Ex Parte Grudem et al

Patent Trials and Appeals Board

Jan 15, 2019

14176256 - (D) (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/176,256
107146 7590
Covidien LP
5920 Longbow Drive
Mail Stop A36
02/10/2014
01/17/2019
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Jerome K. Grudem JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-IL-00094 (1988-94) 7847
EXAMINER
PEHLKE, CAROLYN A
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/17/2019 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):
docket@cdfslaw.com
rs. patents. two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME K. GRUDEM JR. and
JAY G. JOHNSON
Appeal2018-001928
Application 14/176,256
Technology Center 3700
Before JILL D. HILL, JEREMY M. PLENZLER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1 and 3-20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal 2018-001928
Application 14/176,256
CLAIMED SUBJECT MATTER
Claims 1, 7, and 12 are independent. Claims 3-6, 8-11, and 13-20
depend from claim 1. Claim 1 is reproduced below:
1. A cytology tool comprising:
a flexible shaft defining a longitudinal axis and having
proximal and distal ends;
a brush coupled to the distal end of the flexible shaft, the
brush having a plurality of brush shafts, each of the plurality of
brush shafts having bristles along a portion of a length thereof,
the bristles coupled to and radially extending away from an
outer surface of each of the plurality of brush shafts, the
plurality of brush shafts being flexible and self-biased away
from the longitudinal axis of the flexible shaft such that a distal
end of each of the plurality of brush shafts is biased away from
the distal end of each of the other brush shafts; and
a position sensor configured to provide an indication of
the location of the position sensor within a luminal structure.
REJECTIONS
1. Claims 1, 3---6, and 12-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1, 3-6, and 12-20 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
3. Claims 1 and 3-11 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wang (US 4,966,162, issued Oct. 30, 1990) and Soper
(US 2005/0182295 Al, published Aug. 18, 2005).
4. Claims 1 and 3-11 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wang, Ayre (US 2,847,990, issued Aug. 19, 1958), and
Soper.
5. Claims 12-20 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Soper and Wang.
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Application 14/176,256
6. Claims 12-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Soper, Wang, and Ayre.
OPINION
Written Description
Claim 1 recites "the ... brush shafts being flexible and self-biased
away from the longitudinal axis of the flexible shaft such that a distal end of
each of the plurality of brush shafts is biased away from the distal end of
each of the other brush shafts," and claim 12 recites a similar limitation.
The Examiner rejects claims 1 and 12, as well as claims 3---6 and 13-
20 depending therefrom, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. The Examiner explains
that the term "self-biased" is "differ[ ent] in scope from the previously
recited 'biased' and does not appear to have support in the original
disclosure." Final Act. 2. The Examiner asserts that "[t]here is no
disclosure of the features [or] structure of each brush shaft that causes the
plurality of shafts to be 'self-biased' away from the longitudinal axis of the
flexible shaft" and "the original disclosure contains no description of what it
means to be 'self-biased' or how this differs from being 'biased."' Id.
Appellant responds that "self-biased" requires that "the distal ends
46b of the brush shafts 46 are spread-apart from one another without the
presence of additional structure." Appeal Br. 8 ( citing Figure 3). Appellant
alleges, without additional evidence, that "[a] person skilled in the art of
surgical instruments would understand from paragraphs [0035]-[0036] that
the biasing of brush shafts 46 without additional structure as shown in FIGS.
1 and 3 is 'self-biasing' as recited in claims 1 and 12." Id.
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Application 14/176,256
There is no dispute that Appellant's Figures depict the ends of brush
shafts 46 being spread out from one another. Those Figures, however, do
not depict whether or not any additional structure is present that may cause
the ends of the brush shafts to be spread out from one another. Those
Figures do not show, for example, what is inside flexible shaft 42. That is,
we simply do not know, based on the Figures alone, whether brush shafts 46
are self-biased. The cited portions of Appellant's Specification also fail to
sufficiently support those brush shafts being "self-biased." Paragraph 35
simply states that "[t]he brush shaft 46 is flexible and biased away from a
longitudinal axis defined by the flexible shaft 42," without explaining what
causes the biasing. Paragraph 36, too, simply states that "[i]n the deployed
configuration, the distal ends 46b of the brush shafts 46 are spaced-apart
from one another in cooperation with the biasing of the brush shafts 46 as
shown in FIG. 2," without explaining what causes the biasing.
"The test for the sufficiency of the written description 'is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date."' Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)). The Examiner has the initial
burden of presenting evidence of reasons why persons skilled in the art
would not recognize, in the disclosure, a description of the invention defined
by the claims and that burden is met when the Examiner points out that the
claim reads on embodiments outside the scope of the original written
description. In re Wertheim, 541 F.2d 257,263 (CCPA 1976). The
Examiner has met that burden by pointing out that there is no explanation in
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Appeal 2018-001928
Application 14/176,256
the Specification of the additional requirements of "self-biased," as
compared to simply being "biased." See Final Act. 2. As explained above,
Appellant has failed to persuasively identify error in the rejection.
