Ex Parte Wan

Patent Trial and Appeal Board

Dec 28, 2017

13362029 (P.T.A.B. Dec. 28, 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.
13/362,029 01/31/2012 Shaw P. Wan 3005.2 6305
126354 7590 01/02/2018
Erickson Kemell IP, LLC
8900 State Line Rd, Suite 500
Leawood, KS 66206
EXAMINER
JOHANAS, JACQUELINE T
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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):
ekdkdocket @ kcpatentlaw. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAW P. WAN
Appeal 2016-000927
Application 13/362,029
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shaw P. Wan (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1, 2, 4—6, 9-11, 14, 16, and 171 under
35 U.S.C. § 103(a).2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Claims 3, 7, 8, 12, 13, 15, 18, and 19 have been canceled. Appeal Br. 5.
2 In the Answer, the Examiner withdraws an indefiniteness rejection of
claims 1, 11, and 16. Ans. 27.
Appeal 2016-000927
Application 13/362,029
INVENTION
Appellant’s invention relates to a surgical retractor. Spec. 1.
Claims 1,11, and 16 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A surgical retractor consisting of:
a shaft with an integral blade, the shaft and the blade are
joined at an angle selected from the range of 55-85°, the shaft
further comprising a gripping surface on the shaft which is ribbed
or roughened;
the blade is non-segmented, autoclaveable, plastic,
and has a shape which is wider than it is tall and having a
concave shaped upper surface, a plurality of
autoclave[e]able LED lights being embedded within the
blade and exposed at the upper surface,
wherein each of the LED lights is flush with
the upper surface,
the blade surrounding the LED lights being opaque
and
a lower surface of the blade having a gripping
surface which is roughened and used to maintain the
retractor in place when inserted into a patient and the
lower surface is engaged with the patient, applying
pressure to the lower surface of the blade when an incision
is being pulled open and/or some other tissue is pulled out
of the way; and
a power source for the LED lights in
communication with one or more electrical connectors,
and the power source being contained within the shaft.
Appeal Br. 58 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 1, 2, 5, 6, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shin (US 4,226,228, iss. Oct. 7,
1980), Funt (US 2012/0059226 Al, pub. Mar. 8, 2012), Ibrahim
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Application 13/362,029
(US 2011/0028792 Al, pub. Feb. 3, 2011), Houser (US
2008/0108876 Al, pub. May 8, 2008), Bayat (US 7,384,392
B2, iss. June 10, 2008), Hipps (US 6,468,206 Bl, iss. Oct. 22,
2002), and Rao (US 5,520,611, iss. May 28, 1996).
II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Shin, Funt, Ibrahim, Houser, Bayat, Hipps,
Rao, and Silvertsen (US 7,587,289 Bl, iss. Sept. 8, 2009).
IIL The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Shin, Funt, Ibrahim, Houser, Bayat, Hipps,
Rao, and Rabban (US 4,116,232, iss. Sept. 26, 1978).
IV. The Examiner rejected claims 11 and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Shin, Funt, Ibrahim, Houser,
Bayat, Hipps, Rao, Kleene (US 2010/0298644 Al, pub. Nov.
25, 2010), and Loubser (2005/0279355 Al, pub. Dec. 22,
2005).
V. The Examiner rejected claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Gelnett (2008/0269564 Al, pub.
Oct. 30, 2008), Hipps, Houser, Loubser, Funt, and Ibrahim.
ANALYSIS
Rejection I— Obviousness of Claims 1, 2, 5, 6, and 9
Appellant argues for patentability of claims 1, 2, 5, 6, and 9 together
as a group. Appeal Br. 24. Appellant does not separately argue for the
patentability of claims 2, 5, 6, and 9. See id. at 16—24. We select claim 1 as
representative, and claims 2, 5, 6, and 9 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
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The Examiner finds Shin discloses the claimed surgical retractor,
except it lacks a specific teaching that: (1) the angle between the blade and
the shaft is within the range of 55—85 degrees; (2) the shaft gripping surface
is ribbed or roughened; (3) the blade is an autoclaveable plastic, which is
opaque; (4) the plurality of lights are flush mounted autoclaveable LEDs;
and (5) the lower surface of the blade is roughened. Final Act. 4—9. The
Examiner, nevertheless, finds Funt, Ibrahim, Houser, Bayat, Hipps, and Rao
evidence these missing details were known modifications for such a device
and determines a skilled artisan would have known at the time of the
invention to modify the retractor in Shin to have each feature claim 1 recites.
