Ex Parte Kuebler et al

Patent Trial and Appeal Board

Aug 16, 2017

12926609 (P.T.A.B. Aug. 16, 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.
P16036 5851
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/926,609 11/30/2010
08/16/201747988 7590
Walter Ottesen, P.A.
PO BOX 4026
GAITHERSBURG, MD 20885-4026
Christoph Kuebler
08/16/2017 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 CHRISTOPH KUEBLER, MARTIN KRAUS,
MICHAEL EICHLER, and TOBIAS MAIER1
Appeal 2016-005802
Application 12/926,609
Technology Center 3700
Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH and
SCOTT B. HOWARD, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1 through 14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention is directed surgical system with a handpiece that
includes an irrigation line and an aspiration line. The aspiration line is
connected to a pressurized fluid vessel via a venting line and valve, which
when operated permits the fluid in the aspiration line to run counter to
1 According to Appellants, the real party in interest is Carl Zeiss Meditec
AG. See App. Br. 2.
Appeal 2016-005802
Application 12/926,609
normal flow and force a blockage from the tip of a handpiece. Abstract and
page 4 of Appellants’ Specification. Claim 1 is illustrative of the invention
and reproduced below.
1. A surgical system for controlling fluids, the
surgical system comprising:
a first fluid vessel for holding an irrigation fluid;
a surgical handpiece;
an irrigation line having a first end connected to
said first fluid vessel and a second end connected to said
surgical handpiece and said irrigation line conducting
said irrigation fluid to said surgical handpiece at a first
pressure (pi);
a suction pump having an inlet and an outlet;
an aspiration inlet line extending from said
surgical handpiece to said inlet of said suction pump so
as to permit a fluid to be drawn by suction through said
surgical handpiece by said suction pump;
a collecting vessel;
an aspiration outlet line connecting said outlet of
said suction pump to said collecting vessel so as to
permit said fluid to be conducted from said outlet into
said collecting vessel;
a second fluid vessel for holding an irrigation
fluid; an aspiration venting line connecting said second
fluid vessel to said aspiration inlet line;
a venting valve connected into said aspiration
venting line and being switchable in dependence upon a
fluid pressure in said aspiration inlet line and/or in said
irrigation line; and,
a pneumatic pressure system connected to said
second fluid vessel for imparting a second pressure (p2)
to the irrigation fluid therein which is greater than said
first pressure (pi).
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Appeal 2016-005802
Application 12/926,609
REJECTION AT ISSUE2
The Examiner has rejected claims 1, 3 through 5, 7 through 9, 12 and
13 under 35 U.S.C. § 103(a) as unpatentable over Devine (US 5,697,898,
issued Dec. 16, 1997) and Hopkins (WO 2007/149667, published Dec. 27,
2007). Final Act. 2-7.
The Examiner has rejected claims 2, 10, and 11 under
35 U.S.C. § 103(a) as unpatentable over Devine, Hopkins and Kubeler (US
2008/00820140 Al, published Apr. 3, 2008). Final Act. 7—9.
The Examiner has rejected claims 6 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Devine, Hopkins and Donitzky (US 2002/0173779 Al,
published Nov. 21, 2002). Final Act. 9-11.
ANALYSIS
Appellants argue the Examiner’s rejection of representative claim 1 is
in error as neither Hopkins or Devine teach nor suggest applying a
pressurize gas to a container for irrigation fluid thus the combination does
not teach the claim pneumatic pressure system connected to a second fluid
vessel connected to a venting line. App, Br. 10-11. Appellants additionally
argue that the Examiner has not provided a proper rationale to combine
Hopkins and Devine, and asserts that Devine teaches away from the
proposed modification. App. Br. 11—13.
2 Throughout this Decision we refer to the Appeal Brief, dated September
22, 2015 (“App. Br.”), the Reply Brief, dated May 16, 2016 (“Reply Br.”),
the Examiner’s Answer, mailed March 15, 2016 (“Answer”), and the Final
Office Action, mailed May 11, 2015 (“Final Act.”).
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Application 12/926,609
The Examiner’s has provided a comprehensive response to argument.
Specifically, the Examiner finds that Devine teaches using irrigation fluid in
a second fluid vessel which is imparted with a pressure greater than the
pressure than the fluid from the first irrigation vessel. Answer 2. The
Examiner finds that Hopkins renders obvious using pneumatic pressure to a
fluid vessel which is used for irrigation. Answer 2—3. The Examiner finds
that Hopkins provides an alternate mechanism for providing the second
vessel with a second pressure. Answer 5—6.
We have reviewed Appellants’ arguments in the Appeal Brief and the
Reply Brief, the Examiner’s rejections, and the Examiner’s response to
Appellants’ arguments. We agree with the Examiner’s findings and
conclusions. We consider modifying Devine’s second irrigation vessel,
which is pressurized by being higher than the first irrigation vessel, to be
pneumatically pressurized as taught by Hopkins to be obvious.3 This
combination is merely the use of known methods to perform their known
functions. We are not persuaded by Appellants’ argument that Devine
teaches away. ‘“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.’” Ricoh Co., Ltd. v.
Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting
Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006)). Appellants’ arguments focus on applying the pneumatic
3 Devine’s Second irrigation vessel item 38 is higher and thus has a higher
pressure than first irrigation vessel item 12, see figures 1&2 and col. 5,11. 5—
7, supporting the finding.
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Appeal 2016-005802
Application 12/926,609
pressure creating greater pressure changes than present in Devine, however
we do not find that the combination of the references necessarily changes the
pressures involved, rather the combination changes the manner in which the
pressure is created. App. Br. 11—12. Further, Appellants’ arguments
directed to maintaining the aspiration line sterile and thus usable for multiple
patients are not persuasive. App. Br. 12—13. As identified by the Examiner,
these features are not recited in representative claim 1. Answer 6. Further,
as discussed above the combined teachings of Devine and Hopkins results in
the separate irrigation vessel being pressurized which produces an
arrangement similar to that of Appellants’ disclosed device (and as such
maintains the aspiration line as sterile as Appellants’ aspiration lines.)
Accordingly, we are not persuaded of error in the Examiner’s rejection of
representative claim 1 and claims 3 through 5, 7 through 9, 12 and 13
grouped with claim 1.
Appellants argue the Examiner’s rejections of clams 2, 6, 10, 11 and
14 is in error for the same reasons as claim 1 and the additional references
do not make up for the argued deficiency in the rejection of clam 1. App.
Br. 13—15. As discussed above we are not persuaded of error in the rejection
of claim 1. Accordingly, we similarly sustain the Examiner’s rejections of
claims 2, 6, 10, 11 and 14 for the same reason as claim 1.
DECISION
We sustain the Examiner’s rejections of claims 1 through 14 under
35U.S.C. § 103(a).
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Appeal 2016-005802
Application 12/926,609
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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