Ex Parte Young et al

Patent Trials and Appeals Board

Feb 15, 2019

13697591 - (D) (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/697,591
48003 7590
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
12/05/2012
02/15/2019
FIRST NAMED INVENTOR
Peter Young
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.
10703/306
(PA-6958-PCT/US
9765
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
02/15/2019 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 PETER YOUNG
and PARVEZ MOONDI 1
Appeal2018-004775
Application 13/697,591
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1 and 5-10. Claims 2--4 are cancelled and claims
11-20 are withdrawn. See Br. 19, 20 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Cook Medical Technologies LLC is identified as the real party in interest.
Br. 3.
Appeal2018-004775
Application 13/697,591
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A dilating device for providing access through
body tissue to a body cavity for insertion of a tubular member
therein, comprising:
a pair of elongated members pivotally joined to each
other along a length of each of said elongated members, each
elongated member having a pivot point for joinder to the other
elongated member, a proximal end accessible to an operator
during use of said dilating device, and a distal end for insertion
through said tissue, each distal end terminating at a
substantially blunt distal tip, said respective distal ends movable
between a closed position wherein said distal ends are at least
substantially contiguous to each other, and an open position
wherein said distal ends are separable for dilating said tissue, at
least one of said elongated members having a channel
extending through a length thereof, said channel having an
entry opening, and having an exit opening distal of said entry
opening along the length of said at least one elongated member,
wherein said channel is configured to allow a wire to pass into
the entry opening, through the channel, and out of the exit
opening, wherein said distal tips of said distal ends of said
elongated members are configured for blunt dissection of tissue
of an intercostal space into a pleural cavity without causing
injury to underlying structures including a heart, lung and liver,
wherein said entry opening is proximal of said pivot
point along said length, and said exit opening is distal of said
pivot point along said length of said at least one elongated
member and at said distal tip of said elongated member, and
wherein said exit opening is disposed at a central portion
of said distal tip of said elongated member.
Br. 19 (Claims App.).
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Appeal2018-004775
Application 13/697,591
REJECTIONS
Claims 1 and 5-10 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Uwaydah (EP O 792 621 Al, pub. Sept. 3, 1997) and
Burbank (US 2003/0191391 Al, pub. Oct. 9, 2003).
Claims 1 and 5-10 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Levin (US 6,001,120, iss. Dec. 14, 1999), Uwaydah, and
Burbank.
Claims 1 and 5-10 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Bertolero (US 6,309,349 Bl, iss. Oct. 30, 2001),
Uwaydah, and Burbank.
ANALYSIS
Claims 1 and 5-10 Unpatentable Over Uwaydah and Burbank
Appellants argue claims 1 and 5-10 as a group. Br. 8-18. We select
claim 1 as representative, with claims 5-10 standing or falling with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Uwaydah teaches a
dilating device with pivotally attached elongated members 6 that terminate
at substantially blunt distal tips and include channels 1 Oa, 1 Ob that extend
the length of the elongated members 6 between exit and entry openings 12a,
12b, 14a, 14b, but Uwaydah lacks exit openings at the distal tip of each
elongated member as recited in claim 1. Final Act. 4--5. The Examiner
relies on Burbank to teach a similar device with elongated members that
include channels 120, 122 along their lengths and exit opening 126 located
at a distal end of each member. Id. at 5. The Examiner reasons that it would
have been obvious to a person of ordinary skill in the art to form the exit
openings ofUwaydah at the distal tips, as taught by Burbank, to accurately
guide the needle out of the elongated member. Id.
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Appeal2018-004775
Application 13/697,591
The Examiner finds that Uwaydah disposes channels centrally through
elongated members, and Burbank disposes channel exit openings at a distal
tip of each elongated member so "by modifying the channels ofUwaydah to
continue to extend to the distal tip, as taught by Burbank, the centrally
extending channels ofUwaydah would include exit openings disposed at a
central portion of the distal tip of each elongated member." Ans. 3.
Appellants argue that neither reference teaches a dilating device with
an exit opening disposed at a central portion of the distal tip of an elongated
member as claimed. Br. 9. Appellants argue that Burbank positions a guide
channel distal opening 126 at an outer edge of the end face 144 of the distal
tip of the elongated members rather than at a central portion as claimed. Id.
at 10. Appellants argue that modifying Burbank to locate its guide channel
openings at the central portion of the end faces would render the device
inoperative because it would place the distal opening in alignment with the
uterine artery and block a suture from passing between the two end faces.
