Ex parte Barra et al.

Board of Patent Appeals and Interferences

Sep 11, 1997

07995047 (B.P.A.I. Sep. 11, 1997)

Application for patent filed December 22, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEAN-AUBERT BARRA
and RENE PAILLOT

_____________
Appeal No. 96-2271
Application 07/995,0471
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and ABRAMS
and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2271
Application 07/995,047
2
This is an appeal from the decision of the examiner finally
rejecting claims 1, 2, 5 through 8, 11 and 14. At that point,
claims 15 through 43 had been canceled, claims 44 through 77 had
been allowed, and claims 3, 4, 9, 10, 12 and 13 had been
indicated as being allowable if recast in independent form.
Subsequently, in the Answer, the examiner withdrew the rejection
of claims 5 and 14, indicating that they also would be allowable
if recast in independent form. Therefore, remaining before us on
appeal are claims 1, 2, 6 through 8 and 11.
The appellants' invention is directed to a ventricular
cannulation device. The subject matter before us on appeal is
illustrated by reference to claim 1, which reads as follows:
1. A ventricular cannulation device for providing
communication through an opening in the cardiac wall comprising:
an outer part, for placement on the cardiac wall, having a
first central opening and a first means for catching onto said
cardiac wall;
an inner part having a size suitable for placement in the
cardiac chamber, having a second central opening and second means
for catching onto the cardiac wall and means for guiding and
attaching said outer part; and
a tube corresponding to the openings of said cardiac wall
and inner and outer parts and serving as a support for a vascular
prosthesis.
THE REFERENCES
Appeal No. 96-2271
Application 07/995,047
3
The references relied upon by the examiner to support the
final rejection are:
Sugarbaker 2,638,901 May 19, 1953
Zeman 3,540,451 Nov. 17, 1970
THE REJECTIONS
Claims 1, 2 and 6 through 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sugarbaker.
Claims 1, 2, 6 through 8 and 11 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Zeman.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth in
the Brief and the Reply Brief.
OPINION
The guidance provided by our reviewing court with regard to
the matter of anticipation is as follows: Anticipation under 35
U.S.C. § 102(b) is established only when a single prior art
reference discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention. See
In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675
(Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d
Appeal No. 96-2271
Application 07/995,047
4
1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or recognition of inherent properties that
may be possessed by the reference. See Verdegaal Brothers Inc.
v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). It also does not require that the
reference
teach what the applicant is claiming, but only that the claim on
appeal "read on" something disclosed in the reference, i.e., all
limitations of the claim are found in the reference. See Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
The first of the anticipation rejections is based upon
Sugarbaker. We share the examiner's view that all of the
structure recited in claim 1 reads on the Sugarbaker clamp.
Using the language of claim 1 as a guide, Sugarbaker discloses a
device which in our view clearly appears to be capable of
providing communication through a wall of body tissue. It
comprises an outer part 7, which could be placed on the outer
surface of a tissue wall, and it has a first central opening
Appeal No. 96-2271
Application 07/995,047
5
(through which tube 4 passes) and a first means for catching onto
a tissue wall, in the form of needles 22. It further comprises
an inner part 2 having a second central opening 13 and a second
means for catching onto a tissue wall (a second set of needles
22). Elements 10 and 19, respectively, provide means for guiding
and attaching the outer part into engagement with the inner part.
Lastly, Sugarbaker discloses a central tube 4 offering access
through the device into the chamber beyond.
It is true that the Sugarbaker device is not disclosed as a
ventricular cannulation device for providing communication
through an opening in the cardiac wall, as is recited in the
preamble to the appellants' claim 1. However, while the
appellants have argued that it should be disqualified as a
reference because it is not suitable for use in a cardiac
environment, no evidence has been made of record to support such
a position. We see no reason why the Sugarbaker device, which
clearly catches both faces of bowel tissue, would not also be
capable of catching both sides of cardiac tissue. Likewise, we
see no reason why its size would not be suitable for placement in
a cardiac chamber.
Appeal No. 96-2271
Application 07/995,047
6
It is our opinion that the subject matter recited in claim 1
is anticipated by Sugarbaker, and we therefore will sustain the
rejection of claim 1 on that basis.
Claim 2 adds to claim 1 the requirement that the second
catching means be "in the form of a plurality of claws." We
agree with the appellants that the Sugarbaker needles are not
claws within the definition established by the appellants'
specification, and we therefore will not sustain the Section 102
rejection of claim 2. Nor, it follows, will we sustain the
rejection of claim 6, which depends from claim 2.
Dependent claim 7 adds to claim 1 the qualification that the
outer part be "disk-shaped." We do not find this to be the case
in Sugarbaker, wherein the outer part has the shape of a half of
a sphere. The rejection of claim 7, and further dependent claim
8, therefore is not sustained.
The second rejection of claim 1 is that it is anticipated by
Zeman. However, while Zeman discloses tissue catching means on
the outer part of the device, it fails to disclose the required
"second means for catching" on the inner part. We do not
subscribe to the examiner's hypothesis that this shortcoming is
Appeal No. 96-2271
Application 07/995,047
7
overcome by utilizing the Zeman device with the inner and outer
parts reversed.
The rejection of the claims as being anticipated by Zeman is
not sustained.
With regard to the Sugarbaker rejection of claim 1, we have
carefully considered all of the appellants' arguments, but they
have not persuaded us that the examiner here was in error. Our
position with regard to these arguments should be apparent.
Summary:
The rejection of claim 1 as being anticipated by Sugarbaker
is sustained.
The rejection of claims 2 and 6 through 8 as being
anticipated by Sugarbaker is not sustained.
The rejection of claims 1, 2, 6 through 8 and 11 as being
anticipated by Zeman is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
Appeal No. 96-2271
Application 07/995,047
8
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
Robert M. Isackson
Orrick, Herrington & Sutcliffe
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