Ex Parte MennDownload PDFPatent Trial and Appeal BoardMar 22, 201311746284 (P.T.A.B. Mar. 22, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte PAVEL MENN __________ Appeal 2011-013703 Application 11/746,284 Technology Center 3700 __________ Before TONI R. SCHEINER, ERICA A. FRANKLIN, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a surgical tool assembly. The Patent Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The invention concerns an endoscopic tool assembly comprising a surgical tool, a scope, and a detachable clip coupled together “thereby allowing for accurate positioning and reliable coupling between the instruments.” (Spec. [0007].) Appeal 2011-013703 Application 11/746,284 2 Claims 1-10, 12-17, 19, 31, and 32 are on appeal. Claim 1 is representative and reads as follows: 1. A surgical tool assembly comprising: a surgical tool; a scope; a detachable clip which couples said tool and scope, said clip having a first grip which engages a surface of said tool and a second grip which engages a surface of said scope, wherein said first and second grips are formed continuously with one another; said first grip is provided in an upper clip body and said second grip is provided in a lower clip body, and a concavity hingedly connects said upper clip body to said lower clip body; and said upper clip body comprising a connector which hingedly connects a first half of the clip to a second half of the clip, said first and second halves being generally mirror images of each other, wherein said connector flexes to provide a spring action allowing said first grip to contract and expand. The Examiner rejected the claims as follows: • claims 1, 2, 12-14, 16, 17, 19, and 31-32 under 35 U.S.C. § 103(a) as unpatentable over Ishikawa 1 and Sundell; 2 • claims 3-5 under 35 U.S.C. § 103(a) as unpatentable over Ishikawa, Sundell, and Kortenbach; 3 • claims 6, 8-10 and 15 under 35 U.S.C. § 103(a) as unpatentable over Ishikawa, Sundell, and Gehres; 4 and • claim 7 under 35 U.S.C. § 103(a) as unpatentable over Ishikawa, Sundell, and Harhen. 5 1 US Patent No. 6,071,233 issued to Masahiro Ishikawa et al., Jun. 6, 2000. 2 US Patent No. 1,816,301 issued to Carl J. Sundell, Jul. 28, 1931. 3 US Patent No. 5,115,542 issued to Michelle R. Gehres, May 26, 1992. 4 Patent No. US 6,569,085 B2 issued Juergen A. Kortenbach et al., May 27, 2003. Appeal 2011-013703 Application 11/746,284 3 OBVIOUSNESS The Examiner found that Ishikawa disclosed a surgical tool assembly comprising a surgical tool, a scope, and a detachable clip coupled to the tool and scope, wherein the clip has a first grip engaging a surface of the tool, a second grip engaging a surface of the scope, and the first and second grips are formed continuously with one another. (Ans. 4-5.) However, the Examiner found that: Ishikawa fails to positively disclose said first grip is provided in an upper clip body and said second grip is provided in a lower clip body, and a concavity hingedly connects said upper clip body to said lower clip body, and said upper clip body comprising a connector which hingedly connects a first half of the clip to a second half of the clip, said first and second halves being generally mirror images of each other, wherein said connector flexes to provide a spring action allowing said first grip to contract and expand, wherein said second grip is configured to contract and expand as a result of flexing of said concavity, wherein said first and second grips are in communication with each other via a passage extending between an inner surface of said first grip and an inner surface of said second grip, wherein said passage has a width extending in a direction of a first diameter of said first grip and a second diameter of said second grip, and wherein said width of said passage is less than a length of said first and second diameters. (Id. at 5.) The Examiner found that Sundell taught a detachable clip meeting the limitations of claim 1. (Id. at 5-6.) According to the Examiner, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have modified or 5 US Patent No. 5,685,822 issued to E. Paul Harhen, Nov. 11, 1997. Appeal 2011-013703 Application 11/746,284 4 replaced the clip of Ishikawa with the detachable clip taught by Sundell: to have provided an improved surgical tool assembly having an improved detachable clip for securely and simultaneously retaining a surgical tool and a scope both having round cross- sections, the clip being