Id. at 6—9. Appellant “contends that none of the prior art references,. . .
whether viewed alone or in combination with one another, teach, suggest, or
provide a motivation for a surgical retractor with all of the claim elements of
claim 1.” Appeal Br. 17. Appellant’s contention is unpersuasive for the
following reasons.
The criterion for evaluating the Examiner’s obviousness
determination “is not the number of references, but what they would have
meant to a person of ordinary skill in the field of the invention.” In re
Gorman, 933 F.2d 952, 986 (Fed. Cir. 1991). The question is whether the
Examiner has shown a skilled artisan, possessed with the knowledge Shin,
Funt, Ibrahim, Houser, Bayat, Hipps, and Rao evidences, would have known
to do what Appellant herein claims. In re Keller, 642 F.2d 413, 425 (Fed.
Cir. 1981). “To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one reference can be
physically inserted into the device shown in the other.” Id. Rather, the test
for obviousness considers whether “a person of ordinary skill in the art,
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possessed with the understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the inventor, would have been
led to make the combination recited in the claims.” In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). Reliance on a large number of references does
not negate the obviousness of a combination when the Examiner has shown
“the prior art uses the various elements for the same purpose as they are used
by appellant[], making the claimed invention as a whole obvious in terms of
35 U.S.C. § 103.” In re Gorman, 933 F.2d at 987. When the Examiner
presents evidence showing “the claim elements appear in the prior art in the
same configuration, serving the same functions, to achieve the results
suggested in prior art,” allegations of hindsight picking and choosing from
the various prior art references are not persuasive. Id. Moreover,
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d at 425).
Importantly, Supreme Court precedent instructs that an Examiner is
not required to “seek out precise teachings directed to the specific subject
matter of the challenged claim” because there is latitude to “take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
While an Examiner must identity support from the prior art to properly
establish a reason with a rational underpinning for why a particular
combination would have been obvious, the Examiner’s consideration of the
prior art is not so limited that it presumes the ordinarily skilled person
cannot see beyond exactly what the express words of each reference teaches.
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Id. at 421. This is because the ordinarily skilled person “is also a person of
ordinary creativity, not an automaton.” Id.
As an initial matter, Appellant argues that the “use of ‘consisting of
excludes elements disclosed in Shin, Funt, Ibrahim, Houser, Bayat, Hipps
and Rao which are extraneous to those elements disclosed in the claim.”
Appeal Br. 17. The Examiner relied upon Shin (more specifically, the
device Shin discloses in Figure 1) as the primary reference, and the
remaining references were relied upon to provide evidence that a skilled
artisan already knew specific features, which are not shown in Figure 1,
were obvious modifications to be made to that device. Final Act. 4—10.
Notably, Appellant does not identity any element in Shin (Figure 1) the
language of claim 1 excludes. The fact that the teaching references may
have other elements, which the rejection does not rely upon or incorporate
into the primary reference, is irrelevant. Thus, Appellant’s “consisting of’
arguments are misplaced.
Turning now to the specific criticisms of the Examiner’s obviousness
determination, Appellant asserts first Shin lacks a disclosure of a surgical
retractor consisting of several features claim 1 recites. Appeal Br. 18—19.
Specifically, Shin fails to disclose “a non-segmented blade possessing a
gripping surface which is roughened and the use of LED lights” or “a blade
joined at an angle of 55—85°.” Id. The Examiner, however, does not rely on
Shin to evidence it was known to have a retractor consisting of a roughened
gripping surface, LED lights, or a blade joined at an angle of 55—85°. See
Final Act. 4—9. Appellant does not argue, or offer any evidence, Shin
suggests a skilled artisan would have viewed those features as incompatible
with the retractor disclosed. Regarding the disclosure of a non-segmented
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blade, Appellant directs us to the retractor in Figure 3 of Shin and ignores
the retractor Shin describes and illustrates in Figure 1. Id. But the Examiner
relies on the retractor blade in Figure 1 to evidence a skilled artisan knew to
make the blade non-segmented. Final Act. 4. We agree Figure 1 supports
this finding.
