Ex Parte Sekine et al

Board of Patent Appeals and Interferences

Jan 9, 2012

11375946 (B.P.A.I. Jan. 9, 2012)

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.
11/375,946 03/15/2006 Ryuta Sekine 19682 4568
23389 7590 01/09/2012
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
BLATT, ERIC D
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
01/09/2012 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 RYUTA SEKINE, AKIRA SUZUKI,
RAIFU MATSUI, YUTA OKADA, and KENSEI NAKAHASHI
__________

Appeal 2010-007295
Application 11/375, 946
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

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

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Statement of the Case
Background
“The present invention relates to a medical ligation apparatus which is
a surgical instrument used to be inserted in a body to retain a ligation target
in the body in a state in which ligation is established by a detention snare”
(Spec. 1, ll. 17-21).
The Claims
Claims 1-3 and 5 are on appeal. Claim 1 is representative and is
reproduced below:
1. A medical ligation apparatus comprising:
a detention snare adapted to be inserted into a body
and retained therein; and
a snare manipulating instrument which
manipulates the detention snare,
the detention snare having:
a snare wire having a distal end and a proximal
end, the snare wire having formed thereat a ligation loop
section which is expandable in a loop shape at the distal
end side thereof;
a coupling ring provided at a proximal end side of
the snare wire; and
a ring shaped throttle member into which the
proximal end side of the snare wire is inserted in a press-
fitted state,
the snare manipulating instrument having:
an elongated insert section having a distal end and
a proximal end and adapted to be inserted into a body;
and
a snare coupling section provided at a distal end of
the insert section, the snare coupling section having the
coupling ring removably coupled therewith,
wherein the medical ligation apparatus comprises:
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ligation means for ligating a ligation target in a
loop section of the snare wire by manipulating the loop
section of the snare wire to be throttled in a throttle
direction by manipulating the throttle member to be
pushed out to a distal end side of the snare wire in a state
in which the detention snare is coupled with the snare
coupling section and a living tissue of a ligation target is
inserted into the loop section of the snare wire; and
living tissue cut-in preventing means which is
disposed in at least one of a distal end side and a rear
end side of the loop section of the snare wire, and when
the living tissue of the ligation target is ligated by means
of the snare wire, the means comprising a contact face
on which a contact area with the living tissue is greater
than a contact area of the snare wire and the living
tissue;
wherein the living tissue cut-in preventing means
has a cutaway setting section for, when resecting an
upper side of a ligated site at a root side of a living tissue
of a ligation target ligated by the detention snare, setting
a predetermined cutaway between a resection face at the
upper side of the ligated site and the ligated site.

The issue

The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a) as
obvious over Yamamoto1 and Onuki2 (Ans. 3-5).
The Examiner finds that “Yamamoto discloses a medical ligation
apparatus (Figure 1) comprising a detention snare 11 inserted into a body
and retained therein, and a snare manipulating instrument 1 which
manipulates the detention snare” (Ans. 3). The Examiner finds that

1 Yamamoto T., JP 11244294 A, issued Sep. 14, 1999.
2 Onuki et al., US 2003/0236535 A1, published Dec. 25, 2003.
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Yamamoto “does not disclose living tissue cut-in preventing means” (Ans.
4). The Examiner finds that “Onuki discloses that it was well known at the
time of the invention to provide such wire loops with an element with a
relatively large surface area to engage a tissue surface and prevent the wire
from cutting into a tissue surface” (Ans. 4).
The Examiner finds it obvious “to modify the apparatus of Yamamoto
by providing cut-in preventing means on the front and/or back of the wire
loop for purposes such as preventing the wire from cutting into or through
the tissue as taught by Onuki” (Ans. 4).
Appellants contend that “Yamamoto does not disclose at least a
structure corresponding to the ‘living tissue cut-in preventing means’ as
recited in the medical ligation apparatus of claim 1.” (App. Br. 7).
Appellants contend that “Yamamoto suffers from at least the following
disadvantages. The detention snare of Yamamoto . . . easily and strongly
cuts into the living tissue . . . Thus, for example, there is a possibility that a
blood flow in the inside of the ligated potion is inhibited” (App. Br. 7).
Appellants contend that there are “structural differences between the
medical ligation apparatus of claim 1 and the device disclosed by Onuki”
(App. Br. 8). In particular, Appellants contend that in the “‘T-shaped bar
69’ of Onuki when two plate pieces living tissue are sutured and joined
together, the thread 21 does not form a loop. In comparison, the snare of the
medical ligation apparatus of claim 1 forms a loop” (App. Br. 8). Appellants
contend that “the technique of detaining the ‘T-shaped bar 69’ on the living
tissue in advance and resetting the living tissue that is on the upper side of
the ‘T-shaped bar 69’ is not disclosed or suggested in Onuki” (App. Br. 9).
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Appellants also contend that “compared with the ‘T- shaped bar 69’ of
Onuki, it is possible for the medical ligation apparatus of claim 1 to block
the hole more certainly” (App. Br. 9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Yamamoto and Onuki render claim 1
obvious?
Findings of Fact
1. The Specification teaches a “living tissue cut-in preventing
means which is disposed in at least one of a distal end side and a rear end
side of the loop section of the snare wire” (Spec. 6, ll. 11-13).
2. Figure 3 of the Specification is reproduced below:

“FIG. 3 is a longitudinal cross section of essential portions showing a state
in which a detention snare is coupled with the snare manipulating instrument
of the medical ligation apparatus” (Spec. 12, ll. 22-26).
3. The Specification teaches “as shown in FIG. 3, in the detention
snare 2, a distal end chip (living tissue cut-in preventing means) 23 is fixed
to the distal end of the loop section 4 of the snare wire 5” (Spec. 21, ll. 9-
12).
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4. The Specification teaches that “[t]his distal end chip 23
comprises a contact face 23a on which a contact area of a living tissue H of a
ligation target is greater than that of the snare wire 5. Further, the throttle
member 7 is formed of a rear end ring (living tissue cut-in preventing
means) 24” (Spec. 21, ll. 12-17).
5. Figure 1 of Yamamoto is reproduced below:

“[Fig. 1] A cross-sectional drawing showing the state when the ligation part
is stored within the sheath of the medical ligation device of the first
embodiment” (Yamamoto 19).
6. Yamamoto teaches
a medical ligation device having a loop member that forms a
loop with a flexible member and an inner hole where the
overlap part, which is the overlap of the above mentioned
loop member, is pushed in and by inserting the above
mentioned overlapped loop member into the above
mentioned inner hole has; a cylindrical stopper member
where a ligation loop is formed on the tip side of the above
mentioned loop member; a mounting loop that is formed on
the base end side of the above mentioned loop; a hook part
where the above mentioned mounting loop will be attached
in a removable manner; and an operation means that
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conducts the operation of tying the tissue by guiding the
above mentioned ligation loop into the body while the above
mentioned hook is attached thereto wherein, a mounting aid
means that covers the vicinity of the above mentioned
mounting loop and the vicinity of the above mentioned hook
part, is placed, at least during the attachment.

(Yamamoto 4-5 ¶ 0006).
7. Figure 22 of Onuki is reproduced below:

“FIG. 22 is a perspective view showing a ligating unit according to a second
modified example of the second embodiment” (Onuki 5 ¶ 0095).
8. Onuki teaches that “[w]hen the threads 21a and 21b are pulled
after the T-shaped bar 36 has been pushed out from the needle 28, the T-
shaped bar 36 is hooked on the living tissues 47b. Thus, the threads 21a and
21b punctured into the living tissues 47a and 47b do not slip off” (Onuki 11
¶ 0207).
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9. Figure 21B of Onuki is reproduced below:

“FIG. 21B is a longitudinal cross section showing a state in which living
tissues are ligated by a ligating unit according to the first modified example
of the second embodiment” (Onuki 5 ¶ 0094).
10. Onuki teaches that
as shown in FIG. 21B, while the living tissues 47a and 47b
are pinched between the receiving plate member 81 and the
T-shaped bars 69 each, the thread 21 can be received by the
receiving plate member 81. At this time, the thread 21 does
not come into direct contact with the surface of the living
tissue 47a because the thread is positioned on the surface of
the receiving plate member 81.

(Onuki 16 ¶ 0285).
11. Onuki teaches that:
Therefore, in the ligating unit 67 of the present modified
example, when the ruptured living tissues 47a and 47b are
ligated by the thread 21, the thread 21 does not come into
direct contact with the living tissue 47a. Thus, there is no
possibility that the thread 21 cuts into the living tissue 47a,
and the living tissue is ruptured.

(Onuki 16 ¶ 0286).

