Alcon Inc.

Patent Trials and Appeals Board

Oct 1, 2020

2020002404 (P.T.A.B. Oct. 1, 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.
14/550,470 11/21/2014 Guido Vezzu PAT905016-US-NP 6539
26356 7590 10/01/2020
ALCON INC.
c/o Alcon Research LLC
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
EXAMINER
ULSH, GEORGE J
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
alcon_pair@firsttofile.com
patent.docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUIDO VEZZU and RETO GRUEEBLER
____________

Appeal 2020-002404
Application 14/550,470
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
MICHAEL L. WOODS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–3, 5–10, and 12–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Alcon Inc. as the real party in interest.
Appeal Br. 2.
2 Claims 4 and 11 are cancelled. Appeal Br. (Claims App.).
Appeal 2020-002404
Application 14/550,470
2
CLAIMED SUBJECT MATTER
Appellant’s disclosure “generally relates to surgical instruments, and
in particular to a forceps instrument for use in vitreoretinal surgeries having
an adhesion-optimized edge condition to enhance the grasping and peeling
of retinal membrane layers during a vitreoretinal procedure.” Spec. ¶ 2.
Claims 1, 8, and 16 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A forceps comprising:
a body;
a first pincer and a second pincer extending from a first
end of the body, the first pincer and the second pincer movable
between an open configuration and a closed configuration, each
of the first pincer and the second pincer comprising:
a longitudinally extending portion;
a hook-shaped curved portion formed at a distal
end of the longitudinally extending portion, the hook-
shaped curved portion curved inwardly and terminating
with a grasping surface, the grasping surface of the first
pincer and the grasping surface of the second pincer
facing each other;
an end surface formed along a distal side of the
hook-shaped curved portion, the end surface formed
adjacent to the grasping surface;
a grasping edge extending between the grasping
surface and the end surface; and
a textured surface formed along at least a portion
of the end surface, the textured surface configured to
generate a capillary action with a contacted membrane as
the pincers are moved into the closed configuration,
wherein the grasping edge of each of the first
pincer and the second pincer defines a rounded surface
such that the end surface, the grasping edge and the
grasping surface define a continuous surface.

Appeal Br. 13 (Claims App.).

