Ex Parte Aranyi et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11728699 (B.P.A.I. Aug. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERNEST ARANYI and KENNETH H. WHITFIELD
__________

Appeal 2011-012569
Application 11/728,699
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of accessing and ligating tissue. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1-5 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of accessing and ligating tissue, the method comprising the
steps of:
a) providing a clip applying apparatus having a handle assembly, a
body portion defining a longitudinal axis and extending distally from the
handle assembly and a jaw mechanism including first and second jaws
movable in relation to each other between open and closed positions, the
first and second jaws being curved upwardly towards a distal end of the jaws
along the longitudinal axis of the body portion, each curved jaw having a
radius of curvature “r”;
b) positioning the jaws between the tissue to be ligated and
surrounding tissue;
c) manipulating the jaws to separate the tissue to be ligated from
surrounding tissue;
d) rotating the jaw mechanism to position the tissue to be ligated
between the first and second jaws; and
e) moving the first and second jaws from the open position to the
closed position to ligate the tissue to be ligated.

The Examiner rejected the claims as follows:
claims 1, 2, and 5 under 35 U.S.C. § 103(a) as unpatentable over
Knoepfler,
1
Klieman,
2
and Taylor;
3
and
claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Knoepfler, Klieman, Taylor, and Fossum.
4

1
Dennis J. Knoepfler, US 5,282,807, Feb. 1, 1994.
2
Charles H. Klieman et al., US 4,325,376, April 20, 1982.
3
Charles S. Taylor et al., US 6,110,170, Aug. 29, 2000.
4
Gregory T. Fossum, US 6,077,280, June 20, 2000.
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DISCUSSION
A. Claim 1
The Examiner found that Knoepfler described a method of accessing
and ligating tissue using an instrument similar to Appellants’, but Knoepfler
did not disclose the orientation of the jaws at the time of positioning the jaws
between the tissue to be ligated and the surrounding tissue, and did not
disclose curved jaws. (Ans. 4.) The Examiner found that Klieman taught
curved jaws on a clip-applying device in order to allow better visibility
during usage, and concluded it would have been obvious to modify
Knoepfler’s instrument to include upwardly curved jaws for the same
reason. (Id. at 5.) The Examiner found that Taylor taught a desired
orientation for a dissecting instrument’s curve. (Id.) The Examiner
reasoned that “[w]hen this teaching of proper orientation during dissection is
applied to the curved jaws of the clip applier of Knoepfler in view of
Klieman, the jaws will have to be rotated 90 degrees after dissection in order
to have the tissue properly positioned for ligation so that it passes between
the jaws.” (Id.) The Examiner concluded it therefore would have been
obvious to have included rotating the jaws in Knoepfler’s method. (Id.)
Appellants contend first “that curving the jaws of Knoepfler, as taught
by Klieman would require curving the jaws to extend beyond an outer
diameter of shaft 13 of Knoepfler. When modified as such, Appellant
submits that the stapler of Knoepfler would no longer be suitable for
laparoscopic use.” (App. Br. 9.) The Examiner responds to the first
contention as follows:
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the jaws of the clip applier of Knoepfler are not retractable into
shaft (13) and therefore need not be limited to the diameter of
shaft (13). The entire stapler of Knoepfler is inserted through a
cannula during laparoscopic use and should generally conform
to the shape of the cannula and therefore must be generally
cylindrical according to Knoepler (column 1, lines 20-25).
Curving the jaws beyond the diameter of the shaft of Knoepfler
in order to provide improved visibility as taught by Klieman
would not prevent the clip applier of Knoepfler from being
inserted into a cannula as the clip applier would still be
generally cylindrical and cannulas come in a variety of sizes to
accommodate differently sized instruments.

