Ex Parte WanDownload PDFPatent Trial and Appeal BoardDec 28, 201713362029 (P.T.A.B. Dec. 28, 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. 13/362,029 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 bvg @ kcpatentlaw. com 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 2 Appeal 2016-000927 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). 3 Appeal 2016-000927 Application 13/362,029 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, 4 Appeal 2016-000927 Application 13/362,029 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. 5 Appeal 2016-000927 Application 13/362,029 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 6 Appeal 2016-000927 Application 13/362,029 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. 7 Appeal 2016-000927 Application 13/362,029 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 8 Appeal 2016-000927 Application 13/362,029 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 9 Appeal 2016-000927 Application 13/362,029 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. 10 Appeal 2016-000927 Application 13/362,029 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 11 Appeal 2016-000927 Application 13/362,029 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 12 Copy with citationCopy as parenthetical citation