LOMA VISTA MEDICAL, INC.

Patent Trials and Appeals Board

Apr 22, 2021

2020005921 (P.T.A.B. Apr. 22, 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.
14/498,424 09/26/2014 Alexander Quillin TILSON P-21708.US09CON 3864
79990 7590 04/22/2021
BECTON DICKINSON AND COMPANY
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
BOLER, RYNAE E
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
04/22/2021 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):
ip.docket@bd.com
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER QUILLIN TILSON, GENE DUVAL,
MITCHELL C. BARHAM, DAVID P. KNIGHT, ROLAND J. DOWNS,
CHRISTOPHER MICHAEL ADAMS, STEPHEN J. MORRIS, and
MARK CHRISTOPHER SCHEEFF

Appeal 2020-005921
Application 14/498,424
Technology Center 3700
Before BRANDON J. WARNER, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2020-005921
Application 14/498,424

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 11–13, 22, and 23. See Appeal Br.
5 (appealing the rejection of claims 1–13 and 21–23); see also Ans. at 7–8
(withdrawing the rejection of claims 5–10 and 21); see also Reply Br. 1
(acknowledging the withdrawal of the rejection of claims 5–10 and 21). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The application is titled “Biological Navigation Device.” Spec. 1.
We reproduce independent claim 1, below, with emphases added to
particular language addressed in this Decision:
1. A device for navigation through biological anatomy
comprising:
an everting tube having a stowed condition prior to
deployment and a deployed condition, said everting tube
comprising a tube wall with a plurality of folds overlapping one
another at a fold angle relative to a longitudinal axis of the
everting tube in the stowed condition such that the plurality of
folds at least partially overlie one another in a radially outward
direction from the longitudinal axis, and wherein said plurality
of folds are configured to be pressurizably unfolded to the
deployed condition; and
a tube channel in the everting tube, wherein the tube
channel is configured to receive an elongated element such that
the elongated element can be pressurizably advanced when the
plurality of folds are pressurizably unfolded.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Loma Vista Medical, Inc., as the real party in
interest. Appeal Br. 3.
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Application 14/498,424

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Appeal Br. 20 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kajander US 4,822,332 Apr. 18, 1989
Holt US 5,070,597 Dec. 10, 1991
Bob US 5,259,364 Nov. 9, 1993
See Ans. 3–7.
REJECTIONS2
The following rejections are before us on appeal:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 11–13, 22, 23 103 Bob, Kajander
4 103 Bob, Kajander, Holt
Ans. 3–7.

2 The following Examiner’s rejections under 35 U.S.C. § 103 have been
withdrawn: (i) claims 5 and 6 as unpatentable over Bob, Kajander, and Holt;
(ii) claims 7 and 21 as unpatentable over Bob, Kajander, Holt, and U.S.
Patent No. 4,598,873 (“Schwartz”); and (iii) claims 8 and 9 as unpatentable
over Bob, Kajander, Holt, Schwartz, and U.S. Patent No. 6,485,409 B1.
Ans. 7–8.
Appeal 2020-005921
Application 14/498,424

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OPINION
1. Rejection – Bob and Kajander
The Examiner rejects claims 1–3, 11–13, 22, and 23 as unpatentable
over Bob in view of Kajander. Ans. 3. Appellant argues these claims as a
group. See Appeal Br. 8–19; see also Reply Br. 1–4. We select independent
claim 1 as the representative claim, with claims 2, 3, 11–13, 22, and 23
standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

a. Examiner’s Rejection
In rejecting claim 1, the Examiner finds Bob discloses a device for
navigation through a biological anatomy. See Ans. 3–4. We reproduce
Bob’s Figures 1 and 2, below:

Figure 1 (above-left) “shows an endoscope device in a schematic
longitudinal sectional view, for illustrating the functional principle of the
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invention.” Bob, 4:4–6. Figure 2 (above-right) “shows the rear portion of a
modified endoscope device for illustrating further details.” Id. at 4:7–8. The
Examiner finds that Bob discloses a device for navigation through biological
anatomy with “everting tube” 24 having “tube wall” 32 with a plurality of
folds 52, wherein folds 52 are configured to be pressurizably unfolded to the
deployed condition. Ans. 3 (citing in part Bob, 5:4–50).
The Examiner acknowledges, however, that Bob does not specifically
disclose, “that the plurality of folds at least partially overlie one another in a
radially outward direction from the longitudinal axis,” as recited in claim 1.
See Ans. 4. To address this limitation, the Examiner relies on Kajander,
citing in relevant part to Kajander’s Figures 2A, 2B, 3A, and 3B. Id. We
reproduce Kajander’s Figures 3A and 3B, below:

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Figure 3A (top figure) “is a longitudinal cross-sectional view of the unarmed
tampon applicator of [Figure 2A].” Kajander, 2:55–57. Figure 3B (bottom
figure) “is a longitudinal cross-sectional view of the armed tampon
applicator of [Figure 2B].” Id. at 2:58–60. The Examiner finds that
Kajander teaches “plurality of folds” 17 that “partially overlie one another in
a radially outward direction from a longitudinal axis.” Ans. 4 (citing in part
Kajander, 4:3–15).
In combining Bob with Kajander, the Examiner reasons that a skilled
artisan would have modified Bob’s portion 52 “in the corrugated manner
taught by Kajander . . . to allow the corrugations to nest neatly in one
another in a stowed state, thereby reducing the length of the supply
portion/device, as taught by Kajander.” Id.

b. Analysis
In contesting the rejection, Appellant organizes its arguments into two
sections. See Appeal Br. 8–17; see also Ans. 8–11 (acknowledging the
same). We address those two arguments separately, below.

i. Kajander is Non-Analogous Art3
Appellant argues that Kajander is not in the same field of endeavor as
the claimed invention. Appeal Br. 8–9. Appellant explains that Kajander

3 Appellant also argues that Kanao is non-analogous art. See Appeal Br. 8–
9. The Examiner’s reliance on Kanao was withdrawn in the Answer (see
Ans. 3–8), however, so our Decision does not address Appellant’s arguments
as to Kanao. Compare Final Act. 2–9, with Ans. 3–8; see also Reply Br. 1
(“Appellant wishes to thank the Examiner for removing reliance on the
Kanao reference, presumably agreeing that Kanao is non-analogous art.”).
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does “not fall within the same field as a colonoscopy/endoscope delivery
device.” Id. at 9. Appellant submits that “Appellant’s field of endeavor is
devices ‘used as or to support colonoscopies or endoscopes.’” Reply Br. 2
(referencing Abstract cited in Appeal Brief).
The Examiner, on the other hand, finds that Kajander is in the same
field of endeavor as the claimed invention, specifically, “a device for
navigation through biological anatomy.” Ans. 8.
We agree with the Examiner.
“[T]he field of endeavor test . . . requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).
In the present case, the Examiner finds that “Appellant’s invention is
directed to a device for navigation through biological anatomy.” Ans. 8.
The Examiner’s finding is supported by the record. Indeed, even if we
construe claim 1 narrowly, such as by construing the preamble as limiting,
claim 1 recites, “A device for navigation through biological anatomy.”
Appeal Br. 20 (Claims App.). Claim 1 does not recite structure that would
limit the device to colonoscopies or endoscopes, as Appellant’s argument
presumes. See Appeal Br. 9; see also Reply Br. 2. Furthermore, Appellant’s
invention is broadly titled “Biological Navigation Device” (Spec. 1) and
describes its figures as depicting “variation[s] of the biological navigation
device” (id. ¶¶ 36–39). Based on Appellant’s Specification, “including the
embodiments, function, and structure of the claimed invention” (Bigio, 381
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F.3d at 1325), we agree with the Examiner’s finding the field of endeavor is
biological navigation devices (see Ans. 8).
Turning to Kajander, we further agree with the Examiner’s finding
that Kajander teaches a device for navigation through biological anatomy,
namely, a body lumen. Ans. 8–9. Even if we agree with Appellant’s
position that Kajander’s device may also be precisely characterized as a
device for deploying personal hygiene product (see Reply Br. 3), this fact
does not contradict the Examiner’s general finding that Kajander’s device is
a “biological navigation device,” just like that described in Appellant’s
Specification and recited in the preamble.
Based on Appellant’s Specification, we disagree with Appellant’s
assertion that the field of endeavor is narrowly defined to be limited to
colonoscopies or endoscopes (see Reply Br. 2), and agree with the
Examiner’s finding that Kajander is in the same field of endeavor as the
claimed invention, namely, biological navigation devices (see Ans. 8).
For the foregoing reasons, Appellant’s first argument is not
persuasive.

