Ex Parte Blinman et al

Patent Trial and Appeal Board

Feb 24, 2016

12605199 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/605, 199 10/23/2009
58687 7590 02/26/2016
DUBOIS, BRYANT, & CAMPBELL, LLP
303 Colorado Street
Suite 2300
AUSTIN, TX 78701
FIRST NAMED INVENTOR
Thane Blinman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1742-702USPT 1177
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
BWIESE@DBCLLP.COM
ALUNDSTEN@DBCLLP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THANE BLINMAN, MICHAEL PATTON,
and HARRITH HASSON
Appeal2014-001937
Application 12/605, 199
Technology Center 3700
Before NEALE. ABRAMS, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thane Blinman et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-12. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-001937
Application 12/605, 199
THE CLAIMED SUBJECT MATTER
Independent claims 1 and 6, reproduced below, are representative of
the subject matter on appeal, with disputed limitations italicized for
emphasis.
1. A cannula assembly comprising:
a threaded cannula positioned with an internally
threaded cannula anchor; said internally threaded
cannula anchor including one or more windows
configured for tying-off sutures.
6. A cannula anchor comprising:
an internally threaded cannula insert configured to
be positioned on a threaded cannula; and
a suture cone, wherein said suture cone includes
one or more suture posts configured to wrap suture
around.
Br. 12 (Claims App.) (emphasis added).
THE REJECTIONS 1
Claims 7 and 8 stand rejected under 35 U.S.C. § 112, fourth
paragraph.
Claims 1-5, 11, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Orth (US 5,836,913; iss. Nov. 17, 1998).
Claims 6-10 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Adams (US 7,607,179 B2; iss. Oct. 27, 2009).
1 The Examiner objected to the drawings under 37 C.F.R. § 1.83(a) as
failing to show "the seal and the valve included in the body of the threaded
cannula." Final Act. 2. Notwithstanding Appellants' argmnents (Br. 5-6),
the objection relates to petitionable subject rnatter under 37 C.F.R § 1.181,
and therefore, this objection is not before us.
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Application 12/605, 199
OPINION
Claims 7 and 8-35 U.S.C. § 112,fourthparagraph
The Examiner rejects claims 7 and 8 under 35 U.S.C. 112, fourth
paragraph, as being in "improper independent form for failing to further
limit the subject matter of the claim upon which [they depend], or for failing
to include all the limitations of the claim upon which [they depend]." Final
Act. 3. In particular, the Examiner finds that claim 6, upon which claims 7
and 8 depend, does not positively recite "a threaded cannula," and thus,
claims 7 and 8, which further limit "said threaded cannula," do not further
limit claim 6. Id. Appellants submit that because claim 6 recites "an
internally threaded cannula insert configured to be positioned on a threaded
cannula, ... [c]laims 7 and 8 are proper dependent claims." Br. 6.
We agree with the Examiner that although claim 6 recites that the
cannula insert is configured to be positioned on a threaded cannula, the
threaded cannula itself is not recited as a limitation of the claimed cannula
anchor. Rather, claim 6 claims "a cannula anchor," which must comprise
"[a] cannula insert" and "a suture cone." Br. 12 (Claims App.).
Accordingly, we sustain the Examiner's rejection of claims 7 and 8 under 35
U.S.C. § 112, fourth paragraph.
Claims 1-5, 11, and 12 -Anticipation by Orth
The Examiner finds that Orth anticipates the cannula assembly recited
in independent claim 1, because Orth discloses, inter alia, threaded cannula
112 and internally threaded cannula anchor 16, 17, 30, 50 "includ[ing] one
or more windows comprising one or more holes configured for tying-off
sutures." Final Act. 4 (citing Orth, Fig. 7a). The Examiner explains that
"Orth teaches that expandable portions 30 and 50 of the ... cannula anchor
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Application 12/605, 199
comprise an expandable mesh or braided material covered by an elastomeric
sheath," and that "[t]he expandable mesh or braided material comprises
apertures (which can be interpreted as window or holes) ... capable of being
penetrated (the elastomeric sheath could also be penetrated) by a suture
needle for the placement of sutures." Id. (citing Orth, col. 5, 11. 33-54, Figs.
5b, 7a). The Examiner determines that the apertures in Orth's mesh
comprise windows, "regardless of whether or not the [windows are]
covered," and that Orth's cannula assembly is "capable of functioning as
intended if the windows and sheath were penetrated and utilized for tying off
sutures." Ans. 10. The Examiner points out that"[ w]here a prior art
reference is inherently capable of performing the function described in a
functional limitation, such functional limitation does not define the claimed
