Ex Parte Shikhman

Patent Trial and Appeal Board

Oct 31, 2016

10988996 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/988,996 11115/2004
23413 7590 11/02/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Oleg Shikhman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
INE0093US2 3221
EXAMINER
YABUT,DIANED
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG SHIKHMAN
Appeal2015-001109
Application 10/988,996
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
uECISION ON APPEAL
STATEMENT OF THE CASE
Oleg Shikhman (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1,
3-10, 12-18, and 22-24 as unpatentable over Sauer (US 5,643,289; iss. July
1, 1997) and Johnson (US 6,045,572; iss. Apr. 4, 2000); and (2) claims 11,
19, and 20 as unpatentable over Sauer, Johnson, and Wozniak (US
4,470,415; iss. Sept. 11, 1984). Claims 2 and 21 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001109
Application 10/988,996
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "an instrument ... for closing a
hole or puncture in a blood vessel. More particularly, this disclosure relates
to an improved ferrule closure for a hole or puncture in a blood vessel."
Spec. i-f 2, Figs. 1, 3. Claims 1 and 22 are independent. Claim 1 is
illustrative of the claimed subject matter and recites:
1. A kit for securing suture material within a body of a
patient, the kit comprising:
a percutaneous crimping and cutting device; and
a biocompatible surgical ferrule loaded into the
percutaneous cutting and crimping device, the ferrule having a
body portion having a first flared region, wherein said body
portion has a first end portion and a second end portion, and
wherein the first flared region is provided on the first end portion
and wherein an aperture of the body portion is provided between
said first end portion and said second end portion and is
configured to receive at least one suture strand, and at least a
portion of the body portion is deformable to secure the suture
strand within the aperture, wherein the first flared region extends
gradually outwardly from the longitudinal axis of the body
portion at increasing angles past 90 degrees such that it changes
direction with regard to the longitudinal axis of the body portion.
ANALYSIS
Obviousness over Sauer and Johnson
Claims 1, 3-10, 12-15, and 22-24
Appellant argues claims 1, 3-10, 12-15, and 22-24 as a group. App.
Br. 5-7. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(4). Claims 3-10, 12-15, and 22-24 stand or fall with claim 1.
We address claims 16-18 separately below.
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Application 10/988,996
The Examiner finds that Sauer discloses all the limitations of claim 1
except for "the ferrule having a first flared region extending gradually
outwardly from the longitudinal axis of the body portion at increasing angles
past 90 degrees such that it changes direction with regard to the longitudinal
axis of the body portion." Final Act. 2-3. The Examiner further finds that
Johnson teaches "a biocompatible surgical ferrule having a first flared region
(flange 84 in Figure 9 or 152 in Figures 25-27; col. 11, lines 32-35)" (Id. at
3) wherein
Id.
[ t ]he first flared region extends gradually outwardly from the
longitudinal axis of the body portion at increasing angles (at least
in the inner aperture surfaces of the ferrules of Figures 9 and
25-27 which expand the inner diameter of the body portion) up
to about 45 degrees or 90 degrees from the longitudinal axis of
the body portion.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of invention "to provide a first flared
region to the ferrule of Sauer et al., as taught by Johnson et al., in order to
seat the ferrule securely against tissue and prevent movement of the ferrule
relative to tissue ([Johnson] col. 8, lines 14--16 and col. 11, lines 45-50)."
Id.; see also Ans. 3.
Appellant begins his remarks with a discussion of Johnson and how
that reference describes a sternum closure device that utilizes grommets that
are placed in holes in the sternum and through which a wire suture is
threaded and tensioned to draw the grommets (and thus the sternum)
together. App. Br. 6; see also Reply. Br. 2. Appellant emphasizes that
Johnson does not describe a crimping and cutting device (or kit) and that the
Johnson device does not deform the grommets to secure a suture through the
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Application 10/988,996
apertures in the grommets. App. Br. 6. Appellant follows his discussion of
Johnson with a brief summary of the Sauer reference which, according to
Appellant, teaches a crimping and cutting device using a standard ferrule
and "not the shaped, crimped ferrule that is presently claimed." Id.
Appellant further contends:
In order for the proposed rejection to be viable, one skilled in the
art would need to be motivated to take the grommet of Johnson,
which is NOT ever crimped, and which is specific to insertion
into the sternum of a patient in an open procedure with tightening
of adjacent grommets together via a wire, and instead use that
non-crimped sternum grommet in the minimally invasive
percutaneous device of Sauer for a completely different reason.
Indeed, the Johnson grommet is actually inserted IN a hole in the
sternum and could not be crimped in the manner proposed by the
Examiner (the tube of the grommet is inserted through bone).
Id. at 6-7.
We are not persuaded by Appellant's contentions because they
