Hock Lim. Tan et al.

Patent Trials and Appeals Board

Sep 3, 2019

13485555 - (D) (P.T.A.B. Sep. 3, 2019)

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.
13/485,555 05/31/2012 Hock Lim Tan 02581-P1510C 5308
154825 7590 09/03/2019
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
IGBOKO, CHIMA U
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
patent@karlstorz.com
uspto@whipgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOCK LIM TAN, MARTIN OBERLAENDER,
and ALEXANDER FUCHS
____________

Appeal 2018-0005831
Application 13/485,5552
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on August 7, 2019.
We AFFIRM-IN-PART.

1 Our Decision references the Appeal Brief (“Appeal Br.,” filed May 23,
2017), the Reply Brief (“Reply Br.,” filed Oct. 23, 2017), the Examiner’s
Answer (“Ans.,” mailed Aug. 22, 2017), the Final Office Action (“Final
Act.,” mailed Dec. 30, 2016), and the Specification (“Spec.” filed May 31,
2012).
2 According to Appellants, the real party in interest is Karl Storz GmbH &
Co. KG. Appeal Br. 2.
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BACKGROUND
The Specification discloses:
The invention relates to a trocar sleeve for minimally invasive
surgery, having a first sleeve part that essentially has the form of
a straight tubular piece with a longitudinal axis, and having a
second sleeve part that at least partly surrounds the first sleeve
part in close contiguity with it and is movable during use in
relation to the first sleeve part.
Spec. ¶ 2.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A trocar assembly for minimally invasive surgery,
comprising
a first sleeve part, which has essentially the shape of a
straight tubular piece with a longitudinal axis, and
a second sleeve part, which at least partly surrounds the
first sleeve part and is rotatable around the first sleeve part,
wherein the first sleeve part and the second sleeve part
each comprise on their axial ends a flange part that extends
radially outward at an angle of less than 180 degrees from the
respective sleeve part.
Appeal Br. 12.
REJECTIONS
1. The Examiner rejects claims 1–7, 10–13, 17, and 21 under 35 U.S.C.
§ 102(b) as anticipated by Hanypsiak.3
2. The Examiner rejects claims 1, 17, and 18 under 35 U.S.C. § 102(b) as
anticipated by Aboul-Hosn.4

3 Hanypsiak et al., US 2008/0242930 A1, pub. Oct. 2, 2008.
4 Aboul-Hosn, US 6,228,063 B1, iss. May 8, 2001.
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3. The Examiner rejects claims 1 and 7–9 under 35 U.S.C. § 102(e) as
anticipated by Mire.5
4. The Examiner rejects claims 14, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Hanypsiak in view of Buser.6
5. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Hanypsiak in view of Semm.7
6. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Mire in view of Levine.8
DISCUSSION
Rejection 1
We find reversible error in the rejection of claim 1 as anticipated by
Hanypsiak. The Examiner finds that Hanypsiak discloses a first sleeve
part 556 with a flange part 570 “that extends radially outward at an angle of
less than 180 degrees from the respective sleeve part,” as required by
claim 1. As noted by Appellants, element 570 is a shoulder of recess 562 on
the inner member of Hanypsiak’s device. Appeal Br. 6 (citing Hanypsiak
¶ 122); see also Reply Br. 4. The claim requires that the flange part extend
“outward” from the sleeve part. The Examiner does not explain adequately
why a shoulder of a recess, which extends inward from the perimeter of
element 556 would be considered a flange part that extends outward from
element 556. Thus, the Examiner has not established that claim 1 is
anticipated by Hanypsiak.

