Ex Parte Copa et al

Board of Patent Appeals and Interferences

Sep 7, 2012

10919775 (B.P.A.I. Sep. 7, 2012)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
10/919,775 08/16/2004 Copa, Vincent G.

EXAMINER
KAGAN BINDER, PLLC
SUITE 200, MAPLE ISLAND BUILDING
221 MAIN STREET NORTH
STILLWATER, MN 55082
Dowe, Katherine
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE

09/07/2012 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VINCENT G. COPA, KORY P. HAMEL,
and HANS A. MISCHE
__________

Appeal 2010-006317
Application 10/919,775
Technology Center 3700
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, 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 an anastomosis device, a method of performing
anastomosis, and an anastomosis catheter. The Patent Examiner rejected
certain claims for anticipation and the remaining claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2010-006317
Application 10/919,775

2
STATEMENT OF THE CASE
Claims 1-6, 13-15, 17, 20, 22, 23, 25-27, and 29-32 are on appeal.
Claim 1 is representative and reads (emphasis added):
1. An anastomosis device comprising
an elongate body comprising a body wall and a lumen, each extending
along a length of the elongate body, and
positionable tissue approximating structure that can be positioned
lengthwise along the elongate body and that can be extended and retracted
from the body wall over a range of positions along the length of the elongate
body to contact tissue for anastomosis.

The Examiner rejected the claims as follows:
 claims 1, 4-6, 13-15, 20, 22, 29, and 32 under 35 U.S.C. § 102(e) as
anticipated by Orban;
1
and
 claims 2, 3, 17, 23, 25-27, 30, and 31under 35 U.S.C. § 103(a) as
unpatentable over Orban and Bander.
2

ANTICIPATION/OBVIOUSNESS
The Issue
The Examiner found that Orban described an anastomosis device and
method for approximating the bladder and ureter that comprised every
feature of the claims. (Ans. 3-4.) After presenting the evidence, the
Examiner found that “[Orban‟s] distal positionable tissue approximating
structure (110) is capable of being positioned length-wise along the elongate
body and is capable of being extended and retracted from the body wall over

1
Joseph P. Orban III, US 2005/0251155 A1, Nov. 10, 2005.
2
Neil H. Bander, US 6,299,598 B1, Oct. 9, 2001.
Appeal 2010-006317
Application 10/919,775

3
a range of positions along the length of the elongate body to contact tissue
for anastomosis.” (Id. at 4.)
Appellants dispute that Orban‟s device could be extended and
retracted over a range of positions along the device‟s elongate body wall:
“Orban does not describe a tissue approximating structure that can be
„extended and retracted from [a] body wall over a range of positions along
the length of [an] elongate body.‟” (App. Br. 14.) According to Appellants,
“once [Orban‟s] fasteners are deployed they cannot be retracted or in any
other sense replaced to their non-deployed positions or back into the
insertion sleeve,” and “Orban does not contain any explicit or implicit
description of a tissue approximating structure that can be extended and
retracted from a body wall.” (Id. at 15, emphasis omitted.)
Appellants contrast their device against Orban‟s device as follows:
The positionable tissue approximating structure as described in
the present application can be moved and extended (and retracted)
from different positions along the length of an elongate body. In
contrast, the device of Orban includes a fastener that is pushed distally
from the distal end of an elongate insertion device, i.e., that extends
from only one location along the length of the device, which is the
distal end.

(Id. at 16, emphasis omitted.)
The Examiner responds:
[a] “the features upon which applicant relies (i.e., once the tissue
approximating structures are deployed they cannot be retracted or
replaced to their non-deployed positions, back into the insertion
sleeve, or back into the body wall of the device) are not recited in the
rejected claim(s);”
[b] “the limitation of being „extended and retracted from the body
wall‟ may be interpreted as moved forward or back from an original
position with respect to the body wall. Figures 7 and 8 merely
Appeal 2010-006317
Application 10/919,775

4
represent two positions the tissue approximating structures may
assume, however the tissue approximating structures may be extended
forward of the elongate body a greater distance (depending on the
length of the pusher 170) and may be retracted back along the
elongate body a greater distance (until the distal end of the elongate
body abuts the tissue approximating structure) compared to the
position depicted in Figure 8;” and
[c] “the extension originates from the distal end of the body wall,
but the range over which the tissue approximating structures extend
over the body wall (length indicated by annotated Figure 8 above)
changes during deployment. Thus, Orban does disclose the tissue
approximating structure that can be extended and retracted from the
body wall over a range of positions along the length of the elongate
body.”
(Ans. 8-10.)
Appellants reply that the “premise of the [Examiner‟s] analysis
compares structure of Orban to language that is different from that of claim
1 as written.” (Reply Br. 5.) According to Appellants, “[a] feature of
structures that supposedly „extend over a body wall,‟ i.e., are spaced from or
located over a body wall, is not identical to or anticipatory of the claim
structure „capable of being extended and retracted from the body wall over a
range of positions along the length of the elongate body.‟” (Id. at 6,
emphasis omitted.)