ii. Kajander Teaches Away from the Combination
Appellant further contends that Kajander teaches away from the
combination with Bob. Appeal Br. 15. In support of this argument,
Appellant explains that the proposed modification “would alter the principle
of operation of the Bob device.” Id. at 16. Appellant further explains that if
Kajander’s folds were applied to Bob, Bob’s “supply portion 52 would be
unable to unfold.” Id. Appellant further contends that Kajander’s
“permanent corrugations are fundamental to the invention of Kajander, as
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the accordion-like structure is necessary to the function of the device.”
Reply Br. 4.
Appellant’s argument is not persuasive.
“[T]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” MCM
Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015)
(quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
In the present case, we agree with the Examiner that Appellant
improperly relies upon the bodily incorporation of Kajander’s permanent
corrugations into Bob, rather than maintaining focus on the general teaching
of Kajander’s overlapping folds. See Ans. 10 (“Appellant’s argument
assumes that the proposed modification of Bob by Kajander bodily
incorporates all aspects of the folds of Kajander, including the material of its
tubing which determines the permanent nature of its folds. However, no
such bodily incorporation is suggested.”). The Examiner simply relies on
Kajander’s teaching of folding that “allow[s] the folds to nest neatly in one
another in a stowed state, thereby minimizing the length of the device.”
Ans. 10 (citing Kajander, 4:3–15). The Examiner does not rely on
Kajander’s teaching of “tubing material or material properties, which
determine the permanence of the folds” (id.), and which Appellant’s
argument presumes (see Appeal Br. 16 (arguing that Bob’s “supply portion
52 would be unable to unfold” if Kajander’s “permanently corrugated folds”
were used)).
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We further agree with the Examiner’s reasoning that a skilled artisan
would have modified Bob’s folds so that they could overlap like those
shown in Kajander for the purpose of allowing Bob’s folds to “nest neatly in
one another in the stowed state, thereby reducing the length” of Bob’s
device. Ans. 4. Indeed, the Examiner’s reason for the modification is
explicitly taught by Kajander, which discloses that the “asymmetry [of the
folds] allows the corrugations 17 to nest neatly in one another in the
collapsed state, thereby minimizing overall length.” Kajander, 4:6–8.
For the foregoing reasons, Appellant’s second argument is not
persuasive.

c. Summary of Rejection Based on Bob and Kajander
In summary, Appellant’s arguments do not persuade us of Examiner
error in the rejection of independent claim 1. As such, we affirm the
rejection of claim 1, along with claims 2, 3, 11–13, 22, and 23, which fall
therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), as unpatentable over Bob and
Kajander.

2. Rejection – Bob, Kajander, and Holt
The Examiner rejects claim 4 as unpatentable over Bob, Kajander, and
Holt. Ans. 6.
Appellant does not present additional arguments contesting the
rejection of this claim. See Appeal Br. 17; see also Reply Br. 1–4.
Accordingly, Appellant does not persuade us of Examiner error in the
rejection of claim 4 as unpatentable over Bob, Kajander, and Holt.

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Application 14/498,424

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CONCLUSION
We affirm the rejections of claims 1–4, 11–13, 22, and 23 as
unpatentable.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 11–13,
22, 23
103 Bob, Kajander 1–3, 11–13,
22, 23

4 103 Bob, Kajander,
Holt
4
Overall
Outcome
1–4, 11–13,
22, 23

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