Ex Parte Fiebig et al

Patent Trial and Appeal Board

Oct 13, 2017

13762774 (P.T.A.B. Oct. 13, 2017)

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
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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
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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.
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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
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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
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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
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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:
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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
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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,
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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
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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).
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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.
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