Ex Parte Matsuno et al

Board of Patent Appeals and Interferences

Jun 20, 2012

10072721 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/072,721 02/06/2002 Kiyotaka Matsuno 15252 1963
7590 06/20/2012
Scully, Scott, Murphy & Presser
400 Garden City Plaza
Garden City, NY 11530
EXAMINER
MENDOZA, MICHAEL G
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
06/20/2012 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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KIYOTAKA MATSUNO and KOH KIMURA
__________

Appeal 2011-003017
Application 10/072,721
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 73-94.1 We have jurisdiction under 35
U.S.C. § 6(b).

1 Claims 95 and 96 are also pending, but stand withdrawn from
consideration (Ans. 2).
App
App

oper
10-1
that
nond
Spec
Figu
devi
9, an
The
enga
hole
22-2
follo

eal 2011-0
lication 10
The inve
ation, such
2). The Sp
the operati
etachable”
ification i
re 1B show
ce as discl
As show
d a coupli
coupling p
ges the cli
11 of the c
4).
Claim 73
ws (emph
03017
/072,721
ST
ntion is dr
as stoppin
ecificatio
on wire an
(id. at 5,
s reproduc
s a cross-
osed in the
n, the clip
ng plate 10
late 10 ha
p (id. at 10
oupling p
is represe
asis added
ATEMEN
awn to a c
g of bleed
n teaches f
d coupling
ll. 5-7). F
ed below.
sectional v
Specifica
unit 7 has
serving a
s a through
, ll. 8-11)
late 10 and
ntative of
):

2
T OF TH
lipping de
ing throug
urther tha
member
or illustrat
iew of on
tion (id. at
a claw-lik
s a couplin
hole 11 a
. The oper
is double
the claim
E CASE
vice for pe
h the use
t the “clipp
are so fixe
ive purpos
e embodim
6, ll. 19-2
e clip 8, a
g membe
nd a hook
ation wire
d back on
s on appea
rforming
of a clip (
ing devic
d as to be
es, Figure

ent of a c
2).
holding-d
r (id. at 9,
section 12
3 passes t
itself (id.
l, and read
an
Spec. 1, ll.
e is such
1B of the
lipping
own tube
ll. 25-27).
that
hrough th
at 10, ll.
s as

e
Appeal 2011-003017
Application 10/072,721

3
73. A clipping device comprising:
a sheath member to be inserted in the body of the patient;
an actuating wire received in the sheath member so as to be
longitudinally movable relative to the sheath member;
a clip unit attached to the clipping device in advance and having a
tissue clip for clipping in the body of the patient and a coupling member
arranged at a distal end of the actuating wire;
wherein:
the coupling member includes a first end fastened to the distal end of
the actuating wire to be immovable in an axial direction of the actuating
wire and a direction deviating from the axial direction and a second end
attached to the tissue clip; and
when applying the tissue clip, the second end of the coupling member
is deformable upon exertion of a force in a proximal direction at the first end
of the coupling member that is greater than a predetermined amount so as to
prevent a subsequent attachment of the second end to another tissue clip.

Claim 90, the other independent claim on appeal, also requires “a clip
unit attached to the clipping device in advance and having a tissue clip for
clipping in the body of the patient and a coupling member including a first
end fastened to a distal end of the actuating wire to be immovable in an axial
direction of the actuating wire and a direction deviating from the axial
direction and a second end attached to the tissue clip.”
The following grounds of rejection are before us for review:
I. Claims 73-84 and 87-94 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by Matsuno.2
II. Claims 85 and 86 stand rejected under 35 U.S.C.§ 103(a) as being
rendered obvious by the combination of Matsuno and Schülken.3
We reverse.

2 Matsuno, US 5,766,189, issued Jun. 16, 1998.
3 Schülken et al., US 5,499,990, issued Mar. 19, 1996
App
App

ligat
Acco
(Id. a
Fig.
clip
eal 2011-0
lication 10
Matsuno
ion of a liv
rding to M
The clip
portion a
end por
squeezin
of the op
by fitting
insertabl
removab
includes
portion
member
member
operatin

t col. 2, ll
4 of Matsu
operating u
03017
/072,721
is drawn
ing tissue
atsuno:
device .
nd a pair
tion and p
g ring is
erating m
to the arm
e into the
ly engage
a hook p
of the cli
inside the
can be rem
g wire is re
. 3-16.) Fi
no shows
nit (id. at
AN
to a “clip d
in a body
. . includ
of arm po
rovided w
removably
ember for
portions
clip squee
d with the
ortion to b
p. A ho
clip squ
oved fro
treated.
g. 4 of Ma
the coupli
col. 2, ll. 3
4
ALYSIS
evice use
cavity” (M
es, a clip
rtions exte
ith a ten
attached
closing th
of the clip
zing ring,
retainer.
e engage
lding mem
eezing rin
m the clip
tsuno is re
ng of the c
9-40). A
d for hemo
atsuno, co
having a
nding from
dency to
to the dis
e arm port
. A coup
and the c
The coupl
d with the
ber hold
g such tha
squeezing
produced
lip unit w
s shown in
stasis, ma
l. 1, ll. 6-
proximal
the prox
open. A
tal end po
ions of the
ling memb
oupling ri
ing ring fu
proximal
s the cou
t the cou
ring whe
below.

