Ex Parte Nevyas-Wallace

Patent Trial and Appeal Board

Apr 27, 2016

12714081 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121714,081 02/26/2010
78905 7590 04/29/2016
Saul Ewing LLP (Philadelphia)
Attn: Patent Docket Clerk
Centre Square West
1500 Market Street, 38th Floor
Philadelphia, PA 19102-2186
FIRST NAMED INVENTOR
Anita N evyas-W allace
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.
357594.00007 5972
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
patents@saul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANITA NEVY AS-WALLA CE
Appeal 2014-001179
Application 12/714,081
Technology Center 3700
Before ANNETTE R. REIMERS, JASON W. MEL VIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, Anita Nevyas-Wallace, appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1, 2, 4, 5, 7, 8, 10-15, and
23-30. Claims 3, 6, 9, and 16-22 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-001179
Application 12/714,081
THE CLAIMED SUBJECT MATTER
The claims are directed to a surgical knife providing enhanced blade
visualization. Spec. i-f 1. Claims 1, 15, and 23 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A surgical knife comprising:
an elongated handle;
a footplate supported on the handle, said footplate
comprising at least one foot having a guide surface positioned to
ride along tissue of a surgical site; and
a non-transparent blade having a cutting edge, said blade
being supported on said handle with at least a portion of said
cutting edge extending beyond said guide surface of said at least
one foot,
said blade being disposed to be separated from said at least
one foot by a space to provide a first sight line through the space
to a surface of the surgical site,
said at least one foot being constructed from a transparent
material to provide a second sight line through said at least one
foot to a portion of the blade positioned below the surface of the
surgical site when the portion of the blade is positioned below
the surface of the surgical site and when the surgical site
comprises translucent tissue positioned between the portion of
the blade and said at least one foot, the portion of the non-
transparent blade positioned below the surface of the surgical site
being visually perceptible when viewed along the second sight
line.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
McAdams
Kano di a
Neubig
US 5,690,658 Nov. 25, 1997
US 7, 153,317 B2 Dec. 26, 2006
US 2007/0027463 Al Feb. 1, 2007
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Application 12/714,081
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 2, 4, 5, 7, 8, and 10-14 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
2. Claims 1, 2, 4, 5, 7, 8, 10, 15, and 23-29 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over McAdams and Neubig.
3. Claims 1, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McAdams and Neubig.
4. Claims 11, 12, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McAdams, Neubig and Kanodia.
Appellant seeks our review of the four rejections.
OPINION
Rejection 1: Claims 1, 2, 4, 5, 7, 8, and 10-14
Appellant argues the rejection of claims 1, 2, 4, 5, 7, 8, and 10-14 as a
group. Br. 4---6. We select claim 1 as the representative claim, and claims 2,
4, 5, 7, 8, and 10-14 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Claim 1 recites, in part:
said blade being disposed to be separated from said at least
one foot by a space to provide afirst sight line through the space
to a surface of the surgical site,
said at least one foot being constructed from a transparent
material to provide a second sight line through said at least one
foot to a portion of the blade positioned below the surface of the
surgical site
(Emphasis added). The Examiner states that
it is unclear what structure allows for the space between the blade
and foot/feet to provide for a first sight line. How does the space
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Application 12/714,081
allow for a sight line? If the work piece enters the space, how is
there a first sight line? The first sight line is believed to be B in
Figure 4.
Final Act. 2.
In response, Appellant argues that, in Fig. 4, "[ s ]ight line B
corresponds to the second sight line," not the first sight line. Br. 5. We
agree with the Examiner that it "is unclear how sight [line] B meets the
limitations defining the second sight line in the claims." Ans. 8. Referring to
Fig. 4, the Examiner correctly explains that the
second sight line is disclosed as being through the at least one
foot to a portion of the blade positioned below the surface of the
surgical site. Using Figure 4, only sight line A meets all of the
claimed limitations defining the second sight line. The first sight
line is disclosed as being through a space between the foot and
the blade to a surface of the surgical site. Again looking at Figure
4, only sight line A meets all of the claimed limitations defining
the first sight line.
