Ex Parte Cole et al

Patent Trial and Appeal Board

Nov 30, 2012

10299582 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID H. COLE, DARIN C. GITTINGS, STEPHEN L. OLSON,
DEAN F. CARSON, MICHAEL L. REO, KEKE LEPULU and
A. ADAM SHARKAWY
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Appeal 2010-005114
Application 10/299,582
Technology Center 3700
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Before JOHN C. KERINS, ANNETTE R. REIMERS and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
David Cole et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-12 as
unpatentable over Quijano (US 5,824,061, issued Oct. 20, 1998) and Cope
(US 5,690,656, issued Nov. 25, 1997); and (2) claims 31-36 as unpatentable
over Spence (US 5,868,763, issued Feb. 9, 1999) and Myshkin (SU 1179978
A, published Sep. 23, 1985).1 Claims 13-30 and 37-39 have been withdrawn
by the Examiner. We have jurisdiction over this appeal under 35 U.S.C. §
6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ invention relates to an anastomotic device for forming an
anastomosis between the first and second vessels. Spec. 15, ll. 25-33 and
figs. 87-90.
Claims 1 and 31 are illustrative of the claimed invention and read as
follows:
1. An anastomotic device comprising:
a first component; and
a second component magnetically attracted to the first
component, the first and second components forming a
throughhole to provide fluid communication between a first
vessel and a second vessel, the throughhole having a
longitudinal axis;

1 We derive our understanding of this reference from the translation
provided by the USPTO, filed Feb. 22, 2010. All references to the text of
this document are to portions of the translation. Both the Examiner and
Appellants refer to this reference as Dolgushin. See Ans. 2 and App. Br. 10,
respectively. For consistency, we shall refer to the reference as Dolgushin.

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the first component having a first part and a second part,
wherein the first part is positionable outside the first vessel and
the second part is positionable within the first vessel, the first
and second parts being configured to compress a wall of the
first vessel between the first and second parts, the first part
being forced toward the second part in a first direction;
the second component being magnetically attracted to the
first component in a second direction in order to couple the first
and second components, wherein the first and second directions
are generally non-parallel.

31. An anastomotic device, comprising:
a first component having a first part and a second part;
a second component magnetically attracted to the first
component, the second component also having a first part and a
second part;
the first and second components forming a throughhole
when magnetically coupled together, the throughhole having a
longitudinal axis;
wherein the first parts of the first and second components
are positioned radially outward from the second parts relative to
the throughole, the first parts of the first and second
components contacting one another and being magnetically
attracted to one another, and the second parts of the first and
second components also being magnetically attracted to one
another.

ANALYSIS
The obviousness rejection over Quijano and Cope
Claims 1-12
Independent claim 1 requires an anastomotic device including (1) a
first component having a first part and a second part; and (2) a second
component, wherein the first and second parts of the first component are
forced towards each other in a first direction and the first and second
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components are magnetically attracted to each other in a second direction.
App. Br., Claims Appendix.
The Examiner found that Quijano discloses an anastomotic device
including a first component (left side of figure 17 of Quijano) having a first
part 30c and a second part 50c and a second component 30c, 50c (right side
of figure 17 of Quijano), wherein, once modified in view of Cope to have
the device assembled by magnetic attraction, the first and second parts of
the first component are forced towards each other in a first direction and the
first and second components are magnetically attracted to each other in a
second direction. Ans. 3-4. As evidence, the Examiner provides two
marked-up versions of Figure 18 of Quijano that include the Examiner’s
interpretations of the directions of attraction between the first and second
parts of the first component and the first and second components. See Ans.
4 and 8. In addition, the Examiner takes the position, “the construction
[mark-ups provided by the Examiner] would be as obvious to one of
ordinary skill in the art as any other way of magnetically coupling the device
of Quijano.” See Ans. 9. See also Reply Br. 5.
We agree with Appellants that the Examiner fails to point to any
portions in either Quijano or Cope that support the Examiner’s statement or
the Examiner’s construction. Reply Br. 5. As such, we further agree with
Appellants, “the construction is merely a creation of the Examiner, and
cannot be relied upon to support an argument that the present claims are
obvious.” Id. Accordingly, we are constrained to reverse the Examiner’s
obviousness rejection of claims 1-12 over Quijano and Cope.