ith the reta
the figure
rking, and
7).
end
imal
clip
rtion
clip
er is
ng is
rther
end
pling
pling
n the
iner of the
, the large

Appeal 2011-003017
Application 10/072,721

5
diameter opening 3f and the small diameter opening 3g of the coupling plate
3 are engaged with a pin 15 provided to the distal end portion of the clip
operating 6 device so that the coupling plate 3 is coupled to the clip
operating device (id. at col. 3, ll. 50-57).
As to Rejection I, the Examiner finds that Matsuno teaches all of the
limitation of independent claims 73 and 90, “except for the coupling
member include[ing] a first end fastened to the distal end of the actuating
wire to be immovable in an axial direction of the actuating wire and a
direction deviating from the axial direction” (Ans. 3). Relying on Howard v.
Detroit Stove Works, 150 U.S. 164 (1893), the Examiner concludes:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to make the coupling
member immovable in an axial direction of the actuating wire
and a direction deviating from the axial direction by making the
coupling member and actuating wire once piece, since it has
been held that forming in one piece an article which has
formerly been formed in two pieces and put together involved
only routine skill in the art.

(Id. at 3-4.)
Appellants argue that, unlike the claimed clipping device, the clip
device of Matsuno can be reused by replacing the clip unit by detaching or
attaching the coupling plate to the pin of Matsuno (App. Br. 12). According
to Appellants:
The clipping device of independent claim 73 recites “the
coupling member includes a first end fastened to the distal end
of the actuating wire to be immovable in an axial direction of
the actuating wire and a direction deviating from the axial
direction and a second end attached to the tissue clip” and “the
second end of the coupling member is deformable upon
Appeal 2011-003017
Application 10/072,721

6
exertion of a force in a proximal direction at the first end of the
coupling member that is greater than a predetermined amount
so as to prevent a subsequent attachment of the second end to
another tissue clip.” Therefore, the tissue clip cannot be
separate from the coupling member to reuse the clip unit.
Moreover, since the deformed coupling member of the clip unit
is fastened to the distal end of the actuating wire, the coupling
member is left at the distal end of the actuating wire, and the
actuating wire, as well as the clip unit, cannot be reused.

(Id. at 14). According to Appellants, “Matsuno neither discloses nor
suggests the structure ‘which cannot replace the clip unit with another clip
unit at the distal end of the actuating wire” (Reply Br. 2). Appellants argue
that while the Examiner concludes that it would have only been a matter of
design choice to connect the actuating wire and the coupling member,
Matsuno only teaches a reusable actuating wire, and thus cannot render the
claimed clipping device obvious (id. at 3-4).
Initially, we note that both the Examiner and Appellants interpret the
phrase “the coupling member includes a first end fastened to the distal end
of the actuating wire to be immovable in an axial direction of the actuating
wire and a direction deviating from the axial direction” as requiring that the
coupling member be attached to the actuating wire in such a way that the
coupling member cannot be replaced so that the clipping unit can be used
more than a single time. As that interpretation is consistent with the
teachings of the Specification, we adopt it as well.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Appeal 2011-003017
Application 10/072,721

7
Cir. 1993) (citations omitted). We agree with Appellants that the Examiner
has failed to establish a prima facie case of obviousness.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)).
As our reviewing court has explained, therefore, to support a
conclusion of obviousness, “[w]hether the Board relies on an express or an
implicit showing, it must provide particular findings related thereto. Broad
conclusory statements standing alone are not ‘evidence.’” In re Kotzab,
217 F.3d 1365, 1370 (Fed. Cir. 2000) (citation omitted). Thus, “section 103
requires a fact-intensive comparison of the claimed process with the prior art
rather than the mechanical application of one or another per se rule.” In re
Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995); see also id. at 1572
(“[R]eliance on per se rules of obviousness is legally incorrect and must
cease.”)
The Examiner’s position is that Howard v. Detroit Stove Works holds
that forming a one piece article from two pieces is a matter of routine skill.
The Examiner, however, appears to draw from this case turning on specific
facts, a general obviousness rule: namely, that forming several pieces
integrally as a single-piece is not considered to be patentable subject matter.
No such per se rule exists. In the instant case, the Examiner must provide
Appeal 2011-003017
Application 10/072,721

8
evidence or scientific reasoning as to why the ordinary artisan would have
modified the clipping device of Matsuno, in which the coupling member can
be replaced on the actuating wire so that the device may be reused, to a
clipping device in which the coupling member is attached to the actuating
wire in such a way that the coupling member cannot be replaced or reused.
Because the Examiner fails to provide any evidence or reasoning in this
regard, we are compelled to reverse the rejection.
As to Rejection II, the Examiner relies on Schülken for teaching the
use of a lubricant to reduce friction (Ans. 7). Thus, as Schülken does not
remedy the deficiencies of Matsuno as set forth above, we are compelled to
reverse Rejection II as well.

REVERSED

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