Ex Parte Cull

Patent Trial and Appeal BoardApr 16, 2013

11961302 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LAURENCE J. CULL ____________ Appeal 2011-001510 Application 11/961,302 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-9 (App. Br. 2; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Independent claim 1 is directed to a surgical system for aspiration of a biological material. Claims 2-9 depend directly or indirectly on claim 1. Claims 1, 6, and 8 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Appeal 2011-001510 Application 11/961,302 2 Claims 1-5 and 9 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Conley.1 Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Conley and Haines.2 Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Conley, Haines, and Kelman.3 We reverse. ISSUE Does the preponderance of evidence on this record support Examiner’s finding that Conley teaches an apparatus comprising, inter alia, a means connected between a pump and collection cassette for isolating the pump from a handpiece to prevent creation of vacuum within the conduit and the collection cassette after receiving a stop signal as is required by Appellant’s claimed invention? If not, did Examiner establish an evidentiary basis on this record to support a conclusion that the combination of Conley with Haines alone or in further combination with Kelman make up for this deficiency in Conley? 1 Conley et al., US 5,429,601, issued July 4, 1995. 2 Haines, US 4,832,685, issued May 23, 1989. 3 Kelman, US 3,693,613, issued September 26, 1972. Appeal 2011-001510 Application 11/961,302 3 FACTUAL FINDINGS (FF) FF 1. Conley’s Figure 1 is reproduced below: “FIG. 1 is a functional block diagram of the aspiration control system of … [Conley’s] invention” (Conley, col. 3, ll. 34-35). FF 2. Conley suggests that The vacuum level is varied by the proportional control valve 42 to selectively allow air at atmospheric pressure to enter into the aspiration control system…. For example, at a 3/16″ diameter orifice size of valve 42, the vacuum pump will operate at its minimum specified speed … without creating a vacuum or negative pressure in the vacuum cassette because air at atmospheric pressure will be allowed into the system by control valve 42. (Conley, col. 5, ll. 39-42 and col. 6, ll. 13-17.) FF 3. Examiner finds that Conley fails to suggest a controller that “sends a stop signal to both the pump and the means for isolating upon reaching a predetermined pressure” and relies on Haines to make up for this deficiency in Conley (Ans. 5-6). FF 4. Examiner finds that the combination of Conley and Haines fails to suggest a pressure relief valve connected to a controller that opens upon Appeal 2011-001510 Application 11/961,302 4 sensing a predetermined pressure and relies on Kelman to make up for this deficiency in the combination of Conley and Haines (id. at 7). ANALYSIS We are not persuaded by Examiner’s finding that “means 42 … isolate[es] the pump from the handpiece to prevent creation of vacuum within the conduit and the collection cassette after receiving a stop signal” (Ans. 4). As Appellant explains Conley’s “pump 22 … is always in communication with cassette 22 and conduit 68 regardless of the status of valve 42” (App. Br. 4; Reply Br. 2; FF 1). Therefore, “[c]ontrol valve 42 at most, can be said to dampen or reduce the vacuum in the cassette 38 but does not isolate pump 22 from cassette 38 as is required by the claimed … invention” (id.; FF 2). Examiner failed to establish that Haines alone or in combination with Kelman makes up for the foregoing deficiency in Conley (see FF 3-4). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner’s finding that Conley teaches an apparatus comprising, inter alia, a means connected between a pump and collection cassette for isolating the pump from a handpiece to prevent creation of vacuum within the conduit and the collection cassette after receiving a stop signal as is required by Appellant’s claimed invention. The rejection of claims 1-5 and 9 under 35 U.S.C. § 102(b) as being anticipated by Conley is reversed. Examiner failed to establish an evidentiary basis on this record to support a conclusion that Haines alone or in combination with Kelman make up for the foregoing deficiency in Conley. The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over the combination of Conley and Haines is reversed. Appeal 2011-001510 Application 11/961,302 5 The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Conley, Haines, and Kelman is reversed. REVERSED tkl