5 Mire et al., US 2012/0010471 A1, pub. Jan. 12, 2012.
6 Buser et al., US 2006/0276818 A1, pub. Dec. 7, 2006
7 Semm, US 5,261,888, iss. Nov. 16, 1993.
8 Levine et al., US 2009/0024089 A1, pub. Jan. 22, 2009.
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Accordingly, we do not sustain the rejection of claim 1 as anticipated
by Hanypsiak. For the same reasons, we do not sustain the rejection of
dependent claims 2–7, 10–13, 17, and 21 as anticipated by Hanypsiak.
Rejection 2
With respect to claim 1, the Examiner finds that Aboul-Hosn discloses
a trocar assembly with a first sleeve part 72, a second sleeve part 13
surrounding the first sleeve part, and flange parts 73, 18 on the first and
second sleeve parts. Final Act. 7 (citing Aboul-Hosn Figs. 1, 2B). The
Examiner also finds that “flange parts as depicted on the proximal end”
extend outward from the sleeves at an angle of less than 180 degrees. Id.
at 7–8 (citing Aboul-Hosn Fig. 2A).
As discussed below, we are not persuaded of reversible error in this
rejection by Appellants’ arguments.
Appellants argue that “Aboul-Hosn’s knob and housing extend on
opposite sides – a full 360 degrees from the penetrating member and
cylindrical element,” and thus, “they also cannot be said to extend radially
outward at an angle of less than 180 degrees, as claimed.” Appeal Br. 7
(emphasis omitted). Related to this point, Appellants argue that the
Examiner has applied an unreasonable interpretation of the claim by finding
that the claim requires that the angle between the flange and the longitudinal
axis is less than 180 degrees, whereas “what has been claimed are flanges
extending radially outward at an angle of less than 180 degrees.” Id. at 9–
10.
We are not persuaded of error. Regarding the broadest reasonable
interpretation of the claim, we agree with the Examiner. The Examiner finds
that the claimed “a flange part that extends radially outward at an angle of
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less than 180 degrees from the respective sleeve part” should be interpreted
“as a flange extending in any radial direction away from a sleeve in which
the angle measurement between said flange and longitudinal axis is less than
180 degrees.” Ans. 2–3; see also Final Act. 5. We find the Examiner’s
interpretation reasonable given the plain meaning of the wording of the
claim. In particular, one of ordinary skill in the art may reasonably
understand that the claimed “angle of less than 180” degrees refers to the
angle at which the flange part extends from the sleeve and not a degree of
circumferential coverage of the flange around the sleeve. Further, we find
the Examiner’s interpretation is consistent with the Specification. Although
the Specification discloses flanges that extend about less than 180 degrees of
the sleeve’s circumference, the angle between the flange part and the
longitudinal axis of each sleeve part is also less than 180 degrees. See, e.g.,
Figs. 1, 2. The Specification also describes that the flange “runs radially
outward and thus protrudes at a right angle,” which is less than 180 degrees.
Spec. ¶ 73. And where the specific language of the claim is used in the
Specification, no further explanation regarding this language is provided.
See Spec. ¶¶ 9, 68.
Based on this broadest reasonable interpretation of the claim, we
agree with the Examiner that the identified first and second flange parts (73,
18) extend radially outward at angles of less than 180 degrees from the
longitudinal axis of their respective sleeve. See Aboul-Hosn Fig. 1.
Appellants also indicate that “Aboul-Hosn’s proximal knob 73 and
cylindrical element [18] are not even flanges as claimed.” Appeal Br. 8; see
also Reply Br. 4. We are not persuaded because Appellants do not explain
adequately why the identified structures of Aboul-Hosn may not be
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considered flanges. We agree with the Examiner that the identified
structures may be considered flanges under the broadest reasonable
interpretation of the claim. We find that neither the Specification nor the
claims on appeal provide an express definition of what a flange is or any
indication that it should be interpreted in a manner that is not consistent with
its plain and ordinary meaning. The Specification also indicates that a
flange may be something more than the flanges identified in the specific
embodiments of Appellants’ disclosure. In particular, the Specification
identifies prior art with “a flexible ring-shaped flange.” Spec. ¶ 3. Thus, we
find that the term flange should be interpreted according to its plain and
ordinary meaning, which is “a rib or rim for strength, for guiding, or for
