Ex Parte Sauer

Board of Patent Appeals and Interferences

Sep 7, 2012

10056473 (B.P.A.I. Sep. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JUDE S. SAUER
__________

Appeal 2011-010199
Application 10/056,473
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
apparatus. The Examiner rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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Statement of the Case
Background
“[T]here is a need for surgical techniques and instrumentation suitable
for dosing punctures in blood vessels, particularly those created during
catheterization procedures. This need requires a reliable hemeostasis of the
puncture in a quick and efficient manner with minimal trauma the
surrounding vascular tissue” (Spec. 3 ¶ 0008).
The Claims
Claims 5-10, 12, 13, 20, 21, 23-39, 42-45, and 51-58 are on appeal.
Claims 12 and 53 are representative and read as follows:
12. A surgical apparatus for closing a wound, the surgical
apparatus comprising:
a tongue member having a distal section insertable into a
wound; and
a face opposing the distal section of the tongue member
and separated from the distal section of the tongue member by a
gap, the face having an area large enough to impede further
insertion of the apparatus into the wound, further comprising a
guide wire tube disposed through an elongate body assembly, a
distal end of the guide wire tube being disposed adjacent a
distal opening of the tongue member.

53. A tip for a surgical apparatus, the tip having a
longitudinal axis, a distal end, and a proximal end, the tip
further comprising:
a window for receiving tissue;
a first wall at a proximal end of the window, the first wall
disposed at an angle to the longitudinal axis, the angle selected
to impede insertion of the tip into a wound; and,
a second wall disposed at an angle to the longitudinal
axis at a distal end of the window, further comprising a tongue
having an opening through a portion of a distal tongue section,
a base of the tongue forming a bottom portion of the window.
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The issues

A. The Examiner rejected claims 12, 13, 53-56,
1
and 58 under 35 U.S.C.
§ 102(b) as anticipated by Sauer
2
(Ans. 4-5).
B. The Examiner rejected claims 5-10, 20, 21, 23-39, 42-45, 51, 52 and
57 under 35 U.S.C. § 103(a) as obvious over Sauer (Ans. 5-9).
A. 35 U.S.C. § 102(b) over Sauer
The Examiner finds that “Sauer discloses a device that contains a
tongue member (37b) having a distal section insertable into a wound. The
device also contains a face (distal face of grooves 40, 42 next to element 44”
(Ans. 4). The Examiner finds that the Sauer “device further contains a
guidewire tube (40) disposed through an elongate body assembly (37). The
distal end of the guidewire tube is next to an opening in the tongue member
(the opening in 37b is unlabeled, but it is clear from the drawings that there
is an opening used to accommodate elements 16, 18)” (Ans. 4).
Appellant contends that “[w]hile, the Examiner points to item 40 in
the „666 [Sauer] patent, indicating that this is a guide wire channel, we must
note that this is instead a needle channel within the body of the device, and
not a distal guidewire channel” (App. Br. 5).
Appellant contends that the “Examiner‟s proposed rejection
completely ignores the fact that the needle channel cannot also incorporate a

1
We note that claims 52 and 55 were inadvertently omitted from
the statements of rejection on pages 4-5 of the Examiner‟s Answer,
but claims 52 and 55 are specifically discussed in the rejections.
Appellant recognizes that claims 52 and 55 are rejected (see App.
Br. 2).
2
Sauer et al., US 5,431,666, issued Jul. 11, 1995.
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guide wire simply because it has an interior diameter (which is filled by a
needle that must reciprocally move therethrough” (App. Br. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Sauer teaches a tube “disposed
adjacent a distal opening of the tongue member” as required by claim 12?
Findings of Fact
1. Figure 2 of Sauer is reproduced below:

“FIG. 2 is an exploded perspective view of the elongated body assembly of
the surgical apparatus” (Sauer, col. 3, ll. 21-22).
2. Sauer teaches “a novel surgical apparatus for suturing body
tissue pieces together, and more particularly, to a surgical apparatus for
passing the opposed ends of a length of suture material into body tissue
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pieces which are to be adjoined or approximated together” (Sauer, col. 2, ll.
40-45).
3. Sauer teaches that the “elongated insert member 37 is received
within the bore 32 of the outer tubular member 30 such that the distal end
37b of elongated insert member 37 is disposed adjacent the distal end 30b of
the outer tubular member 30” (Sauer, col. 5, ll. 22-26).
4. Sauer teaches that “the distal end portion 37b of the elongated
insert member 37 also defines a tissue receiving cutout portion 44 which is
disposed in alignment with the tissue receiving cutout portion 34 of the outer
tubular member 30” (Sauer, col. 5, ll. 32-36).
5. Sauer teaches that the “top portion 35 of the elongated insert
member 37 defines first and second elongated guide channels 40 and 42,
preferably formed parallel to one another and dimensioned and configured
for slidable reception” (Sauer, col. 5, ll. 27-30).
6. Sauer teaches that the “closed end 56 of each respective ferrule
portion 16 and 18 is fastened to a length of suture material 20 by, for
example, swaging the ferrule onto the suture” (Sauer, col. 6, ll. 14-17).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
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inherent in it.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349
(Fed. Cir. 2002).
Analysis
Sauer teaches a surgical apparatus (FF 2) with a tongue member 37b
having a distal section (FF 3) and the “device also contains a face (distal
face of grooves 40, 42 next to element 44” (Ans. 4, see FF 2). Sauer teaches
“first and second elongated guide channels 40 and 42, preferably formed
parallel to one another and dimensioned and configured for slidable
reception” (Sauer, col. 5, ll. 28-30; FF 5).
Appellant contends that “[w]hile, the Examiner points to item 40 in
the „666 [Sauer] patent, indicating that this is a guide wire channel, we must
note that this is instead a needle channel within the body of the device, and
not a distal guidewire channel” (App. Br. 5). Appellant contends that the
“Examiner‟s proposed rejection completely ignores the fact that the needle
channel cannot also incorporate a guide wire simply because it has an
interior diameter (which is filled by a needle that must reciprocally move
therethrough” (App. Br. 6).
We are not persuaded. Claim 12 does not require a guide wire, only a
“guide wire tube”. That is, the structure required by claim 12 is a tube
which is “disposed through an elongate body assembly” where “a distal end
of the” tube is “disposed adjacent a distal opening of the tongue member”
(see Claim 12). We agree with the Examiner that Sauer teaches that channel
40 is a tube which is disposed through the elongate body assembly with a
distal end that is adjacent to the distal opening of the tongue member (FF 1,
5; Ans. 9-10). See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
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(“It is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.”)
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that Sauer
teaches a tube “disposed adjacent a distal opening of the tongue member” as
required by claim 12.
B. 35 U.S.C. § 103(a) over Sauer
Claim 51
The Examiner finds that “Sauer „666 clearly shows projections on the
ferrule holder in the form of element 56, located on the tips of ferrules 16, 18
(see Figure 2 and column 6, lines 3-18)” (Ans. 11). The Examiner finds that
“Sauer „666 states that element 56 is swaged around a suture, and since
swaging includes spreading the material into shape, it forms a projection”
(Ans. 11). The Examiner finds the claim “language is functional since the
claim does not positively recite grooves. The projections 56, are capable of
being received within grooves, and therefore, Sauer „666 reads on the
claimed limitations” (Ans. 11).
Appellant contends that “Examiner has not cited to any prior art that
teaches or describes projections or grooves on ferrule holders on such a
tongue member to better secure a ferrule in the tongue member” (App. Br.
6). Appellant contends that the “„666 patent completely fails to teach a
ferrule holder including projections receivable within grooves of the tongue
for retaining the ferrule holder on the tongue” (App. Br. 6).
We conclude that Appellant has the better position. We begin by
interpreting claim 51, which states that the tip comprises “a second wall . . .
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comprising a ferrule holder . . . wherein the ferrule holder includes
projections receivable within grooves of the tongue” (Claim 51). We agree
with Appellant that claim 51 unambiguously requires projections on the
ferrule holder.
The Examiner points to element 56 as a projection, but Sauer teaches
that “closed end 56 of each respective ferrule portion 16 and 18 is fastened
to a length of suture material 20 by, for example, swaging the ferrule onto
the suture” (Sauer, col. 6, ll. 14-17; FF 6). Sauer does not teach that there is
a projection onto the ferrule holder, only that the ferrule itself may be
attached to a suture by “swaging” (or forged together). The Examiner has
not provided evidence which establishes that even when the ferrule is
attached to suture material by swaging, any sort of projections would be
present on the ferrule holder as required by claim 51. See MEHL/Biophile
Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency
... may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.”)
The Examiner also finds that the claim “language is functional since
the claim does not positively recite grooves” (Ans. 11). We are not
persuaded. Claim 51 specifically requires a tongue and a ferrule holder with
projections “receivable within grooves of the tongue” (Claim 51). The only
reasonable interpretation of this language requires that the tongue
incorporates grooves since otherwise the claim language regarding the
relationship of the ferrule holder and the grooves of the tongue would be
superfluous.
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Claim 57
Appellant does not separately traverse the rejection of claim 57, which
indirectly depends from claim 53, in their Appeal Brief.
Since the Examiner maintained the identical rejection in the Final
rejection and in the Answer, we summarily affirm the rejection. See Manual
of Patent Examining Procedure § 1205.02 (“If a ground of rejection stated
by the examiner is not addressed in the appellant‟s brief, that ground of
rejection will be summarily sustained by the Board.”); See also In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an
uncontested rejection of claims under 35 U.S.C. 112, second paragraph, and
on appeal the Federal Circuit affirmed the Board‟s decision and found that
the appellant had waived his right to contest the indefiniteness rejection by
not presenting arguments as to error in the rejection on appeal to the Board).
SUMMARY
In summary, we affirm the rejection of claim 12 under 35 U.S.C. §
102(b) as anticipated by Sauer. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claims 13, 53-56, and 58 as these claims were not
argued separately.
We reverse the rejection of claim 51 under 35 U.S.C. § 103(a) as
obvious over Sauer. We necessarily reverse the rejection of dependent
claims 5-10, 20, 21, 23-39, 42-45, and 52 under 35 U.S.C. § 103(a) as
obvious over Sauer.
We summarily affirm the rejection of claim 57 under 35 U.S.C. §
103(a) as obvious over Sauer.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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