Id. Sight line A, however, cannot be both the first and second sight lines
required by claim 1. We agree with the Examiner that sight line B does not
travel through the foot and the blade and, thus, cannot be the second sight
line, as argued by Appellant.
As Appellant has not explained how the Examiner erred, Appellant's
arguments are not persuasive. We sustain the Examiner's rejection that
independent claim 1 and depending claims 2, 4, 5, 7, 8, and 10-14 are
indefinite under 35 U.S.C. § 112, second paragraph.
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Application 12/714,081
Rejections 2-4: Claims 1, 2, 4, 5, 7, 8, 10-14
Because we sustain the Examiner's rejection of claims 1, 2, 4, 5, 7, 8,
and 10-14 as being indefinite under 35 U.S.C. § 112, second paragraph
(Rejection 1), we do not reach the Examiner's rejections of these claims
separately under 35 U.S.C. § 103(a) in view of McAdams, Neubig, and
Kanodia in Rejections 2--4. "The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim." 37 C.F.R. § 41.50(a)(l) (2015).
Rejection 2: Claims 15 and 23-29
Claim 15
The Examiner finds that McAdams discloses all of the limitations of
independent claim 15 except the at least one foot which is constructed from
a transparent material. Final Act. 3. The Examiner further finds that
"Neubig teaches it is old and well known in the art of guided knives to
incorporate the guide being constructed from a transparent material [citing
Neubig i-f 19:7-10]" and
it would have been obvious to one of ordinary skill in the art, at
the time of the invention, to have provided McAdams with the
guide material, as taught by Neubig, because the substitution of
one known element for another would have yielded predictable
results and all claimed elements were known in the prior art and
one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective
function and the combination would have yielded predictable
results.
Id. at 3--4.
In response, Appellant argues that "the Neubig publication does not
qualify as prior art under 35 U.S.C. § 103 because it is not analogous to the
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claimed invention." Br. 6. Appellant does not contest that McAdams,
which discloses a surgical cutting tool, is analogous art.
The analogous art inquiry has developed as a mechanism to define the
scope and content of prior art properly considered in an obviousness
analysis.
To qualify as prior art for an obviousness analysis, a reference
must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same
field of endeavor; or (2) the reference must be reasonably
pertinent to the particular problem with which the inventor is
involved.
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012). This
test for analogous art requires the Examiner to determine the appropriate
field of endeavor by reference to explanations of the invention's subject
matter in the patent application, including the embodiments, function, and
structure of the claimed invention. In re Bigio, 381F.3d1320, 1325 (Fed.
Cir. 2004).
In support of the argument, Appellant states, in part, that
Appellant's field of endeavor relates to a knife having a
non-transparent blade that is visually perceptible through corneal
tissue, beneath the top tissue surface. The Neubig publication's
field of endeavor relating to autopsies and/or general surgery
relates to visualization of a top tissue surface of an incision site
in the context of general corporeal surgery involving opaque
tissues. In contrast, Appellant's field of endeavor relates to
visualization of the portion of the blade below the top surface of
the incision site ....
Br. 9. Appellant also argues that the field of endeavor narrowly relates to
"eye surgery, and surgery involving transparent/translucent tissues." Id.
Contrary to Appellant's arguments, however, all three independent claims-
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claims 1, 15 and 23 - are broadly directed to a "surgical knife," and are not
explicitly limited to eye surgery. See claims 1, 15, 23; see also Spec. i-f 1
("The present invention relates generally to a surgical knife providing
enhanced visualization."). Limitations not appearing in the claims cannot be
relied upon forpatentability. In re Self, 671F.2d1344, 1348(CCPA1982).
We agree with the Examiner that "Neubig teaches a surgical cutting tool
with a transparent guide/guard" and the field of endeavor is more
appropriately "cutting [tools] and not what is being cut." Ans. 9. As such,
we find that the field of endeavor of Appellant's claims is broad enough to
encompass Neubig's surgical cutting device. Accordingly, Neubig qualifies
as analogous art under at least the first prong of the analogous art test.
Appellant also argues that claim 15 is patentable over McAdams and
Neubig "for reasons somewhat similar to those discussed [with respect to
claim 1] although the claim language differs from that of claim 1." Br. 14.
First, Appellant does not address the Examiner's reasoning that "the
substitution of one known element [i.e., Neubig's clear, transparent guide
member 70] for another [i.e., McAdams' non-transparent guide/foot 56]
would have yielded predictable results." Final Act. 3--4; Ans. 10. As the
Examiner noted, "Neubig teaches it is old and well known in the art of
guided knives to incorporate the guide being constructed from a transparent
material [citing Neubig i-f 19:7-10 1]." Final Act. 3. Thus, Appellant does
not show how the Examiner's rejection is improper or incorrect.
1 Paragraph 19, lines 7-10 of Neubig states the "guide member 70 is
preferably made of a clear, transparent material so that a user can see
through it and observe the tissue and cut in process."
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Second, Appellant's argument that the combination of McAdams and
Neubig is based on impermissible hindsight (Br. 11-13) relates to
limitations (e.g., "a second sight line through said at least one foot to a
portion of the blade positioned below the surface of the surgical site") that
are present in claim 1, but not in claim 15.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claim 15 as unpatentable under 35 U.S.C. § 103(a)
in view of McAdams and Neubig.
Claims 23-29
Appellant argues claims 23-29 as a group. Br. 14. We select
independent claim 23 as the representative claim, and dependent claims 24--
29 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that
[ c ]laim 23 is patentable for the reasons similar to those discussed
above in relation to claim 1 because claim 23 further recites that
when the footplate is riding over translucent tissue with a portion
of said non-transparent blade extending below the surface, said
portion is visually perceptible when viewed along a sight line
passing from said portion through said translucent tissue, and
through said transparent footplate.
Br. 14.
First, as with claim 15, Appellant does not address the Examiner's
reasoning that substituting one known element (i.e., Neubig's clear,
transparent guide member 70) for another known element (i.e., McAdams'
non-transparent guide/foot 56) would yield predictable results (Final Act. 3-
4; Ans. 10), or that "Neubig teaches it is old and well known in the art of
guided knives to incorporate the guide being constructed from a transparent
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material [citing Neubig il 19:7-10]." Final Act. 3. Appellant does not show
how the Examiner's rejection is improper or incorrect.
Second, Appellant's mere recitation of claim elements in claim 23 and
assertion that such elements are not found in McAdams and Neubig is
unpersuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (37
C.F.R. § 41.37 requires "more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."); see generally Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843 at *4 (BPAI 2009)
(informative) ("[W]e find that the Examiner has made extensive specific fact
finding ... with respect to each of the argued claims. Appellants' argument
... repeatedly restates elements of the claim language and simply argues the
elements are missing from the reference. However, Appellants do not
present any arguments to explain why the Examiner's explicit fact finding is
in error." (footnote omitted)).
We sustain the Examiner's rejection of claim 23-29 under 35 U.S.C.
§ 103(a) in view of McAdams and Neubig.
Rejection 4: Claim 30
Claim 30 depends from independent claim 23. Appellant argues that
"Neubig is non-analogous art." Br. 14. As discussed above, Appellant's
argument is not persuasive. Appellant further argues that "Kanodia does not
add anything to the disclosure of McAdams and Neubig, taken alone or in
any combination therewith, that would remedy the aforementioned
deficiency." Id. at 15. As we find no deficiency in the Examiner's rejection
of independent claim 23, for the reasons discussed above, we likewise
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sustain the Examiner's rejection of dependent claim 30 under 35 U.S.C.
§ 103(a) in view of McAdams, Neubig, and Kanodia.
DECISION
For the above reasons, we AFFIRM the Examiner's rejection of
claims 1, 2, 4, 5, 7, 8, and 10-14 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
We do not reach the rejection of claims 1, 2, 4, 5, 7, 8, and 10-14
under 35 U.S.C. § 103(a) as unpatentable over McAdams and Neubig.
We AFFIRM the Examiner's rejection of claims 15 and 23-29 under
35 U.S.C. § 103(a) as being unpatentable over McAdams and Neubig.
We AFFIRM the Examiner's rejection of claim 30 under 35 U.S.C.
§ 103(a) as being unpatentable over McAdams, Neubig, and Kanodia.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv) (2015).
AFFIRMED
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