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The obviousness rejection over Spence and Dolgushin
Claims 31-36
The Examiner found that Spence discloses all the claim limitations of
claim 31 except “the second component [being] magnetically attracted to the
first component, the first parts of the first and second components being
magnetically attracted to one another, and the second parts of the first and
second components also being magnetically attracted to one another.” Ans.
5. As such, the Examiner turned to Dolgushin to show that “magnetic force
can be used to couple anastomotic components together instead of
mechanical force in order to join two vessels.” Id. See also Dolgushin,
Abstract and fig. 2. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time of the invention “to
have coupled the first and second parts [of Spence] together as claimed
using magnetic force [as taught by Dolgushin] (with or without mechanical
force) because it would allow quick and easy assembly of the anastomotic
device.” Id.
Appellants argue that the Examiner has failed to show proper
motivation for the modification of Spence by Dolgushin, or for combination
of the references. App. Br. 17. Specifically, Appellants argue “[t]he cuffs
40’, 40” in Spence are located outside the vessel to which they are attached,
and are fastened mechanically. There is no particular advantage to them
being attracted magnetically.” Id. As such, Appellants take the position
“[i]t would not make sense to apply magnetic attraction as in Dolgushin to
Spence.” App. Br. 18.
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At the outset, we agree with the Examiner that a person of ordinary
skill the art, in view of Dolgushin, would readily recognize that “magnetic
force can be used on a variety of coupling constructions to facilitate quicker
[speedier] assembly.” Ans. 10. We further agree with the Examiner that
“[s]peed of assembly [of the anastomotic device] is of particular importance
to Spence.” Id. See also Spence, col. 1, ll. 53-67, col. 6, ll. 13-15 and 36-
42. Therefore, we find that coupling the first and second parts (98/99 and
40’/40”, respectively) (Ans. 5; see also Spence, fig. 19) and the first and
second components (Ans. 4-5; see also Spence, fig. 19) of Spence together
using magnetic force, with or without incorporation of mechanical force,
would provide the advantage of quicker (speedier) and easier assembly of
the anastomotic device of Spence. Accordingly, the Examiner has provided
a reason with rational underpinning to support the conclusion of
obviousness.
Appellants further argue that modification of the invention of Spence
by Dolgushin would render the invention of Spence unsatisfactory for its
intended purpose. Reply Br. 6. Specifically, Appellants argue (1)
“[m]odifying Spence et al. in view of Dolgushin would include compressing
the tissue of two blood vessels together, which is contrary to the purpose of
Spence et al. that is to perform anastomosis without squeezing or
compressing the blood vessels;” and (2) Dolgushin discloses eliminating the
magnetic rings 7, 8 in order to complete the anastomosis; whereas, Spence
“needs to be left in place [not evacuated] in order to maintain the
anastomosis.” Reply Br. 7.
At the outset, we are not persuaded by Appellants’ arguments because
obviousness does not require that all the features of the secondary reference
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be bodily incorporated into the primary reference. In re Keller, 642 F.2d
413, 425 (CCPA 1981). Dolgushin has been cited by the Examiner as
evidence that it was known in the art to employ magnetic forces and
attraction to couple anastomotic components together. See Ans. 5. As such,
we agree with the Examiner that a skilled artisan would readily recognize
that compression would not be a factor when applying magnetic force to
couple the abutting faces (40’/40” and 98/99) of the anastomotic device of
Spence, in that the use of the Spence device does not involve folding tissue
outwardly and compressing opposing folded-out tissue portions. Ans. 9-10.
See also Spence, fig. 19. In addition, we find that a skilled artisan would
readily recognize the Examiner’s proposed modification of the Spence
device does not contemplate that the device would be evacuated or removed.
Therefore, modifying the invention of Spence with Dolgushin would not
render the invention of Spence unsatisfactory for its intended purpose.
Accordingly, for the foregoing reasons, the rejection of independent
claim 31 as unpatentable over Spence and Dolgushin is sustained.
Appellants do not present any substantive arguments for dependent claims
32-36, separate from those presented above in reference to independent
claim 31. See App. Br. 18. As such, the rejection of claims 32-36 as
unpatentable over Spence and Dolgushin is likewise sustained.

DECISION
The decision of the Examiner is affirmed as to claims 31-36 and
reversed as to claims 1-12.
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).
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AFFIRMED-IN-PART

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