Ex Parte Sorrentino et al

Patent Trial and Appeal Board

Jan 8, 2013

11338911 (P.T.A.B. Jan. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/338,911 01/23/2006 Greg Sorrentino H-US-00296 (203-4811) 6036
7590 01/09/2013
Michael D. Switzer
U.S. Surgical,
a division of TYCO Healthcare Group, LP
150 Glover Avenue
Norwalk, CT 06856
EXAMINER
MASHACK, MARK F
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
01/09/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREG SORRENTINO and KENNETH H. WHITFIELD
____________

Appeal 2010-006486
Application 11/338,911
Technology Center 3700
____________

Before EDWARD A. BROWN, REMY J. VANOPHEM, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Greg Sorrentino and Kenneth H. Whitfield, Appellants, appeal under
35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1-
20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
CLAIMED SUBJECT MATTER
Claims 1 and 20 are representative of the subject matter on appeal.
1. A surgical clip for a clip applier, the surgical clip comprising:
a first leg connected to a second leg at a first location;

wherein the first leg is separated from the second leg by a
predetermined distance at a second location spaced from the first
location, the first leg forming a first distal end and the second leg
forming a second distal end, the first leg having a first tissue gripping
surface and the second leg having a second tissue gripping surface;

wherein the first tissue gripping surface has a first recess on the
first leg defining a non-polygonal pattern along the first tissue
gripping surface, and the second tissue gripping surface has a second
recess on the second leg defining a non-polygonal pattern along the
second tissue gripping surface; and

wherein when the clip is compressed, the first recess is
compressed towards the second recess such that the first recess and
the second recess partially overlap to form a two dimensional
polygonal pattern with one another along the first and second tissue
gripping surfaces.

20. A surgical clip for a clip applier, the surgical clip comprising:

a first leg connected to a second leg at a first location;

wherein the first leg is separated from the second leg by a
predetermined distance at a second location spaced from the first
location, the first leg having a first distal end and the second leg
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having a second distal end, the first leg having a first tissue gripping
surface and the second leg having a second tissue gripping surface;

wherein the first tissue gripping surface has a plurality of first
“V” shaped recesses on the first leg with each recess having a first
apex located on the first tissue gripping surface;

wherein the second tissue gripping surface has a plurality of
second “V” shaped recesses on the second leg with each recess having
a second apex located on the second tissue gripping surface; and

wherein when the clip is compressed the first “V” shaped
recesses on the first leg partially overlap the second “V” shaped
recesses on the second leg; and

wherein when the first leg is compressed toward the second leg,
each apex of the first recesses and each apex of the second recesses
point in an opposite direction along the first and second gripping
surfaces.

REJECTIONS
Claims 1-10, 12-15, 17 and 19-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the disclosure of Levinson (US 6,610,073
B1; iss. Aug. 26, 2003).
Claims 11, 16 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Levinson, in view of the teachings of
Transue (US 4,799,481; iss. Jan. 24, 1989).

ISSUE
Was the Examiner correct in finding that Levinson discloses a surgical
clip that is capable of compressing such that when a first leg is compressed
towards a second leg, a first plurality of recesses on a first tissue gripping
surface of the first leg registers with a second plurality of recesses on a
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second tissue gripping surface on the second leg to form a two dimensional
polygonal pattern along the first and second tissue gripping surfaces?

ANALYSIS
1. The rejection of claims 1-10, 12-15, 17 and 19-20 as anticipated by
Levinson

Appellants argue claims 1-10, 12-15, 17 and 19 together as a first
group and claim 20 as a second group. We select claim 1 as the sole claim
on which to decide this appeal of the first group and claim 20 as the sole
claim on which to decide the appeal of the second group. App. Br. 10, 11.
Appellants offer no persuasive reasoning or evidence to support the
contention that the Examiner’s findingsrelating to Levinson’s surgical clip
structure is incorrect. With regard to Claim 1, Appellants highlight that
Levinson’s surgical clip is entirely devoid of the recited “recesses” defining
a “non-polygonal pattern” being compressed together to form a “polygonal
pattern along the first and second gripping surfaces” and with regard to
claim 20, the recited “V” shaped recesses “being compressed such that each
apex of the first recesses and each apex of the second recesses point in an
opposite direction along the first and second gripping surfaces” constitute
components of the structure effecting the ability of the clip to be retained
upon a blood vessel or body tissue. App. Br. 10-11.
The Examiner finds that the recited “recesses” defining a “non-
polygonal pattern” as recited in claim 1 and the “V shaped recesses” in
abutting positions as recited in claim 20 are disclosed in figures 12A, 12B,
12D and 12E of Levinson (Ans. 11), and further finds that the clip of
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Levinson is capable of compressing such that when the first recess is
compressed towards the second recess to partially overlay one another, the
first and second recesses form a two dimensional polygon pattern with one
another along the first and second tissue gripping surfaces as recited in both
independent claim 1 and independent claim 20. Ans. 4, 8-9.
Our decision is based on the same line of reasoning advanced by the
Examiner. The Examiner provided a reasoned basis that Levinson's surgical
clip comprises structure corresponding to the recited "recesses" and "V
shaped recesses," and is also capable of providing the recited configurations
when compressed, as set forth in independent claims 1 and 20. In response,
Appellants have not met their burden to provide persuasive argument or
evidence demonstrating that Levinson’s surgical clip does not include
structure corresponding to the recited "recesses" and "V shaped recesses," or
would be incapable of providing the recited configurations. Appellants had
a full and fair opportunity to respond to this line of reasoning in the reply
brief, but failed to persuasively demonstrate error in the Examiner’s finding
of anticipation.
For the above reasons, we will sustain the rejection of claims 1-10,
12-15, 17 and 19 as well as independent claim 20.
2. Claims 11, 16 and 18 over Levinson and Transue
The Examiner finds that Levinson discloses all of the limitations of
independent claims 1 and 14 from which claim 11 and claims 16 and 18
respectively depend. The Examiner further finds that Transue teaches i)
with respect to claim 11, a grip feature 60 on an outer clip leg surface (col. 4,
ll. 38-54); ii) with respect to claim 16, a first channel 40 and a second
channel 42 not connected with one another (Fig. 2); and iii) with reference
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to claim 18, a recess being “U” shaped (Fig. 1a). Ans. 9-10. Therefore, the
Examiner concludes, given the teachings of Transue, all of the claimed
elements of claims 11, 16 and 18 were known in the prior art and one skilled
in the art could have combined these elements as claimed with Levinson by
known methods with no change in their respective functions, at the time of
the invention.
The Appellants do not address the Examiner’s rejection of claims 11,
16 and 18 and instead rely on the alleged deficiencies of Levinson with
respect to independent claims 1 and 14 to argue patentability of the
dependent claims.
Appellants offer no persuasive reasoning or evidence to support that
the Examiner’s rationale relating to the rejection of claims 11, 16 and 18 is
flawed. Because we find no deficiencies in the Examiner’s rejection of
claims 1 and 14, we therefore will sustain the rejection of dependent claims
11, 16 and 18.

CONCLUSION

The rejection of claims 1-10, 12-15, 17 and 19-20 as anticipated by
Levinson under 35 U.S.C. § 102(b) is affirmed.
The rejection of claims 11, 16 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Levinson and the teachings of
Transue is affirmed.
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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DECISION

AFFIRMED

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