Ex Parte Adams et al

Board of Patent Appeals and Interferences

Aug 9, 2010

11036421 (B.P.A.I. Aug. 9, 2010)

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.
11/036,421 01/14/2005 Mark L. Adams 10121/07202 4258
30636 7590 08/09/2010
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
SEVERSON, RYAN J
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
08/09/2010 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 MARK L. ADAMS, RUSSELL F. DURGIN,
VINCENT TURTURRO, JUSTIN GRANT,
NORMAN MAY, and ROY H. SULLIVAN III
____________

Appeal 2009-007857
Application 11/036,421
Technology Center 3700
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007857
Application 11/036,421
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STATEMENT OF THE CASE
Mark L. Adams et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 7, 21, 26, and 46-50.
Claims 2-4, 6, 10, 16, 17, 20, 22, 27, 29, 35, 38, 40, and 43-45 are cancelled
and claims 5, 8, 9, 11-15, 18, 19, 23-25, 28, 30-34, 36, 37, 39, 41, and 42 are
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to compression clips that are
delivered to a target site through an endoscope to cause hemostasis of blood
vessels located along the gastrointestinal tract. Spec. 1:5-7. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A medical device for causing the hemostasis of a blood
vessel for use through an endoscope, said medical device
comprising:
a clip, the clip having at least two clip legs and a socket;
a control wire able to be coupled to the clip, the control
wire reversibly operable both to open the at least two clip legs
and to close the at least two clip legs when the control wire is
coupled to the clip, the control wire uncouplable from the clip,
the control wire including a ball sized to be releaseably received
within the socket of the clip wherein, when the ball is released
from the socket, the control wire is uncoupled from the clip;
an axially rigid sheath enclosing the control wire, the
sheath able to communicate a first force opposing a second
force of the control wire; and
a handle coupled to the axially rigid sheath; and
an actuator coupled to the control wire, the control wire
engageable by the actuator to open the at least two clip legs, to
close the at least two clip legs, and to uncouple the control wire
from the clip.

Appeal 2009-007857
Application 11/036,421
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THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 1, 21, 46, and 47 under 35 U.S.C. § 102(b) as
anticipated by Komiya (US 3,958,576).
2. Rejection of claims 7, 26, and 48-50 under 35 U.S.C. § 103(a) as
unpatentable over Komiya and Sherts (US 5,792,149).
ANALYSIS
The Examiner’s ultimate finding of anticipation regarding the first
rejection, and the Examiner’s conclusion of obviousness regarding the
second rejection are each based in part on the finding that the portion of
Komiya’s hook member 20 between the distal end and cutout 20a2
corresponds to the ball of independent claims 1 and 7 and the pill of
independent claim 46. Ans. 3-4. Appellants contend that Komiya does not
disclose the ball of independent claims 1 and 7, or the pill of independent
claim 46. App. Br. 5-6; Reply Br. 2-4. The issue before us is whether
Komiya discloses a ball as called for in independent claims 1 and 7, and a
pill as called for in independent claim 46.
We look to the claim and then to the prior art. Medichem, S.A. v.
Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under
§ 102 and obviousness under § 103 are two-step inquiries. The first step in
both analyses is a proper construction of the claims . . . . The second step in
the analyses requires a comparison of the properly construed claim to the
prior art.” (internal citations omitted)).

2 Cutout 20a is properly identified at Komiya, col. 3, ll. 38-41 and Fig. 1;
however, it is mistakenly identified with reference number 21a in Fig. 4.
Appeal 2009-007857
Application 11/036,421
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Independent claims 1 and 7 recite “a ball sized to be releasably
received within the socket of the clip”, and similarly, independent claim 46
recites “a pill sized to be releasably received within the pill well” of a clip.
Appellants’ Specification describes a ball 1202 formed on the end of control
wire 1207, and depicts ball 1202 as spherical. Spec. 14:16-28; figs. 12A,
12B; see also App. Br. 2 (identifying Figures 12A and 12B as corresponding
to claim 1). Appellants’ Specification describes a pill 1502 formed on the
end of control wire 1503, and depicts pill 1502 as spherical. Spec. 17:21-22;
figs. 15A-15D; see also App. Br. 4 (identifying Figures 15A-15D as
corresponding to claim 46).
In their briefs, Appellants define a ball as “spherical or ovoid,” and as
“a round or roundish body or mass,” and further elaborate that round means
“an item that is substantially roundish from all sides, such as a ball.” App.
Br. 5; Reply Br. 3. Similarly, Appellants define a pill as “a small rounded
ball or small rounded mass.” We see no inconsistency between this
definition and Appellants’ Specification. The Examiner does not contest this
definition or provide a different definition of his own; rather, the Examiner
takes the position that the portion of Komiya’s hook member 20 between the
distal end and cutout 20a is a roundish mass, and thus meets the Appellants’
definition of “ball” or “pill.” Ans. 4.
Interpreting independent claims 1, 7, and 46 in light of Appellants’
Specification and the prosecution history, we conclude the broadest
reasonable interpretation is that “ball” and “pill” refer to a body or mass that
is substantially round from all sides such as a sphere. With this claim
construction, we look to the prior art.
Komiya discloses a surgical instrument for clipping an affected
portion of a body cavity of a human being that includes a hook member 20
Appeal 2009-007857
Application 11/036,421
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having a cutout 20a in its side. Komiya, col. 1, ll. 6-8; col. 3, l. 38; fig. 4. In
the cross-sectional view of Figure 4, the portion of hook member 20 between
the distal end and cutout 20a is generally rectangular with straight sides,
having two rounded corners and two 90 degree angle corners. Komiya, col.
2, ll. 29-30; fig. 4. In partial side view of the device (90 degrees from the
view in Figure 4), the portion of hook member 20 received within clip
member 11 is generally rectangular with three straight sides and one of the
four sides being slightly curved away from the center of the rectangle.
Komiya, col. 2, ll. 31-33; fig. 5.
Given this disclosure, the portion of hook member 20 between the
distal end and cutout 20a is generally rectangular from both the cross-
sectional view and the partial side view. While this portion has two of four
corners rounded in the cross-sectional view and one of four sides rounded in
the partial side view, we find this portion is most accurately described as a
cuboid hexahedron (a rectangular polyhedron of six faces). The portion of
hook member 20 between the distal end and cutout 20a is not a body or mass
that is substantially round from all sides such as a sphere.
As such, the rejections of independent claims 1, 7, and 46 are in error
since Komiya does not disclose a ball as called for in independent claims 1
and 7, or a pill as called for in independent claim 46. The rejections of
dependent claims 21, 26, and 47-50 are also in error by virtue of their
dependence, directly or indirectly, from claim 1, 7, and 46.
DECISION
We REVERSE the Examiner’s decision to reject claims 1, 7, 21, 26,
and 46-50.
REVERSED

Appeal 2009-007857
Application 11/036,421
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