apparatus over such prior art reference, regardless of whether the prior art
reference explicitly discusses such capacity for performing the recited
function." Final Act. 9 (citation omitted).
Appellants argue, inter alia, that Orth describes sleeve 16 as "a 'non-
distensible imperforate cylindrical surface," which is constructed as "'an
elastomeric sheet covering a mesh or braided material,"' and which "form[ s]
a seal on the interior and exterior abdominal walls." Br. 7 (citing Orth, col.
5, 11. 34--37, col. 7, 11. 43--46, Fig. 5). Appellants submit that "[a]t no time
does Orth suggest that a mesh or braided material could or would be used
alone without an imperforate sheath attached." Id. Moreover, Appellants
contend that "the anchor 50 taught by Orth is not inherently capable of
performing the function claimed ... , namely, 'configured for tying off
sutures,"' because " [ i] f the imperforate sheath were perforated ... , the
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Application 12/605, 199
anchor would no longer form a seal," and "[t]he anchor taught by Orth . ..
does not allow visual access [for tying off sutures.]" Id. 9.
Appellants are correct that Orth's sleeve 16, which comprises "a non-
distensible imperforate2 cylindrical surface," by definition, does not include
a window. See Orth, col. 5, 11. 34--36. Moreover, the Examiner's finding
that Orth's sleeve 16 is inherently capable of being penetrated by a needle is
speculative in that Orth lacks any disclosure that a window in Orth's mesh is
sized for penetration by a suture needle, or that Orth's elastic material is
selected to be able to be punctured by a suture needle. In addition,
Appellants have presented persuasive evidence to show that one skilled in
the art would not recognize the inherency of Orth's sleeve 16 to be used for
tying-off sutures, in view of Orth' s avowed purpose for forming a seal and
lack of visual access. Inherency "may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (quotations omitted).
Thus, the Examiner fails to establish by a preponderance of the
evidence that Orth' s sleeve 16 anticipates the cannula anchor recited in
claim 1. Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 2-5, 11, and 12, which depend from claim 1.
Claims 6--10-Anticipation by Adams
The Examiner finds that Adams anticipates the cannula anchor recited
in independent claim 6, because Adams teaches, inter alia, "suture cone
2 An ordinary definition of the term imperforate is "not perforated : having
no opening or aperture." WEBSTER'S THIRD INTERNATIONAL
DICTIONARY 1133 (1993).
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Application 12/605, 199
[107] includ[ing] one or more suture posts [133] configured to wrap suture
around." Final Act. 6 (citing Adams, Fig. 5b ).
Appellants argue "that it is impossible for the portion of [Adams']
catheter cited by the Examiner to be used to wrap sutures because that
portion of the catheter is inside the patient during use." Br. 10 (Fig. 4b).
Appellants further argue that Adams' "bolster (including ... item 33 [which
corresponds to item 133]) internally anchors the catheter in the stomach of
the patient," and "[i]t is therefore impossible ... for [this item] to be used
[as] a suture post." Br. 10.
We are persuaded by Appellants' argument. Adams discloses that
"bolster 17 includes a first section 31 ... appropriately dimensioned and
constructed to internally anchor catheter 13 within a patient," and that
bolster 17 has a generally bowl-shaped second section 33 for providing a
sufficiently strong friction fit with scope cap 51, such that scope cap 51
remains on endoscope E for the duration of the catheter implanting
procedure. Adams i-fi-134, 36, Fig. 4e. Adams further discloses that
"[ s ]econd section 133 ... is similar in structure and function to second
section 33." Id. i147, Fig. 5b. In view of the lack of disclosure in Adams
regarding the use by a surgeon of bowl-shaped second section 33 (or 133) as
a suture post (i.e., a post on which to wrap sutures), and Appellants'
argument that such a use is not possible, we determine that the Examiner's
finding is speculative, and therefore, insufficient to support the Examiner's
conclusion of anticipation, as discussed supra.
Thus, the Examiner fails to establish by a preponderance of the
evidence that Adams' second section 133 anticipates the suture cone recited
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in claim 6. Accordingly, we do not sustain the Examiner's rejection of
independent claim 6 and claims 7-10, which depend from claim 6.
DECISION
The Examiner's decision to reject claims 7 and 8 under 35 U.S.C.
§ 112, fourth paragraph, is AFFIRMED.
The Examiner's decisions to reject claims 1-12 under 35 U.S.C.
§ 102(b) are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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