Ex Parte Shikhman et al

Patent Trial and Appeal Board

Mar 16, 2016

10726034 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
101726,034 12/01/2003
23413 7590 03/18/2016
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.
INE0061USD 4728
EXAMINER
YABUT,DIANED
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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 and PAUL A. SCIRICA
Appeal2014-002626
Application 10/726,034
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Oleg Shikhman and Paul A. Scirica (Appellants) 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 16-34, which
are all the pending claims. Appeal Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to an instrument and a method for
closing a hole or puncture in a blood vessel. More particularly, this
1 The Appeal Brief identifies Interventional Therapies, LLC. as the real party
in interest. Appeal Br. 2.
Appeal2014-002626
Application 10/726,034
disclosure relates to a handle assembly for a surgical instrument." Spec.
para. 2. Claims 16 and 30 are independent. Claim 16 illustrates the claimed
subject matter:
16. A crimping and cutting device comprising:
a hammer head having a first side and an opposite second
side, and a ferrule engaging edge located on the second side;
a tip having a distal end and a proximal end, the tip having
a hammer head opening for receiving the hammer head, the
hammer head opening extending from the distal end of the tip to
the proximal end of the tip, the tip further having a ferrule
accepting opening near the distal end of the tip, wherein a portion
of said hammer head is configured to cut suture extending
through a ferrule positioned within said ferrule accepting
opening against a second surface proximally of said ferrule,
wherein said portion of said hammer head is an edged hammer
portion configured to cut said suture upon contact with said
second surface.
Appeal Br. 8 (Claims App.).
REJECTIONS
Claims 16-25, 27, 30, and 31 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sauer '592 (US 6,641,592 Bl, issued Nov. 4, 2003) and
Buelna (US 5,242,459, issued Sept. 7, 1993).
Claims 26 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer '592, Buelna, and Sauer '639 (US 5,839,639, issued
Nov. 24 1998).
Claims 28, 29, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer '592, Buelna, and Sauer '289 (US 5,643,289, issued
July 1, 1997).
2
Appeal2014-002626
Application 10/726,034
ANALYSIS
Obviousness of claims 16--25, 27, 30, and 31 over Sauer '592 and Buelna
Appellants argue for the patentability of claims 16-25, 27, 30, and 31
together as a group. Appeal Br. 5. We select claim 16 as representative to
decide the appeal with respect to the group as to the ground of rejection.
The remaining claims of the group stand or fall with claim 16. See 37
C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Sauer '592 discloses that a portion of hammer
head 134 "is configured to cut suture (indirectly via 144 in Figures 16D-E)
extending through a ferrule 140 positioned within said ferrule accepting
opening indirectly against a second surface" (Final Act. 3 (citing Sauer '592,
Figs. 16D-E)), but does not disclose that the portion of hammer head 134 is
an edged hammer portion configured to cut the suture upon contact with the
second surface, as claimed. Id. at 5. The Examiner also finds that Buelna
teaches an edged hammer portion 36 configured to cut suture 56 upon
contact with an inner surface of shaft 12. Final Act. 5 (citing Buelna, Figs.
4---6). The Examiner states that "the sliding cutter 36 would be expected to
perform the same functional cutting properties of the hammer head
134/pivoting cutter 144 mechanism in Sauer '592." Ans. 7 (emphasis
added). The Examiner concludes that it would have been obvious to
substitute "a functionally equivalent cutter 36 [of Buelna] on a 'portion of
said hammer head' 134 [of Sauer '592] ... to have a single element that
both deforms the ferrule as well as cuts the suture in one simple motion." Id.
(emphasis added).
Appellants contend that Buelna does not disclose a "crimping
hammer," but rather, a "cutting member" 30. Appeal Br. 5. According to
3
Appeal2014-002626
Application 10/726,034
Appellants, the device resulting from combining Sauer '592 and Buelna
"would include a crimping hammer alongside a separate cutting blade,
which slides distally along a wall to cut suture extending through a side
aperture." Id.
Figures 16A-16E of Sauer '592 depict operation of the suture
securing instrument. As rod 108 is retracted into tube 104, hammer shaped
section 134 crimps sleeve member 140 and then causes cutting surface 144d
of knife 144 to cut a suture extending through sleeve member 140 upon
contact of cutting surface 144d with a surface of distal end 106 (Fig. 16E).
See Sauer '592, col. 14, 11. 28-38. We understand that the Examiner's
rejection modifies Sauer '592's instrument in view of Buelna in two ways.
Buelna's device includes cutting member 30, which is moved axially
within shaft 12 to cause cutting edge 36 to cut suture. See Buelna, col. 5, 11.
49-55; Figs. 4---6. We understand that the Examiner's combination modifies
a portion of Sauer '592's hammer shaped section 134 to include an edged
hammer portion configured to directly cut suture upon contact with the
second surface of distal end 106. This modification substitutes Buelna's
cutting edge 36 on the portion of hammer shaped section 134. Although the
Examiner does not explicitly state that the modification of Sauer '592 would
eliminate knife 144, it is clear that the combination would eliminate the need
to include knife 144 because its suture cutting function would be provided
by modified hammer shaped section 134. We also note that the Examiner
does not indicate that the combination would include knife 144 in addition to
the modified hammer shaped section 134. In that hammer shaped section
134 also includes "a ferrule engaging edge" to engage sleeve member 140
(see Figs. 16C and 16D), modified hammer shaped section 134 would both
4
Appeal2014-002626
Application 10/726,034
deform sleeve member 140 and cut suture in one motion. Accordingly, our
understanding of the combination is consistent with the Examiner's
explanation that the modification of Sauer '592 would result in "a single
element that both deforms the ferrule as well as cuts the suture in one simple
motion." Ans. 7 (emphasis added).
Appellants also contend that "[t]he largest problem is that the
Examiner is attempting to redefine the express teachings of Buelna by
changing the specifically stated 'cutting member' 30 with cutting edge 36
into the Examiner's desired 'hammer 30' with an 'edged hammer portion
36. "' Reply Br. 3--4.
We disagree with this contention. Although the Examiner does refer
to Buelna's cutting edge 36 of cutting member 30 as "an edged hammer
portion" (Final Act. 5), the Examiner also refers to this same element as
sliding cutter 36 (Ans. 7), consistent with Buelna's disclosure. The
Examiner's rejection relies on 'Sauer 592, not Buelna, for teaching a
hammer with an edged hammer portion. The rejection relies on Buelna for
teaching a sliding cutting member having a cutting surface to cut suture, and
modifies Sauer '592' s hammer shaped section to include such suture cutting
surface. Appellants' contentions do not apprise us of any error in the
Examiner's findings, or in the Examiner's reasoning for combining the
teachings of Sauer '592 and Buelna, as discussed above.
For the above reasons, we sustain the rejection of claim 16, and claims
17-25, 27, 30, and 31 falling with claim 16, as unpatentable over Sauer '592
and Buelna.
5
Appeal2014-002626
Application 10/726,034
Obviousness of claims 26 and 32 over Sauer '592, Buelna, and Sauer '639
Appellants contend that Sauer '289 fails to cure the deficiencies of
Sauer '592 and Buelna in regard to the rejection of claim 16. As we find no
deficiency in the rejection of claim 16, we also sustain the rejection of
claims 26 and 32 as unpatentable over Sauer '592, Buelna, and Sauer '639
for the same reasons as those discussed in relation to claim 16.
Obviousness of claims 28, 29, 33, and 34 over Sauer '592, Buelna,
and Sauer '289
Appellants contend that Sauer '289 does not describe "an edged
hammer portion configured to cut said suture upon contact with a second
surface." However, as discussed above in relation to claim 16, Appellants
do not apprise us of any error in the Examiner's conclusion that it would
have been obvious to combine the teachings of Sauer '592 and Buelna to
include this claimed feature. Accordingly, we also sustain the rejection of
claims 28; 29; 33; and 34 as unpatentable over Sauer '592; Buelna; and
Sauer '289 for the same reasons as those discussed in relation to claim 16.
DECISION
The Examiner's decision to reject claims 16-34 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
6