Findings of Fact
1. Orban‟s Figure 7 is reproduced here:
Appeal 2010-006317
Application 10/919,775

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“FIG. 7 is a cross-sectional side elevational view illustrating the
positioning of the insertion tool and fastener into a hollow body
organ.” (Orban 3, ¶ [0036].)

2. Orban further explained Figure 7:
With bladder neck “N” reconstructed, apparatus 100 is passed
trans-urethrally through urethra “U” until distal end 182 of insertion
sleeve 180 extends out of urethral stump “S” and into bladder “B”
through bladder neck “N”, as seen in FIG. 7.

(Id. at 5, ¶ [0059].)
3. Orban‟s Figure 8 is reproduced here:
Appeal 2010-006317
Application 10/919,775

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“FIG. 8 is a cross-sectional side elevational view illustrating the
positioning of the insertion tool and the fastener as well as the
expansion of the distal of the fastener in the hollow body organ in
order to anchor the distal end of the fastener in the walls of the hollow
body organ.” (Orban 3, ¶ [0037].)

4. Orban further explained Figure 8:
With apparatus 100 so positioned, insertion sleeve 180 is
withdrawn in a proximal direction to expose sharpened proximal tips
118 of first fastener portions 104. The anchoring leg portions 110 are
biased to the first position “A” so that when sharpened proximal tips
118 are exposed from within insertion sleeve 180, anchoring leg
portions 110 of first fastener portions 104 are deployed to the first
position “A”. (see FIG. 8). With anchoring leg portions 110 deployed,
hooks 154 of anvils 150 are withdrawn in a proximal direction to
engage lips 122 of first fastener portions 104 and to drive sharpened
proximal tips 118 through the wall of bladder “B”, see FIG. 9.

(Id. at 5, ¶ [0060].)
5. Orban‟s Figure 9 is reproduced here:
Appeal 2010-006317
Application 10/919,775

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“FIG. 9 is a cross-sectional side elevational view illustrating the
expansion of the proximal end of the fastener in order to anchor the
proximal end of the fastener to the walls of the body lumen.” (Orban
3, ¶ [0038].)

6. Orban further explained Figure 9:
As seen in FIG. 9, insertion sleeve 180 is further withdrawn in
a proximal direction until sharpened distal tips 134 and anchoring leg
portion 126 of second fastener portion 106 are exposed. The
anchoring leg portions 126 are biased to the first position “A” so that
when anchoring leg portions 126 are completely exposed from within
insertion sleeve 180, anchoring leg portions 126 of second fastener
portions 106 are deployed to first position “A”. (see FIG. 9). With
anchoring leg portions 126 deployed, pushers 170 are advanced in, a
distal direction to engage lips 148 and to drive sharpened distal tips
134 through the wall of urethral stump “S”.

(Id. at 5, ¶ [0061].)

Appeal 2010-006317
Application 10/919,775

8
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
When determining whether a claim is obvious, an Examiner
must make “a searching comparison of the claimed invention –
including all its limitations – with the teachings of the prior art.” In re
Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

Analysis
Orban‟s Figures 7, 8, and 9 illustrate the deployment of a tissue
approximating structure from an elongate body. (FF 1, 3, and 5.) As shown
in the Figures and explained by Orban, the structure is extended from the
distal end of insertion sleeve 180 (which corresponds to Appellants‟
elongate body) before the anchoring leg portions (tines) are deployed. (FF
2, 4, and 6.) Appellants‟ tissue approximating structure, in contrast, is
defined in the claim as one that can be extended from the body wall over a
range of positions along the length of the elongate body, not only from the
distal end of the elongate body. Every rejected claim, including those
rejected for obviousness, recites this feature. Because Orban‟s tissue
approximating structure is only extendable from the distal end of insertion
sleeve 180, Orban did not disclose a tissue approximating structure that
could be extended from insertion sleeve 180 over a range of positions along
the length of the sleeve. The anticipation rejection must therefore be
reversed.
Appeal 2010-006317
Application 10/919,775

9
Appellants contend that the obviousness rejection should be reversed
because it relies on the faulty premise that Orban described the device
defined in claim 1. (App. Br. 18.) We agree; the obviousness rejection is
therefore reversed.

SUMMARY
We reverse the rejection of claims 1, 4-6, 13-15, 20, 22, 29, and 32
under 35 U.S.C. § 102(e) as anticipated by Orban.
We reverse the rejection of claims 2, 3, 17, 23, 25-27, 30, and 31
under 35 U.S.C. § 103(a) as unpatentable over Orban and Bander.

REVERSED

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