Ex Parte Rottenberg et al

Patent Trial and Appeal BoardJan 16, 2019

14118234 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/118,234 11/17/2013 32964 7590 01/17/2019 DEKEL PATENT LTD., DAVID KLEIN BEIT HAROFIM 18 MENUHA VENAHALA STREET, ROOM 27 REHOVOT, 76209 ISRAEL Dan Rottenberg 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. 2273ROT-US 2243 EXAMINER NEWTON, ALEXANDRA L ART UNIT PAPER NUMBER 3795 MAIL DATE DELIVERY MODE 01/17/2019 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 DAN ROTTENBERG and OMER SHEZIFI Appeal2018-001912 Application 14/118,234 Technology Center 3700 Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 1-5, 7, 9-13, and 15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2018-001912 Application 14/118,234 CLAIMED SUBJECT MATTER Claims 1 and 15 are independent, with claims 2-5, 7, and 9-13 depending from claim 1. Claim 1 is reproduced below: 1. A device comprising: an endoscopic sleeve comprising a tubular member from which extend a plurality of spaced projecting elements, each of which has an initial position, said projecting elements being bendable towards both proximal and distal directions of said tubular member, wherein a force (insertion force) required to bend said projecting elements from said initial positions towards the proximal direction is less than a force ( extraction force) required to bend said projecting elements from said initial positions towards the distal direction and a distance all around an outer periphery of said projecting elements decreases as the extraction force increases, and wherein said projecting elements comprise sets of projecting elements, each set spaced axially from one another, and wherein adjacent sets of projecting elements comprise a more proximal set of projecting elements and a more distal set of projecting elements, and the more proximal set of projecting elements is hindered in bending towards said distal direction by abutting against the more distal set of projecting elements. REJECTIONS 1. Claims 1-5, 10, 11, 13, and 15 are rejected under 35 U.S.C. Â§ I02(a) as anticipated by Axon (US 2013/0090527 Al, published April 11, 2013), or in the alternative, as unpatentable under 35 U.S.C. Â§ I03(a) over Axon. 2. Claims 7 and 9 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Axon and Rottenberg (WO 00/13736, published Mar. 16, 2000). 2 Appeal2018-001912 Application 14/118,234 3. Claim 12 is rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Axon and Tilson (US 2011/0087070 Al, published Apr. 14, 2011). OPINION The Examiner finds that Axon teaches "projecting elements" each having "an initial position" that are "bendable towards both proximal and distal directions," such that "a force ... required to bend said projecting elements from said initial positions towards the proximal direction is less than a force ... required to bend said projecting elements from said initial positions towards the distal direction," as required by claim 1. Final Act. 2- 3. Claim 15 is a method of using the device recited in claim 1, and specifically requires the elements of the apparatus recited in claim 1. The Examiner explains that "the position shown in FIG. 1 [of Axon] ... is the initial position" and asserts that "[i]t is obvious to one of ordinary skill in the art that any force that bends the already proximally-angled projections more towards the proximal direction is negligible compared to the force require to bend the projections past 90Â° toward the distal direction." Id. at 7 ( emphasis added); see also Ans. 2 ("i.e. past 90Â° distally"). That is, the Examiner reads the "force ... required to bend said projecting elements from said initial positions towards the distal direction" recited in claim 1 as that required to bend the projecting elements into the distal region of the tubular member. The Examiner provides an illustration of this interpretation applied to Axon's Figure 1 in the Answer, which is reproduced below with our annotations for purposes of explanation. 3 Appeal2018-001912 Application 14/118,234 .:--.._--v,,-.:,.:,.._-,,.,. ,1,".rÂ· .-~--Â· .. Â· , ..... _ ................................................... , l~~-:'.;~:,_:j~'.':;/~;~~11!;~;-~~Ul d:J:J I /)proxirrn! _ l:'t~e~:'.:'.~>-----------1 \ \ \ \ 'Â· \ \ \ !i~k~.-:~trr;tnr i jcHsp~acf.~:T1ent le: ! l~Â·J j ~~.tn ! _ d ~ rf.~ cH on ___________ _! The illustrations above, from page 6 of the Answer, are a fragmentary portion of Axon's Figure 1, which is a side view of an endoscope cover, and a corresponding depiction of the proximal and distal displacement of Axon's projecting elements with the addition of our annotations in red. Appellants dispute the Examiner's reading of the claim. Appeal Br. 9-11. Appellants contend, for example, that there is no reason to believe that a different force is required to bend Axon's projecting elements toward the proximal direction than to the distal direction. Id. at 11. The Examiner makes no finding that a different force is required to bend Axon's projecting elements from their initial positions (i.e., their positions shown in Fig. 1) toward the proximal direction versus the distal direction. Rather, as explained above, the Examiner reads the recitation in claim 1 of "a force ... required to bend said projecting elements from said initial positions towards the distal direction" as the force required to bend those projecting elements from their initial positions (shown in Fig. 1) past a perpendicular position ( shown as the "reference line" in the annotated figure reproduced above) to the distal region of the tubular member. The Examiner's reading of the claim is incorrect. Because the Examiner does 4 Appeal2018-001912 Application 14/118,234 not present any findings or rationale addressing the proper requirements of this limitation, the Examiner erred in rejecting claims 1-5, 7, 9-13, and 15. DECISION We REVERSE the Examiner's decision to reject claims 1-5, 7, 9-13, and 15. REVERSED 5