Ex Parte Blinman et al

Patent Trial and Appeal Board

Jun 29, 2018

12605199 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/605, 199 10/23/2009
58687 7590 07/03/2018
DUBOIS, BRYANT, & CAMPBELL, LLP
303 Colorado Street
Suite 2300
AUSTIN, TX 78701
FIRST NAMED INVENTOR
Thane Blinman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1742-702USPT 1177
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
BWIESE@DBCLLP.COM
SSTERLING@DBCLLP.COM
CHEUSMANN@DBCLLP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THANE BLINMAN, MICHAEL PATTON,
and HARRITH HASSON
Appeal2017-010742
Application 12/605,199
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and ARTHUR M. PESLAK,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection 1 of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
STATEMENT OF THE CASE
1 Appeal is taken from the Final Office Action dated Sept. 14, 2016.
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Application 12/605, 199
The independent claims on appeal, claims 1 and 6 reproduced below,
are exemplary of the subject matter on appeal.
1. A cannula assembly comprising:
a threaded cannula positioned with an internally threaded
cannula anchor;
said internally threaded cannula anchor including one or
more windows configured for tying-off sutures.
6. A cannula anchor assembly comprising:
an internally threaded cannula insert positioned on a
threaded cannula, the cannula insert positioned partially inside a
suture cone and partially inside a cannular anchor;
wherein said suture cone includes one or more suture posts
configured to wrap suture around.
THE REJECTIONS
I. Claims 1-5 and 11 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Becker (WO 2006/133066 A2; published
Dec. 14, 2006).
II. Claims 6-10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ternamian (US 6,638,265 B 1; issued Oct. 28,
2003).
ANALYSIS
Rejection I
Independent claim 1 and dependent claims 4, 5, and 11
Regarding independent claim 1, the Examiner finds that Becker
teaches a cannula assembly (i.e., cannula 200) comprising a threaded
cannula (i.e., tubular body 201 and threaded section 206) positioned with an
internally threaded cannula anchor (nut 210 and threaded axial hole 211 ),
said internally threaded cannula anchor including one or more windows (i.e.,
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suture holes 215, 216) configured for tying-off sutures. Final Act. 2-3
(citing Becker 20:18-19, Fig. 25). The Examiner determines that "[a]s long
as the suture passes through the recited window, the structure is 'configured
for tying-off sutures."' Ans. 7.
Appellants argue that Becker's suture holes 215, 216 are not
"configured for tying-off sutures," as claimed, and therefore, Becker cannot
anticipate claim 1. Appeal Br. 6-10. In other words, Appellants argue that
Becker only discloses that "the holes are configured for engaging sutures
and nothing more." Id. at 8.
In support, Appellants submit that Becker's suture holes "are only
large enough to allow a suture to pass through, and they are not configured
for tying off sutures." Appeal Br. 7-8 (citing Becker 21 :22-23 ("The
drainage tube may then be further secured in place during the immediate
postoperative period by the placement of sutures through the holes in the
nut.") (emphasis added); 4:25-26 ("The nut is formed to have holes for
engagement by temporary sutures immediately after emplacement.").
(emphasis added)). Appellants refer to the size of the holes positioned in a
torus formed around a lumen having a diameter between 0.25 and 5 mm,
which Appellants submit "significantly constrains the space in which the
holes are located." Id. 7 (citing Becker 9:14, 14:18). Appellants submit that
"the size of the holes in the nut described by Becker are only large enough to
allow a suture to pass through which, ... would not permit visual access
because of their exceptionally small size." Reply Br. 2 (citing Becker, Figs.
