Ex Parte Ponder

Patent Trial and Appeal Board

Jun 30, 2017

13539620 (P.T.A.B. Jun. 30, 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.
13/539,620 07/02/2012 Jerome V. Ponder UCD-002 8205
7590
Jerome V. Ponder
3461 Thamesford Road
Fayetteville, NC 28311
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/03/2017 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 JEROME V. PONDER
Appeal 2016-003720
Application 13/539,620
Technology Center 3700
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a uterine manipulator. The Examiner rejects the claims as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-003720
Application 13/539,620
STATEMENT OF THE CASE
Claims 1—4 are on appeal1, and are reproduced in the Claims
Appendix of the Appeal Brief. Claim 1 is illustrative of the claims on appeal
and reads as follows:
1. A laparoscopic uterine manipulator assembly, the
laparoscopic uterine manipulator assembly comprising:
a laparoscopic control device configured for insertion
into the abdomen-pelvic cavity of a patient, the laparoscopic
control device having a proximate end and a distal end, wherein
the proximate end of the laparoscopic control device comprises
a device control handle and the distal end of the laparoscopic
control device comprises a secondary member of a device
coupling mechanism; and
a uterine manipulator device, the uterine manipulator
device being configured for insertion and advancement through
a vaginal and uterine cavity towards a distal uterine wall, the
uterine manipulator device comprising:
a shaft body, the shaft body comprising a
predetermined length and having a proximate end and a
distal end;
a uterine placement handle, the uterine placement
handle being comprised at the proximate end of the shaft
body;
a tissue-penetrating component situated at the
distal end of the shaft body, the tissue-penetrating
component being configured to perforate the distal
uterine wall, thus forming an opening in the uterine wall;
and
a primary member of the device coupling
mechanism comprised at the distal end of the shaft body,
the primary member of the device coupling mechanism
being configured to be advanced through a perforated
opening in the uterine wall and thereafter be
1 Claim 5 is objected to by the Examiner but not rejected and claims 6—19
are withdrawn from consideration because of an earlier restriction
requirement. See Final Act. 1, 6—7.
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Application 13/539,620
mechanically engaged with the secondary member of the
device coupling mechanism of the laparoscopic control
device, resulting in the construction of an assembly
comprised of the laparoscopic control device and the
uterine manipulator device;
the laparoscopic uterine manipulator device assembly
being configured to allow an individual user to utilize the
assembly device under the control of the device control handle
of the laparoscopic control device to engage and reposition the
patient’s uterus.
Appellant seeks review of the Examiner’s rejection of claims 1—4
under pre-AIA 35 U.S.C. § 102(b) as anticipated by Sharp.2
Anticipation
The Examiner finds that
Sharp discloses a single anticipatory structure of a laparoscopic
control device that comprises the structural equivalents of a
control handle and a secondary member of a device coupling
mechanism, it is noted that the claims are directed to a
combination and the claim limitations directed to the
arrangement of the control handle relative to the secondary
member are functional limitations.
Final Act. 3^4.
Appellant contends that the inner cannula seal 43 a does not anticipate
the uterine placement handle. See Appeal Br. 6—7 (“the member 43a serving
as disclosed within Sharp in a capacity ‘to prevent leakage’ from within the
cannula 40”). Appellant contends that “[t]he laparoscopic uterine
manipulator assembly 200 of claim 1 is structurally comprised of two
devices: a laparoscopic control device 202 and a uterine manipulator device
100,” while Sharp only presents one device. Appeal Br. 11. Appellant
2 Sharp et al., US 2008/0119868 Al, published May 22, 2008 (“Sharp”).
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Application 13/539,620
contends that the Examiner is making an obviousness type rejection when
the claims are rejected as anticipated. See Appeal Br. 15—16.
The issue is: Does the preponderance of evidence of record support
the Examiner’s finding that Sharp discloses the laparoscopic uterine
manipulator as claimed?
Findings of Fact
We adopt the Examiner’s findings of fact as set out in the Answer and
Final Action mailed January 14, 2015. For emphasis only, we highlight the
following:
FF1. Figure 8 of Sharp is reproduced below:
Figure 8 shows a transuterine cannula 130, a surgical instrument 134,
balloon anchors 142, and an endoscope 132. See Sharp | 64. The
figure also shows
an articulation wire 136 can extend through a channel of the
endoscope 132 from a manipulator wheel 138 outside the
patient's body to a distal location 140 on the endoscope 132,
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where the wire 136 is fastened. The wheel 138 can be
manipulated to pull the wire 136 to bend the endoscope.
Sharp 1 64. “[T]he the surgical instrument 134 may be, e.g., a scissor,
grasper, dissector, electrocautery probe, tissue welder, clip applicator,
or ligature applicator.” Sharp 1 65.
FF2. Figure 3 of Sharp is reproduced below:
Figure 3 shows a transuterine cannula with balloon anchors that has a
central lumen large enough to accommodate an endoscope. See Sharp
1140-42. The figure shows “seals 43a and 43b can be positioned at
portions of the transuterine cannula 40 to respectively seal around the
proximal and distal portions of the endoscope and prevent leakage.”
Sharp 142.
FF3. Sharp teaches that
[a]n obturator 41 may be placed through a central lumen
42 of the transuterine cannula 40 to stiffen the
transuterine cannula 40 and provide column strength to
advance the transuterine cannula assembly into position.
The obturator 41 is removable and can be withdrawn
FIG, 3
the points where the endoscope 46 exits the proximal and distal
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from the transuterine cannula 40 after the transuterine
cannula is in position.
Sharp 140. The transuterine cannula has a large enough diameter to
receive an endoscope. See Sharp 140.
FF4. Figure 7 of Sharp is reproduced below:
Figure 7 shows the transuterine cannula 100 and endoscope 106 can
be manipulated by rotating the wheel located in the lower portion of
the figure. See Sharp | 62. The figure also shows a dissecting device
110. The dissecting device may be advanced through the working
channel of the endoscope 106 or alternatively through the vaginal
wall using a vaginal positioning device. See Sharp | 60.
FF5. Figure 15 of Sharp is reproduced below:
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Figure 15 shows “a transuterine cannula 200 that has a proximal
handle 202 outside the patient that can be manipulated to move the
uterus as desired.” Sharp 172. The cannula can also include
additional lumens to provide channels external to the transuterine
cannula. See Sharp 173. “Respective tissue dissectors 23 8 can
extend through the lateral lumens 236 for fenestrating the vagina, so
that, e.g., one or more of the dissectors 238 can be used as the
dissecting device 110 shown in FIG. 7 [{see above FF4)]”. Sharp |
75.
Principle of Law
Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function. See In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997).
Analysis
We agree with the Examiner’s factual findings and conclusion, as set
out in the Final Action and Answer which we adopt and incorporate herein
by reference. In summary, the Examiner finds that Sharp teaches “a
laparoscopic control device (134) configured for insertion into the abdomen-
pelvic cavity of a patient.” Final Act. 7—8; FF1, FF4. The Examiner also
finds that Sharp teaches “a uterine manipulator device, the uterine
manipulator device being configured for insertion and advancement through
a vaginal and uterine cavity towards a distal uterine wall.” Final Act. 8; see
FF2, FF3, FF5. The Examiner explains that the primary member limitations
of “being configured to be advanced through a perforated opening in the
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uterine wall and thereafter be mechanically engaged with the secondary
member” are met “since the forceps can be introduced via the abdominal
cavity instead of through cannula 40 and [could be used to] grasp the outer
edge of the uterine manipulator device.” Final Act. 8; see FF4. We find no
error with the Examiner’s rationale that Sharp provides two ways to insert
forceps into the abdominal cavity for use in conjunction with Sharp’s uterine
manipulator device, and that the forceps introduced through either insertion
route could be maneuvered in such a way that they are capable of grasping
the cannula of the uterine manipulator device and thereby coupling the two
devices together, even though such grasping of the cannula is not depicted in
Sharp. The nature of “graspers,” i.e., forceps, are such that they can “grasp”
and such grasping is not limited to tissue.
We address Appellant’s contentions below:
Appellant contends that “the inner cannula seals 43a and 43b are not
handle-shaped components but rather ring-shaped objects that are internally
situated within the cavity of the cannula 40.” Appeal Br. 6.
We agree with Appellant that component 43b is disclosed in Sharp as
being a seal (FF2) and therefore is not reasonably considered a handle.
However, we are not persuaded that the Examiner’s rejection fails. The
Examiner’s rejection alternatively relies on inherency that a handle must be
present to manipulate the uterus. See Final Act. 8 (Sharp “or inherently
disclosed as manipulating mechanism described in paragraphs 0052, 0055”).
According to Sharp “[t]he transuterine cannula 40 also facilitates the
movement of the uterus and cervix so that these organs can be manipulated.”