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Principles of Law
The use of the term “means” in the claim raises a presumption that the
means-plus-function element is intended. See Sage Prods. Inc. v. Devon
Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997). Nevertheless, such
presumption is not applicable if the claim recites sufficient structures for
carrying out the function of the means-plus-function element. See Envirco
Corp v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364-65 (Fed. Cir. 2000).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Claim Interpretation
Claim 1 is drawn to a medical ligation apparatus with “living tissue
cut-in preventing means.” Claim 1 recites that the “living tissue cut-in
preventing means” are placed on either a “distal end side and a rear end side
of the loop section of the snare wire.” Claim 1 requires that the “living
tissue cut-in preventing means” comprises “a contact face on which a
contact area with the living tissue is greater than a contact area of the snare
wire” and “a cutaway setting section”. By reciting the structural elements of
distal or rear location on the snare wire, “a contact face” and “a cutaway
setting section,” claim 1 recites sufficient structure to rebut the presumption
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that the “living tissue cut-in preventing means” is in means-plus-function
format, so we conclude that 35 U.S.C. § 112, sixth paragraph does not apply.
Obviousness
There is no dispute that Yamamoto teaches a medical ligation
apparatus which comprises all of the elements required by claim 1 other than
the “living tissue cut-in preventing means” (FF 5-6; Ans. 3-4; App. Br. 7).
Onuki teaches a structure, such as the bar 36 or bar 69, which is
disposed on the distal or rear end of a snare wire (FF 7, 9). In figure 21B
and figure 22, Onuki shows that the bar 36 or bar 69 comprise a contact face
with a contact area which is greater than the contact area of the snare wire
(FF 7, 9). Onuki specifically teaches that
as shown in FIG. 21B, while the living tissues 47a and 47b
are pinched between the receiving plate member 81 and the
T-shaped bars 69 each, the thread 21 can be received by the
receiving plate member 81. At this time, the thread 21 does
not come into direct contact with the surface of the living
tissue 47a because the thread is positioned on the surface of
the receiving plate member 81.

(Onuki 16 ¶ 0285; FF 10). Onuki teaches that “thread 21 does not come into
direct contact with the living tissue 47a. Thus, there is no possibility that the
thread 21 cuts into the living tissue 47a, and the living tissue is ruptured”
(Onuki 16 ¶ 0286; FF 11).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
incorporate the bars or plates of Onuki into the ligation device of
Yamamoto, since Onuki expressly teaches that the incorporation of bar 36
and bar 69 elements into a snare wire ligation device function to prevent the
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snare wire from contacting and injuring living tissue (FF 10-11; see Ans. 4).
Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that there are “structural differences between the
medical ligation apparatus of claim 1 and the device disclosed by Onuki”
(App. Br. 8). In particular, Appellants contend that in the “‘T-shaped bar
69’ of Onuki when two plate pieces living tissue are sutured and joined
together, the thread 21 does not form a loop. In comparison, the snare of the
medical ligation apparatus of claim 1 forms a loop” (App. Br. 8).
We are not persuaded. While Appellants are correct that the bar 69 in
figure 21B of Onuki is not connected to wire which forms a loop, figure 22
of Onuki shows bars 36a and 36b are connected to wire 21 where wire 21
forms a loop (FF 7). Similarly, Yamamoto teaches a ligation device with a
loop (FF 1). Thus, when the ordinary artisan incorporates the bars 36 or 69
of Onuki (FF 7, 9) into the wire loop containing ligation device of
Yamamoto, the ordinary artisan would follow the disclosure of figure 22 to
achieve Onuki’s goal of preventing the wire from cutting into living tissue
(FF 10-11).
Appellants contend that “the technique of detaining the ‘T-shaped bar
69’ on the living tissue in advance and resecting the living tissue that is on
the upper side of the ‘T-shaped bar 69’ is not disclosed or suggested in
Onuki” (App. Br. 9).
We are not persuaded. The instant claims are product claims drawn to
a medical ligation apparatus (see Claim 1) and are not method claims drawn
to techniques of detaining the “T-shaped bar 69”. There is no requirement
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for this technique in claim 1. “[L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Appellants also contend that “compared with the ‘T- shaped bar 69’ of
Onuki, it is possible for the medical ligation apparatus of claim 1 to block
the hole more certainly” (App. Br. 9).
We are not persuaded. Claim 1 does not require any level of certainty
of blocking a hole, nor is there any discussion in the claim regarding this
function of the medical ligation device. Van Geuns, 988 F.2d at 1184. If this
argument is intended to demonstrate an unexpected result, there is no
evidence presented supporting such a result. See In re Soni, 54 F.3d 746,
750 (Fed. Cir. 1995) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements…
[do] not suffice.”) Also see In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney's argument in a brief cannot take the place of evidence.”).
Conclusion of Law
The evidence of record supports the Examiner’s finding that
Yamamoto and Onuki render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Yamamoto and Onuki. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 2, 3, and 5, as these
claims were not argued separately.

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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

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