Id. at 11-12, 13. Appellants also argue that Burbank, therefore, teaches
away from the guide channel distal opening being at the central portion of
the end face as claimed. Id. at 11.
These arguments are not persuasive because they do not address the
rejection of the Examiner as set forth in the Final Office Action and Answer.
The Examiner is not modifying Burbank or its channels and distal openings.
Rather, the Examiner is modifying the channels in the elongated members of
the dilating device ofUwaydah based on teachings of Burbank to extend the
channels so the distal openings are positioned on end faces of the elongated
members, that is, are positioned on a central portion of the distal tip of each
ofUwaydah's elongated members 6. Final Act. 5; Ans. 3.
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Appeal2018-004775
Application 13/697,591
The Examiner does not propose to reposition the distal openings of
the channels of Burbank's device to the central portions of the end faces of
Burbank's device. Br. 11. The Examiner proposes to extend the centrally-
located channels 1 Oa, 1 Ob that extend through each elongated member 6 of
Uwaydah to the end faces, as Burbank teaches to do, "to provide means to
accurately guide the needle out of the elongated member." Final Act. 5.
The Examiner correctly finds that the channels in Uwaydah's elongated
members are centrally-located in each member. See Uwaydah, Fig. 3. The
Examiner correctly reasons that extending those central channels to the end
faces of each elongated member would result in the distal openings of the
channels being located in the central portions of each end face. Ans. 3-5
("With this modification, the channels would continue to extend along the
central portion of the elongated members, as taught by Uwaydah, and would
terminate at the distal tip, as taught by Burbank."); Final Act. 14--15.
The Examiner reasonably determines that extending the channels of
Uwaydah's elongated members to the distal end faces, as taught by Burbank,
would improve Uwaydah by providing a means to accurately guide a needle
out of each elongated member. Id. at 5; Ans. 3. The Examiner's rationale is
supported by the teachings of Burbank that a suture leader can be pushed
through one guide channel 112 and out distal opening 126 in a face of the
distal tip into distal port 130 of the guide channel 114 of the other elongated
member. Burbank ,r 32. Moreover, Figure 1 ofUwaydah is exemplary of an
exit port 14a of channel 1 Oa of elongated member 6a disposed in a central
portion of distal tip clamping surface 8a in alignment with entrance port 12b
of distal tip clamping surface 8b of elongated member 6b. See Uwaydah
,r 32 (disclosing that Figs. 1-3 illustrate an embodiment of the apparatus).
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Appeal2018-004775
Application 13/697,591
Finally, Appellants argue that the Declaration of Peter Young, M.D.
("the Young Declaration") provides evidence of praise by others for the
claimed device, and the Examiner did not consider this evidence in reaching
the obviousness determination. Br. 13. Appellants argue that this evidence,
which includes an award of Highly Commended Runner-Up, weighs against
a determination that claim 1 is obvious. Id. at 14. Appellants argue that the
Association of Anaesthetists of Great Britain and Ireland (AAGBI) scored
their invention so highly "due to its innovative and original design of the
dissecting forceps incorporating a channel for a guide wire." Id. (quoting
letter of Dr. Bernard Liban on behalf of the AAGBI with emphasis added).
In response, the Examiner finds that a nexus is lacking between the
evidence of praise by others and the claimed device. Ans. 5. In particular,
the Examiner finds that the secondary evidence of praise by others is not
coextensive with the claims at issue. Id. We agree.
"For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention." In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) ( citation omitted). If a secondary consideration
results from something other than what is claimed and novel in the claim,
there is no nexus to the merits of the claimed invention. Id.; see also Takai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) ("If
commercial success is due to an element in the prior art, no nexus exists.");
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)
("[I]f the feature that creates the commercial success was known in the prior
art, the success is not pertinent.").
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Appeal2018-004775
Application 13/697,591
Here, the alleged "novel" feature of the claimed device is an exit
opening "disposed at a central portion of said distal tip of said elongated
member." However, the industry praise relates to channels in the elongated
members of the forceps. Dr. Young cites Dr. Liban's letter as evidence.