(Ans. 7.)
In reply, Appellants maintain that Knoepfler’s Figure 1 shows that
“jaws 15 are maintained within the cylindrical profile of the shaft 13 such
that the distal end of the clip applier may be received through a cannula
sized to receive shaft 13.” (Reply Br. 3.) According to Appellants,
extending the jaws of the clip applier beyond the outer diameter of the shaft
would increase the profile of the clip applier’s distal end, but “[s]ince the
objective of laparoscopic surgery is to limit the size of the opening required
to access the surgical site, it would not have been obvious to increase the
profile of the distal end of the clip applier.” (Id.) Appellants also allege that
“extending the jaws 15, of the prior art, beyond the outer diameter of the
shaft would either damage seals or prevent sealing of over sized seals.
Laparascopic surgery requires sealing of a cannula to maintain insufflation
and allow proper access to internal bodies.” (Id. at 4.)
On this record, we conclude the Examiner has the better position.
Appellants do not dispute that if Knoepfler’s device were modified with
curved jaws, it would still be inserted through an appropriately sized
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cannula. The Examiner found, and Appellants do not dispute, that cannulas
were available in a variety of sizes to accommodate differently sized
instruments. There is no evidence to support Appellants’ contention that a
stapler/clip applier having curved jaws would damage seals if inserted
through a cannula. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997).
Appellants’ second contention is that equipping Knoepfler’s stapler
with curved jaws “would prevent [Knoepfler’s] cutter 16 from fully
extending.” (App. Br. 9.) The Examiner responded to Appellants’ second
contention as follows:
orienting the cutter such that it is positioned to follow, and/or
providing a cutter that is sufficiently resilient to follow, the
curve of the jaws if need be would have been within the
purview of one skilled in the art in order to be able to gain the
advantages associated with having curved jaws.

(Ans. 8.) Appellants do not dispute the Examiner’s response (see Reply
Br.), and we accept it as correct.
Finally, concerning the rejection’s reliance on Taylor, Appellants
argue only that Taylor does not “cure the deficiencies” of Knoepfler and
Klieman. (App. Br. 10.) We conclude that the Examiner’s evidence and
reasoning established a prima facie case for the obviousness of claim 1 and
affirm the rejection.
Claims 2 and 5 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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B. Claims 3 and 4:
Claims 3 and 4 limit the radius of curvature “r” to between about 0.5
inch and 0.9 inch and to about 0.7 inch, respectively. The Examiner found
that Fossum described “provid[ing] a radius of curvature on the jaws of a
device used during a surgical procedure of anywhere between 0.5 to 5.0
inches (see figure 5 and claim 8 of Fossum for example).” (Ans. 6.) Based
on that finding, and others, the Examiner concluded:
It would have been obvious to one skilled in the art to have
modified the device of Knoepfler in view of Klieman and
Taylor to give the jaws a radius of curvature of any value
between 0.5 inch and 0.9 inch since, in view of Fossum, these
values are well known for curving jaws out of alignment with
the remainder of the surgical instrument and one skilled in the
art would have had a reasonable expectation of success when
employing these values. It is further noted that, where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art (In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955)).

(Id., citation format corrected.)
Appellants contend: “Fossum does not provide any disclosure that,
when taken in any proper combination with Knoepfler, Klieman and Taylor,
cures the deficiencies of Knoepfler in view of Klieman and Taylor with
respect to Claim 1.” (App. Br. 11.) Appellants repeat their contentions that
curving the jaws on Knoepfler’s device would render it unsuitable for
laparoscopic use. (Id. at 11-12.) Appellants’ contentions remain
unpersuasive for the reasons explained with regard to claim 1 under section
“A” above. We conclude that the Examiner’s evidence and reasoning
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established a prima facie case for the obviousness of claims 3 and 4 and
affirm the rejection.

SUMMARY
We affirm the rejection of claims 1, 2, and 5 under 35 U.S.C. § 103(a)
as unpatentable over Knoepfler, Klieman, and Taylor.
We affirm the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Knoepfler, Klieman, Taylor, and Fossum.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc