Ex Parte Kadykowski et al

Patent Trial and Appeal BoardApr 18, 2016

11710144 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111710,144 02/23/2007 Randal James Kadykowski 46909 7590 04/18/2016 TERUMO CARDIOVASCULAR SYSTEMS CORPORATION ATTN: GAEL DIANE TISACK 6200 JACKSON ROAD ANN ARBOR, MI 48103 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. 0143(17128) 3596 EXAMINER NEWTON, ALEXANDRA L ART UNIT PAPER NUMBER 3779 MAILDATE DELIVERY MODE 04/18/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANDAL JAMES KADYKOWSKI and LYNE MADELEINE CHARRON-KELLER Appeal2014-003670 Application 11/710, 144 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and SEAN P. O'HANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Randal James Kadykowski and Lyne Madeleine Charron-Keller (Appellants) 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1, 2, 4, 5, 7-10, 12, 17, 19, 27, and 28, which are the pending claims. Appeal Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants' disclosure relates to "the harvesting of blood vessels and, more particularly, to a method and apparatus for dissection and removal of 1 The Appeal Brief identifies Terumo Cardiovascular Systems Corporation and Olympus Medical Systems Corporation as the real parties in interest. Appeal Br. 1. Appeal2014-003670 Application 11/710, 144 sections of blood vessels." Spec. if 3. Claims 1 and 27 are independent. Claim 1 illustrates the claimed subject matter: 1. A dissector device for dissecting and/ or harvesting a vessel and severing any branches extending therefrom compnsmg: a substantially cylindrical sheath configured to be at least partially inserted in a body through a cut skin portion; a tip disposed at the distal end of the sheath, the tip being at least partially transparent; a self-contained light source disposed within the device; a self-contained camera system disposed at a distal end of the sheath, the camera system converting images into electrical signals and transmitting the electrical signals from the distal end of the sheath, the camera system being pivotably movable between a distal viewing direction and a proximal viewing direction, wherein the camera system converts an image through the tip to view the dissection when in the distal viewing direction; and a severing device configured to sever the vessel branches, wherein the camera system converts an image of the severing device to view the severing when in the proximal viewing direction; wherein the severing device comprises the tip and the distal end of the sheath, the tip being configured to be axially movable between an open position and a closed position, the proximal end of the tip and the distal end of the sheath having respective severing members, wherein the severing members have mating surfaces configured to sever vessel branches with the tip in the closed position; wherein the severing device, the tip, and the sheath form a smooth, substantially cylindrical outer edge when in the closed position. Appeal Br. 9 (Claims App.). 2 Appeal2014-003670 Application 11/710, 144 REJECTIONS The claims stand rejected as follows: 2 1. Claims 1, 4, 5, 9, 10, and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer (US 7,645,289 B2, issued Jan. 12, 2010), Genovesi (US 7,309,342 B2, issued Dec. 18, 2007), and Thompson (US 6,428,470 Bl, issued Aug. 6, 2002). 2. Claims 2 and 19 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Genovesi, Thompson, and Steinberg (US 5,630,783, issued May 20, 1997). 3. Claims 7 and 8 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Genovesi, Thompson, and Wellman (US 2004/0215057 Al, published Oct. 28, 2004). 4. Claim 17 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Genovesi, Thompson, and Desinger (US 2004/0097920 Al, published May 20, 2004). 5. Claim 27 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Lindsay (US 2005/0192613 Al, published Sept. 1, 2005), and Genovesi. 6. Claim 28 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Lindsay, Genovesi, and Thompson. ANALYSIS Obviousness over Bayer, Genovesi, and Thompson (Claims 1, 4, 5, 9, 10, and 12) Appellants present separate argument for patentability for only claim 1. Appeal Br. 5---6. Accordingly, we select claim 1 as representative to 2 The rejection of claim 27 under 35 U.S.C. Â§ 112, first paragraph, has been withdrawn. Ans. 2 3 Appeal2014-003670 Application 11/710, 144 decide the appeal with respect to the group. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Claims 4, 5, 9, 10, and 12 stand or fall with claim 1. In rejecting claim 1, the Examiner found that Bayer discloses a dissector device comprising sheath 12, tip 100, and severing device 132 which "form a smooth, substantially cylindrical outer edge when in the closed position." Final Act. 4 (citing Bayer, Fig. 15). The Examiner also found that Genovesi discloses a severing device (i.e., electro-surgery points 30, 32, 34, and 36, and electro-surgery contact points 38, 40, 42, and 44) which comprises the tip and distal end of the sheath. Id.; Ans. 4; see also Genovesi, Fig. 1. The Examiner found that the electro-surgery points both cauterize and sever branch vessels (Ans. 4 (citing Genovesi, col. 13, 1. 57- col. 14, 1. 4)), and concluded that it would have been obvious to utilize the cauterizing members in Bayer's dissector device. Final Act. 6. Appellants contend that incorporating Genovesi's severing/cauterizing structures into Bayer would destroy the allegedly smooth, substantially cylindrical outer edge of Bayer. Appeal Br. 5---6. Particularly, Appellants contend that Genovesi' s device requires main vessel alignment slot 20 to be able to sever branch vessels, and slot 20 interrupts a smooth outer edge. Id. (citing Genovesi, col. 13, 11. 20-28; see also Fig. 3). We understand Appellants' essential contention to be that combining Genovesi' s teachings with Bayer would require incorporating Genovesi' s main vessel alignment slot 20 in Bayer's device, and incorporating slot 20 would result in Bayer's device not having "a smooth, substantially cylindrical outer edge." According to Appellants, one skilled in the art would not have ignored Genovesi's slot 20 because the Examiner's 4 Appeal2014-003670 Application 11/710, 144 combination otherwise would not be useful as a dissecting device. Reply Br. 2. Appellants' contentions are not persuasive. The Examiner provides an annotated version of Genovesi Figure 1. Ans. 4. The Examiner finds that Genovesi's electro-surgery points (electrodes) 30, 32, 34, 36, 38, 40, 42, and 44 lay flush against the walls of the mating surfaces. Id. The Examiner also finds that utilizing these electrodes on the mating surfaces in Bayer would not destroy the ability of the severing device, tip, and sheath to provide a smooth, substantially cylindrical outer edge when closed. Id. at 5. The Examiner explains that the rejection "did not cite [Genovesi's] slot 20." Id. Figure 9 of Genovesi shows main vessel 107 and branch vessel 109 captured by the device, with main vessel 107 received in main vessel alignment slot 20. See Genovesi, col. 18, 11. 50-53. However, as shown in Figures 5-9, for example, of Bayer, main vessel 200 is located external to shaft 12 and tip 100 when the instrument is used to sever tributary branch 210. In light of this difference in operation of Bayer's device as compared to Genovesi's device, Appellants have not explained persuasively why Bayer's device, if modified in view of Genovesi, would necessarily incorporate Genovesi's slot 20 to receive main vessel 200 to be able to sever tributary branch 210. Appellants further contend that Bayer's device includes notched portion 120 dimensioned to facilitate cradling, orientation, and positioning or grasping of vessel tributaries 210. Appeal Br. 6 (citing Bayer, col. 12, 11. 7-11 ). Appellants assert that notched portion 120 has no mating surface with a sheath, and thus, it would not have been obvious to incorporate 5 Appeal2014-003670 Application 11/710, 144 Genovesi's cauterizing members into Bayer's device not having appropriate mating surfaces. Id. However, the Examiner explains that the rejection does not rely on notch 120 of Bayer, but relies on the embodiment of the device shown in Figure 15 of Bayer as teaching the mating surfaces. Ans. 3. The Examiner explains that Figure 15 shows notches in the tip (i.e., cradle section 714) and alignment tabs 755a and 755b in the sheath (i.e., shaft 12) to interact with the notches and form mating surfaces in the closed position. Id. (citing Bayer, col. 15, 11. 29-35; see also Bayer annotated Fig. 15). The Examiner correctly notes that claim 1 does not recite any limitation that requires mating surfaces "for grasping a branch." Id. Appellants have not apprised us of any error in these findings. Accordingly, we sustain the rejection of claim 1, and of claims 4, 5, 9, 10, and 12 falling with claim 1, as unpatentable over Bayer, Genovesi, and Thompson. Obviousness over Bayer, Genovesi, Thompson, and Steinberg (Claims 2 and 19) Obviousness over Bayer, Genovesi, Thompson, and Wellman (Claims 7 and 8) Appellants rely solely on the arguments presented for claim 1 for patentability of claims 2 and 19 and claims 7 and 8. Appeal Br. 6-7. Accordingly, we sustain the rejections of these claims for the same reasons discussed above in relation to claim 1. Obviousness over Bayer, Genovesi, Thompson, and Desinger (Claim 17) Claim 17 depends from claim 1 and recites that "the severing members on the tip and the sheath include ring-shaped electrodes configured 6 Appeal2014-003670 Application 11/710, 144 for being electrically energized to sever and cauterize a vessel branch." The Examiner found that Desinger discloses a ring-shaped electrode 24 meeting this limitation. Final Act. 9 (citing Desinger, para. 51; Fig. la). Appellants contend that Desinger would not have led one skilled in the art to the claimed pair of ring-shaped electrodes on the tip and sheath, where the ring-shaped electrodes are "a) brought together in a closed position for providing a smooth surface for blunt dissecting, b) separated by axially moving the tip in order to capture a branch, and then c) moved toward one another for severing the branch." Appeal Br. 7. In response, the Examiner noted that functions a), b ), and c) are not recited verbatim in claim 17. Ans. 6. In addition, the Examiner found that these functions are taught by the combination of Bayer and Genovesi, while not relying on this combination for teaching ring-shaped electrodes. Id. at 7. Claim 1 recites that "the severing members have mating surfaces configured to sever vessel branches with the tip in the closed position" (emphasis added). We construe claim 17 to mean that the ring-shaped electrodes on "the proximal end of the tip and the distal end of the sheath" (see claim 1) have the "mating surfaces" recited in claim 1. The claimed ring-shaped electrodes would be moved relatively away from and toward each other by moving the tip axially "between an open position and a closed position" (see claim 1 ). Our construction of claim 17 is consistent with Figure 1 of Appellants' application, which shows first cauterizing member 62 on distal end 18 of sheath 12 and second cauterizing member 64 on proximal end 26 of tip 20, with tip 20 in the closed position. See also Spec. para. 34. The Specification also describes members 62, 64 as "electrodes 62 and 64." Id. at para. 36. 7 Appeal2014-003670 Application 11/710, 144 Desinger discloses that a wire ring forms cutting element 24, and a high-frequency arc voltage is applied between the wire ring and the metal sleeve 12 serving as the counterpart electrode. Desinger, para. 51. The applied voltage produces cutting of tissue 40. Id.; see also Figs. le, Id. In the rejection, the Examiner applies Desinger to modify the shape of the electrodes of Bayer in view of Genovesi to be ring-shaped around the entire edge of the tip and sheath shown in Figure 15 of Bayer. Ans. 7. In the Reply Brief, Appellants do not present separate argument for claim 1 7, and thus, do not apprise us of any error in the Examiner's findings and reasoning. Consequently, Appellants do not explain persuasively why the Examiner's applied combination of Bayer, Genovesi, Thompson, and Desinger would not meet functions a), b ), and c ), or would not meet the limitations of claim 17. Thus, we sustain the rejection of claim 17. Obviousness over Bayer, Lindsay, and Genovesi (Claim 27) Appellants contend that Bayer and Genovesi fail to suggest severing members on the tip and sheath that can provide a smooth, substantially cylindrical surface when in the closed position. Appeal Br. 7-8. This contention is not persuasive for the reasons discussed above for the rejection of claim 1. Accordingly, we sustain the rejection of claim 27. Obviousness over Bayer, Lindsay, Genovesi, and Thompson (Claim 28) Appellants rely solely on the arguments presented for claim 27 for patentability of claim 28. Appeal Br. 8. Accordingly, we sustain the rejection of claim 28 for the same reasons as those for claim 27. DECISION The Examiner's decision to reject claims 1, 2, 4, 5, 7-10, 12, 17, 19, 27, and 28 is affirmed. 8 Appeal2014-003670 Application 11/710, 144 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9