simple in construction, durable and efficient for simultaneously holding the surgical tool and scope by conforming to the arc of the tool’s and the scope’s round cross-sections. (Id. at 6-7.) Appellant contends that “there is no proper reasoning to provide the clip of ISHIKAWA with a connector that flexes to provide a spring action allowing the first grip to contract and expand because the purported first grip 62 in ISHIKAWA is a closed ring….” (App. Br 10-11.) According to Appellant, the Examiner’s proposed modification of Ishikawa’s assembly would necessarily result in the elimination of the closed ring taught by Ishikawa. (Id. at 11.) Appellant asserts that by teaching a closed ring, Ishikawa “in fact teaches against the proposed modification….” (Id.) Further, Appellant asserts that there is no proper reason to substitute the clip of Ishikawa with the clip in Sundell because the first and second grips in Sundell’s clamp apparently are formed having the same diameter to clamp items having the same diameter, rather than for holding an endoscope and a separate tool having a different diameter. (Id.) According to Appellant, the only reason to substitute Sundell’s clip is based upon “impermissible review of Appellant’s Disclosure.” (Id.) Appeal 2011-013703 Application 11/746,284 5 We agree with Appellant that the Examiner has not provided sound reasoning to modify or replace the clip of Ishikawa with the detachable hose clamp taught by Sundell. Ishikawa Figure 6A, relied upon by the Examiner, is reproduced below: Figure 6A is a perspective view of an externally provided channel tube according to Embodiment 5 provided on the exterior of the endoscope main body. (Ishikawa col. 2, ll. 31-33.) Ishikawa disclosed that fixing clip 61 consists of a ring-shaped proximal portion 62 attached to a channel tube 2 and a pair of holding pieces 63 for sandwiching the bendable portion of the insert of an endoscope. (Id. at col. 6, ll. 30-35.) Sundell is a patent document from 1931 relating to improvements in hose clamps, such as those on garden hoses (see, e.g., Sundell, Figures 1-4). In this context, Sundell disclosed “a hose clamp for detachably connecting one portion of a hose with another portion, whereby the hose may be easily coiled up after being used.” (id. at ll. 5-9.) Sundell Figure 1, relied upon by the Examiner, is reproduced below: Appeal 2011-013703 Application 11/746,284 6 Figure 1 shows a hose clamp as applied for detachably connecting two portions of a coiled hose together. (Id. at ll. 27-29.) Sundell disclosed that body member 1 is provided with inwardly extending and arcuately-shaped ends 7 which: (a) “are for the purpose of holding the portions of the hose 3 within their respective arcuately-shaped portions of the body member,” and (b) “provide means whereby the body member 1 may be sprung for inserting the hose portions therebetween and thence into the positions in which they are held by the clamping member.” (Id. at 63-74.) The Examiner reasoned that a skilled artisan would have been motivated to modify or replace the endoscope fixing clip of Ishikawa with the detachable hose clamp of Sundell “to have provided an improved surgical tool assembly having an improved detachable clip for securely and simultaneously retaining a surgical tool and a scope both having round cross-sections….” (Ans. 6-7)(emphasis added). However, the Examiner’s reasoning is not supported by the evidence. Indeed, Sundell disclosed that an object of its invention was “to provide a hose clamp which is simple in construction, durable, and efficient for the purpose intended” (Sundell ll. 17-19) i.e., to clamp a hose. In other words, what is missing from the rejection is a teaching or suggestion from the prior art, or from the knowledge generally available to one of ordinary skill in the art, that modifying or substituting the fixing clip of Ishikawa’s surgical tool as set forth by the Examiner would have provided an improved surgical tool. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Accordingly, we reverse the rejection of independent claim 1. Appeal 2011-013703 Application 11/746,284 7 Because the Examiner relied on the combination of Ishikawa and Sundell in rejecting each of the dependent claims (see Ans. 7, 8, 10), we also reverse each of these rejections for the reasons just discussed. SUMMARY We reverse each of the Examiner’s obviousness rejections. REVERSED cdc Copy with citationCopy as parenthetical citation