misapprehend the Examiner's rejection and are not responsive to the key
aspects of the Examiner's proposed rejection. As noted by the Examiner in
the Answer, Sauer and not Johnson is relied upon for teaching of a
percutaneous crimping and cutting device used with a ferrule to secure a
suture. Ans. 2. As the Examiner additionally notes: "the basis for the
rejection does not involve using the ferrule of Johnson with the percutaneous
device of Sauer, but rather modifying the distal region of the ferrule of Sauer
with the flared region of the ferrule in Johnson." Id. at 2-3. Further, the
Examiner's findings and conclusions regarding the combined teachings of
Sauer and Johnson are reasonable and based on rational underpinnings. See
Final Act. 2-3; see also Ans. 3. Appellant does not apprise us of Examiner
error. See App. Br. 7.
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Application 10/988,996
Appellant further contends that the Examiner engages in
impermissible hindsight in combining the references. See App. Br. 7.
We are not persuaded. The Examiner cites specific teachings in the
references themselves, not Appellant's disclosure, in support of the
Examiner's articulated reasoning for combining the references as proposed
in the rejection. See Final Act. 2-3; see also Ans. 3.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 1 as unpatentable over Sauer and Johnson. We further
sustain the Examiner's rejection of claims 3-10, 12-15, and 22-24, which
fall with claim 1.
Claims 16-18
In the remarks concerning claims 11, 19, and 20, Appellant also
mentions claims 16-18, which were not included in the rejection of claims
11, 19, and 20 based on Sauer, Johnson, and Wozniak but, rather, were
discussed in the rejection of 1, 3-10, 12-18, and 22-24 based on Sauer and
Johnson. See Appeal Br. 7-8; see also Final Act. 2-5. Regarding claims 16
and 17, the Examiner relies on Sauer, not Wozniak, for teaching of a
surgical ferrule fabricated from deformable biocompatible/bioabsorbable
material. Final Act. 2 (citing Sauer at col. 6: 19-26); see also Ans. 3. Even
though the Examiner relies on Sauer for teaching a surgical ferrule made of
biocompatible/bioabsorbable material, we have not been apprised of error as
to why the ferrule cover cannot be made of the same material. Regarding
claim 18, as correctly noted by the Examiner, non-bioabsorbable but
biocompatible materials such as expanded polytetrafluoroethylene or Teflon
materials also can be used to make the ferrule cover
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Application 10/988,996
since it was known in the art that non-bioabsorbable materials
are biocompatible materials commonly used in surgical devices,
as well as Teflon material has low friction and non-reactivity and
since it has been held to be within the general skill of a worker
in the art to select a known material on the basis of its suitability
for the intended use. 1
Final Act. 4--5; see also Ans. 3--4. Appellant does not apprise us of
Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 16-18 as unpatentable over Sauer and Johnson.
Obviousness over Sauer, Johnson, and Wozniak
Claims 11, 19, and 20
As for claims 11, 19, and 20, the Examiner finds that Wozniak
"teaches a cover material 22 being compliant such that it will at least
conform around adjacent material, and is secured to the body portion by ...
shrinking ... in order to form a tight leak-proof bond (col. 8, lines 15-40)."
Final Act. 5. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of invention "to have the cover
material be compliant and be secured to the body portion, as taught by
Wozniak, to Sauer et al. and Johnson et al. in order to form a tight bond
between the two members 151and152 of Johnson et al., for instance." Id.
1 See In re Leshin, 277 F.2d 197, 199 (CCPA 1960); In re Hopkins, 342 F.2d
1010, 1015 (CCPA 1965); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.").
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Application 10/988,996
Similar to the argument raised against Johnson, Appellant argues that
Wozniak is "not a suture securing, deformable ferrule. There is no bore for
receiving suture, and the bore is certainly not crimped or otherwise
deformed over the suture." App. Br. 7. Appellant continues "[ t ]he
Examiner simply uses Wozniak because a form of cover is used (in this case,
a shrinkable sleeve) over [an] anastomosis device, but this does not make up
at all for the noted deficiencies of Gardiner."2 Id.
Appellant's arguments are unpersuasive in that they do not apprise us
of error in the Examiner's findings or reasoning. For example, Appellant
does not inform us why it would be improper to provide the modified ferrule
of Sauer with a compliant cover completely covering the flared region.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 11, 19, and 20 as unpatentable over Sauer, Johnson, and
Wozniak.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3-20,
and 22-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 "Gardiner" is not a cited reference and we consider reference to Gardiner to
be a typographical error. It is unclear to which cited patent(s), Sauer and/or
Johnson, Appellant is referring by reference to "Gardiner." However, we will
construe the reference to "Gardiner" to mean the combination of the Sauer
and Johnson references set forth by the Examiner.
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