Sharp | 52. In addition to describing that the device manipulates the
movement of the uterus, we note that Sharp expressly discloses a handle
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attached to the cannula to manipulate the uterus. See FF5. Therefore, we
agree with the Examiner’s inherency finding that a handle is associate with a
cannula to move the uterine wall.
Appellant contends that “[t]he laparoscopic uterine manipulator
assembly 200 of claim 1 is structurally comprised of two devices: a
laparoscopic control device 202 and a uterine manipulator device 100,”
while Sharp only presents one device. Appeal Br. 11.
We are not persuaded. The Examiner identified two components in
Sharp, one that functions as the laparoscopic control device (wheel 138) and
the other that functions as the uterine manipulator device (cannula). See
Final Act 7—9; FF1—FF5. Sharp discloses that these two devices can be used
together. Sharp explains that once the cannula is placed through the uterine
wall the obturator is withdrawn and an endoscope is inserted. FF3. The
surgical instrument, that is part of the endoscope device, includes a grasper.
FF1. As explained by the Examiner, once inside the abdomen the endoscope
device that includes the “grasper” is capable of grasping the cannula. See
Final Act. 8. That is so regardless of whether Sharp depicts the grasper
functioning to grasp the cannula.
Appellant contends that “the laparoscopic uterine manipulator
assembly 200 must disclose prior art elements that are structurally arranged
as the devices (202, 100) of claim 1 are arranged in order to properly
anticipate limitations of the claim.” Appeal Br. 15.
The “arrangement” [o]n which applicant relies are not structural
limitations, but merely functional limitations directed to the
useage [sic] of positions of the components of the device in use
together. Since functional limitations directed to the usage of a
device are not given full patentable weight, and the prior art
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meets the limitations directed to the structural arrangement of
the claim, applicant's arguments are not persuasive.
Final Act. 6. We find no error with the Examiner’s position that Sharp’s
device meets the structural elements recited in claim 1 and that these
elements together are capable of performing the function as claimed. See
FF1-FF5.
Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function. See In re Schreiber, 128 F.3d
at 1477—78. Appellant has not identified any such distinguishing structure
recited in the claims.
Where there is reason to conclude that a prior art structure is “capable
of’ performing a claimed function, the burden shifts to the Appellant to
show that the claimed function patentably distinguishes the claimed structure
from the prior art structure. In re Hallman, 655 F.2d 212, 215 (CCPA
1981). Here, the Examiner explains that the laparoscopic instrument in the
form of a dissector or grasper can be inserted either through the cannula into
the abdominal cavity or alternatively is inserted directly into the abdominal
cavity through the vaginal wall. Final Act. 8; see FF1—FF4. Once inside the
abdominal cavity, the laparoscopic instrument is capable of grasping the
cannula of the uterine device, and together the device is capable of
repositioning of the uterus. See Final Act 5; see Ans. 3.
Appellant contends that the Examiner is making an obviousness type
rejection when the claims are rejected as anticipated. See Appeal Br. 15—16.
We are not persuaded. A reference can anticipate a claim even if it
“‘d[oes] not expressly spell out’ all the limitations arranged or combined as
in the claim, if a person of skill in the art, reading the reference, would ‘at
once envisage’ the claimed arrangement or combination.” Kennametal, Inc.
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v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). Here,
the Examiner has identified two structures, the uterine manipulator and the
endoscopic device, that are disclosed as being used together in Sharp. FF1—
FF5. Indeed, Sharp teaches that the “transuterine cannula 200 that has a
proximal handle 202 outside the patient that can be manipulated to move the
uterus as desired.” FF5. Sharp teaches that the surgical device that is part of
the endoscope also includes graspers. FF1. The Examiner finds that each of
the two components meet the recited structural limitations, and concludes
that based on the disclosed structures the components are capable of working
together in the manner claimed. The Examiner explains how the two
structures are capable of meeting the claimed function. “[T]he forceps [or
graspers] can be introduced via the abdominal cavity instead of through
cannula 40 and grasp the outer edge of the uterine manipulator device.”
Final Act. 8; see FF1, FF4.
Appellant has not identified what claimed structural element is
missing from Sharp’s devices. Therefore, Appellant’s arguments do not
persuade us that the evidence fails to support the Examiner’s finding of
anticipation.
SUMMARY
We affirm the rejection of claim 1 under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Sharp. Claims 2-4 were not separately argued and fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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