Oz Cabiri

Patent Trials and Appeals Board

May 22, 2020

2019006364 (P.T.A.B. May. 22, 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.
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

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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.
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Application 14/044,886

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(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”).
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Application 14/044,886

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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
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Application 14/044,886

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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.
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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
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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.
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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