Ioan Cosmescu

Patent Trials and Appeals Board

Feb 28, 2020

11379406 - (D) (P.T.A.B. Feb. 28, 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.
11/379,406 04/20/2006 Ioan Cosmescu 30359.0500 9789
95996 7590 02/28/2020
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
ktopolewski@zmfiplaw.com
lzemanmullen@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IOAN COSMESCU
Appeal 2018-004595
Application 11/379,406
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–3, 6, 8, 10–13, 16–21, 24, and 25 as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Specification is directed to “[a]n automatic smoke evacuation and
insufflation system for surgical procedures having a vacuum for removing

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as I.C. Medical, Inc.
Appeal Br. 2.
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gas, smoke, and debris from a surgical site and an insufflator for supplying
gas to the body cavity of a patient.” Spec., Abstract. The Specification
provides that “when the smoke evacuator is activated, the insufflator will
simultaneously deliver gas at the exact flow rate at which the smoke
evacuator is removing gas, smoke, and debris in order to efficiently replace
the gas removed by the smoke evacuator.” Spec. ¶ 27.
The claims are directed to an automatic smoke evacuator and
insufflation system for laparoscopic surgical systems. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An automatic smoke evacuation and insufflation apparatus
comprising:
a vacuum pump for removing at least one of a gas, smoke
and debris from a surgical site;
an insufflator that includes a switch having a needle
position for supplying a gas to a body cavity of a patient to
achieve a desired pressure within the body cavity and a normal
position for supplying the gas to maintain the desired pressure
within the body cavity when gas is removed from the body
cavity;
means for automatically adjusting the insufflator to
supply the gas at a same rate as the gas being removed by the
vacuum pump;
a first pressure sensor for sensing pressure in the patient’s
body cavity when the insufflator is in communication with the
patient’s body cavity and the insufflator switch is in the needle
position;
a second pressure sensor for sensing pressure in the
patient’s body cavity only when the insufflation switch is in the
normal position and the vacuum pump and the insufflator are in
communication with the patient’s body cavity; and
an alarm related to the second pressure sensor which is
activated when a needle is used with the insufflator to supply
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gas to the patient’s body cavity when the insufflator switch is in
the normal mode.
Appeal Br. 16 (Claims Appendix). Independent claims 13 and 17 are
similarly directed to an apparatus, also reciting the limitation “an alarm
related to the second pressure sensor which is activated when a needle is
used with the insufflator to supply gas to the patient’s body cavity when the
insufflator switch is in the normal mode.” Id. at 17–18.
The prior art relied upon by Examiner is:
Name Reference Date
Kurt Semm et al.,
(“Semm”)
US 4,676,774 June 30, 1987
James H. Goodson et al.
(“Goodson”)
US 4,735,603 Apr. 5, 1988
Ioan Cosmescu US 5,199,944 Apr. 6, 1993
Gregory T. Absten US 5,246,419 Sept. 21, 1993
Edek Milewicz US 6,010,118 Jan. 4, 2000
Marlin O. Thurston et al.,
(“Thurston”)
US 6,222,193 B1 Apr. 24, 2001
Theodore S. Wortrich et
al. (“Wortrich”)
US 6,592,543 B1 July 15, 2003
Masahide Yamaki et al.
(“Yamaki”)
US 2004/0030367 Al Feb. 12, 2004
Gary Weller et al.
(“Weller”)
US 2006/0151568 Al July 13, 2006

Appellant requests review of the following grounds of rejection made by
Examiner:
I. Claims 1, 2, 11, 17, 18, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Cosmescu, Wortrich, Weller, Thurston, Semm, and
Yamaki.
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II. Claims 3, 10, 12, 13, 16, 19, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Cosmescu, Wortrich, Weller, Thurston, Semm,
Yamaki, and Absten.
III. Claims 6 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Cosmescu, Wortrich, Weller, Thurston, Semm, Yamaki, and
Milewicz.
IV. Claims 8 and 21 under 35 U.S.C. § 103(a) as unpatentable over
Cosmescu, Wortrich, Weller, Thurston, Semm, Yamaki, and
Goodson.
OBVIOUSNESS
Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Cosmescu, Wortrich, Weller, Thurston, Semm,
and Yamaki in combination alone, and additionally in combination with
either Absten, Milewicz, and Goodson. Ans. 2–3. Appellant relies on the
same arguments for all rejections, so we will consider them together. See
Appeal Br. 13–14. Accordingly, we review the rejections by considering
claim 1 alone; claims 2, 3, 6, 8, 10–13, 16–21, 24, and 25 rise or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claims are obvious?
FACTUAL FINDING (FF)
We agree with and adopt the findings concerning the scope and
content of the prior art set forth in Examiner’s Answer and the Final Office
Action dated November 22, 2016 (“Final Act.”). The findings of fact,
reproduced below, are referenced to highlight certain pertinent evidence.

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FF1 Cosmescu teaches a smoke evacuator system for laparoscopic surgery.
Figure 2, reproduced below, shows a laser laparoscope and trocar.

Figure 2 shows a laser laparoscope 80 equipped with the trocar 82.
When the smoke evacuator system is activated, vacuum line presents
a vacuum to stopcock 88, which draws smoke and CO2 gas from the
body cavity of the patient. This drop in pressure allows CO2 to flow
from the insufflator through stopcock 86. Cosmescu 4:44–58.
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FF2 Cosmescu teaches pressure gauge 98 is positioned between valve 88
and the vacuum pump and “is used to monitor the pressure in the body
cavity.” Cosmescu 4:40–41, see Fig. 1.
FF3 Examiner finds that “a trocar distal end (described by Cosmescu) is
merely a specific type of ‘needle’, particularly as it is used as a
‘slender hollow instrument [f]or introducing material into or removing
material from then body.’” Ans. 11–12.
FF4 Semm teaches an insufflation device for introducing gas into an
intraabdominal cavity and measuring intraabdominal static pressure
using a pressure gauge. See Semm 4:34–46.
FF5 Wortrich teaches using a fluid flow regulator for use in laparoscopic
surgery. Wortrich, abstract. Wortrich teaches that by “simultaneously
replenishing the surgical site with insufflation gas and continuously
evacuating insufflation gas and/or surgical smoke” allows the
pneumoperitoneum to remain at the same distended position. Id. at
4:17–19, see also 10:25–28 (“The step of replenishing 905 the
surgical site with insufflation gas is performed by the insufflation
device, which is preferably programmed to supply the gas at a
constant rate.”).
FF6 Yamaki teaches universal system controller for endoscopic surgical
systems containing a plurality of devices. Yamaki ¶ 9. Yamaki teaches
“display[ing] a warning message when the abdominal cavity pressure
. . . departs from preset setting values.” Id. ¶ 206.
FF7 Thurston teaches a mode selection switch for a laparoscopic probe.
Thurston 8:43–48.
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ANALYSIS
Examiner finds that Cosmescu teaches an insufflator containing two
stopcocks that can be positioned to provide both a “needle position” and a
“normal position.” Final Act. 3; FF1. Examiner identifies pressure gauge 98
of Cosmescu as meeting the claimed second pressure sensor. Final Act. 3;
FF2. The second pressure sensor can only sense “when stopcock (88) is in
the open position and the vacuum pump and insufflator are in
communication with the patient’s body cavity.” Final Act. 4; FF1 and FF2.
Wortrich teaches that by ‘“simultaneously replenishing the surgical site with
insufflation gas and continuously evacuating insufflation gas and/or surgical
smoke’ allows the pneumoperitoneum to remain at the same distended
position.” FF5; Final Act. 5. Examiner recognizes that Cosmescu does not
teach a first pressure sensor, but finds that Semm teaches such sensor, that
would “allow the system and user to confirm that the patient’s body cavity
pressure is in an acceptable range during operation of the insufflator.” Final
Act. 6; FF4. Examiner recognizes that Cosmescu does not provide an
automated switch between the needle position and the normal position, but
finds Thurston teaches “a well-know[n] suitable interface for selecting
between modes of a surgical console.” Final Act. 5; FF7.
Based on the teaching of Cosmescu in conjunction with Wortrich,
Weller, Thurston, Semm, Yamaki, Examiner concludes that, at the time
Appellant’s invention was made, it would have been prima facie obvious
to associate an alarm to the pressure sensor of Cosmescu, as
disclosed by Yamaki, in order to display a warning message
should the sensor measure a deviation from an accepted preset
when the switch is in the normal position and a needle is used
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with the insufflator thereby providing communication between
the pressure sensor and the patient’s abdominal cavity.
Final Act. 7–8. Examiner reasons that “[s]uch an alarm would be understood
to beneficially allow the user to maintain patient’s safety without having to
constantly manually confirm the output on the pressure sensor.” Id. at 8.
Thus, all the claimed elements were known in the prior art and one skilled in
the art could have combined the elements as claimed by known methods
with no change in their respective functions and the combination would have
yielded predictable results to one of ordinary skill in the art at the time of the
invention.
Appellant contends that
excessive pressure conditions within the patient’s body cavity
would not be detected during initial insufflation with the
insufflator switch in the normal mode because the insufflator
switch must be in the needle position for the first pressure
sensor to detect pressure in the patient’s body cavity when
initial insufflation of the patient’s abdomen is performed.
Appeal Br. 13.
We are not persuaded by Appellant’s contention that in operation
Cosmescu’s normal mode could not detect excessive pressure conditions
during insufflation of the patient’s abdominal cavity. As Examiner explains,
“while the two alarms (see Par. 46 and 55) of Appellant’s disclosed