25, 26). 2 Appellants refer to the Board's prior decision for this application,
2 For the first time in the Reply Brief, Appellants also argue that "in order to
pass a suture through the holes in the nut, it would be necessary to pierce the
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wherein we determined, with respect to the prior art reference Orth, that
Orth's imperforate cylindrical surface disclosed for sealing and lacking
visual access did not inherently (and necessarily) have one or more windows
configured for tying-off sutures. Appeal Br. 10. Appellants submit that,
consistent with the Board's prior decision during the prosecution of this
application (i.e., Appeal 2014-001937 (the "Decision"), the Examiner is
improperly "deviat[ing] from the avowed purpose" of Becker's suture holes
215, 216, because Becker's device lacks the visual access required for tying-
off. Appeal Br. 9.
Appellants also submit that "the Examiner's interpretation of Becker's
suture holes is inconsistent with the plain meaning of the term 'tying off'
and is also inconsistent with the broadest reasonable interpretation of the
specification." Appeal Br. 8. Appellants contend the plain meaning of the
claim term "tying off' is "to fasten or hold (something) by tying a knot or
bow at its end." Appeal Br. 8 (citing Merriam-Webster's Online Dictionary
(http://www.merriam-webster/dictionary/access ). Appellants refer to the
Specification, which "describes a cannula anchor having 'one or more
windows where sutures may be tied off."' Appeal Br. 9 (Spec. i-f 19).
Appellants conclude that "[t]he plain meaning of 'tying off' as understood
by a person having ordinary skill in the art at the time of the invention does
washer which would further hinder visual access and complicate the process
of tying off sutures." Reply B. 3 (citing Becker 15:2---6). Notwithstanding
the absence of good cause explaining why this argument could not have
been presented in the Appeal Brief, whereby this argument raised for the
first time in the Reply Brief is waived (see 35 C.F.R. § 41.41(b)(2)), Becker
discloses that sutures are intended to pass through the holes in the nut with
the washer in place and without piercing the washer. See Becker 21 :20-25.
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not reasonably encompass simply passing a suture through a hole as taught
by Becker." Id. at 9-10.
Appellants further submit that "Becker does not teach tying off sutures
through a hole in the nut," rather, "Becker simply teaches a nut that is
formed to have holes for engagement by temporary sutures immediately
after emplacement." Appeal Br. 9. Appellants contend that "there is no
discussion or teaching in Becker to suggest how the user would go about
tying off sutures through the holes in the nut." Id. at Br. 8. Appellants
conclude that the Examiner is engaging in "speculation" by determining that
as long as a suture can engage (or pass through) Becker's suture holes 215,
216, the suture is able to be tied-off, and therefore, suture holes 215, 216 are
configured for tying-off sutures (Reply Br. 2), and therefore, Becker cannot
anticipate claim 1 because "the mere fact that a certain thing may result from
a given set of circumstances is not sufficient" (Appeal Br. 10).
As set forth supra, Claim 1 requires "one or more windows
configured for tying-off sutures." We determine that the claim term
"configured for" means that the windows are designed, arranged, set up,
or shaped with a view for tying-off sutures. See Aspec Eyewear, Inc. v.
Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (The phrase
"adapted to" construed narrowly to mean "configured to", as opposed to
"capable of' or "having the capacity of."); Boston Scientific Corp. v. Cordis
Corp., 2006 WL 3782840 (N.D. Cal. 2006) ("A widely accepted dictionary
definition of the word 'configure' means '[t]o design, arrange, set up, or
shape with a view to specific applications or uses.' American Heritage
Dictionary 386 (4th ed. 2000)."). Thus, for Becker to anticipate claim 1,
Becker's suture holes 215, 216 must be designed for tying-off sutures.
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The Specification does not provide any guidance on the meaning of
the claim term "tying off," other than the context in which the term is used,
which the Examiner correctly notes occurs only once in the Specification, as
an alternate embodiment. Ans. 6. The Specification states:
The cannula anchor 105 may be secured into the body wall by
suturing directly through the cannula anchor into the body wall.
Alternatively, cannula anchor 105 may be constructed with one
or more windows where sutures may be tied off.
