Ex Parte Zapata

Patent Trial and Appeal BoardMay 15, 2013

11695173 (P.T.A.B. May. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte HELIO ZAPATA __________ Appeal 2011-011205 Application 11/695,173 Technology Center 3700 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an abdominal insufflator and/or trocar. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1-14 and 16-21 are pending and on appeal (App. Br. 2). Claims 1, 10, and 17 are independent and are set forth in the Claims Appendix to the Appeal Brief (id. at 10-12). Claim 1 is illustrative and reads as follows: 1. An abdominal insufflator, comprising Appeal 2011-011205 Application 11/695,173 2 a. an elongated, hollow cannula having an outer wall, an inclined tip at one end and an open opposite end, b. a solid plunger shaped to be engaged in and co-extensive with said cannula, said plunger having an inclined tip at one end and an engagement end shaped to conform to said open opposite end of said cannula so that, when said plunger is fully engaged in said cannula, said tips form a unitary inclined tip and said engagement end is seated in said open opposite end, c. a system for aligning said plunger when engaged within said cannula, and d. an external insertion thread formed on said outer wall of said cannula extending from proximate said tip. Claims 1-3, 5-12, and 16-18 stand rejected under 35 U.S.C. § 103(a) as obvious over Haberland et al. (US 7,153,319 B1, Dec. 26, 2006) (Ans. 3). Claims 4, 14, and 19-21 stand rejected under 35 U.S.C. § 103(a) as obvious over Haberland in view of Henriques de Gatztañondo (US 3,993,079, Nov. 23, 1976) (Ans. 5). Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over Haberland in view of Dunlap et al. (US 5,941,852, Aug. 24, 1999) (Ans. 5). I The Examiner relies on Haberland for disclosing an elongated hollow cannula 30 having an outer wall 31 an inclined tip 32 and an open opposite end 63, a solid plunger 40 having an inclined tip 42 and an engagement end (area of 44 under 54), a system 50 for aligning the plunger when engaged with the cannula, and an external insertion thread 27 formed on the outer wall of the cannula. (Ans. 3.) The Examiner finds that the “threads 27 of Haberland do not extend from proximate said tip” (id.). However, the Examiner concludes that “[m]erely extending the thread of Haberland would be obvious to a person skilled in the art” (id. at 3-4). Appeal 2011-011205 Application 11/695,173 3 Analysis Claim 1, as well as claims 10 and 17, recites: said plunger having an inclined tip at one end and an engagement end shaped to conform to said open opposite end of said cannula so that, when said plunger is fully engaged in said cannula, said tips form a unitary inclined tip and said engagement end is seated in said open opposite end. Appellant argues that “Haberland does not teach a unitary inclined tip when the plunger is seated in the cannula” (App. Br. 8). In response, the Examiner finds: First, “fully engaged” is a broad term. At the time when the plunger 40 is first inserted into the opening in the cannula 30, the examiner interprets this to be full engagement of the plunger in the cannula. Nothing else can or will be engaged with the cannula after that point. Then, as the solid plunger 40 is moved toward the tissue, there is a point in time when the tips form a unitary inclined tip due to the same incline of 32 and 42, Fig. 1. (Ans. 6-7.) We are not persuaded. First, we do not agree with the Examiner’s interpretation of “fully engaged.” The independent claims clearly recite that, when the plunger is fully engaged in the cannula, the tips form a unitary inclined tip and the engagement end of the plunger is seated in the open opposite end of the cannula. Thus, in the context of the present claims, we interpret the term “fully engaged” to require that the engagement end of the plunger be seated in the open opposite end of the cannula. We agree with the Examiner that Haberland’s opening 63 can be considered the open opposite end and that Haberland’s proximal end portion 44 under distal handle end portion 54 can be considered the engagement end (Ans. 3). However, at the time when Haberland’s Appeal 2011-011205 Application 11/695,173 4 plunger 40 is first inserted into the opening in the cannula 30, we do not agree that Haberland’s proximal end portion 44 is seated in Haberland’s opening 63. In addition, we agree with Appellant that the Examiner has not set forth a prima facie case that Haberland discloses or suggests that the tips form a unitary inclined tip when the engagement end of the plunger is seated in the open opposite end of the cannula. The Examiner relies on Haberland Figure 1 to disclose this (Ans. 6). However, patent drawings are not necessarily intended to show accurate relative dimensions and “arguments based on mere measurement of the drawings [are] of little value.” In re Chitayat, 408 F.2d 475, 478 (CCPA 1969). Moreover, we do not agree with the Examiner that Haberland’s Figure 1 clearly shows that tips 32 and 42 have the same incline, much less that they would line up to form a unitary inclined tip when the engagement end of the plunger is seated in the open opposite end of the cannula. Conclusion The Examiner has not set forth a prima facie case that Haberland suggests the devices of claims 1, 10, and 17. We therefore reverse the obviousness rejection of claims 1, 10, and 17 and of claims 2, 3, 5-9, 11, 12, 16, and 18, which depend from claims 1, 10, or 17. II In rejecting claims 4, 13, 14, and 19-21, which depend from claims 1, 10, or 17, the Examiner additionally relies on Henriques de Gatztañondo or Dunlap (Ans. 5). However, the Examiner does not explain how either of these references overcomes the deficiencies in Haberland discussed above Appeal 2011-011205 Application 11/695,173 5 (id.). Therefore, we conclude that the Examiner has not set forth a prima facie case that claims 4, 13, 14, and 19-21 would have been obvious. Thus, we also reverse the obviousness rejections of these claims. REVERSED cdc