Ex Parte Menn

Patent Trial and Appeal Board

Mar 22, 2013

11746284 (P.T.A.B. Mar. 22, 2013)

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
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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