Ex Parte Fox

Patent Trial and Appeal Board

Nov 29, 2016

12359824 (P.T.A.B. Nov. 29, 2016)

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.
12/359,824 01/26/2009 William D. Fox END6449USNP/080541 5159
92223 7590 12/01/2016
K&T rrate.s T T P-Pittshiirah
EXAMINER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM D. FOX
Appeal 2015-002524
Application 12/359,824
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1, 3—14, and 21—34. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2015-002524
Application 12/359,824
CLAIMED SUBJECT MATTER
Claims 1,10, 22, and 29 are independent. Claim 1 is reproduced
below.
1. A transluminal access device, comprising:
a flexible cannula defining a first lumen, the cannula
comprising a distal end and a proximal end, wherein the
cannula is movable longitudinally in a distal direction and a
proximal direction relative to a handle assembly, the cannula
sized for insertion into a working channel of an endoscope;
a flexible rotatable rotary needle positioned within the
cannula, the rotary needle defining a second lumen, the rotary
needle comprising a distal end and a proximal end, the distal
end of the rotary needle defining a distal opening comprising a
cutting edge, the rotary needle is rotatably movable relative to
the cannula and is longitudinally fixed in relation to the handle
assembly such that advancing the cannula in a distal direction
effectively retracts the distal end of the rotary needle in the
proximal direction and retracting the cannula in the proximal
direction exposes the distal end of the rotary needle; and
a flexible stylet slidably disposed within the rotary
needle, wherein the flexible stylet is selectably continuously
movable to any position between a maximum distal position
and a maximum proximal position, wherein the movement is
independent of a force being applied by a tissue surface.
REJECTIONS
Claims 1, 3—14, and 21—34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Conlon (US 2007/0255306 Al, pub. Nov. 1, 2007),
Buzzard (US 2004/0193180 Al, pub. Sept. 30, 2004), and Gerry (US
5,409,478, iss. Apr. 25, 1995). Final Act. 8.
Claims 1, 3—14, and 21—34 are provisionally rejected for non-statutory
obviousness-type double patenting over claims 1—4, 8—10, 12, 14—17, and 23
of Application No. 12/122,031, Conlon, Buzzard, and Gerry. Final Act. 7.
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Appeal 2015-002524
Application 12/359,824
ANALYSIS
Unpatentability of Claims 1, 3—14, and 21—34
over Conlon, Buzzard, Gerry
Appellant argues claims 1, 3—14, and 21—34 as a group. Br. 14—23.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 3—
14 and 21—34 stand or fall with claim 1.
The Examiner found that Conlon teaches a transluminal access device
substantially as recited in independent claims 1,10, 22, and 29, except for a
rotatable and longitudinally movable distal portion of the handle to advance
the cannula in a distal direction thereby to retract the distal end of the rotary
needle. Final Act. 9—10. The Examiner found that Buzzard teaches a handle
assembly that advances and retracts outer sheath 66 via a rotatable wheel 60
to expose or retract the distal end of the rotary needle, as claimed. Id. at 10.
The Examiner determined that it would have been obvious to reverse
the relative movement of Conlon to advance and retract the cannula distally
as a way to retract the distal end of the rotary needle by making endcap 12c
rotatable and longitudinally moveable relative to the handle so that rotation
of endcap 12c advances cannula 28, which is attached to endcap 12c. Id.
Appellant argues that introducing a movable outer sheath of Buzzard
onto Conlon would change the principle of operation of Conlon’s device that
has outer sheath 28 fixed to handle 12, and needle 17 slidably movable with
respect to handle 12. Br. 20. Appellant also argues that such modification
would require substantial reconstruction and redesign of Conlon’s handle 12
and render Conlon’s device inoperable by replacing Conlon’s fixed outer
sheath 28 with Buzzard’s movable outer shaft member 66 because Conlon
relies on fixed outer sheath 28 to determine the length of needle 17 that is
exposed and the penetration depth of needle tip 18. Id. at 20-21.
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Appeal 2015-002524
Application 12/359,824
Appellant’s arguments are not persuasive for the following reasons.
We agree with the Examiner that making Conlon’s end cap 12c rotatable and
longitudinally movable relative to needle 17, as taught by Buzzard, would
not change Conlon’s principle of operation. Ans. 2. Contrary to Appellant’s
argument (Br. 20-21), Conlon does not require a fixed end cap 12c and outer
sheath 28 to set/adjust the exposed length of needle 17. Conlon teaches that
the length of sheath 28 can vary and sheath 28 is not a necessary component.
Conlon 132. Conlon extends plunger 22 distally of needle tip 18 to prevent
unintended cutting and provide a reference point for needle tip 18. Id. ]f 39.
The Examiner proposes to increase the capabilities of Conlon’s device
by making outer sheath 28 adjustable in a longitudinal direction, as taught by
Buzzard, so that a surgeon can expose or cover needle tip 18 by advancing
or retracting sheath 28 (the cannula) with a single hand. See Final Act. 10—
11; Ans. 2—3. Buzzard teaches this advantage of rotatable finger ring 60 to
facilitate the single-handed retraction of outer sheath 66 to deliver stent 50.
Buzzard 33. Buzzard uses finger ring 60 to provide precise and sensitive
adjustments that complement rapid, large-scale movement via knob 72. Id.
1113, 14, 33, 43 46. The Examiner’s modification of Conlon with such a
precision, single-handed adjustment feature similarly would complement
Conlon’s depth gauge 32, which permits larger-scale displacement of needle
17 and needle tip 18 relative to outer sheath 28 before surgery. Conlon 136.
Appellant further argues that the Examiner’s rationale for modifying
Conlon to allow quick, one-handed advancing and retraction of needle 17 by
a surgeon is conclusory, lacks a rational underpinning, and uses hindsight.
Br. 21—22. These arguments are not persuasive for the following reasons.
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Appeal 2015-002524
Application 12/359,824
The Examiner’s reasons are supported by rational underpinning where
Buzzard expressly teaches that finger wheel 60 permits the single-handed
and precise adjustment of the exposed portion of the tip of the device by a
surgeon during a surgical procedure and provides similar improvements to
Conlon, as discussed above. Buzzard 14, 33, 43. Appellant’s argument
that the Examiner’s rationale is conclusory (Br. 21—22) does not address the
reasons provided by the Examiner (Ans. 4; Final Act. 10) and, therefore, is
not persuasive, particularly in view of the teachings of Buzzard relied upon
by the Examiner to improve Conlon similarly. The Examiner’s reliance on
Buzzard’s teachings also undermines Appellant’s argument that the rejection
is based on impermissible hindsight. See In re Cree, 818 F.3d 694, 702 n.3
(Fed. Cir. 2016).
Thus, we sustain the rejection of claims 1, 3—14, and 21—34.
Claims 1, 3—14, and 21—34 for obviousness-type double patenting
The Examiner provisionally rejected claims 1, 3—14, and 21—34 for
obviousness-type double patenting over claims of U.S. Application No.
12/122,031 in view of Conlon, Buzzard, and Gerry. Final Act. 7. Because
U.S. Application No. 12/122,031 was abandoned on July 10, 2014, we
reverse the double patenting rejection as moot. See MPEP § 804(I)(C) (“If
the published application has not yet issued as a patent, the examiner is
permitted to make a ‘provisional’ rejection on the ground of double
patenting when the published application has not been abandoned and
claims pending therein conflict with claims of the application being
examined.”) (emphasis added).
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Appeal 2015-002524
Application 12/359,824
DECISION
We affirm the rejection of claims 1, 3—14, and 21—34 under 35 U.S.C.
§ 103(a) as being unpatentable over Conlon, Buzzard, and Gerry.
We reverse, as moot, the provisional obviousness-type double
patenting rejection of claims 1, 3—14, and 21—34 over claims of U.S.
Application No. 12/122,031, Conlon, Buzzard, and Gerry.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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