invention may serve two completely different functions, Examiner submits
that the distinction between these alarms is not adequately reflected by the
claim language.” Ans. 12; see Spec. ¶¶ 45–47, 55–56. “[T]here is no
indication that the instant claim language was intended to read ONLY upon
the alarm condition mentioned in Par. 54 and 55 as opposed to the alarm
condition explicitly associated with the second pressure sensor (74) as
recited in Par. 46.” Ans. 13.
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Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function. See In re Schreiber, 128 F.3d
1473, 1477–78 (Fed. Cir. 1997). Where there is reason to conclude that a
prior art structure is “capable of” performing a claimed function, the burden
shifts to the Appellant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. In re
Hallman, 655 F.2d 212, 215 (CCPA 1981). Examiner explains that “[t]he
pressure gauge (98) [of Cosmescu] will operatively read the pressure ONLY
when stopcock (88) is open, i.e. during the normal/maintenance mode and
not the needle mode (as stopcock 88 is closed during the rapid distension of
the needle mode, see Weller).” Ans. 8. Examiner explains that gauge 98
downstream of the stopcock 88 of Cosmescu “monitor[s] the pressure in the
body cavity.” Id.; FF2. Examiner explains that “the device of Cosmescu [is
thereby capable of determining] that the abdominal pressure has deviated
from a desired level [by looking at the gauge] thereby permitting a user to be
warned of potential errors or unsafe scenarios which could cause to []either
collapse of the abdominal cavity or a dangerous overpressurization
scenario.” Ans. 9.
Examiner recognizes that Cosmescu does not provide an alarm to
signal overpressurization of the abdominal cavity but that limitation is taught
by Yamaki. Ans. 9; FF6. “Examiner notes that the claim does not positively
indicate the function of the alarm, only requiring that it be associated with
the second pressure sensor and be provided for activation during a condition
wherein the insufflator is in a normal mode/position and a needle is used to
provide gas to the patient’s body cavity.” Ans. 10.
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Appellant contends that the “claim language should be read in a
narrowed manner so as to exclusively refer to the alarm configuration shown
in paragraphs 54-55 as opposed to a more general manner.” Reply Br. 5.
We are not persuaded, as Examiner explains that claim limitations are
given their “broadest reasonable interpretation in a manner consistent with
the specification.” Ans. 13; see In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir.
2000) (“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.”). The broadest
reasonable interpretation rule recognizes that before a patent is granted the
claims are readily amended as a part of the examination process and that an
applicant has the opportunity and responsibility to remove any ambiguity in
claim meaning by making an amendment. In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004). “It is the claims that measure the invention. . . .
[L]imitations from the specification are not to be read into the claims.”
Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988). Here, Examiner
has reasonably determined that the prior art pressure gauge 98 of Cosmescu
shows a patient’s peritoneal cavity pressure permitting a user to determine
unsafe scenarios which could cause to either collapse of the abdominal
cavity or a dangerous overpressurization scenario. See Ans. 9.
We are not persuaded by Appellant’s contention that Thurston does
not teach switches associated with an insufflation device. Appeal Br. 13. We
agree with Examiner’s position that one “cannot show nonobviousness by
attacking references individually.” Ans. 14 (citing In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)).
We are also not persuaded by Appellant’s contention that “Thurston
(as well as all of the other references cited by the Examiner) fails to disclose
the alarm element as claimed.” Reply Br. 6. Here, Examiner relies on
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Yamaki for teaching “display[ing] a warning message when the abdominal
cavity pressure . . . departs from preset setting values.” FF6; Ans. 9.
CONCLUSION
We conclude that the evidence cited by Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellant has not
provided sufficient rebuttal evidence that outweighs the evidence supporting
Examiner’s conclusion of obviousness. As Appellant does not argue the
claims separately, claims 2, 3, 6, 8, 10–13, 16–21, 24, and 25 fall with claim
1. 37 C.F.R. § 41.37 (c)(1)(iv).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 11, 17,
18, 24
103(a) Cosmescu,
Wortrich, Weller,
Thurston, Semm,
Yamaki
1, 2, 11, 17,
18, 24

3, 10, 12,
13, 16, 19,
25
103(a) Cosmescu,
Wortrich, Weller,
Thurston, Semm,
Yamaki, Absten
3, 10, 12,
13, 16, 19,
25

6, 20 103(a) Cosmescu,
Wortrich, Weller,
Thurston, Semm,
Yamaki, Milewicz.
6, 20
8, 21 103(a) Cosmescu,
Wortrich, Weller,
Thurston, Semm,
Yamaki, Goodson
8, 21
Overall
Outcome
1–3, 6, 8,
10–13, 16–
21, 24, 25

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Application 11/379,406
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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