10420551 (B.P.A.I. Jan. 17, 2012)

Ex Parte Yencho et al

Board of Patent Appeals and InterferencesJan 17, 2012

10420551 (B.P.A.I. Jan. 17, 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. 10/420,551 04/21/2003 Stephen A. Yencho 126 5031 33109 7590 01/17/2012 CARDICA, INC. 900 SAGINAW DRIVE REDWOOD CITY, CA 94063 EXAMINER NGUYEN, TUAN VAN ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 01/17/2012 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 STEPHEN A. YENCHO and BERNARD A. HAUSEN ____________________ Appeal 2010-000215 Application 10/420,551 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, KEN B. BARRETT, and JAMES P. CALVE, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000215 Application 10/420,551 2 STATEMENT OF THE CASE Stephen A. Yencho and Bernard A. Hausen (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-11 and 13-39. Claims 1-11, 16, 25, 30, and 32-34 stand rejected under 35 U.S.C. § 102(e) as anticipated by Taylor (US 5,906,607, iss. May 25, 1999). Claims 17-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor and Dave (US 2004/0162570 A1, pub. Aug. 19, 2004). Claims 13-15 and 39 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor and Knodel (US 5,993,464, iss. Nov. 30, 1999). Claims 32-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor and Keogh (US 6,447,443 B1, iss. Sep. 10, 2002). The Examiner withdrew claims 54-76 from consideration. Claims 12 and 40-53 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The claims are directed to a minimally-invasive surgical system for performing anastomosis. Spec. 1:9-10. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A tool for placement on heart tissue, comprising: a base configured to contact the exterior of the heart and allow substantially unrestricted movement of heart tissue contacted by said base; and an anastomosis tool connected to said base. Appeal 2010-000215 Application 10/420,551 3 OPINION Each of the rejections involved in this appeal is grounded in part on the Examiner’s finding that Taylor’s annular housing 1 (on which the Examiner reads the claimed “base”) is “configured to contact the exterior of the heart and allow substantially unrestricted movement of heart tissue contacted by said base,” as called for in claim 1. See Ans. 3, 8-9. Appellants argue that Taylor does not satisfy this limitation. App. Br. 4-5. More specifically, Appellants argue that the Examiner’s contention that Taylor’s figure 2 “clearly discloses that only the movement of tissue portions of the outer surface of the heart, which directly engaged with the vacuum ports 2, are being restricted, and the tissue portion, which directly engaged with the surface 6 is unrestricted” is not supported by any text of Taylor cited by the Examiner. App. Br. 5; see Final Rej. 2-3. We agree with Appellants. We find that the objective of Taylor’s device is “to fix the position of a portion of the surface of a beating heart so that a surgical procedure can be more easily performed,” in order to overcome a particular problem facing surgeons operating on a beating heart, namely, that of “performing extremely delicate procedures while the contractions of the heart muscles cause the surface of the heart to continuously move.” Col. 1, ll. 21-26, 50- 52. Taylor teaches that “once a negative pressure is imposed, the instrument [of Taylor’s invention] may be drawn away from the heart such that the portion of the surface tissue fixed by the suction ports is slightly elevated relative to the remainder of the heart.” Col. 3, ll. 50-54. In this regard, Taylor’s approach appears to run counter to that of Appellants. See Spec. 1:16-17, 1:23 to 2:1 (discussing problem with prior art procedures, whether performed as stopped-heart or beating-heart procedures, “that immobilize a Appeal 2010-000215 Application 10/420,551 4 portion of the heart, such as by pressing down on it or lifting up a portion of the surface, such that the heart cannot move freely during the anastomosis procedure.”). Taylor’s device applies negative pressure to suction ports 2 on housing 1 “to fix the position of a region of the cardiac tissue based on the placement of the instrument.” Col. 2, ll. 61-66; col. 3, ll. 64-65. Taylor discloses that “[t]he negative pressure . . . is applied at several points over the surface of the heart proximate to or surrounding the portion of the heart whose position is desired to be fixed during the procedure.” Col. 2, ll. 57- 61. Once Taylor’s instrument is positioned on the surface of the heart, the negative pressure is applied and the housing may be gently manipulated to ensure the negative pressure causes the cardiac tissue to become fixed to the suction ports. Col. 4, ll. 41-45. “Once the suction ports become functionally attached to the surface of the heart, the portion of the surface of the heart becomes fixed relative to the instrument.” Col. 4, ll. 46-48. The bottom surface 6 of Taylor’s instrument is flat because it will engage the surface of the heart when negative pressure is imposed. Col. 4, ll. 62-65. Alternatively, the bottom may be contoured to permit the suction ports to engage a curved surface of the heart. Col. 4, l. 65 to col. 5, l. 1. The bottom surface may also have a separate contact layer 7 to cushion the contact between the instrument and the heart tissue to facilitate forming a tight seal upon application of negative pressure. Col. 5, ll. 2-5. We do not agree with the Examiner that “Figure 2 of Taylor’s drawings . . . clearly discloses that only the movement of tissue portions of the outer surface of the heart, which directly engaged with the vacuum ports 2, are being restricted, and the tissue portion, which directly engaged with the surface 6 is unrestricted.” Final Rej. 2-3. Taylor’s figure 2 does not Appeal 2010-000215 Application 10/420,551 5 depict any heart tissue.1 Further, the Examiner does not point to, and we do not find, any teaching in Taylor that supports this finding. Indeed, the Examiner appears to retreat somewhat from the original finding in the Final Rejection by modifying it in the Answer to state that “the rest of tissue of the heart that does not directly engaged with the surface 6 is unrestricted.” Ans. 9 (emphasis added). This modified finding, however, does not address the claim language, which requires that the base be “configured to contact the exterior of the heart and allow substantially unrestricted movement of heart tissue contacted by said base.” App. Br. 10 (emphasis added). For the above reasons, the Examiner has not established by a preponderance of the evidence that Taylor anticipates the subject matter of claim 1 and claims 2-11, 16, 25, 30, and 32-34 depending from claim 1. We reverse the rejection of these claims as anticipated by Taylor. Appellants argue that the rejection of claims 17-31 as unpatentable over Taylor and Dave should be reversed for the same reason as the rejection of claim 1. App. Br. 6. We agree. The Examiner does not point to any teaching in Dave that would overcome the deficiency in Taylor discussed above or propose any modification of Taylor that would remedy the deficiency. We reverse the rejection of claims 17-31 as unpatentable over Taylor and Dave. In rejecting claims 13-15 and 39 as unpatentable over Taylor and Knodel and claims 32-38 as unpatentable over Taylor and Keogh, the Examiner does not articulate any reason why it would have been obvious to 1 Taylor’s figure 4 shows an embodiment of Taylor’s device in use in a coronary artery bypass procedure and depicts an internal mammary artery (IMA) and a descending artery (LAD), but does not indicate whether any tissue contacting the housing of the instrument is fixed to the housing, or otherwise restricted in its movement by the housing. Appeal 2010-000215 Application 10/420,551 6 modify Taylor to cure the deficiency discussed above. See App. Br. 8. Thus, we also reverse these rejections. DECISION For the above reasons, the Examiner’s decision is reversed. REVERSED nlk