Ex Parte Zannis et al

Patent Trial and Appeal Board

Apr 11, 2013

11261840 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANTHONY D. ZANNIS, PRASANNA MALAVIYA,
KEITH M. MCGRATH, and HERBERT E. SCHWARTZ
__________

Appeal 2011-001938
Application 11/261,840
Technology Center 3700
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and ULRIKE W.
JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
cannula kit. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “cannulae and obturators that can be used
to manage suture during surgery” (Spec. 1, ¶ 0002), and specifically to treat
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Appeal 2011-001938
Application 11/261,840

3
distally through the proximal portion of the body from the exterior surface to
the interior surface, the through slot terminating at a location distal to the
bottom surface of the annular flange and proximal to the distal end of the
cannula;
wherein the cannula further comprises a pair of spaced surfaces
defining a longitudinal slot extending through the flange, threads and body
of the cannula from the proximal end to the distal end, the longitudinal slot
providing a passageway between the longitudinal channel of the cannula and
the exterior of the cannula along the entire length of the cannula;
wherein the obturator includes a proximal portion, a distal portion
terminating in a distal end, an intermediate portion and a flange between the
intermediate portion and the proximal portion, the obturator being sized and
shaped so that the intermediate portion is receivable and slidable in the
central axial channel of the cannula; and
wherein the obturator further comprises a pair of spaced surfaces
defining a longitudinal slot in the distal portion, intermediate portion, flange
and proximal portion.

The Examiner has rejected claims 5 and 7-14 under 35 U.S.C.
§ 103(a) as obvious in view of Khaw,1 Bennett,2 and Reich.3 The Examiner
has also rejected claim 15 as obvious in view of Khaw, Bennett, Reich and
Maddocks.4 The same issue is dispositive for both of these rejections.
The Examiner finds that Khaw discloses “a surgical cannula kit
comprising a cannula and an obturator” (Answer 3) but that Khaw’s cannula
does not include a “through slot” that terminates “at a location distal to the
bottom surface of the annular flange and proximal to the distal end of the
cannula,” as required by claim 5 (id. at 4-5). The Examiner finds that
Bennett discloses an apparatus for surgical tissue repair that comprises “a

1 Khaw, US 2007/0276288A1, Nov. 29, 2007.
2 Bennett, US 6,491,714 B1, Dec. 10, 2002.
3 Reich et al., US 5,009,643, Apr. 23, 1991.
4 Maddocks et al., 5,211,656, May 18, 1993.
Appeal 2011-001938
Application 11/261,840

4
tubular shank (cannula as claimed) … [with] a through slot (22B) for
retaining free end of suture” that terminates at a location proximal to the
distal end of the cannula (id. at 5). The Examiner concludes that it would
have been obvious “to modify the flange of Khaw with a retaining slot in
view of Bennett for providing an effective retaining or holding mechanism
for the wire” (id.).
The Examiner finds that Khaw and Bennett do not disclose “raised
threads extending outwardly from the exterior surface of the body” (id.).
The Examiner finds that Reich discloses a cannula comprising “raised
threads (22) extending outwardly from the exterior surface of the body”
(id.), and concludes that it would have been obvious to modify Khaw’s
cannula “with raised threads extending outwardly from the exterior surface
of the body … in view of Reich et al for effectively securing the cannula into
tissue” (id. at 5-6).
Appellants argue that “it would be completely inappropriate to put the
threads from the trocar sleeve of Reich et al. onto the vascular access needle
of Khaw. That would cause undue harm to the tissue being penetrated.”
(Appeal Br. 4). Appellants also argue that it would not have been obvious to
add a notch to Khaw’s device because “[t]here is no suture in the vascular
access needle of Khaw et al. thus eliminating any incentive for adding the
notch from Bennett” (id.).
We agree with Appellants that the Examiner has not adequately
explained why one of skill in the art would have been motivated to modify
Khaw’s device to include both the notch of Bennett and the threads of Reich.
Appeal 2011-001938
Application 11/261,840

5
Khaw discloses “a vascular access needle assembly to facilitate
insertion of a guide wire into a subject” (Khaw 1, ¶ 0002), which “includes a
sheath movable from a first position to a second position for preventing
inadvertent needle sticks after use” (id. at 2, ¶ 0029). Figures 1A and 1B of
Khaw are shown below:

Appeal 2011-001938
Application 11/261,840

6
Figure 1A shows “a perspective view of the vascular access needle assembly
… with the sheath in a first locked position, exposing the needle point” (id.
at 2, ¶ 0014). Figure 1B shows a perspective view of the same needle
assembly “with the sheath in a second position, the needle point covered”
(id.). Khaw discloses that “[s]heath 40 can rotate and slide with respect to
needle 34 to align sheath slot 42 with needle slot 36 and to cover needle
point 38” (id. at 3, ¶ 0033).
The vascular access needle assembly can be used to insert a guide
wire into a blood vessel (id. at 1, ¶ 0009). Khaw discloses that the “vascular
access needle assembly … can also be used as a biopsy needle assembly to
remove body tissue to perform a biopsy” (id. at 5, ¶ 0061). Khaw discloses
that, in the biopsy needle embodiment, “sheath 440 slides longitudinally
along needle 434 to cover needle point 438” (id. at 5, ¶ 0065).
Thus, Khaw discloses a needle assembly that can be used either to
insert a guide wire into the vasculature or as a biopsy needle. The Examiner
concludes that it would have been obvious to include a notch in Khaw’s
needle assembly to provide a retaining mechanism for a guide wire, when
the needle assembly is used as a vascular access needle (Answer 5).
However, the Examiner does not dispute Appellants’ position that external
threads would “cause undue harm to the tissue” (Appeal Br. 4) when the
assembly was used as a vascular access needle. Therefore, the Examiner has
not provided a persuasive reason for including the external, raised threads
required by claim 5 in a device, like Khaw’s, that is intended for use either
as a vascular access needle or as a biopsy needle.
Appeal 2011-001938
Application 11/261,840

7
On the other hand, if the Examiner’s reasoning is based on modifying
the device to make it a dedicated biopsy needle, the Examiner has not
provided persuasive reasoning to show that it would have been obvious to
add notches to the resulting threaded needle assembly. That is, the
Examiner’s reason for adding a notch to Khaw’s needle assembly is to retain
a guide wire, which would not be applicable to a needle assembly used as a
biopsy needle.
Thus, we agree with Appellants that the Examiner has not adequately
explained why one of skill in the art would have modified Khaw’s needle
assembly to have both the notches taught by Bennett and the threads taught
by Reich on the same device. Further, the Examiner’s conclusion that it
would have been obvious to include threads in Khaw’s needle assembly for
use in the biopsy needle application is contrary to Khaw’s disclosure that, in
the biopsy needle application, the sheath moves longitudinally with respect
to the needle to cover the needle point after insertion. The Examiner has not
explained how the presence of external threads would be reconciled with the
longitudinal movement of Khaw’s protective sheath.
Thus, we reverse the rejection of independent claim 5 and dependent
claims 7-14 as being obvious in view of Khaw, Bennett and Reich. The
Examiner’s rejection of claim 15 based on Khaw, Bennett, Reich and
Maddocks relies on the findings and conclusions with respect to Khaw,
Bennett and Reich discussed above. We therefore reverse the rejection of
claim 15 for the reasons discussed above.
Appeal 2011-001938
Application 11/261,840

8
SUMMARY
We reverse the rejection of claims 5 and 7- 14 under 35 U.S.C.
§ 103(a).

REVERSED

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