Ex Parte PonderDownload PDFPatent Trial and Appeal BoardJun 30, 201713539620 (P.T.A.B. Jun. 30, 2017) Copy Citation 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. 2 Appeal 2016-003720 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”). 3 Appeal 2016-003720 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, 4 Appeal 2016-003720 Application 13/539,620 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 5 Appeal 2016-003720 Application 13/539,620 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: 6 Appeal 2016-003720 Application 13/539,620 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 7 Appeal 2016-003720 Application 13/539,620 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 8 Appeal 2016-003720 Application 13/539,620 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 9 Appeal 2016-003720 Application 13/539,620 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. 10 Appeal 2016-003720 Application 13/539,620 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 11 Copy with citationCopy as parenthetical citation