Appellant asserts next that the Examiner’s reliance on Funt is
misplaced. Appeal Br. 19. The Examiner finds Funt evidences a skilled
artisan knew “LEDs are autoclaveable, small enough to be mounted on a
retractor blade and do not give off a significant amount of heat.” Final Act.
6 (citing Funt || 13, 18). Given this knowledge, the Examiner determines it
would have been obvious to modify the lighting of Shin to use autoclaveable
LEDs “in order to provide a lighting which is sterilizable along with the
retractor blade itself as well as to provide lights which do not give off a
significant amount of heat thereby protecting surrounding tissue from
unintentional trauma.” Id. Appellant does not dispute Funt supports the
Examiner’s factual findings and reasoning, but instead argues Funt fails to
disclose other recited features for the retractor of claim 1. Appeal Br. 19.
Such individual attacks on a reference, when the conclusion of obviousness
is based on a combination of references, are unavailing, as noted above. We
do not find an error with the Examiner’s use of Funt.
Similarly, Appellant’s criticism of Ibrahim is not relevant to what the
Examiner relies on it to evidence. The Examiner finds Ibrahim shows a
skilled artisan understood configuring the LEDs to be flush with the upper
surface of a blade provides a smooth upper surface and determines such
artisans knew using this configuration with the Shin retractor would avoid
inadvertent interference with passing surgical tools and damage to the LEDs.
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Final Act. 6—7. Rather than providing any evidence or argument to cast any
doubt Ibrahim reflects this understanding and knowledge, Appellant simply
states, “Ibrahim fails to disclose autoclavability and fails to disclose a blade
joined at an angle of 55-85°.” Appeal Br. 19. This fails to apprise us of any
missteps with the Examiner’s use of Ibrahim, nor are any evident.
The Examiner relies on Houser to establish it was understood by
skilled artisans that texturing or roughening the lower surface of a retractor
blade serves to resist slipping and improves contact with tissue surface when
the blade is used to move tissue. Final Act. 7 (citing Houser H 51, 146,
150). The Examiner determines modifying the lower surface of the Shin
retractor blade to have texturing or roughening would have been an obvious
application of this knowledge because that surface is also used to move
tissue and it would improve the contact between the blade and the tissue
surface, as well as prevent unintentional slipping (or disengagement). Id.
Appellant challenges whether Houser evidences it was known to texture or
roughen the lower surface of the blade because, according to Appellant,
Houser actually teaches the upper surface of the blade feet are in contact
with the tissue. See Appeal Br. 20. We find the weight of the evidence
more persuasively favors the Examiner. For example, at paragraph 150,
Houser states, “[t]he feet and/or contacting surfaces may have the bottom,
tissue contacting surfaces, be textured, grooved, dimpled, a combination of
these, or other surface, to prevent slippage” (emphasis added).
Appellant makes arguments against Bayat and Hipps that are again
not commensurate with the Examiner’s rejection. Appellant attacks these
references as failing to disclose a retractor with a single blade, but do not
explain why this fact undermines the Examiner’s reliance on them. Bayat is
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relied upon to show it was previously known to make a retractor shaft with a
ribbed gripping surface to provide comfort and reduce mishandling. Final
Act. 7—8 (citing Bayat col. 2,11. 52—54, Figs. 3, 4). Hipps shows, the
Examiner finds, skilled artisans recognized a 60° angle between the shaft
and blade gives a retractor the combined benefit of mobility and the ability
to apply a retractive pulling force. Id. (citing Hipps col. 6,11. 24—27, Fig. 7).
Nothing about a single versus multiple blades appears to undermine the
Examiner’s findings regarding the information these references demonstrate
was within the knowledge base of a skilled artisan. Nor has Appellant
explained why it shows an error exists with the Examiner’s conclusion that
modifying the Shin retractor in the manner claim 1 recites would have been
an obvious application of this knowledge.
Finally, Appellant argues the Examiner’s reason for modifying Shin to
form the blade from an autoclaveable plastic in view of the teachings of Rao
lacks a rational underpinning. Appeal Br. 20—21. In particular, the
Examiner concludes,
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the material of the
blade of Shin to be made from ebonite (an autoclaveable plastic)
as taught by Rao in order to use a material with a lower
coefficient of thermal conductivity reducing any transmittal of
heat to the patient which prevents thermal damage to the tissue
being retracted as well as in order to use a material which allows
the light source to be molded therein- protecting the light source
from harm and damage, and since it has been held to be within
the general skill of a worker in the art to select a known material
on the basis of its suitability for the intended use as a matter of
obvious design choice.
Final Act. 9. Appellant asserts the need for a lower coefficient of thermal
conductivity is not a valid concern because LEDs produce little to no
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infrared heat. Appeal Br. 20-21. Although we appreciate Appellant’s
argument on this point, Appellant fails to address the Examiner’s alternative
reason for the modification — namely, “in order to use a material which
allows the light source to be molded therein- protecting the light source from
harm and damage.” Appellant does not apprise us of any error with this
rationale, which has a rational underpinning. See Rao col. 3,1. 60 — col. 4,1.
3. Furthermore, we agree with the Examiner this modification is within the
general skill of a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious design choice.
To summarize, we discern all of the elements of claim 1, used in
substantially the same manner, in devices in the same field of endeavor. The
various elements Examiner combined: the Shin surgical retractor; an angle
between the blade and the shaft within the range of 55—85 degrees; a ribbed
or roughened shaft gripping surface; an autoclaveable plastic blade, which is
opaque; a plurality of flush mounted autoclaveable LED lights; and a blade
with a roughened lower surface; are all shown in the cited references in
various subcombinations, used in the same way, for the same purpose as in
the claimed invention. The Examiner did not, as Appellant argues, pick and
choose among isolated and inapplicable disclosures in the prior art. Rather,
the claim elements appear in the prior art in the same configurations, serving
the same functions, to achieve the results suggested in prior art. Therefore,
we sustain the Examiner’s rejection of claim 1 and claims 2, 5, 6, 9
depending therefrom.
Rejections II and III— Claims 4 and 10
Regarding claims 4 and 10, Appellant simply repeats the same
arguments made for claim 1. Compare Appeal Br. 16—23, with 24-41.
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Those arguments remain unpersuasive for the same reasons discussed above
(see supra Rejection I). Therefore, we sustain the Examiner’s rejections of
claims 4 and 10.
Rejection IV— Claims 11 and 14
For claims 11 and 14, Appellant again repeats the same arguments
made for claim 1. Compare Appeal Br. 16—23, with 41—50. The arguments
remain unpersuasive for the same reasons discussed above (see supra
Rejection I). Although Appellant does argue additionally that Kleene and
Loubser fail to quality as prior art because they are directed to oral
applications (see Appeal Br. 46-47), we do not find this distinction
persuasive evidence that these references are non-analogous. We agree with
the Examiner that Kleene and Loubser both relate to medical devices that are
used to retract tissue during a medical procedure, which is within the same
field of endeavor as Appellant’s invention. See Ans. 34. Therefore, we also
sustain the Examiner’s rejection of claims 11 and 14.
Rejection V— Claims 16 and 17
Appellant argues for patentability of claims 16 and 17 together as a
group. Appeal Br. 57. Appellant does not separately argue for the
patentability of claim 17. See id. at 50-57. We select claim 16 as
representative, and claim 17 stands or falls with claim 16.
The Examiner’s obviousness determination of claims 16 relies on
Gelnett as the primary reference, rather than Shin as with claim 1.
Nevertheless, Appellant simply asserts, “Gelnett discloses a surgical
retractor system, but fails to explicitly mention or even hint at the use of
LEDs on a surgical retractor” (Appeal Br. 52), and, otherwise, repeats the
same arguments made for claim 1, as well as alleging Loubser “fails to even
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qualify as prior art in this proceeding” (Appeal Br. 53). Compare Appeal
Br. 50-57, with 16—23. Those arguments remain unpersuasive for the same
reasons discussed above (see supra Rejections I and IV). Therefore, we
sustain the Examiner’s rejection of claims 16 and 17.
DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4—6, 9—11,
14, 16, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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