Spec. i-f 19. Appellants have not provided a definition of the claim term
"tying-off' particular to the medical field, and we accept Appellants' general
definition as set forth supra: "to fasten or hold (something) by tying a knot
or bow at its end." An ordinary meaning of the claim term "sutures"
consistent with the Specification is "a strand or fiber (as of silk, nylon,
cotton, catgut, wire) used to unite parts (as tissues, nerves, or blood vessels)
of the human or an animal body" (WEBSTER'S THIRD NEW INT'L
DICTIONARY 2304 (1993)) and an ordinary meaning of the verb "suture" is
"to unite the parts by means of a suture" (id.). Thus, "tying-off' requires
fastening something by tying a knot at its end, such that the claim language
"one or more windows configured for tying-off sutures" means one or more
windows designed for sutures to fasten something by tying a knot at the end
of the sutures.
Paragraph 19 of the Specification also provides the only reference to
the claim term "window" (i.e., "cannula anchor 105 may be constructed with
one or more windows where sutures are tied off'), and a window is not
depicted in the Figures. Appellants do not dispute that Becker's suture holes
215, 216 are windows, nor do Appellants identify any structural differences
between Appellants' disclosed "one or more window where sutures are tied
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off' and Becker's suture holes 215, 216. Appellants also do not identify
structure required for a window to be configured for tying off, as claimed, in
comparison to a window that merely allows sutures to be passed through it.
Thus, Appellants' argument does not apprise us of error in the Examiner's
determination that a window is configured for tying-off sutures because
there is a hole for receiving a suture, such that the sutures may fasten, by
tying their ends in a knot, the anchor (or nut) to something (i.e., tissue).
Further, a preponderance of evidence supports the Examiner's finding
that Becker's suture holes 215, 216 are configured for tying-off sutures, as
claimed. Becker's holes are suture holes, meaning they are designed (or
configured) to receive sutures. Becker discloses that suture holes 215, 216
(however small in size) are configured for the avowed purpose of engaging
sutures for securing the cannula in place. See Becker 4:24--25 ("[t]he nut is
formed to have holes for engagement of temporary sutures immediately after
emplacement). More specifically, Becker discloses that, with reference to
Figure 26h,
[t]he washer 224 and nut 210 are placed onto the thread of the
drainage tube body 201 to emplace the drainage tube body 201
to emplace the drainage tube. The nut is manipulated using a
hemostat or other tool. The drainage tube may then be further
secured in place during the immediate postoperative period by
the placement of sutures through the holes in the nut.
Becker 21 :20-25. Thus, whether the surgeon decides to fasten the ends of
the sutures engaged in Becker's suture holes 215, 216 in a knot (i.e., tie them
oft) or not, Becker's suture holes 215, 216 are, in the least, configured for
tying-off sutures.
Appellants' arguments are representative of mere attorney argument
without supporting evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
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Cir. 1984) ("Arguments and conclusions unsupported by factual evidence
carry no evidentiary weight"). In particular, Appellants have identified no
structure of Becker's suture holes 215, 216 which is distinct from the
claimed windows, or the windows as described in the Specification, with
respect to a configuration for tying-off sutures.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. Appellants chose not to present separate arguments for the
patentability of claims 4, 5, and 11, which depend from claim 1, and
therefore, for the same reasons stated supra, we sustain the Examiner's
rejection of claims 4, 5, and 11. See Appeal Br. 6-13; Reply 2-5.
Claims 2 and 3
Claim 2, which depends from claim 1, recites "wherein a height of
said threaded cannula relative to the cannula anchor can be adjusted by
rotating clockwise," and claim 3, which depends from claim 1, recites
"wherein a height of said threaded cannula relative to the cannula anchor can
be adjusted by rotating counterclockwise." Appeal Br. 18. The Examiner
finds that Becker discloses that the height of the threaded cannula (i.e.,
tubular body 201) relative to the cannula anchor (i.e., nut 210) can be
adjusted by clockwise or counterclockwise rotation. Final Act. 3 (citing
Becker 20:12-18, Fig. 25). The Examiner determines that claims 2 and 3 do
not limit the cannula assembly to use within a patient, and that by disclosing
a threaded cannula positioned within an internally threaded cannula anchor,
as set forth supra, Becker discloses that the height (i.e., the distance from the
anchor about the cannula along the length of the cannula to an end of the
cannula) is adjusted by rotating the anchor clockwise or counterclockwise.
Ans. 9.
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Appellants argue that Becker "does not teach a cannula assembly
wherein a height of said threaded cannula relative to the cannula anchor can
be adjusted by rotating the threaded cannula." Appeal Br. 12. Appellants
submit that, in Becker, "[t]he nut puts tension on the tube so that the end
stop is secure" the drainage tube in place, which "is a fundamentally
different design than that claimed by the Appellants in which the anchor is
secured to the body, and the rotation of the cannula allows the height of the
threaded cannula relative to the cannula anchor to be adjusted." Id.; see also
Reply Br. 5---6.
We are not persuaded by Appellants' argument, which does not
apprise us of error in the Examiner's finding. In other words, Appellants do
not dispute that, mechanically, the threading between Becker's tube and nut
discloses adjusting the nut along the length of tube, by either turning the nut
clockwise or counterclockwise, such that the "height" of the tube relative to
the nut is changed, for example, to put tension on the tube.
Accordingly, we sustain the Examiner's rejection of claims 2 and 3.
Rejection II
Regarding independent claim 6, the Examiner finds that Ternamian
discloses the claimed cannula anchor assembly, wherein, with reference to
the Examiner's annotated Figure 3G of Ternamian, reproduced below: (i)
Section A of Ternamian' s adaptor 10 (as identified by the Examiner)
corresponds to the claimed internally threaded cannula insert; (ii) Section B
of T ernamian' s adapter 10 (as identified by the Examiner) corresponds to the
claimed suture cone including suture post( s) configured to wrap suture
around; and (iii) Section C (as identified by the Examiner) corresponds to
the claimed cannula anchor.
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The Examiner's annotated Figure 3G of Temamian depicts "a cross-
sectional view of an adapter, wherein the adapter is made of an
elastomeric material throughout the body of the adapter," wherein the
Examiner deliminates sections of the adapter as Section A, Section B,
and Section C. Temamian 4:30-33. The Examiner determines that
claim 6 does not "prevent such an interpretation of the unitary
structure taught by Temamian," and thus, "[t]he fact that these
structures exist in a unitary configuration, as taught by Temamian, is
immaterial." Ans. 10-11.
Appellants argue that the Examiner's arbitrarily drawn lines,
which divide Temamian's adaptor 10, which is disclosed and
described in Temamian as a single piece, into the claimed insert, cone,
and anchor are improper, and that the Examiner has failed to
demonstrate that Becker discloses each of the multiple structures of
the claimed cannula assembly. Appeal Br. 13-16.
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We construe independent claim 6 to positively recite a cannula
anchor assembly that must include at least3 the following structures:
(i) an internally threaded cannula insert; (ii) a threaded cannula; (iii) a
suture cone; and (iv) a cannula anchor. We agree with Appellants that
T emamian does not disclose separate components corresponding to
these claimed structures, nor has the Examiner provided any basis, in
Temamian or otherwise, to support the division of Temamian's single
piece anchor 10 into Sections A, B, and C, as determined by the
Examiner.
[U]nless a reference discloses within the four comers of
the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the
same way as recited in the claim, it cannot be said to prove
prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Accordingly, we do not sustain the Examiner's rejection of
independent claim 6 and claims 7-10 depending therefrom.
DECISION
The Examiner's decision rejecting claims 1-5 and 11 is
AFFIRMED.
The Examiner's decision rejecting claims 6-10 is REVERSED.
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).
3 The transitional word "comprising" is open-ended.
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AFFIRMED-IN-PART
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