Ex Parte Lieponis

Patent Trial and Appeal BoardNov 3, 2016

12421191 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/421,191 0410912009 Jonas V. Lieponis 24126 7590 11/07/2016 ST. ONGE STEW ARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 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. 04012-POOOlD GSW/SBS 3967 EXAMINER TREYGER, IL YA Y ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 11/07/2016 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): patentpto@ssjr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONAS V. LIEPONIS Appeal2013-005987 Application 12/421,191 1 Technology Center 3700 Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and MATHEWS. MEYERS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1-27.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Dr. Jonas V. Lieponis, M.D. (Appeal Br. 2.) 2 The Office Action (mailed August 2, 2012), from which this appeal is taken, states that "[c]laims 1-27 are rejected." (Non-Final Act. 3.) The Office Action explains the bases for the rejection of claims 1-27. (Id. at 3- 9.) Therefore, we treat the statement that "[c]laims 1-21 is/are rejected" on page 1 of the Office Action as a typographical error. Appeal2013-005987 Application 12/421, 191 CLAIMED SUBJECT MATTER Appellant's claimed "invention relates to a surgical instrument, more specifically this invention relates to a combination suction/irrigation device and optical device that may provide a visual indication of the area in which the tool is inserted." (Spec. i-f 2.) Claims 1, 7, 16, and 22 are the independent claims on appeal. Claim 1 is representative. It recites (emphasis added): 1. A medical instrument for providing illuminating light to and aspiration of a cavity, the device comprising: an aspiration pipe coupleable to an aspirator, said aspiration pipe having a conduit passing therethrough and a distal tip terminating the conduit, said conduit being coaxial with said pipe and having an opening coaxial with the conduit and positioned at the distal tip; a sheath enclosing a plurality of optical fibers, said plurality of optical fibers positioned circumferentially about a cavity located along a longitudinal axis of said sheath, said optical fibers having distal ends for illuminating light to exit; said plurality of optical fibers coupleable a light source; said aspiration pipe is insertable into said cavity such that said distal end of said aspiration pipe is adjustable relative to said distal ends of said plurality of optical fibers. REJECTION Claims 1-27 are rejected under 35 U.S.C. Â§ 103(a) in view of Blanchard (US 6,572,578 Bl, iss. June 3, 2003) and Wardle (US 5,415,653, iss. May 16, 1995). ANALYSIS Blanchard discloses a fluid jet catheter. (Blanchard, Title.) In particular, Blanchard discloses: 2 Appeal2013-005987 Application 12/421, 191 The end piece 2 incorporates a hollow chamber 4 through which the saline solution fluid jet flows .... As saline solution is jetted through the chamber toward the distal or proximal end of the fluid-jet catheter, negative pressure in the chamber and opening is caused by saline solution jetting through the chamber past the lateral opening 8. Creating a Bernoulli effect causes suction, which allows targeted tissue to be drawn into the lateral opening 8 of the end piece 2. The surface of the inward-drawn tissue is abraded by the jet stream of saline solution which strips clusters of cells from the tissue. The clusters of cells are entrained in the saline solution and flow through a cell trap recovery opening 12 which decreases diameter in a downstream direction toward the proximal end of the catheter. (Id. at col. 4, 1. 66- col. 5, 1. 18; see also id. at Figs. 1, 5A.) The Examiner finds that return tube 26 of Blanchard corresponds to the claimed conduit. (Answer 11.) The Examiner also finds that "Blanchard in view of Wardle do [sic] not expressly disclose the device, wherein the opening is coaxial with the conduit," as required by independent claims 1, 7, and 16. (See Non-Final Act. 5.) However, the Examiner determines that (Id.) [ s ]ince shifting the position of the opening would not have modified the operation of the device, it would have been obvious to one having ordinary skill in the art at the time the invention was made to position the opening coaxial with the conduit in order to convenience operation of the device. Appellant disagrees and argues that "Blanchard is a device provided for collecting tissue samples, not for aspirating a cavity as currently claimed." (Appeal Br. 7.) Specifically, Appellant argues that "for Blanchard to function properly, the opening must be placed on a lateral side of the conduit to create the jet action (Bernoulli effect) across the opening to collect cell samples (e.g. the saline solution must be shot out of the supply 3 Appeal2013-005987 Application 12/421, 191 conduit directly toward the return conduit)." (Id., citing Blanchard Figs. 1- 6.) Figure 12 of Blanchard shows operation of the Blanchard device. In particular, Figure 12 "schematically shows drawing a polyp into the operative opening and abraiding [sic] cell clusters from the polyp with fluid jets." (Blanchard, col. 4, 11. 27-29.) It is not clear, and the Examiner does not explain, how one would shift the position of the opening in Blanchard to make the opening coaxial with the conduit, as required by claims 1, 7, and 16 (or position the opening in an "end face" of the aspiration pipe, as required by claim 22) so as to maintain the Bernoulli effect Blanchard uses to collect cell samples. (See Non-Final Act. 5, 9; see also Answer 13.) Therefore, we are persuaded that the Examiner erred in determining that "shifting the position of the opening would not have modified the operation of the [Blanchard] device" and thus also erred in determining that [s]ince shifting the position of the opening would not have modified the operation of the device, it would have been obvious to one having ordinary skill in the art at the time the invention was made to position the opening coaxial with the conduit in order to convenience operation of the device. (See Non-Final Act. 5.) DECISION The Examiner's rejection of claims 1-27 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 4