Oz CabiriDownload PDFPatent Trials and Appeals BoardMay 22, 202014044886 - (D) (P.T.A.B. May. 22, 2020) 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. 14/044,886 10/03/2013 Oz Cabiri 2336OZ-US 5136 32964 7590 05/22/2020 DEKEL PATENT LTD., DAVID KLEIN BEIT HAROF'IM 18 MENUHA VENAHALA STREET, ROOM 27 REHOVOT, 76209 ISRAEL EXAMINER WARSI, YASMEEN S ART UNIT PAPER NUMBER 3791 MAIL DATE DELIVERY MODE 05/22/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OZ CABIRI Appeal 2019-006364 Application 14/044,886 Technology Center 3700 ____________ Before JOHN C. KERINS, BRANDON J. WARNER, and LISA M. GUIJT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–5 and 8–17, the only pending claims in the application.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Bendit Technologies Ltd., as the real party in interest. Appeal Br. 1. Appeal 2019-006364 Application 14/044,886 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a steering tool for steering medical devices through body lumens. Claim 1 is illustrative, and is reproduced below: 1. A steering tool comprising: an internal tube disposed inside an external tube, said internal and external tubes being arranged for longitudinal axial movement relative to one another, wherein a distal end of said internal tube is fixedly joined to a distal end of said external tube, and at least one of said internal and external tubes is formed with transverse slots near the distal end thereof, and wherein the longitudinal axial movement causes bending of the distal ends of said tubes; and wherein shapes of all of said slots change as a parameter of distance from the distal ends of said internal and external tubes, and wherein said transverse slots decrease in length and width with increased distance from the distal ends of said internal and external tubes. Appeal Br. 11 (Claims App.). THE REJECTIONS The Examiner rejects: (i) claims 1, 9, and 17 under 35 U.S.C. § 103 as being unpatentable over Cabiri (US 2013/0304034 A1, published Nov. 14, 2013)2 in view of Chikama (US 5,106,381, issued Apr. 21, 1992); 2 We note that, based on the above-noted publication date of Cabiri, and the filing date of the instant application (October 3, 2013), and based on the identity of inventive entity, Cabiri, at least facially, does not appear to qualify as prior art under either 35 U.S.C. § 102(a)(1) or (a)(2). Appellant does not challenge the rejection on this basis, however. Appeal Br., passim. Appeal 2019-006364 Application 14/044,886 3 (ii) claims 2–5 and 10–12 under 35 U.S.C. § 103 as being unpatentable over Cabiri in view of Chikama and Salem (US 3,802,440, issued Apr. 9, 1974); (iii) claim 8 under 35 U.S.C. § 103 as being unpatentable over Cabiri in view of Chikama and Sheridan (US 3,996,939, issued Dec. 14, 1976); (iv) claims 13–15 under 35 U.S.C. § 103 as being unpatentable over Cabiri in view of Chikama and Griffin (US 7,001,369 B2, issued Feb. 21, 2006); and (v) claim 16 under 35 U.S.C. § 103 as being unpatentable over Cabiri in view of Chikama and Esashi (US 6,672,338 B1, issued Jan. 6, 2004). ANALYSIS Claims 1, 9, and 17--35 U.S.C. § 103--Cabiri/Chikama Appellant argues the rejected claims as a group, and relies on the arguments presented for claim 1 for the patentability of the dependent claims. Appeal Br. 7–8. We choose claim 1 as representative of the group, and claims 9 and 17 stand or fall with claim 1. The Examiner finds that Cabiri discloses many of the limitations set forth in claim 1, including the provision that at least one of an external and Accordingly, such a matter is outside the scope of the present appeal. See, e.g., Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010) (precedential) (noting that the Board reviews a rejection “for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon,” and that “the Board reviews the particular finding(s) contested by an appellant”) (emphasis added); In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (confirming same); 37 C.F.R. § 41.37(c)(1)(iv) (rule stating that “any arguments . . . not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). Appeal 2019-006364 Application 14/044,886 4 internal tube is formed with transverse slots near a distal end thereof. Final Act. 2–3. The Examiner notes that Cabiri does not disclose that the shapes of all of the transverse slots change as a parameter of distance from the distal ends of the internal and external tubes, and that the slots decrease in length and width with increased distance from those distal ends. Id. at 3. Appellant discloses that slots are provided to increase the flexibility toward the distal end of the tube or tubes for steerability in, for example, body lumens, and that the amount of flexibility can be controlled by, among other things, the number of slots, the spacing therebetween, and the shape of the slots. Spec. 1:3–4; 4:11–14. The Examiner cites to Chikama as disclosing changing the shape of slots along a thin metal strip disposed in a tube, and decreasing the length and width of slots with increased distance from a distal end of the tube. Final Act. 3, citing Chikama, Figs. 6, 8. The Examiner concludes that it would have been obvious to modify the slots of Cabiri such that they change in shape as a parameter of distance from the distal end of the tubes, and such that the slots decrease in length and width with increased distance from the distal end of the tubes, so as to provide bendability, steerability, flexibility, and torqueability in Cabiri. Final Act. 3, citing Chikama ¶ 4. Appellant points out that “the bending portion . . . of Chikama does not have tubes formed with transverse slots,” but instead, a thin plate placed inside a coil has slots formed in it. Appeal Br. 7. As a result, according to Appellant, the combined teachings of Cabiri and Chikama “results in a pair of internal and external tubes with slots” of unchanging shape, “plus a thin plate inside the tubes with slots.” Id. In Appellant’s view, this absence of Appeal 2019-006364 Application 14/044,886 5 the changing of the shape of the slots in the resulting structure “is clearly different than the claimed structure.” Id. Appellant’s argument is rooted in a purported bodily incorporation of the structure of Chikama into the structure of Cabiri, yet this is not the modification of Cabiri proposed by the Examiner. Instead, the Examiner applies the teachings of Chikama that changing the shape and size of the slots in its thin plate can be used to progressively control the degree of rigidity/flexibility of a tube at its distal end, and at various points along the tube increasing in distance from the distal end, to the slots already present, but not changed in shape or size, on the tube(s) of Cabiri. See Chikama 5:7– 68 (discussing the effects of slot shape/size differences on rigidity and flexibility). The Examiner additionally notes that both Cabiri and Chikama address the ability to control rigidity/flexibility by changing the shape and size of the slots. Ans. 11. Appellant’s argument is thus not responsive to the rejection as articulated by the Examiner, and does not apprise us of Examiner error. Appellant additionally takes issue with the Examiner’s statement, in response to arguments previously advanced by Appellant, that “[a] skilled artisan is capable enough of taking slots from a thin sheet of metal and placing them on a tube,” with it “not [being] difficult for a skilled artisan to copy the shape of slots on a piece of metal to the shape of slots on a tube.” See Final Act. 9; Appeal Br. 7. Appellant correctly states that “[t]he test of obviousness is not whether skilled artisan is capable of performing an act and it is not whether the act is difficult or not;” rather the test is whether it would have been obvious to arrive at making the combination based on some reasoning to do so. Appeal Br. 7. Appeal 2019-006364 Application 14/044,886 6 We view the Examiner’s perhaps inartful statements as mainly advising Appellant that the rejection as proposed is based on modifying the shape and size of the slots on the tube(s) of Cabiri, and not, as Appellant again argues on appeal, that the metal strip having slots is to somehow be incorporated into the Cabiri structure. See Ans. 11–12. Relatedly, Appellant argues that, because Chikama expressly desires that the bendable portion of its device is not to be bent along a direction of the width of the slotted, resilient metal plate, “Chikama rejects omni- directional bending,” and “[b]y making a tube out of the resilient thin plate 33, one destroys this essential feature of Chikama.” Appeal Br. 7–8. The Examiner replies that there is no proposal in the rejection to make a tube out of the Chikama plate, and that the teachings of the slots of Chikama, which change in shape and size, are being applied to the slots disclosed as being present on the tube(s) of Cabiri. We additionally note that principles of nonobviousness along the lines of Appellant’s argument about “destroy[ing] essential features,” such as a device being rendered inoperable or unsuitable for an intended purpose, pertain to the reference proposed to be modified, and not to a reference from which teachings are used in order to modify that reference. See, e.g., In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). As such, Appellant’s argument directed to a possible modification of Chikama is not only not what is proposed by the Examiner, it misses the mark in terms of applying principles of the types mentioned to the present rejection. For the reasons appearing above, none of Appellant’s arguments apprise us of error in the rejection of claim 1 as being unpatentable over Appeal 2019-006364 Application 14/044,886 7 Cabiri and Chikama. The rejection is sustained. Claims 9 and 17 fall with claim 1. Claims 2–5 and 10–12--35 U.S.C. § 103--Cabiri/Chikama/Salem Appellant presents no arguments specific to this ground of rejection, and instead relies on the arguments advanced relative to claim 1. Appeal Br. 8. For the reasons presented above, this rejection is sustained. Claim 8--35 U.S.C. § 103--Cabiri/Chikama/Sheridan Appellant presents no arguments specific to this ground of rejection, and instead relies on the arguments advanced relative to claim 1. Appeal Br. 8. For the reasons presented above, this rejection is sustained. Claims 13–15--35 U.S.C. § 103--Cabiri/Chikama/Griffin Appellant presents no arguments specific to this ground of rejection, and instead relies on the arguments advanced relative to claim 1. Appeal Br. 8–9. For the reasons presented above, this rejection is sustained. Claim 16--35 U.S.C. § 103--Cabiri/Chikama/Esashi Appellant presents no arguments specific to this ground of rejection, and instead relies on the arguments advanced relative to claim 1. Appeal Br. 9. For the reasons presented above, this rejection is sustained. DECISION The rejections of claims 1–5 and 8–17 as being unpatentable are affirmed. Appeal 2019-006364 Application 14/044,886 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 9, 17 103 Cabiri, Chikama 1, 9, 17 2–5, 10– 12 103 Cabiri, Chikama, Salem 2–5, 10–12 8 103 Cabiri, Chikama, Sheridan 8 13–15 103 Cabiri, Chikama, Griffin 13–15 16 103 Cabiri, Chikama, Esashi 16 Overall Outcome 1–5, 8–17 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation