10977061 (B.P.A.I. Nov. 29, 2010)

Ex Parte Davies et al

Board of Patent Appeals and InterferencesNov 29, 2010

10977061 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/977,061 01/07/2005 Kathleen H. Davies 161 9654 33109 7590 11/30/2010 CARDICA, INC. 900 SAGINAW DRIVE REDWOOD CITY, CA 94063 EXAMINER TYSON, MELANIE RUANO ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 11/30/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KATHLEEN H. DAVIES and ZACHARY WARDER-GABALDON ____________ Appeal 2009-009834 Application 10/977,061 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL W. O’NEILL and STEFAN STAICOVICI, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009834 Application 10/977,061 2 STATEMENT OF THE CASE Kathleen H. Davies and Zachary Warder-Gabaldon (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 22, 23 and 25-30, the only claims pending in the application. Claims 1-21 and 24 were previously canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. THE INVENTION Appellants’ invention is directed to a method of suturing an end of a first vessel to a side of a second vessel. Claim 22, reproduced below, is illustrative of Appellants’ invention: 22. A method of suturing an end of a first vessel to the side of a second vessel, comprising: providing a length of suture having a standing end and a running end, and a tube having a lumen at least partially therein, wherein said suture extends longitudinally through the entire said lumen of said tube and out of an end of said tube; connecting a needle to said running end; forming a portion of said suture into a loosely- formed overhand knot around said tube, said overhand knot having only a single winding of suture; leaving a portion of said suture spaced apart from said tube to form a noose connected to said loosely-formed overhand knot; placing an end of the first vessel in proximity to said tube; Appeal 2009-009834 Application 10/977,061 3 passing said needle through at least one location in proximity to the end of the first vessel and at least one location on the side of the second vessel; and pulling said running end through said noose portion, resulting in a fully-tied knot. THE REJECTION The Examiner has rejected claims 22, 23 and 25-30 under 35 U.S.C. § 103(a) as being unpatentable over Jain (US 5,080,664, issued January 14, 1992) in view of Schulze (US 5,728,109, issued March 17, 1998). ISSUE Did the Examiner err in concluding that Schulze renders obvious forming a portion of a suture into a loosely formed overhand knot having only a single winding of the suture? ANALYSIS Independent Claim 22 requires, inter alia, that the suturing method include a step of forming a portion of the suture into a loosely formed overhand knot, with the overhand knot having only a single winding of the suture. The Examiner relies on the Schulze patent as disclosing or suggesting the performance of this step. (Ans. 3-4). Appellants contend that Schulze does not disclose or suggest forming an overhand knot with only a single winding of the suture, but instead teaches a suturing method in which a plurality of loops or windings of the suture are created, such that a “common loop core” is formed. (Appeal Br. 3). Appeal 2009-009834 Application 10/977,061 4 The Examiner, acknowledging that the embodiments actually disclosed by Schulze do have a plurality of loops or windings, relies on a passage in Schulze that states that, “[t]he number of knot loops may vary depending on the particular application for which the knot is used” (Schulze, col. 4, ll. 24-25), in concluding that it thus would have been obvious to provide only a single winding. Appellants counter that this conclusion is completely contrary to the emphasis in Schulze on the importance of using multiple loops or windings. (Appeal Br. 3). Appellants point out that all of the disclosed embodiments employ multiple loops in order to form a common loop core, and that Schulze notes that other knot configurations may be used, provided that they include the “key characteristic” of having a common loop core formed with a plurality of windings. (Id., citing to Schulze, col. 2, ll. 31-33; col. 4, ll. 25-28; and col. 4, ll. 60-62). We find that Appellants have the more convincing position here. Schulze repeatedly refers to the knots formed therein as requiring a “common loop core”, stating specifically that this common core is formed with a plurality of knot loops. (Schulze, col. 2, ll. 31-33). This is fully consistent with the use of the term “common” in describing the core.2 We are not persuaded that a person of ordinary skill in the art would have found it obvious in view of Schulze to perform a suturing method employing an overhand knot formed from only a single winding of the suture. In this vein, we note that it is necessary to properly construe what an applied reference fairly teaches or discloses. See, e.g., In re Fracalossi and 2 common: 1. belonging equally to, or shared alike by, two or more or all in question: common property; common interests. Dictionary.com Unabridged, based on the Random House Dictionary, © Random House, Inc. 2010 (accessed Nov. 23, 2010 at http://dictionary.reference.com/browse/common) Appeal 2009-009834 Application 10/977,061 5 Wajer, 681 F.2d 792 (CCPA 1982)(reference is prior art not only for specifically disclosed embodiments, but also all that it fairly teaches). Here, the passing reference in Schulze to varying the number of knot loops depending on the particular application does not fairly disclose or suggest effectively eliminating the common loop core, specifically mentioned as being a key feature, which would result from employing only a single winding for the knot. The rejection of independent claim 22, and of claims 23 and 25-30, depending from claim 22, as being unpatentable over Jain and Schulze, will not be sustained. CONCLUSION The Examiner erred in concluding that Schulze renders obvious forming a portion of a suture into a loosely formed overhand knot having only a single winding of the suture. DECISION The decision of the Examiner to reject claims 22, 23 and 25-30 is reversed. REVERSED Appeal 2009-009834 Application 10/977,061 6 mls CARDICA, INC. 900 SAGINAW DRIVE REDWOOD CITY, CALIFORNIA 94063