Nico Corporation

Patent Trials and Appeals BoardNov 19, 2021

2021001969 (P.T.A.B. Nov. 19, 2021)

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. 15/684,712 08/23/2017 Joseph L. MARK NICO 0111 PUSA13 8232 22045 7590 11/19/2021 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER WEISBERG, AMY REGINA ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 11/19/2021 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH L. MARK and BRIAN C. DOUGHERTY Appeal 2021-001969 Application 15/684,712 Technology Center 3600 Before DANIEL S. SONG, STEFAN STAICOVICI, and ANNETTE R. REIMERS, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 49–64. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Nico Corporation. Appeal Br. 3. Appeal 2021-001969 Application 15/684,712 2 CLAIMED SUBJECT MATTER The claims are directed to surgical access assembly. Claim 49, reproduced below, is illustrative of the claimed subject matter: 49. A surgical access assembly, comprising an outer sheath defined by an open distal end and an open proximal end and including a hollow body portion therebetween; an obturator defined by a distal end and a proximal end, a body portion therebetween, and has a central channel formed within the body portion, wherein the distal end further comprises a tapered distal tip member that terminates in a closed radiused distal tip; a navigational probe configured to be coupled to a navigation system to indicate the position of the outer sheath when the obturator is in an introducing configuration, wherein the navigational probe is selectively seated within the central channel; and a locking member that is operatively connected to the proximal end of obturator, the locking member extending transversely through the proximal end of the obturator and into the central channel of the obturator to selectively engage the navigational probe to lock the navigational probe against movement and to lock the navigational probe to the obturator; wherein the obturator is configured to be received within the outer sheath such that the tapered distal tip member protrudes from the open distal end of the outer sheath when the obturator is in an introducing configuration. Appeal Br. 12 (Claims App.). OPINION The Examiner rejects claims 49–64 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Kahle (US 2005/0065543 A1, publ. Mar. 24, 2005). Final Act. 2. Appeal 2021-001969 Application 15/684,712 3 Independent Claim 49 As to independent claim 49, the Examiner finds that Kahle discloses the claimed surgical access assembly, including a laparoscope lock 40, which the Examiner finds as corresponding to the recited locking member. Final Act. 2–3. Specifically, the Examiner finds that “Kahle teaches as shown in figure 28 the locking member (the collet fingers for example shown transversely within the channel of the obturator) to engage the probe (laparoscope).” Final Act. 3. The Appellant argues, inter alia, that the laparoscope lock of Kahle relied upon by the Examiner allows the laproscope to rotate relative to the shaft of the obturator instead of being locked to the obturator as required by claim 49. Appeal Br. 7; see also Reply Br. 3. Indeed, in discussing Figure 28 relied upon by the Examiner, Kahle discloses that “[t]he laparoscope lock 40c is free to rotate on an obturator cap 42c, and allows the laparoscope to freely rotate relative to the shaft of the bladeless obturator.” Kahle ¶ 80. The Examiner does not dispute the Appellant’s characterization of Kahle’s disclosure, but instead, responds that the “Appellant is arguing features which are not claimed” in that claim 49 “merely recites the broad term movement.” Ans. 5. Specifically, the Examiner responds that the “Appellant appears to disclose the same arrangement as Kahle wherein the locking member prevents axial movement. Appellant does not disclose ‘movement’ also means rotational [movement] and furthermore, a set screw does not inherently prevent rotational movement.” Ans. 5. The Appellant has the better position, and we consider the Examiner’s interpretation of the claim to be unreasonably broad. As reproduced above, claim 49 recites that the locking member “selectively engage[s] the Appeal 2021-001969 Application 15/684,712 4 navigational probe to lock the navigational probe against movement and to lock the navigational probe to the obturator.” Appeal Br. 12 (Claim App.). Such claim language does not distinguish between axial locking and rotational locking, and the Specification does not provide a reasonable basis for such a distinction. The Specification simply discloses that when the locking member 110 is used, it engages the navigational probe to lock the probe “against movement,” i.e. any and all movement. Spec. ¶ 109 (“Locking member 110 may be tightened to fixedly retain navigation member 112 within obturator 102.”). While the Examiner may be correct that “a set screw does not inherently prevent rotational movement,” we fail to understand how a set screw would allow for rotational movement of the navigational probe if the set screw is utilized and tightened sufficiently to lock the navigational probe axially. Thus, we reverse the anticipation rejection of claim 49 and claims 50– 62 that ultimately depend from claim 49. See Appeal Br. 9 (relying on dependency for patentability of claims 50–62). The remaining arguments of the Appellant directed to claim 49, as well as to dependent claim 55, and the Examiner’s responses thereto, are moot. Independent Claim 63 Independent claim 63 recites a surgical access assembly “wherein the obturator further includes a grip member disposed at the proximal end and a stop member disposed distal to the grip member and proximal to the body portion,” and “the stop member preventing the grip member from coming into contact with the proximal end of the outer sheath so as to create a gap between the grip member and the proximal end of the outer sheath.” Appeal Appeal 2021-001969 Application 15/684,712 5 Br. 14–15 (Claims App.). The Examiner finds that Kahle discloses the claimed surgical access assembly, including an obturator with [a] stop member (distal part of handle that is wider) preventing the grip member (the narrowed proximal portion see figure 11 for example) from coming into contact with the proximal end of the outer sheath so as to create a gap between the grip member and the proximal end of the outer sheath. Final Act. 6. The Appellant argues, inter alia, that “no ‘gap’ is formed between the grip member and the proximal end of the outer sheath.” Appeal Br. 8. The Examiner responds by providing further annotated figures of Kahle that identify what the Examiner considers to be a “grip” and a “stop” in the device of Kahle, and asserts that there is “a gap between the grip member and the proximal end of the outer sheath.” Ans. 6–7. Oddly, the Examiner does not annotate the gap or explain where the recited gap is found in Kahle, or how such a gap is created by the stop member. The Appellant is correct in its reply that “[n]either annotated drawing illustrates the claimed ‘gap,’” and that “no location is provided [by the Examiner], nor is any explanation [given].” Reply Br. 4, 5. It is not apparent to us what the Examiner considers to be the recited “gap” in Kahle, and how a gap is created by the stop member identified by the Examiner. Accordingly, we reverse the anticipation rejection of claim 63 and claim 64, which depends therefrom. See Appeal Br. 9 (relying on dependency for patentability of claim 64). The remaining arguments of the Appellant directed to claim 63, as well as to the limitations of dependent claim 64, and the Examiner’s responses thereto, are moot. Appeal 2021-001969 Application 15/684,712 6 CONCLUSION The Examiner’s anticipation rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 49–64 102(b) Kahle 49–64 REVERSED