Appellant's general allegation regarding the understanding of one skilled in
the art noted above, without additional evidence, does not persuade us
otherwise.
Accordingly, we sustain the Examiner's decision to reject claims 1, 3-
6, and 12-20 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Indefiniteness
The Examiner additionally rejects claims 1, 3---6, and 12-20 under 35
U.S.C. § 112, second paragraph, as indefinite. This rejection is also based
on the term "self-biased," discussed above with respect to the written
description rejection. Appellant contends that the term "self-biased" in
claim 1 (and self-biasing in claim 12) means "to bias without additional
structure." Appeal Br. 9. As noted above, this term does not have written
description support. Nevertheless, the Examiner has failed to establish
sufficiently that this term is indefinite.
The Examiner asserts that "[i]t is unclear what 'self-biased' amounts
to in terms of a positively recited structural element or relationship between
elements." Final Act. 3. We are persuaded that the plain meaning of the
term is consistent with Appellant's construction. That is, the term "self-
biased" (or "self-biasing") simply means biased by its own structure (i.e., by
itself).
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Application 14/176,256
Accordingly, we do not sustain the Examiner's decision to reject
claims 1, 3---6, and 12-20 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Obviousness
Claims 1 and 7 each specifically recite that the "brush shafts" are
"flexible" and claims 1, 7, and 12 each require that the distal end of each
"brush shaft" is biased in some manner ( whether biased or self-biased) away
from distal ends of the other "brush shafts." 1 The Examiner cites Wang as
teaching a flexible brush shaft. Final Act. 4, 6, 8 (citing brush 176 on the
distal end of stylet 140); Ans. 3--4. The Examiner explains that "Wang
clearly states that the brush 176 is made from wire (column 6, lines 3-14)"
and "[ w ]ire, by definition ( as evidenced by the attached Merriam-Webster
Dictionary entry) is flexible." Ans. 4. The Examiner concludes that "[a]
person skilled in the art at the time of invention would be well aware of the
general material properties of wire and as such would understand the brush
176 of Wang to be flexible." Id.
For each rejection, the Examiner proposes, in some form, "modifying
the cytology tool of Wang by increasing the number of brush shafts" and
reasons that in such an arrangement, the brush shafts would be biased away
from one another because "the bristles of each would push the other brush
shafts away." Final Act. 5; see also id. at 6-7, 12. In the rejection including
Ayre, the Examiner additionally finds that "Ayre ... teaches a cytology tool
comprising a flexible shaft having a brush ... comprising a plurality of
brush shafts" with "the plurality of brush shafts being self-biased away from
1 Although claim 12 does not recite that the "brush shafts" are "flexible,"
the biasing recited in the claim implies some degree of flexibility.
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the longitudinal axis of the flexible shaft such that a distal end of each of the
plurality of brush shafts is biased away from the distal end of each of the
other brush shafts." Final Act. 10. That rejection, however, proposes
"increas[ing] the number of [Wang's] brush shafts and arrang[ing] them as
taught by Ayre," rather than modifying Wang's apparatus to have brush
shafts like those in Ayre. Id.
Appellant disputes (1) that Wang teaches a flexible brush shaft and (2)
the Examiner's reasoning that
attaching a proximal end [ ofJ multiple brushes 17 6 to a distal
end of the stylet 140 would self-bias [or even simply bias] tips
174 of the brushes "away from the longitudinal axis of the
flexible shaft such that a distal end of each of the plurality of
brush shafts is biased away from the distal ends of each of the
other brush shafts."
Appeal Br. 13; see also id. at 14--17 (reiterating with respect to other claims
and rejections).
Wang explains that "[s]tylet 140 can be comprised of a solid flexible
steel wire, a wound cable or any other similar material that can be used to
apply axial force to the distal end of the stylet." Wang, 6:9-12. However,
"[t]he distal end of stylet 140 includes a wound wire member 170 connected
to stylet 140 by means of a crimped, cylindrical connector 172, and a brush
generally shown at 176." Id. at 6:3---6. That is, although Wang states that
stylet 140, itself, may be flexible, the distal end of stylet 140, having wound
wire 140 and brush 17 6, is not necessarily flexible.
Even if the distal end of Wang's stylet 140 has some degree of
flexibility, there is still no reason to believe that, if the number of Wang's
brush shafts was increased, the brush shafts would be biased away from one
another due to the bristles of each pushing the other brush shafts away, as
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Application 14/176,256
the Examiner asserts. Whether or not the distal ends of stylets 140 in the
Examiner's proposed modification would be biased outward depends on
their stiffness. Wang's disclosure is silent on this issue, and the Examiner
does not propose any modification to the flexibility of the distal end of
Wang's stylet 140. See Ans. 3 ("no modification was made to Wang with
respect to the flexibility of the brushes.").
For at least these reasons, the Examiner has not established
sufficiently that Wang teaches a flexible brush shaft. Accordingly, we do
not sustain the Examiner's decision to reject claims 1 and 3-20 under 35
U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision to reject to reject claims 1, 3---6,
and 12-20 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
We REVERSE the Examiner's decision to reject claims 1, 3---6, and
12-20 under 35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the Examiner's decision to reject claims 1 and 3-20 as
unpatentable under 35 U.S.C. § 103(a).
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-IN-PART
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