Ex Parte Fiebig et alDownload PDFPatent Trial and Appeal BoardOct 13, 201713762774 (P.T.A.B. Oct. 13, 2017) 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. 13/762,774 02/08/2013 Kevin M. Fiebig DEV7008USCIP1.0603202 1872 97998 7590 10/17/2017 Devicor Medical Products, Inc. c/o Frost Brown Todd LLC 3300 Great American Tower 301 East Fourth Street Cincinnati, OH 45202 EXAMINER KREMER, MATTHEW ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 10/17/2017 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): patents @ fbtlaw. com lgroves@fbtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN M. FIEBIG, JOHN A. HIBNER, EDWARD A. RHAD, JOHN S. EHLERT, and MORGAN R. HUNTER1 Appeal 2016-008628 Application 13/762,774 Technology Center 3700 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. Opinion for the Board filed by GRIMES, Administrative Patent Judge. Opinion Dissenting filed by FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a biopsy device, which have been rejected as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Devicor Medical Products, Inc., a wholly owned subsidiary of Leica Biosystems Newcastle Ltd., which is a wholly owned subsidiary of Danaher Corporation. (Appeal Br. 3.) Appeal 2016-008628 Application 13/762,774 STATEMENT OF THE CASE The Specification discloses a biopsy device for obtaining a tissue sample from a patient. (Spec. 136.) Claims 1—20 are on appeal. Claims 1,18, and 20 are the independent claims and read as follows (emphasis added): 1. A biopsy device, comprising: (a) a probe portion, wherein the probe portion comprises: (i) a probe body, (ii) a needle extending distally from the probe body, wherein the needle defines a longitudinal axis, (iii) a cutter movable relative to the needle to sever tissue, and (iv) a tissue sample holder; and (b) a holster portion, wherein the holster portion comprises: (i) a holster body, wherein the holster body includes a probe coupling feature and a probe securing feature, wherein the probe coupling feature comprises a recess having a lateral portion and a longitudinal portion, wherein the probe securing feature defines a side loading opening between the probe securing feature and an upwardly facing surface of the holster body, wherein the side loading opening is configured to receive the probe body along a lateral path relative to the longitudinal axis of the needle to laterally align the probe portion relative to the holster portion, and (ii) a cutter drive feature operable to drive the cutter. 18. A biopsy device, comprising: (a) a probe portion, wherein the probe portion comprises: (i) a probe body comprising a first cutter drive gear rotatable about a first axis, wherein the probe body further comprises a proximal portion and a distal portion, (ii) a needle extending distally from the probe body, wherein the needle defines a longitudinal axis, (iii) a cutter movable relative to the needle to sever tissue, and (iv) a tissue sample holder; and 2 Appeal 2016-008628 Application 13/762,774 (b) a holster portion removably coupled with the probe portion, wherein the holster portion comprises: (i) a holster body, (ii) a second cutter drive gear configured to mesh with the first cutter drive gear, wherein the second cutter drive gear is rotatable about a second axis, (iii) a probe coupling feature comprising a recess, wherein the recess is configured to receive the first cutter drive gear of the probe body such that the first cutter drive gear is configured to translate within the recess until the first cutter drive gear is aligned with the second cutter drive gear, and (iv) a probe securing feature, wherein the probe securing feature defines a lateral opening between the probe securing feature and the holster body, wherein the lateral opening is configured to receive the distal portion of the probe body along a path that is transverse to the longitudinal axis of the needle, wherein the probe securing feature comprises locating features that are configured to locate the probe portion relative to the holster portion when the proximal portion of the probe body is received within the lateral opening. 20. A biopsy device, comprising: (a) a probe portion, wherein the probe portion comprises: (i) a probe body, (ii) a latch extending downwardly from the probe body, (iii) a needle extending distally from the probe body, wherein the needle defines a longitudinal axis, (iv) a cutter movable relative to the needle to sever tissue, and (v) a tissue sample holder; and (b) a holster portion removably coupled with the probe portion, wherein the holster portion comprises: (i) a holster body, (ii) a channel, wherein the latch of the probe body is configured to translate within the channel of the holster portion during coupling of the probe portion with the holster portion, and 3 Appeal 2016-008628 Application 13/762,774 (iii) a probe coupling feature, wherein the probe coupling feature is configured to receive the latch of the probe portion to secure a longitudinal position of the probe portion relative to the holster portion, and (iv) a probe securing feature positioned distally of the probe coupling feature, wherein the probe securing feature defines an opening between the probe securing feature and the holster body, wherein the opening is configured to laterally receive at least a portion of the probe body to secure a lateral position of the probe portion relative to the holster portion, wherein the lateral position of the probe portion is oriented in a direction orthogonal to the longitudinal axis of the needle. The claims stand rejected as follows: Claims 1—20 under 35 U.S.C. § 102(b) as anticipated by Andreyko2 (Ans. 4); Claim 20 under 35 U.S.C. § 102(b) as anticipated by Monson3 (Ans. 2); and Claims 1—20 under 35 U.S.C. § 103(a) as obvious based on Andreyko, either alone or combined with Parihar4 or Privitera5 (Ans. 12). I The Examiner has rejected claims 1—20 as anticipated by Andreyko. The Examiner finds that the device disclosed by Andreyko meets all of the limitations of the claims, including a probe securing feature that defines a “side loading opening [] configured to receive the probe body along a lateral 2 Andreyko et al., US 2009/0318832 Al, Dec. 24, 2009 3 Monson et al., US 2008/0200835 Al, Aug. 21, 2008. 4 Parihar et al., US 2010/0160816 Al, June 24, 2010. 5 Privitera et al., US 2008/0146965 Al, June 19, 2008. 4 Appeal 2016-008628 Application 13/762,774 path,” as recited in claim 1. (Ans. 4—5.) The Examiner provides an annotated version of Andreyko’s Figure 3, reproduced below: First Annotated FIG. 3 of Andreyko The annotated figure shows part of Andreyko’s Figure 3, with the Examiner’s annotations indicating parts Al, A2, A3, B, C, Dl, and D2. (Id. at 6.) The Examiner finds that “the probe securing feature (the elements Dl and D2 . . .) defined a side loading opening (the element C . . (Id. at 5.) The Examiner reasons that “the side loading opening [element C in the annotated figure] is configured to receive the probe body along a lateral path relative to the longitudinal axis of the needle.” (Id.) Specifically, the Examiner reasons that “terms, such as ‘upward’ and ‘side loading’, are merely relative terms based on how the device of Andreyko is positioned. For example, if the device of Andreyko . . . were rotated clockwise by 90 degrees,... the element C would be side loading.” (Id. (emphasis omitted.).) Appellants argue that “item (250) is described in Andreyko et al. as a ‘fork’ that is ‘configured to engage [a] sleeve portion (64) of [a] needle hub (60).’ Thus, any opening defined by the fork (250) of Andreyko et al. can only be reasonably construed as being configured to receive a needle hub 5 Appeal 2016-008628 Application 13/762,774 (60), not a probe body as recited in claim 1.” (Appeal Br. 10, bracketed material in original.) Andreyko’s full Figure 3 is reproduced below: Figure 3 shows “holster (202) [which] comprises a top cover (204), through which a portion of each of gears (206, 208) is exposed, and side panels (214).” (Andreyko, 1 53.) The holster includes “a fork (250). Fork (250) is configured to engage sleeve portion (64) of needle hub (60) when biopsy probe (102) is coupled with holster (202).” (Id. 1244.) Figure 3 also shows “tissue sample holder (140)... at the end of body portion (112) of probe (102).” (Id. 151.) Thus, Andreyko identifies element 112 as the probe body, while fork 250 engages sleeve portion 64 of needle hub 60. We therefore agree with Appellants that the evidence does not support the Examiner’s finding that Andreyko’s device includes a probe securing feature that defines an opening that is configured to receive a portion of the probe body, as required by each Ere?. 3 6 Appeal 2016-008628 Application 13/762,774 of independent claims 1,18, and 20. We therefore reverse the rejection of claims 1—20 as anticipated by Andreyko. The Examiner reasons that the sleeve portion of the needle hub could be construed as part of the probe body. (Ans. 13—14.) However, Andreyko expressly identifies the probe body of its device as element 112, which is separate from sleeve portion 64 of needle hub 60. We therefore conclude that the Examiner’s proffered claim interpretation is unreasonably broad. We also reverse the rejection of claims 1—20 as obvious based on Andreyko, alone or combined with Parihar or Privitera, because the Examiner has not pointed to any disclosure by Parihar or Privitera that makes up for the deficiency of Andreyko discussed above. II The Examiner has rejected claim 20 as anticipated by Monson. The Examiner finds that Monson’s device meets all of the limitations of claim 20, including a probe securing feature that defines an opening configured to laterally receive at least a portion of the probe body. (Ans. 3.) The Examiner provides the following annotated version of Monson’s Figure 7: Annotated FIG. 7 of Monson 7 Appeal 2016-008628 Application 13/762,774 The annotated figure shows part of Monson’s Figure 7, with the Examiner’s annotations indicating parts A, B, C, and D. (Mat 4.) The Examiner finds that Monson’s device includes a probe securing feature (elements B and C in the [above] annotated FIG. 7 of Monson) . . . , wherein the probe securing feature defines an opening (element D in the [above] annotated FIG. 7 of Monson) . . . , wherein the opening is configured to laterally receive at least a portion of the probe body (the gripping flanges 334 of Monson) {Id. at 3.) Appellants argue that the Examiner has not identified elements of Monson’s device that “are configured to laterally receive at least a portion of a probe body.” (Appeal Br. 15.) Appellants reason that, “[a]lthough the Office did point to ‘gripping flanges (334)’ of Monson et al. with regards to this limitation, Appellant notes that it is clear from FIG. 7 that elements 324, 326, and 332 receive element 334 axially or longitudinally, not laterally.” {Id.) We agree with Appellants that the Examiner has not shown that Monson’s device includes the disputed limitation. Monson’s complete Figure 7 is reproduced below: 8 Appeal 2016-008628 Application 13/762,774 ui FIG. 7 Figure 7 shows an “MRI biopsy device 14 [that] has the disposable probe assembly 100 depicted detached from the reusable holster portion 32.” (Monson | 59.) Monson states: A ridged member 331 upon the holster base plate 330 guides the disposable probe assembly 100 during engagement. A narrowed upper distal surface 332 of the holster rail 324 also engages downward gripping flanges 334 extending downward just proximal to a distal thumbwheel 336 of the disposable probe assembly 100. . . . The disposable probe assembly 100 also has an undersurface that backwardly slides into engagement with the reusable holster portion 32. {Id. at || 59—60, emphasis added.) Thus, as Appellants have pointed out, the “probe securing feature” identified by the Examiner (element D in the Examiner’s annotated Figure 7) is configured to receive gripping flanges 334 when the probe assembly is slid backward onto the holster. The “probe securing feature” therefore 9 Appeal 2016-008628 Application 13/762,774 receives the gripping flanges 334 axially or longitudinally, not laterally as required by claim 20. The Examiner reasons that, [w]hile it is true that the gripping flanges 33 [sic] may be connected to the distal surface 332 by an axial or longitudinal motion, the opening D still “laterally receives” the gripping flanges 334 since the opening faces the lateral direction and the insertion portions of the gripping flanges extend in the lateral direction. That is, the term “laterally receives” does not necessarily mean that the portion of the probe body enters the opening via a lateral motion but only that the portion of the probe body extends laterally into the opening. (Ans. 22.) This claim interpretation, however, is broader than is consistent with Appellants’ Specification, which states that Probe (102) may be coupled to holster (202) by lateral loading and/or longitudinal loading. For lateral loading, probe (102) is initially positioned lateral to holster (202) and is then moved laterally toward holster (202). . . . Alternatively, probe (102) may be coupled longitudinally to holster (202) by first positioning probe (102) proximal to holster (202) to longitudinally align probe (102) with holster (202). The user may push probe (102) forward (and/or pull holster (202) proximally). (Spec. 1141^2.) The Specification thus makes a clear distinction between laterally and longitudinally loading a probe onto a holster. Read in light of the Specification, therefore, the claim limitation of a “probe securing feature [that] defines an opening . . . , wherein the opening is configured to laterally receive at least a portion of the probe body” (claim 20) requires an opening that receives a portion of the probe body when the probe is moved laterally, 10 Appeal 2016-008628 Application 13/762,774 not longitudinally. Monson does not disclose such a feature. We therefore reverse the rejection of claim 20 as anticipated by Monson. SUMMARY We reverse all of the rejections on appeal. REVERSED 11 Appeal 2016-008628 Application 13/762,774 FREDMAN, Administrative Patent Judge, DISSENTING-IN-PART I write briefly to explain that while I agree with the Majority that neither Andreyko nor Monson expressly teach “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”’ In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999), I disagree with the Majority’s reversal of the obviousness rejection over Andreyko combined with Privitera and Parihar. Appellants’ own Specification recognizes that the “[pjrobe (102) may be coupled to holster (202) by lateral loading and/or longitudinal loading” (Spec. 141) and that “latch (190) of probe (102) engages a latch recess (238) of holster (202) to securely couple probe (102) to holster (202)” {Id. 137). While the claims select slightly narrower embodiments for loading and latching, no reason is provided explaining why these selections were improvements over the prior art is provided in the Specification. Andreyko teaches “[bjiopsy probe (103) is configured to be coupled with a holster (302) to provide a biopsy device (101)” (Andreyko 1 60). Andreyko teaches that such coupling may involve “a set of rigid locking teeth (504) that are configured to engage teeth of gear (74) upon coupling of probe (102) with holster (302)” or “that any other suitable structures or devices may be used in addition to or in lieu of teeth (504), as desired” {Id. 175). Parihar explains that “in some variations of biopsy devices (100, 1000), probe (102,1102) may simply sit on holster (202, 702, 802,1202). 12 Appeal 2016-008628 Application 13/762,774 In some other variations, a portion of holster (202, 702, 802,1202) may be inserted into probe (102,1102)” (Parihar 133). Privitera teaches “latch 220 further comprises a latch projection 219 for insertion into a holster slot 224 as the probe assembly is inserted into the holster 221” (Privitera 173). Based on these teachings, I agree with the Examiner that “corresponding recesses for the latches in FIG. 7 of Andreyko would have been obvious in view of Privitera and Parihar since such recesses would prevent the latches from interfering with the mating of the probe body and the holster body so that the latches can fulfill their function for mating” (Final Act. 13). Moreover, to the extent that the prior art shows particular orientations for the recess relative to the side loading opening recited in the claims, I would find such an orientation an obvious design choice because I do not find any reason or problem identified in the Specification as to why the particular choice of loading was required, unexpected, unobvious, or evidencing a secondary consideration regarding these limitations. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”) For these reasons, I concur with the reversal of the anticipation rejections, but dissent from the reversal of the obviousness rejection. 13 Copy with citationCopy as parenthetical citation