Ex Parte Feygin et al

Patent Trial and Appeal BoardDec 19, 2012

10807016 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID FEYGIN and CHIH-HAO HO ____________________ Appeal 2010-006314 Application 10/807,016 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and CHARLES N. GREENHUT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006314 Application 10/807,016 2 STATEMENT OF THE CASE David Feygin and Chih-Hao Ho (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4-7, 13-19, 21-25, 28, and 33-40. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An apparatus comprising: pseudo skin; a receiver, wherein said receiver receives an end effector through an insertion region in said pseudo skin; and a first device for performing a first skin-interaction technique that is used in conjunction with a simulated vascular- access procedure, wherein the first skin-interaction technique is selected from the group consisting of palpation and occlusion and is performed on the pseudo skin at a first skin-interaction region of the pseudo skin, and further wherein: (a) said receiver and said first device are disposed beneath said pseudo skin and are covered by said pseudo skin; and (b) said insertion region of said pseudo skin is closer to a user than said first skin-interaction region of said pseudo skin when said user is using said apparatus. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Cunningham Pugh US 6,470,302 B1 US 2003/0031993 A1 Oct. 22, 2002 Feb. 13, 2003 Rosenberg US 6,654,000 B2 Nov. 25, 2003 Appeal 2010-006314 Application 10/807,016 3 Rejections The Examiner rejects claims 1, 4-7, 13-19, 21-25, 28, and 33-40 under 35 U.S.C. § 112, second paragraph, as indefinite. The Examiner rejects claims 1, 35, and 38-40 under 35 U.S.C. § 103(a) as unpatentable over Rosenberg and Pugh. The Examiner rejects claims 4-7, 13-19, and 21-24 under 35 U.S.C. § 103(a) as unpatentable over Rosenberg, Pugh, and Cunningham. The Examiner rejects claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable over Rosenberg. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as unpatentable over Cunningham and Rosenberg.1 The Examiner rejects claims 28, 33, and 34 under 35 U.S.C. § 103(a) as unpatentable over Cunningham, Rosenberg, and Pugh.2 OPINION Indefiniteness The Examiner’s indefiniteness rejection is predicated on the Examiner’s perception that there is an inconsistency between the recitation of an apparatus in which the mechanisms (e.g., first device, receiver, and mechanism for simulating a skin-stretch technique) are located “beneath” the pseudo skin and are “covered” by the pseudo skin (claim 1), are “completely within said housing” and “covered” by the pseudo skin (claim 25), or are “under” and “covered by” the pseudo skin (claim 35) and the recitation of use of the mechanisms for performing techniques “on” the pseudo skin. Ans. 3-4, 17. The Examiner ostensibly construes claims 1, 25, and 35 as requiring that the mechanisms recited in the claims act “on top of” the skin, 1 The Examiner identifies this as a new ground of rejection. Ans. 2, 12. 2 The Examiner identifies this as a new ground of rejection. Ans. 2, 14. Appeal 2010-006314 Application 10/807,016 4 and thus insists that they should be placed on top of the skin. Id. at 17. Claims 1, 25, and 35 contain no such requirements. Rather, the claims allude to techniques performed “on” the pseudo skin, not “on top of” the pseudo skin. Moreover, the claims do not require that the recited mechanisms themselves act on the pseudo skin. Thus, we do not sustain the Examiner’s rejection. Obviousness based on Rosenberg and Pugh In contesting the rejection of claim 1 as unpatentable over Rosenberg and Pugh, Appellants argue, inter alia, that the Examiner erred in finding that Rosenberg’s trocar 24, on which the Examiner reads the claimed “receiver,” and gimbal 25, on which the Examiner reads the claimed “first device,” are “disposed beneath” and “covered by” the pseudo skin (Rosenberg’s barrier 22), as required by claim 1. App. Br. 15; Ans. 5. Appellants also argue that the Examiner erred in finding that Rosenberg’s gimbal 25 and trocar 24 are “disposed under” and “covered by” the pseudo skin (barrier 22), as called for in claim 35. App. Br. 21; Ans. 6. We agree with Appellants. Rosenberg’s trocar 24 is inserted through the barrier 22 used to represent a portion of the skin covering the patient’s body, such that a portion of the trocar is on the same side of the barrier as the gimbal 25 and the remaining portion is on the other side of the barrier. Fig. 1; col. 5, ll. 40- 42. The trocar 24 provides an entry and removal point from the body for the laparoscopic tool 18, and thus cannot be covered by the pseudo skin (i.e., Rosenberg’s barrier 22). Col. 5, ll. 42-45. Appellants additionally argue that Rosenberg does not teach or suggest a housing that contains the plurality of mechanisms, as called for in claim 35. App. Br. 21. The Examiner acknowledges that Rosenberg’s barrier 22 is not a housing. Ans. 22. Relying on Rosenberg’s disclosure that Appeal 2010-006314 Application 10/807,016 5 the gimbal 25 and trocar 24 are within the body of the patient, the Examiner finds that these mechanisms “are within the body of the patient which is the housing.” Id. Appellants are correct that Rosenberg does not disclose a housing. Rosenberg discloses an apparatus including a gimbal apparatus 25 and a barrier 22 “used to represent [a] portion of the skin covering the body of a patient,” but does not disclose any additional structure to represent other portions of the body of the patient. Col. 5, ll. 41-42. In describing the trocar being “inserted into the body of the patient” and a gimbal apparatus 25 “shown within the ‘body’ of the patient,” Rosenberg uses the term “body” to describe the use of a standard trocar in the actual procedure (as distinguished from the simulation) and to denote the portion of the apparatus on the same side of the barrier 22 as the gimbal apparatus, not to denote a housing structure enclosing that region. See col. 5, ll. 42-47, 54-56. Accord Reply Br. 5. Consequently, the Examiner’s rejection of claims 1 and 35 and of claims 38-40, which depend from claim 35, is grounded in part on erroneous findings and cannot be sustained. Obviousness based on Rosenberg We also cannot sustain the Examiner’s rejection of claims 36 and 37 as unpatentable over Rosenberg, which suffers from the same deficiencies as the rejection of claim 35 discussed above. Obviousness based on Rosenberg, Pugh, and Cunningham The Examiner’s proposed additional modification of Rosenberg in view of Cunningham to provide a second device in order to stretch the skin (Ans. 7-8) does not remedy the shortcoming of the rejection of claim 1, from which claims 4-7, 13-19, and 21-24 depend. Thus, we also cannot sustain Appeal 2010-006314 Application 10/807,016 6 the rejection of claims 4-7, 13-19, and 21-24 as unpatentable over Rosenberg, Pugh, and Cunningham. Obviousness based on Cunningham and Rosenberg Claim 25 requires a plurality of mechanisms contained completely within the housing and covered by the pseudo skin. The Examiner explicitly acknowledges that the proposed combination of Cunningham and Rosenberg still lacks the plurality of mechanisms being contained completely within the housing and covered by the pseudo skin. Ans. 13. The Examiner reasons that it would have been an “obvious matter of design choice . . . to have wherein said plurality of mechanisms are contained completely within said housing and are covered by said pseudo skin” because, according to the Examiner, Appellants have not disclosed that such an arrangement “provides an advantage, is used for a particular purpose, or solves a stated problem.” Ans. 14. Furthermore, the Examiner reasons that one of ordinary skill in the art would have expected Cunningham’s system to “perform equally well” with the plurality of mechanisms contained either partially or completely within the housing and covered by the pseudo skin, because the mechanisms would perform the same function in either case. Id. For the reasons set forth on pages 8-11 of Appellants’ Reply Brief, the Examiner erred in finding that Appellants’ Specification does not disclose that the claimed arrangement (i.e., having the plurality of mechanisms contained completely within the housing and covered by the pseudo skin) provides an advantage, serves a particular purpose, or solves a stated problem. The mechanisms of Appellants’ apparatus, when contained completely within the housing and covered by the pseudo skin, are hidden beneath the pseudo skin so as to more closely simulate a real vascular-access Appeal 2010-006314 Application 10/807,016 7 procedure than simulators in the prior art. Spec., paras. [0014], [0015], [0056]. Consequently, the Examiner’s design choice rationale lacks rational underpinnings. Obviousness based on Cunningham, Rosenberg, and Pugh The Examiner’s proposed additional modification in view of Pugh does not remedy the deficiency of the rejection of claim 25, from which claims 28, 33, and 34 depend. Thus, we also do not sustain the rejection of claims 28, 33, and 34 as unpatentable over Cunningham, Rosenberg, and Pugh. DECISION The Examiner’s decision rejecting claims 1, 4-7, 13-19, 21-25, 28, and 33-40 is reversed. REVERSED mls