GLENN MCALPIN

Patent Trials and Appeals Board

Nov 24, 2021

2021001503 (P.T.A.B. Nov. 24, 2021)

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).
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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).

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Application 15/451,383

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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
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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
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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
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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.
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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).

AFFIRMED