Ex Parte Surti

Board of Patent Appeals and Interferences

Jul 23, 2012

11448494 (B.P.A.I. Jul. 23, 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.
11/448,494 06/07/2006 Vihar C. Surti 10000-679 5705
48003 7590 07/24/2012
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/24/2012 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 VIHAR C. SURTI
____________________

Appeal 2010-004623
Application 11/448,494
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004623
Application 11/448,494
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STATEMENT OF THE CASE
Vihar C. Surti (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3-15, and 17-21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A medical device, comprising:
an elongate shaft having a working lumen; and
a staple disposed in an open position in the working
lumen, the staple comprising a first tine and a second tine
connected by a bridge portion, the staple further comprising a
shape memory material and being configured to transition from
the open position to a closed position at or above a
transformation temperature of the shape memory material,
wherein the first tine is disposed distal of the second tine
in the working lumen, the first tine extending generally along a
line of the bridge portion and an end of the first tine is generally
oriented toward a distal end of the shaft and
wherein an end of the second tine is bent toward the first
tine so that the end of the second tine is generally oriented
toward a distal end of the shaft.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Krumme
Allen
US 4,485,816
US 6,113,611
Dec. 4, 1984
Sep. 5, 2000
Rejections
Appellant requests our review of the following rejections:
1. claims 1, 3-6, 8-15, and 21 under 35 U.S.C. § 102(b) as anticipated by
Allen;
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Application 11/448,494
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2. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Allen; and
3. claims 17-20 under 35 U.S.C. § 103(a) as unpatentable over Allen and
Krumme.
OPINION
Appellant groups claims 1, 3-6, and 8-10 together in contesting the
anticipation rejection. App. Br. 7; Reply Br. 2. Thus, in accordance with 37
C.F.R. § 41.37(c)(1)(vii) (2011), claims 3-6 and 8-10 stand or fall with
independent claim 1.
Appellant argues that Allen does not disclose a medical device as
called for in claim 1 wherein the staple has both ends oriented toward the
distal end of the shaft. Reply Br. 2. Specifically, Appellant points out that
in figure 9D, Allen’s first tine “is no longer disposed distal of the second tine
in the working lumen” and in figure 9A, Allen’s fastener 20 “is clearly
straight and does not show that the second tine is bent toward the first tine
and ends of the first and second tines are generally oriented toward a distal
end of the shaft in the working lumen.” Id.
While Appellant’s observations about figures 9A and 9D of Allen are
factually correct, Appellant’s argument is not commensurate with the scope
of claim 1, which does not require simultaneous occurrence of (1) the first
tine being disposed distal of the second tine in the working lumen, (2) the
first tine extending generally along a line of the bridge portion and an end of
the first tine being generally oriented toward a distal end of the shaft, and
(3) an end of the second tine being bent toward the first tine so that the end
of the second tine is generally oriented toward a distal end of the shaft. With
Allen’s deployment instrument 150 in the state depicted in figure 9A, the
fastener 20 is straight, with the first tine (distal portion) disposed distal of
the second tine in the working lumen of the shaft (guide tube 151) and
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generally oriented toward the distal end of the shaft. Once the restraining
tube 154 is withdrawn to the point where it has cleared the fastener 20, the
second tine (proximal portion) begins to assume its remembered, coiled
shape 22, shown in figure 9D, and in so doing, is bent toward the first tine
(distal portion forming lower coil 24) so that the end of the second tine
extends toward a distal end of the shaft en route to the fully coiled shape
shown in figure 9D. Thus, Allen’s deployment instrument and fastener 20
satisfy both of the “wherein” limitations of claim 1.
For the above reasons, we sustain the rejection of claim 1 and of
claims 3-6 and 8-10, which fall with claim 1.
Appellant does not assert any arguments aside from those directed to
claim 1 in contesting the rejection of claim 7 as unpatentable over Allen.
App. Br. 8. Having found the argument contesting the rejection of claim 1
unconvincing for the reasons discussed above, we also sustain the rejection
of claim 7 for the same reasons.
The issue raised by Appellant in contesting the rejection of claim 11
as anticipated by Allen is whether Allen’s deployment instrument comprises
an axial slot in the distal portion of the elongate shaft. App. Br. 7.
The Examiner found that “Allen shows a slot (narrow passage) of the
tube (54) from which the staple is delivered to fasten the tissues.” Ans. 7.
Appellant does not contest the Examiner’s finding that the narrow
passage of tube (needle) 54 is a slot. Rather, Appellant argues that “[i]f the
narrow passage in the tube 54 is considered the slot, then the tube 54 lacks a
working lumen.” Reply Br. 3. That argument is not persuasive, because the
Examiner found that Allen’s sleeve 51, not needle 54, corresponds to the
elongate shaft of claim 11. See Ans. 4. Allen’s sleeve 51 has a working
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lumen. Thus, Appellant’s argument does not apprise us of error in the
Examiner’s rejection of claim 11.
We therefore sustain the rejection of claim 11 and of dependent
claims 12-15 and 21, for which Appellant does not present any separate
arguments apart from those asserted for claim 11 (App. Br. 7), and which
thus fall with claim 11 pursuant to 37 C.F.R. § 41.37(c)(1)(vii), as
anticipated by Allen.
For essentially the reason articulated by Appellant in the paragraph
bridging pages 3 and 4 of the Reply Brief, we reverse the rejection of claim
17 and its dependent claims 18-20 as unpatentable over Allen and Krumme.
Allen’s deployment instrument and system do not, and are not
intended to, insert an end of the second tine of the fastener 20 into any
portion of the body tissue. Rather, as is evident from the sequences depicted
in figures 5A-5F and 9A-9D, Allen’s deployment instrument inserts the first
tine into and through two layers of tissue, allowing the first tine to assume its
remembered shape of a coil on the distal side 16 of the tissue, and then is
withdrawn to allow the second tine to assume its remembered shape of a coil
on the proximal side 14 of the tissue, thereby clamping the tissue between
the coils. See col. 4, ll. 35-38.
Krumme, on the other hand, discloses a staple and staple applicator,
and a method of applying the staple, wherein the surgeon grasps the staple
with the jaw portions of the applicator, moves the staple to a position
spanning a breach in the tissues to be sutured, and activates the electrical
resistance heating circuit to heat the staple. Col. 6, ll. 24-36. Once the
staple reaches its transition temperature, it closes, penetrating and suturing
the tissues. Col. 6, ll. 37-39. As pointed out by Appellant, Krumme inserts
the first and second tines at the same time. Krumme does not insert the first
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tine into the tissue while retaining the second tine external of the tissue and
insert a second tine into the tissue, as called for in claim 17.
Thus, the combined teachings of Allen and Krumme would not have
prompted a person of ordinary skill to perform a method as recited in claim
17 comprising the steps of actuating a control wire to insert the end of the
first tine into a first portion of the body tissue while retaining the second tine
external to the tissue and actuating the control wire to insert an end of the
second tine into a second portion of the body tissue.
DECISION
The Examiner’s decision rejecting claims 1, 3-15, and 17-21 is
affirmed as to claims 1, 3-15, and 21 and reversed as to claims 17-20.
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)(1)(iv).
AFFIRMED-IN-PART

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