Ex Parte Cohn

Patent Trial and Appeal Board

Mar 21, 2017

11915538 (P.T.A.B. Mar. 21, 2017)

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.
11/915,538 11/26/2007 William E. Cohn 1441-04300 6613
23505 7590
CONLEY ROSE, P.C.
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
EXAMINER
DAVID, SHAUN L
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM E. COHN
Appeal 2015-006028
Application 11/915,538
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—35. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-006028
Application 11/915,538
CLAIMED SUBJECT MATTER
Claims 1, 11, 19, 24, 29, and 34 are independent. Claim 1 is
reproduced below.
1. A surgical attaching system for joining a tubular
prosthesis to a wall of a native vessel of an animate body,
comprising: a tubular prosthesis suitable for joining to said wall
of said vessel; at least two jaws carried by a first handle, said
tubular prosthesis being secured to said at least two jaws; and
an anvil mounted to a second handle, said anvil mounted so as
to be moveable through said tubular prosthesis, wherein said
first and second handles are configured to operate independent
of each other.
REJECTIONS1
Claims 1—9 and 11—35 are rejected under 35 U.S.C. § 102(b) as
anticipated by Vargas (US 6,391,038 B2, iss. May 21, 2002).2
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vargas.
ANALYSIS
Claims 1—9 and 11—35 as anticipated by Vargas
Claims 1—9 and 11—34
Appellant argues claims 1—9 and 11—34 as a group. Appeal Br. 12—
14. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 2—9 and 11—34 stand or fall with claim 1. The first issue for our
consideration is whether Vargas discloses “a first handle” for the jaws.
1 The Examiner withdrew the rejection of claim 35 under 35 U.S.C. § 112,
second paragraph, after Appellant amended claim 35. See Ans. 2.
2 Although claim 35 is not listed in the caption of this rejection, the rejection
includes the Examiner’s findings for claim 35. Final Act. 5, 15; see Ans. 3.
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Appeal 2015-006028
Application 11/915,538
The Examiner finds that Vargas discloses an alternate embodiment in
which at least two jaws 40 are carried by a first handle. Final Act. 3 (citing
Vargas, 4:52—55); Ans. 4—5. The Examiner finds that the “separate device”
corresponds to the claimed first handle that carries the jaws because Vargas
discloses that “the staples 22 are inserted through the tissue ... by pivoting
the arms 40 of the staple holder 38 towards the anvil arm 14.” Ans. 5
(quoting Vargas, 4:58—60). The Examiner also finds that a user’s ability to
operate the device in this manner and pivot arms 40 to staple tissue to anvil
arm 14 requires a handle that allows a user to manipulate pivot arms 40. Id.
Appellant argues that Vargas does not disclose arms 40 carried by a
handle that are separate and distinct from handle 12 that is mounted to anvil
arm 14, as claimed, and Vargas does not describe how pivoting arms 40 are
connected to a separate device or what the separate device may be. Appeal
Br. 13. Appellant also argues that even if the “separate device” is used to
effect pivoting of arms 40, there is no evidence that the “separate device”
must have a handle to allow a surgeon to manipulate the arms. Reply Br. 2.
Appellant contends that a dictionary definition of “handle” includes “a part
that is designed especially to be grasped by the hand or that may be grasped
by the hand” and Vargas does not require a separate handle inherently. Id.
Appellant’s arguments are not persuasive for the following reasons.
First, Vargas expressly teaches a “separate device” that can be used to carry
pivoting arms 40 instead of connecting pivoting arms to handle 12 as shown
in Figure 5 of Vargas. Vargas, 4:52—55. Appellant appears to recognize that
the device is “separate” from handle 12. Reply Br. 2; Appeal Br. 13. The
issue then is whether this “separate device” corresponds to the claimed
“handle.”
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Appeal 2015-006028
Application 11/915,538
The prior art does not have to disclose a claimed invention ipsissimis
verbis by using the same terms to anticipate the claims. Vargas discloses
that arms 40 are connected pivotally to handle 12, which also supports anvil
14. Vargas, 4:52—53. Vargas discloses that “pivoting arms 40 of the staple
holder may be connected to a separate device.” Id. at 4:54—55. Vargas does
not disclose that pivoting arms 40 operate differently on a separate device.
We agree with the Examiner that Vargas discloses that pivoting arms
40 may be connected pivotally to another separate device. This arrangement
follows from Vargas’s disclosure that pivoting arms 40 pivot to drive staples
from staple holder 38 into graft vessel 32 and target vessel 30 as illustrated
in Figures 5 and 6 of Vargas, which are reproduced below. Id. at 4:54—67.
Figure 5 shows staples being applied to attach graft vessel 32 to target
vessel 30. Figure 6 shows a completed anastomosis. Id. at 3:1—5. Vargas
discloses that anvil arm 14 (not shown) is inserted into target vessel 30 and
pulled upwardly to “tent” vessel 30. Id. at 4:40-43. Then, staple holder 38
is placed at the joint, and staples 22 are inserted through graft vessel 32 and
into target vessel 30 by pivoting arms 40 towards anvil arm 14. Id. at 4:50-
67. Therefore, anvil 14 and staple holder 38 operate independently. See id.
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Appeal 2015-006028
Application 11/915,538
We agree with the Examiner that the “separate device” to which arms
40 are pivotally connected corresponds to the claimed “handle” that is
separate from and operated independently of the handle of the anvil. Using
a separate device to position staple holder 38 at anvil arm 14 and to pivot
arms 40 to insert and bend staples through tissue 32, 30 and against anvil
arm 14 requires the user to hold the separate device in some manner. Thus,
the separate device includes a handle that allows a user to grasp staple holder
38 and position it while inserting staples, as Vargas discloses. Id.
The claims do not recite any features of a “handle” that distinguishes
it from a “separate device” of Vargas. According to Appellant’s definition,
a “handle” is an element that can be grasped by hand. Reply Br. 2. Vargas
discloses that staple holder 3 8 and pivot arms 40 can be connected pivotally
to a separate device and then operated in the manner described in Vargas to
position pivoting arms 40 adjacent to anvil arm 14 and then pivot arms 40 to
drive staples 22 through tissues 30, 32 and bend staples against anvil arm 14.
Vargas, 4:47—67. Vargas discloses pivoting arms 40 pivotally connected to
handle 12 and discloses that pivoting arms 40 can be pivotally connected to
another “separate device.” We agree with the Examiner that a skilled artisan
would understand the separate device to include a handle by which pivoting
arms 40 can be grasped by a user and positioned as Vargas discloses.
Our interpretation also is consistent with Appellant’s Specification,
which discloses that “anvil handle 18 and jaw handle 22 may have numerous
different mechanical constructions in accord with the present invention to
effect the various operations of the anvil assembly, clamping, stapling, and
so forth as discussed herein.” Spec. 118 (emphasis added).
Thus, we sustain the rejection of claims 1—9 and 11—34.
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Appeal 2015-006028
Application 11/915,538
Claim 35
Claim 35 depends indirectly from claim 1 and recites “a fork attached
to the first handle and the at least two jaws.” The Examiner’s finding that
Vargas discloses a fork as the elements that connect pivoting arms 40 to the
separate device is supported by a preponderance of evidence. Final Act. 5;
Ans. 6—7. This “fork” element controls the pivotal movement of the jaws
(pivoting arms 40) as the Examiner found. Vargas, 4:52—67, Fig. 5. This
element is a distinct element that connects pivoting arms 40 to handle 12 or
to a separate device. See Vargas, Fig. 5. This fork element is attached to the
jaws handle (handle 12 or the separate device) and to the at least two jaws
(pivoting arms 40) as claimed. Id. Appellant’s argument that this fork is not
a distinct element is not persuasive in view of these disclosures of Vargas.
Appeal Br. 14—15. Thus, we sustain the rejection of claim 35.
Claim 10 as unpatentable over Vargas
Appellants argue that claim 10 is patentable based on its dependency
from claim 1. Appeal Br. 15—16. Because we sustain the rejection of claim
1 as anticipated by Vargas, this argument is not persuasive and we sustain
the rejection of claim 10.
DECISION
We affirm the rejections of claims 1—35.
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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