Appeal 2020-002404
Application 14/550,470
3

REJECTIONS ON APPEAL
Claims 1–3, 5, 7–10, 12–18, and 20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Scheller (US 2014/0277110 A1, published Sept.
18, 2014) and Corcosteugi (US 2011/0015669 A1, published Jan. 20, 2011).
Claims 6 and 19 are rejected under 35 U.S.C. § 103 as unpatentable
over Scheller, Corcosteugi, and Garrison (US 2007/0043352 A1, published
Feb. 22, 2007).
ANALYSIS
Rejection over Scheller and Corcosteugi
(Claims 1–3, 5, 7–10, 12–18, and 20)
Claims 1–3, 5, 7, 12–15, and 20
For claim 1, the Examiner finds that Scheller discloses a forceps 700
comprising first and second pincers (jaws 710), each pincer comprising a
hook-shaped curved portion (distal portion of abrasive surface 740)
terminating with a grasping surface, an end surface formed along a distal
side of the hook-shaped portion and adjacent the grasping surface, a
grasping edge (“the edge created where the distal portion of 710 meets 711”)
extending between the grasping surface and the end surface, and a textured
surface (abrasive surface 740). Final Act. 3–4 (citing Scheller, Fig. 7). The
Examiner concedes that Scheller does not disclose the claim limitation
“wherein the grasping edge of each of the first pincer and the second pincer
defines a rounded surface such that the end surface, the grasping edge and
the grasping surface define a continuous surface.” Id. at 4.
The Examiner relies on Corcosteugi as teaching a forceps comprising
first and second pincers (jaws 26, 28), each having a grasping edge defining
Appeal 2020-002404
Application 14/550,470
4
a rounded surface such that the end surface of the grasping edge, the
grasping edge, and the grasping surface define a continuous surface. Final
Act. 4 (citing Corcosteugi, Fig. 5, ¶¶ 7–8, 24–25). The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to modify
Scheller’s forceps with the rounded surface teachings of Corcosteugi to
“allow[] an even greater field of vision when jaws are partially opened.” Id.
at 4–5 (citing Corcosteugi ¶ 25); Ans. 4.
Appellant contends that it would not have been obvious to combine
the rounded surface of Corcosteugi with Scheller. Appeal Br. 8. As
depicted in Figure 3, Corcosteugi describes left jaw 26 as including inner
surface 32 having first segment 32a and second segment 32b, which is
arcuate shaped, and describes right jaw 28 as having an inner surface with a
similar configuration as left jaw 26. See Corcosteugi ¶¶ 20–22, Fig. 3.
Corcosteugi discloses that second segment 32b “terminates at the point at
which jaw tip 38 and 48 are in contact with each other.” Id. ¶ 22, Fig. 3.
Figure 3 also shows reference numbers 44 and 44a, the latter identifying an
inner surface segment of jaw 28. As for the purpose of the inner surface
shaping of jaws 26, 28, Corcosteugi explains:
The effect of this shaping is to create a “window” or “bight” 54
when jaws 26, 28 are fully closed and jaw ends 40, 52 are in
contact with one another, through which the surgeon may
observe the operating field, an advantage which aids in the
location of tissue to be removed and the manipulation of the
forceps to grasp this tissue.
Id. ¶ 22. Thus, Corcosteugi discloses that first and second segments 32a,
32b of jaw 26 interact with the similar opposed inner surfaces of jaw 28 to
create a “window” or “bight” that allows a greater field of vision when jaws
26, 28 are fully closed. Figure 5 of Corcosteugi shows that a window is also
Appeal 2020-002404
Application 14/550,470
5
defined by the inner surfaces of jaws 26, 28 when partially open.
Corcosteugi does not disclose that a grasping edge that extends between a
grasping surface and an end surface of each jaw 26, 28 provides such
window or bight. As such, the Examiner does not explain persuasively how
modifying the grasping surface of each of Scheller’s jaws 710 to define a
rounded surface such that the end surface of the grasping edge, the grasping
edge, and the grasping surface define a continuous surface would “allow[]
an even greater field of vision when jaws are partially opened.” Final Act.
4–5; Ans. 4. Thus, we agree with Appellant that the Examiner has not
articulated an adequate reason with rational underpinnings to modify
Scheller’s forceps in view of Corcosteugi in the proposed manner.
Therefore, we do not sustain the rejection of claim 1, and claims 2, 3,
5, 7, 12–15, and 20 depending from claim 1, as unpatentable over Scheller
and Corcosteugi.
Claims 8–10
Independent claim 8 is directed to a vitroretinal forceps and recites,
inter alia, “a rounded grasping edge extending between the grasping surface
and the end surface” and “wherein the grasping edge of each of the first
pincer and the second pincer defines a rounded surface such that the end
surface, the grasping edge and the grasping surface define a continuous
surface.” Appeal Br. 14–15 (emphasis added). The Examiner determines
that it would have been obvious to a person of ordinary skill in the art to
modify Scheller “with the hook shaped curved portions and rounded surface
teachings of Corcosteugi . . . for the purposes of allowing an even greater
field of vision when jaws are partially opened.” Final Act. 7 (citing
Corcosteugi ¶ 25). For the reasons discussed above for the rejection of
claim 1, we agree with Appellant that the Examiner has not articulated an
Appeal 2020-002404
Application 14/550,470
6
adequate reason with rational underpinnings to modify Scheller in this
manner.
Additionally, claim 8 recites “a textured surface formed along the end
surface of each pincer,” and “wherein the textured surface is not formed
along the longitudinally extending portion of the pincers.” Appeal Br. 14–
15 (emphasis added). The Examiner finds that Scheller discloses that “the
textured surface (740) is not formed (Fig. 8a) along the longitudinally
extending portion (proximal portion of 710) [of] the pincers (710).” Final
Act. 6; Ans. 6. In contrast, Appellant contends that Figures 7–10D of
Scheller “show a textured surface formed along the longitudinally extending
portion of the pincers.” Appeal Br. 10.
We agree with the Examiner that Figure 8A of Scheller shows
abrasive surface 740 formed on the end surface of jaw 710. However, as
also shown, abrasive surface 740 is also formed on a substantial portion of
the longitudinally extending portion of each jaw 710. Thus, although
abrasive surface 740 is not formed on the entire length of the longitudinally
extending portions of jaws 710, Scheller fails to satisfy the limitation that
“the textured surface is not formed along the longitudinally extending
portion of the pincers.”
For the foregoing reasons, we do not sustain the rejection of claim 8,
and claims 9 and 10 depending from claim 8, as unpatentable over Scheller
and Corcosteugi.
Claims 16–18
Claim 16 is directed to a forceps and requires, inter alia, “a textured
surface formed along at least a portion of the end surface and not extending
along the longitudinally extending portion,” and “the grasping edge of each
of the first pincer and the second pincer defines a rounded surface such that
Appeal 2020-002404
Application 14/550,470
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the end surface, the grasping edge and the grasping surface define a
continuous surface.” Appeal Br. 16–17 (Claims App.) (emphasis added).
Appellant presents substantially similar argument for claim 16 as for
claims 1 and 8. Appeal Br. 10–11. Thus, for reasons similar to those for
claims 1 and 8, we do not sustain the rejection of claim 16, and claims 17
and 18 depending therefrom, as unpatentable over Scheller and Corcosteugi.

Rejection over Scheller, Corcosteugi, and Garrison
(Claims 6 and 19)
The Examiner’s further reliance on Garrison in rejecting dependent
claims 6 and 19 does not cure the deficiency in the rejection of parent claim
1. Final Act. 11. Thus, we do not sustain the rejection of claims 6 and 19 as
unpatentable over Scheller, Corcosteugi, and Garrison for the same reasons
as for claim 1.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 7–
10, 12–18,
20
103 Scheller,
Corcosteugi
1–3, 5, 7–
10, 12–18,
20
6, 19 103 Scheller,
Corcosteugi,
Garrison
6, 19
Overall
Outcome
1–3, 5–10,
12–20

REVERSED