Ex Parte Bonino et al

Patent Trial and Appeal Board

Oct 28, 2016

13128707 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/128,707 07 /12/2011
23117 7590 11/01/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Mauro Bonino
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.
DMB-4636-201 2842
EXAMINER
LYNCH, ROBERT A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURO BONINO and GUIDO RUSCO
Appeal2014-005584
Application 13/128,707
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATE1\1ENT OF THE CASE
Mauro Bonino and Guido Rusco ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 11-24. 1
We have jurisdiction under 35 U.S.C. § 6(b). Oral argument was heard on
October 13, 2016. This Decision is based on arguments set forth in
Appellants' briefing. See 37 C.F.R. § 41.4l(b)(2); 37 C.F.R. § 41.47(e).
We AFFIRM.
1 Claims 1-10 have been canceled. Appeal Br. 19 (Claims App.).
Appeal2014-005584
Application 13/128,707
CLAIMED SUBJECT MATTER
Independent claims 11 and 24 are pending. Claim 11, reproduced
below, represents the subject matter on appeal.
11. A device for applying a connecting glue to the
facing extremities of two portions of tissue to be connected
through enteric anastomosis performable with a mechanical
suturer, the device comprising a diffusing element suppliable
with the glue and interposable between the two portions of tissue
to be connected, the diffusing element being provided with at
least two openings for bilateral delivery of the glue towards the
two portions of tissue to be connected, wherein said diffusing
element is connected in fluid communication to a first sheath,
wherein the first sheath is a distinct element from the diffusing
element and allows the device to be connected to the dispenser
of aeriforms,
wherein said device is connected to a dispenser of
aeriforms under pressure for delivering said aeriform inside the
first sheath for nebulising the connecting glue delivered by the
diffusing element to the portions of tissue to be connected, and
wherein said diffusing element has a deployable structure
for cooperating \'l1ith said mechanical suturer.
REJECTIONS
I. Claims 11-22 and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over McGurk (US 2006/0009801; pub. Jan. 12, 2006) and
Redl (US 4,631,055; iss. Dec. 23, 1986). Final Act. 3.
II. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over McGurk, Redl, and Smit (US 2003/0191476 Al; pub. Oct.
9, 2003). Final Act. 5.
2
Appeal2014-005584
Application 13/128,707
ANALYSIS
Rejection I
Appellants argue claims 11-22 and 24 as a group. Appeal Br. 16. We
select claim 11 as representative, with claims 12-22 and 24 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(iv).
Regarding independent claim 11, the Examiner finds that McGurk
discloses, inter alia, a device for applying adhesive material in a patient, the
device "comprising a diffusing element/delivery catheter (24) suppliable
with glue (Abstract; [0043]) and interposable between two portions of tissue
to be connected," the diffusing element 24 comprising a "tubular conduit
(lumen of delivery catheter (24))." Final Act. 3. The Examiner also finds
that McGurk' s diffusing element 24 is distinct from, and in fluid
communication with, a first sheath (i.e., chest tube 16), the first sheath 16
allowing the device to be connected to an aeriform dispenser. Id. at 4.
The Examiner also finds that McGurk' s diffusing element 24 is
axially movable within the first sheath 16, such that the holes 26 of the
diffusing element 24 "are capable of being positioned at the proximal-most
holes" 21 of the first sheath 16, "allowing the glue to receive the dispensed
pressurized aeriform prior to the aeriform entering the pleural space."
Advisory Action dated Oct. 23, 2013.
The Examiner further finds that McGurk fails to explicitly disclose
"the device being connected to a dispenser of aeriforms under pressure for
nebulizing the connecting glue delivered by the diffusing element." Final
Act. 4. The Examiner notes, however, that McGurk, states generally that its
glue "may be provided and applied in an aerosol form ([0041])." Ans. 3.
3
Appeal2014-005584
Application 13/128,707
Regarding providing adhesive in an aerosol form, the Examiner finds
that Redl discloses
an apparatus for applying tissue adhesive wherein the device is
connected to a dispenser of aeriforms/medicinal gas (col. 2,
lines 4-12; col. 3, lines 1-10) under pressure for nebulizing the
connecting glue delivered by the diffusing element ... to allow
for adjustment of the gas conveyance rate thereby allowing for
selection of adhesive dispersal in either a liquid form or an
atomization of the components (col. 2, lines 26-32; col. 3, lines
41-48).
Final Act. 4--5. The Examiner concludes that it would have been obvious to
employ Redl' s aeriform dispenser in McGurk to allow adjustment of the gas
conveyance rate and, thus, selection of adhesive dispersal in liquid or aerosol
form. Id. at 5.
Air Delivery
Appellants argue that McGurk' s chest tube 16, while suitable to
convey glue, is not suitable for connection to an aeriform dispenser, because
delivery of air to the patient's pleural space via the holes 21 in McGurk' s
chest tube 16 would harm the patient. Appeal Br. 14--15.
Because McGurk explicitly states that its "glue may be applied in an
aerosol form" (McGurk, if 41 ), we are not persuaded by Appellants'
argument that it would be improper or harmful to deliver an amount of air
appropriate to aerosolized glue to the patient's pleural space.
ModifYing McGurk
Appellants also argue that McGurk' s chest tube 16 and holes 21
therein are used to draw fluid from a patient's pleural space, and that use of
Redl's aeriform dispenser with McGurk's chest tube 16, with holes 21,
would not properly aerosolize McGurk's glue, and that "the McGurk device
4
Appeal2014-005584
Application 13/128,707
would have to be heavily modified - if it could be modified at all -- in order
to arrive at the applicant's claimed device." Appeal Br. 15. According to
Appellants, one skilled in the art, therefore, would not perform such a heavy
modification in the absence of hindsight. Id. at 16.
The Examiner responds that McGurk expressly suggests application
of its glue in aerosol form, but does not provide explicit structural details
regarding a delivery mechanism. Ans. 3. Redl, however, discloses such a
delivery mechanism in its aeriform dispenser that aerosolizes glue in a
surgical adhesive device, via an adhesive delivery catheter 31 having a gas
channel 30A running parallel with adhesive channels 28A, 29A. Id. (citing
Redl Fig. 3; 2:4--12; 3: 11-16). The channels ofRedl's delivery catheter 31
feed into a mixing needle 36 having an interior space 38 that "may be
provided with an internal surface that promotes the turbulence of the
components flowing therethrough" to aerosolize the glue. Redl, 3:31--40.
Given the teachings of Redl regarding an apparatus for aerosolizing
glue in a mixing needle before surgical delivery thereof, we are not
persuaded that one skilled in the art would have needed to employ
impermissible hindsight to introduce gas from an aeriform dispenser into
McGurk's device in such a manner that it aerosolizes the glue being
dispensed via its syringe 28, catheter 24, and holes 26. Indeed, one skilled
in the art would have had the example of Redl's mixing needle to follow.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art."); see also KSR Int'! Co. v. Teleflex Inc.,
5
Appeal2014-005584
Application 13/128,707
550 U.S. 398, 420-421 (2007) ("A person of ordinary skill is also a person
of ordinary creativity, not an automaton" who can "fit the teachings of
multiple patents together like pieces of a puzzle.").
For the reasons set forth above, we sustain Rejection I.
Rejection II
Dependent claim 23 recites, inter alia, a second protective sheath
housing the first protective sheath and covering the diffusing element in an
advanced position. The Examiner finds this teaching in Smit. Final Act. 5.
Appellants argue that neither McGurk nor Redl discloses a second protective
sheath as claimed, and that such a second protective sheath is "contrary to
the teachings of McGurk because a second sheath would 'cover' and,
therefore, defeat McGurk' s chest tube 16 with holes 21 that draw" pleural
fluid from the patient. Appeal Br. 1 7. Appellants further contend that one
skilled in the art would not modify McGurk to employ Smit's sheath without
improperly employing hindsight. Id.
It is Smit, not McGurk or Redl, that the Examiner relies on for
disclosing a second protective sheath 114. Final Act. 5---6. According to the
Examiner, Smit discloses a surgical adhesive applicator utilizing a second
sheath 114 disposed about retractable internal adhesive delivery components
to protect the body and the inserted components from each other during
delivery. Ans. 5 (citing Smit i-fi-183, 86).
We are not persuaded by Appellants' arguments. One skilled in the
art would have understood that the Examiner's proposed combination of
McGurk and Redl, which would provide glue at a distal tip, would benefit
from a protective sheath that covers the distal tip during delivery. Further,
we are not persuaded that provision and employment of such a sheath, as
6
Appeal2014-005584
Application 13/128,707
proposed, is beyond the ordinary creativity and knowledge of a skilled
artisan. We sustain Rejection II.
DECISION
We AFFIRM the rejections of claims 11-22 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over McGurk and Redl.
We AFFIRM the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over McGurk, Redl, and Smit.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7