 22A is a “simplified schematic illustration of a probe according to an example embodiment of [Hassidov’s] invention.” (Hassidov ¶ 76.) Appellant argues that Hassidov “fails to show a control handle at a right angle.” (Appeal Br. 7.) Appellant argues that “[t]he prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device.” (Id. (quoting Ex parte Chicago Rawhide Mfg., Co., 223 USPQ 351, 353 (BPAI 1984)).) Appellant also argues that “the claimed right angle provides an advantage of at least providing a clearer separation between the Appeal 2021-001503 Application 15/451,383 5 two functionalities provided by the respective control handles.” (Id. at 8.) We do not find Appellant’s arguments persuasive. In KSR, the Supreme Court stated: 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 the elements in the manner claimed. . . . . When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR Int’l Co., 550 U.S. at 420–21. Additionally, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. In short, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Here, even we accept Appellant’s argument of a need to “provid[e] a clearer separation between the two functionalities provided by the respective control handles” (Appeal Br. 8), this itself can provide the reason for a person of ordinary skill in the art to pursue options, e.g., adjusting the angle between the handles to further separate the handles. However, Appellant points to nothing in the record to support this attorney argument. The only mention in the written description portion of the Specification of a right angle is in paragraph 12 which states, in its entirety: FIG. 4 provides a top view of a surgical instrument 400 constituting a variation on the surgical instrument 100. While in FIG. 2, the control handle 111 exits the shaft 107 at a right angle Appeal 2021-001503 Application 15/451,383 6 relative to the control handle 110, in FIG. 4, the control handles 110 and 111 are loosely coupled to the shaft 107. (Spec. ¶ 12.) Appellant points to no evidence of record that separation of the handles was a problem, or that modifying the angle between the handles was anything more than a design choice, as found by the Examiner. (See Non- Final Action 3–4; see also Answer 12.) Appellant points to nothing in the record establishing that modifying the angle between the handles provides unexpected results or was not within the skill of the art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“We also agree that the particular placement of the contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”).) In short, we agree with the Examiner that modifying the angle between the handles to form a 90-degree angle does no more than yield the predictable result of the handles being repositioned. (See Non-Final Action 4 (“One of ordinary skill in the art, furthermore, would have expected Stern[] to perform equally well with either the . . . second control handle . . . mounted at an angle relative to the first control handle at a rigid member of the surgical instrument (Figure 22A) taught by Hassidov or the second control handle . . . mounted at a right angle relative to the first control handle.”).) And Appellant points to no evidence that a person of ordinary skill in the art could not implement this predictable variation. See KSR Int’l Co., 550 U.S. at 416–17. In view of the foregoing, we are not persuaded that the Examiner erred in rejecting claim 10. Appellant relies on the same arguments with regard to independent claims 1 and 6, and dependent claims 2, 7, 8, and 11–13. (Appeal Br. 9.) For the reasons discussed above, we are not persuaded of error. Appeal 2021-001503 Application 15/451,383 7 CONCLUSION The Examiner’s rejections of claims 1, 2, 6–8, and 10–13 under 35 U.S.C. § 103 are affirmed. Specifically: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6–8, 10 103 Stern, Hassidov, Morizumi 1, 2, 6–8, 10 11–13 103 Stern, Hassidov, Morizumi, Arts 11–13 Overall Outcome 1, 2, 6–8, 10–13 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). 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