Loubert Suddaby

Patent Trials and Appeals Board

Dec 22, 2021

2021003263 (P.T.A.B. Dec. 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.
15/599,125 05/18/2017 Loubert S. Suddaby SUDP120US 9879
24041 7590 12/22/2021
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
BUFFALO, NY 14221-5406
EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LOUBERT S. SUDDABY

Appeal 2021-003263
Application 15/599,125
Technology Center 3700
____________

Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Loubert S. Suddaby,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 4–9, and 21–23. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42 and is the
sole real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates to spinal surgery, more
particularly to endoscopic procedures, and, even more specifically, to an
endoscopy sheath to be affixed to bony or soft tissue structures to maintain
relative positioning during surgery such that both surgeon’s hands are free to
perform surgery.” Spec. ¶1.
The Claims
Claims 1, 4–9, and 21–23 are rejected. Final Act. 1. No other claims
are pending. Id. Claim 1 is illustrative and reproduced below.
1. A self-anchoring endoscopy sheath, comprising:
a tubular member comprising: a center axis; a proximal
end; a distal end; a through-bore concentrically aligned with the
center axis, the through-bore forming an inner surface; and, an
outer surface;
at least one anchoring wire having a body and a tip;
at least one channel arranged between the inner surface
and the outer surface, the at least one channel operatively
arranged to receive and slidingly engage with the at least one
anchoring wire;
at least one ramp arranged within the at least one channel
and formed at the distal end to divert the at least one anchor wire
in an outward radial direction; and,
a longitudinal space traversing the length of the at least
one channel in the outer surface;
wherein, the tip of the anchoring wire is operatively
arranged to engage with a tissue and the through-bore is
operatively arranged to receive an endoscope.
Appeal Br. 15 (some paragraphing removed).
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The Examiner’s Rejections
The following rejections are before us:
1. claim 9 under 35 U.S.C. § 112(b) as indefinite (Final Act. 2);
2. claims 1, 4–6, 21, and 22 under 35 U.S.C. § 103 as
unpatentable over Shikhman2 and Stern3 (id. at 4);
3. claims 1, 4–6, 21, and 22 under 35 U.S.C. § 103 as
unpatentable over Shikhman, Stern, and Sugiyama4 (id. at 10);
4. claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over
Shikhman, Stern, and Cheng5 (id. at 11);
5. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,
Stern, and Gilson6 (id. at 12);
6. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,
Stern, and Morgan7 (id. at 13);
7. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,
Stern, and Martin8 (id.);
8. claim 23 under 35 U.S.C. § 103 as unpatentable over
Shikhman, Stern, and Ravo9 (id. at 14);
9. claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over
Shikhman, Stern, Sugiyama, and Cheng (id. at 15);
10. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,

2 US 2016/0015451 A1, published Jan. 21, 2016 (“Shikhman”).
3 US 8,808,170 B2, issued Aug. 19, 2014 (“Stern”).
4 US 8,753,262 B2, issued June 17, 2014 (“Sugiyama”).
5 US 2014/0296982 A1, published Oct. 2, 2014 (“Cheng”).
6 US 6,669,716 B1, issued Dec. 30, 2003 (“Gilson”).
7 US 7,369,901 B1, issued May 6, 2008 (“Morgan”).
8 US 2004/0044350 A1, published Mar. 4, 2004 (“Martin”).
9 US 2007/0106113 A1, published May 10, 2007 (“Ravo”).
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Stern, Sugiyama, and Gilson (id. at 16);
11. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,
Stern, Sugiyama, and Morgan (id. at 17);
12. claim 9 under 35 U.S.C. § 103 as unpatentable over Shikhman,
Stern, Sugiyama, and Martin (id.); and
13. claim 23 under 35 U.S.C. § 103 as unpatentable over
Shikhman, Stern, Sugiyama, and Ravo (id. at 18).

DISCUSSION
Rejection 1
Claim 9 recites a “knurled wheel operatively arranged to impart a
compressive force to the body of the at least one anchoring wire.” Appeal
Br. 73. The Examiner determines that “Claim 9 uses the term ‘compressive
force’ without a clear definition for the term.” Final Act. 2. This is so, the
Examiner states, because Appellant’s “disclosure shows a compressive force
25 [(see Figure 18B)] that does not appear to operate in a manner consistent
with a general understanding of the term. The force is only in a single
direction and does nothing to compress the wire.” Id. at 3.
Appellant argues, with reference to paragraph 27 of the Specification,
that, “by compressive force, a person of ordinary skill in the art knows that it
is a force that causes compression in wire 50, so as to drive wire 50 into an
object, namely tissue 48.” Appeal Br. 50. We agree with Appellant that
claim 9’s recitation of “compressive force” does not render the claim
indefinite. Whether an anchoring wire compresses by operation of a knurled
wheel likely depends on certain factors like the geometry and composition of
the wire and its tip and the tissue against which the wire is driven into (e.g.,
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bone versus some other tissue). Whether any particular anchoring wire is so
compressible speaks to whether claim 9 encompasses it, not whether claim 9
is indefinite.
The rejection of claim 9 under 35 U.S.C. § 112(b) is reversed.
Rejections 2 and 3
Each of these rejections is directed at claims 1, 4–6, 21, and 22. Final
Act. 4, 10. Appellant separately presents arguments for claims 1, 21, and 22,
but not for any of claims 4–6. See Appeal Br. 12–20 (regarding claim 1),
21–29 (regarding claim 21), 30–38 (regarding claim 22). We choose claim 1
as representative of claims 1 and 4–6. 37 C.F.R. § 41.37(c)(1)(iv).
Additionally, and although Appellant’s arguments regarding claims 1, 21,
and 22 are separately presented, they are virtually identical. Compare
Appeal Br. 20, with id. at 29, with id. at 38. Thus, all of these claims stand
or fall with claim 1.
The primary reference in both rejections is Shikhman, which “is
directed to a device mountable to an endoscope for treating dysfunction in
body sphincters and adjoining tissue by applying radiofrequency energy to
tissue to create tissue lesions.” Shikhman ¶2. Shikhman employs electrodes
to deliver the energy. Id. ¶13. In rejecting claim 1, the Examiner reads
claim 1’s “at least one anchoring wire . . . having a body and a tip . . .
wherein, the tip of the anchoring wire is operatively arranged to engage with
a tissue” on Shikhman’s electrodes. Final Act. 5.
Appellant’s argues the following:
Shikhman discloses that needle electrodes (42) are arranged to
be deployed from the sleeve (33) to penetrate tissue and energy
can be applied to the electrodes (42) to treat tissue. Shikhman,
paragraph [0085]. Nowhere in Shikhman is an anchoring wire,
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namely, a wire that anchors sleeve (33) to tissue, disclosed. In
fact, Shikhman specifically discloses that the needle electrodes
(42) are the last items to be inserted into the sleeve (33). The
sleeve (33) is mounted over the endoscope and inserted into a
body to a position adjacent target tissue, then once in position,
the electrodes (42) are inserted to treat the tissue. Shikhman,
Claim 16. As such, Appellant respectfully asserts that Shikhman
does not disclose anchoring wires as in the instant invention.
Appeal Br. 20. The Examiner responds that Shikhman’s electrodes are
anchored in tissue, as shown in Shikhman Figure 7, and that the timing of
the anchoring is irrelevant to the patentability of the rejected claims. Ans.
4–5. Appellant did not file a reply brief. In any event, we agree with the
Examiner. Appellant fails to identify any structure required of its anchoring
wires that Shikhman’s electrodes lack.
Accordingly, we affirm both rejections of claims 1, 4–6, 21, and 22
(i.e., over Shikhman and Stern and over Shikhman, Stern, and Sugiyama).
Rejections 4 and 9
Each of these rejections is directed at both of claims 7 and 8. Final
Act. 11, 15. Claim 7 recites “wherein the body of the at least one anchoring
wire is unthreaded and the tip is threaded,” whereas claim 8 recites “wherein
the body and the tip of the at least one anchoring wire is threaded.” Appeal
Br. 73. In both rejections, to meet these “threaded” limitations, the
Examiner proposes a modification of Shikhman’s electrodes in view of
Cheng. See Final Act. 11, 15.
Appellant argues claims 7 and 8 separately. See Appeal Br. 44–45
(regarding claim 7), 51–52 (regarding claim 8). However, the arguments are
virtually identical. Compare id. at 44–45, with id. at 51–52. In particular,
Appellant challenges the Examiner’s conclusion that a person of ordinary
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skill in the art would have made the modification. Id. at 44–50, 51–52.
Appellant argues that skilled artisan would not have done so, explaining as
follows:
Since needle electrodes (42) of Shikhman are not designed to
anchor sleeve (33), but rather are designed to deliver energy,
specifically electrical energy or non-ablative (heat) energy, to
form lesions to tighten a sphincter, modifying needle electrodes
(42) to include threading would actually inhibit the transfer of
electricity or heat through electrodes (42).
Id. at 44, 51 (italics added). The Examiner responds that the assertion that
threading would inhibit the conduction of electricity or heat “lacks any
supporting evidence” and is mere attorney argument. Ans. 5. We agree
with the Examiner.
Accordingly, we affirm both rejections of claims 7 and 8 (i.e., over
Shikhman, Stern, and Cheng and over Shikhman, Stern, Sugiyama, and
Cheng).
Rejections 5–7 and 10–12
Each of these rejections is directed at claim 9. Final Act. 12–13, 16–
17. Claim 9 recites a “knurled wheel operatively arranged to impart a
compressive force to the body of the at least one anchoring wire.” Appeal
Br. 73. In each of these rejections, the Examiner relies on one of Gilson,
Morgan, or Martin for teaching the use of a knurled wheel “for imparting a
force on a tubular member to convert rotational motion into linear motion as
is well-known in the art.” See, e.g., Final Act. 12 (so relying on Gilson), 13
(so relying on Morgan), 14 (so relying on Martin).
Appellant argues that none of these prior art applications of a knurled
wheel is for “compress[ing] a wire into a tissue.” Appeal Br. 61. For
example, Appellant explains that Gilson’s wheel “is designed to pull a
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flaccid wire, not to compress a wire into a tissue.” Id. The Examiner
cogently responds that these references are relied upon merely for “teaching
the use of a knurled wheel actuator” and that the rejections are based on
combinations of prior art teachings. Ans. 6. The Examiner further explains:
The pullwires themselves are not being incorporated into
Shikhman. Shikhman discloses one type of actuator for
advancing/retracting the wires (see Figs. 6 and 7, for example).
[Gilson, Morgan, and Martin] teach using another type of
actuator for imparting a force on a wire to move the wire in one
of two directions. Turning a wheel in one direction moves the
wire in a particular direction. Turning the wheel in the opposite
direction correspondingly moves the wire in the opposite
direction. The combination reads on the claim limitations
directed to the knurled wheel as an actuator for a wire.
Id. We agree with the Examiner. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [A reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”).
Accordingly, we affirm these rejections of claim 9 (i.e., Rejections 5,
6, 7, 10, 11, and 12).
Rejections 8 and 13
Each of these rejections is directed at claim 23. Final Act. 14, 18.
Claim 23 recites “wherein the at least one channel is removably connected to
the outer surface.” Appeal Br. 75. To meet the “removably connected”
channel limitation, the Examiner proposes a modification of Shikhman’s
channels in view of Ravo. See Final Act. 14–15, 18–19. Supporting the
rejections are the Examiner’s finding that “Ravo teaches using a central
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tubular member with channels [removably] attached on the outer surface.”
Final Act. 14 (citing Ravo Figs. 2a, 2b, 4), 18 (same).
Appellant disputes the Examiner’s finding regarding Ravo, arguing
that what is removably attached to the outer surface of Ravo’s first
endoscope (110) is not a channel but rather a second endoscope (120).
Appeal Br. 68 (referring to references shown in Ravo Fig. 2a and 2b). The
Examiner responds, in part, that Figure 4, which was also cited in the
rejections (see Final Act. 14, 18), further shows a third structure removably
attached to the outer surface of an endoscope and that third structure clearly
has a channel. See Ans. 6–7 (“Ravo . . . shows an embodiment with the
attachment of an auxiliary channel (Fig. 4, Item 230 is a tube with a channel
that is attached to a main tube 220).” The Examiner’s finding in this regard
is unrebutted and adequately supports the rejection.
Accordingly, we affirm both rejections of claim 23 (i.e., over
Shikhman, Stern, and Ravo and over Shikhman, Stern, Sugiyama, and
Ravo).

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DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9 112(b) Indefiniteness 9
1, 4–6,
21, 22
103 Shikhman, Stern 1, 4–6,
21, 22

1, 4–6,
21, 22
103 Shikhman, Stern,
Sugiyama
1, 4–6,
21, 22

7, 8 103 Shikhman, Stern,
Cheng
7, 8
9 103 Shikhman, Stern,
Gilson
9
9 103 Shikhman, Stern,
Morgan
9
9 103 Shikhman, Stern,
Martin
9
23 103 Shikhman, Stern,
Ravo
23
7, 8 103 Shikhman, Stern,
Sugiyama, Cheng
7, 8
9 103 Shikhman, Stern,
Sugiyama, Gilson
9
9 103 Shikhman, Stern,
Sugiyama, Morgan
9
9 103 Shikhman, Stern,
Sugiyama, Martin
9
23 103 Shikhman, Stern,
Sugiyama, Ravo
23
Overall
Outcome
1, 4–9,
21–23

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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AFFIRMED