attachment to another object.” Merriam-Webster, https://www.merriam-
webster.com/dictionary/flange (last visited Aug. 5, 2019). Under this
interpretation of the claim, we see no error in the Examiner’s identification
of elements 73 and 18 as flanges.
Finally, Appellants generally argue that none of the cited references
disclose flanges that rotate relative to each other. Reply Br. 2. However,
Appellants do not provide an explanation as to how this argument is related
to the anticipation of claim 1 by Aboul-Hosn. See Reply Br. 2–5.
Appellants merely appear to reiterate the arguments discussed above with
respect to Aboul-Hosn.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1 as anticipated by Aboul-Hosn. Accordingly, we sustain the
rejection of claim 1 here. Appellants do not provide separate arguments
regarding the rejection of dependent claims 17 and 18. Thus, we also sustain
the rejection of claims 17 and 18 as anticipated by Aboul-Hosn.
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Rejection 3
With respect to claim 1, the Examiner finds that Mire discloses a
trocar assembly with a first sleeve part 104, 106, a second sleeve part 54
surrounding the first sleeve part, and flange parts 108 and 80 on the first and
second sleeve parts. Final Act. 8–9 (citing Mire Figs. 4, 9–11). The
Examiner also finds that Mire’s flange parts extend radially outward at an
angel of less than 180 degrees from the sleeve parts. Id. at 9.
As discussed below, we are not persuaded of reversible error in this
rejection by Appellants’ arguments.
Appellants argue that Mire’s blades 108 extend around 360 degrees
from the retractor 100. Appeal Br. 7. Appellants’ argument is not
persuasive for the reason discussed above regarding the proper interpretation
of the claimed angle. Further, even if we were to agree with Appellants’
interpretation of the claim regarding the angle of less than 180 degrees, it
appears that each fanned blade 108 in Mire may be considered an individual
flange that extends less than 180 degrees around the circumference of the
identified first sleeve 106.
Appellants also argue that “Mire’s dilator 50 cannot be said to rotate
in relation to its retractor 100.” Appeal Br. 7 (emphasis omitted). We
disagree. Mire’s Figures 10 and 11 clearly show the identified second sleeve
portion 54 rotating around the identified first sleeve portion 106. Appellants
do not adequately explain why this is not the case.
Finally, as noted above, Appellants generally argue that none of the
cited references disclose flanges that rotate relative to each other. Reply Br.
2. Appellants do not specifically explain how this argument is related to the
rejection over Mire. Appellants do assert that “Mire’s retractor 100 has
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‘fanned blades’ that prevent any rotation.” Id. at 6 (citing Mire ¶¶ 34, 39).
However, claim 1 requires only that the second sleeve part “partly surrounds
the first sleeve part and is rotatable around the first sleeve part.” The
Examiner relies on element 54 as the second sleeve part, and as discussed
above, this sleeve does rotate relative to element 106. Thus, we are not
persuaded of error.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1 as anticipated by Mire. Accordingly, we sustain the rejection of
claim 1 here. Appellants do not provide separate arguments regarding the
rejection of dependent claims 7–9. Thus, for the same reasons, we also
sustain the rejection of claims 7–9.
Rejections 4 and 5
The rejections of claims 14, 15, 19, and 20 do not cure the deficiency
in the rejection of claim 1 as anticipated by Hanypsiak. Accordingly, for the
reasons discussed, we also do not sustain the rejection of claims 14, 15, 19,
and 20 as obvious over either combination of art including Hanypsiak.
Rejection 6
Appellants do not separately address the rejection of claim 16 over
Mire in view of Levine. Thus, for the reasons discussed, we also sustain the
rejection of claim 16 as obvious over Mire in view of Levine.
CONCLUSION
We REVERSE the rejection of claims 1–7, 10–13, 17, and 21 under
35 U.S.C. § 102(b) as anticipated by Hanypsiak.
We AFFIRM the rejection of claims 1, 17, and 18 under 35 U.S.C.
§ 102(b) as anticipated by Aboul-Hosn.
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We AFFIRM the rejection of claims 1 and 7–9 under 35 U.S.C.
§ 102(b) as anticipated by Mire.
We REVERSE the rejection of claims 14, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Hanypsiak in view of Buser.
We REVERSE the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Hanypsiak in view of Semm.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Mire in view of Levine.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART