12435368 (B.P.A.I. Nov. 18, 2010)

Ex Parte Hausen

Board of Patent Appeals and InterferencesNov 18, 2010

12435368 (B.P.A.I. Nov. 18, 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. 12/435,368 05/04/2009 Bernard A. Hausen 267 3192 33109 7590 11/19/2010 CARDICA, INC. 900 SAGINAW DRIVE REDWOOD CITY, CA 94063 EXAMINER PEFFLEY, MICHAEL F ART UNIT PAPER NUMBER 3739 MAIL DATE DELIVERY MODE 11/19/2010 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 BERNARD A. HAUSEN ____________ Appeal 2011-000863 Application 12/435,368 Technology Center 3700 ____________ Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and STEFAN STAICOVICI, Administrative Patent Judges. STAICOVICI, 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 2011-000863 Application 12/435,368 2 STATEMENT OF THE CASE Bernard A. Hausen (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10 and 14-20 under 35 U.S.C. § 102(b) as anticipated by Williamson (US 5,807,393, issued Sep. 15, 1998). Claims 11-13 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). THE INVENTION Appellant’s invention relates to a method and a surgical device for treating tissue including an effector that is switchable between a clip application mode, in which clips are deployed, and a coagulation mode, in which energy is delivered to coagulate tissue. Spec., Abstract. Claims 1 and 14 are representative of the claimed invention and read as follows: 1. Surgical apparatus for treating tissue, comprising: an effector including at least two jaws movable toward one another; wherein said effector holds and is configured to deploy a plurality of clips in a clip application mode; and wherein said jaws are configured to deliver energy to coagulate tissue in a coagulation mode; wherein said effector is switchable between clip application mode and coagulation mode; and wherein said clip application mode and said coagulation mode are mutually exclusive, such that a single actuation of said effector causes said effector to perform in only one said mode. 14. A method for treating tissue with a surgical apparatus, comprising: placing the surgical apparatus adjacent to tissue at a location; selecting one of a plurality of operational modes of the surgical Appeal 2011-000863 Application 12/435,368 3 apparatus, wherein said operational modes include clip application mode and coagulation mode; and actuating said surgical apparatus according to the operational mode selected in said selecting; wherein said actuating causes said effector to perform only one of said clip application mode and said coagulation mode. SUMMARY OF DECISION We REVERSE. ANALYSIS Independent claim 1 requires a surgical device having a switchable effector between a clip application mode and a coagulation mode. App. Br., Claims Appendix. Similarly, independent claim 14 requires a step of selecting one of a clip application mode or a coagulation mode. Id. The Examiner found that Williamson teaches a surgical device having an end effector switchable between a clip application mode and a coagulation mode such that the device performs only one mode at a time. Ans. 3-4. Appellant argues that although the surgical device of Williamson applies RF energy to tissue and also cuts and staples that tissue, “Williamson neither describes nor suggests a stapling mode that is not preceded by a mandatory application of RF energy to tissue.” App. Br. 4. More specifically, Appellant argues that, “[o]nly after RF energy is applied can the effector 15 apply staples 17.” Reply Br. 5. In response, the Examiner concedes that in Williamson the staples are delivered after RF energy has been delivered, but opines that “[t]he claim in no way requires that the end effector must be switchable between modes on command,” that is, “in no Appeal 2011-000863 Application 12/435,368 4 way requires that one can switch from one mode to the next in any desired order.” Ans. 5. We find the Examiner’s position untenable. The use of the terms “switchable”2 and “selecting”3 in independent claims 1 and 14, respectively, implies the ability to shift or choose between a clip application mode and a coagulation mode. Since, in Williamson, staples (clip application mode) are applied only after RF energy (coagulation mode) has been delivered, the device of Williamson does not have the ability to shift or choose between a clip application mode and a coagulation mode. See, e.g., Williamson, col. 8, ll. 17-19 and col. 10, ll. 4-9. Hence, we agree with Appellant that although the device of “Williamson can treat by coagulation, or may staple and coagulate tissue; it cannot treat tissue by clip application alone.” Reply Br. 5. As such, the device of Williamson cannot be used to only apply staples, that is, cannot be used only in a clip application mode, as required by each of independent claims 1 and 14. In conclusion, Williamson does not teach all the limitations of independent claims 1 and 14. Accordingly, the rejection of independent claims 1 and 14, and their respective dependent claims 2-10 and 15-20, cannot be sustained. 2 An ordinary and customary meaning of the term “switch” is “to make a shift or exchange.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). 3 An ordinary and customary meaning of the term “select” is “to make a choice.” Id. Appeal 2011-000863 Application 12/435,368 5 SUMMARY The decision of the Examiner to reject claims 1-10 and 14-20 is reversed. REVERSED mls CARDICA, INC. 900 SAGINAW DRIVE REDWOOD CITY, CA 94063