Young Deel. ,r 29. Dr. Li ban praised "the innovative and original design of
the dissecting forceps incorporating a channel for a guide wire." Id. at Ex. 4.
Appellants' application to the AAGBI described their invention as "specially
designed forceps with integrated channel." Id. at Ex. 3. Dr. Young declared
that industry praise is for "at least one of said elongated members ... having
a channel extending through the length thereof, said channel having an entry
opening, and having an exit opening distal of said entry opening." Id. ,r 31.
Uwaydah and Burbank disclose such channels in elongated members
of forceps. Thus, no nexus has been shown between the industry praise and
the merits of the claimed invention, i.e., an exit opening disposed at a central
portion of the distal tip of the elongated member. See Bosch Auto. Serv.
Solutions, LLC v. Mata!, 878 F.3d 1027, 1038 (Fed. Cir. 2017) (holding that
patentee's evidence did not establish that the tools receiving awards from an
industry magazine embodied the claimed subject matter); Asyst Techs., Inc.
v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (holding that evidence
of long-felt need and industry praise were not attributable to the inventive
feature, i.e., to the substitution of a multiplexer for a bus, which was the only
material difference between the prior art and the patented invention). In
addition, Figure 1 ofUwaydah discloses this feature. See In re Aslanian,
590 F.2d 911, 914 (CCPA 1979) (holding that drawings in a utility patent
can be cited against claims of a utility patent application including features
in the drawing that are unexplained in the specification of the reference).
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Appeal2018-004775
Application 13/697,591
Even if a nexus existed between the industry praise and the claimed
invention, the evidence would not overcome the strong case of obviousness
where the prior art discloses every feature of the claimed dilator. Rothman
v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) (holding that a strong
obviousness showing may stand even in the face of considerable secondary
considerations evidence); see also Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010) ("secondary considerations ofnonobviousness .. .
simply cannot overcome a strong prima facie case of obviousness .... where
the inventions represented no more than 'the predictable use of prior art
elements according to their established functions,' KSR, 550 U.S. at 417 ... ,
the secondary considerations are inadequate to establish nonobviousness as a
matter of law."); Asyst Techs., 544 F.3d at 1316 (holding that the secondary
consideration evidence did not overcome the strong case of obviousness in
the substitution of a multiplexer, a known alternative to Hesser's bus that
operates in a well-known manner); Agrizap, Inc. v. Woodstream Corp., 520
F.3d 1337, 1344 (Fed. Cir. 2008) (holding that the objective evidence of
nonobviousness cannot overcome a strong prima facie case of obviousness).
Thus, we sustain the rejection of claims 1 and 5-10.
Claims 1 and 5-10 Unpatentable Over Levin, Uwaydah, and Burbank
The Examiner relies on Levin to teach a dilating device and Uwaydah
and Burbank to teach channels extending through the elongated members to
exit openings as for the previous rejection. Final Act. 6-8. Appellants argue
that Levin does not disclose a channel extending through elongated members
or an exit opening at a central portion of a distal tip of the elongated member
and therefore Levin does not cure the deficiencies ofUwaydah and Burbank
in this regard for claim 1. Br. 16.
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Appeal2018-004775
Application 13/697,591
Because we sustain the rejection of claim 1 as unpatentable over
Uwaydah and Burbank, there is no such deficiency for Levin to remedy.
Thus, we also sustain the rejection of claims 1 and 5-10 as unpatentable
over Levin, Uwaydah, and Burbank.
Claims 1 and 5-10 Unpatentable Over Bertolero, Uwaydah, and Burbank
The Examiner relies on Bertolero to teach a dilating device and
Uwaydah and Burbank to teach channels extending through the elongated
members to exit openings. Final Act. 10-12. Appellants argue that
Bertolero does not disclose a channel extending through elongated members
or an exit opening at a central portion of a distal tip of the elongated member
and therefore Bertolero does not cure the deficiencies ofUwaydah and
Burbank in this regard for claim 1. Br. 16.
Because we sustain the rejection of claim 1 as unpatentable over
Uwaydah and Burbank, there is no such deficiency for Bertolero to remedy.
Thus, we also sustain the rejection of claims 1 and 5-10 as unpatentable
over Bertolero, Uwaydah, and Burbank.
DECISION
We affirm the prior art rejections of claims 1 and 5-10.
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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