Ex Parte Buncke

Board of Patent Appeals and Interferences

Jun 27, 2006

09596806 (B.P.A.I. Jun. 27, 2006)

The opinion in support of the decision being entered today was
not written for publication in and is not binding precedent of
the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte HARRY J. BUNCKE
___________

Appeal No. 2006-1376
Application No. 09/596,806
___________

ON BRIEF
___________

Before OWENS, CRAWFORD, and FETTING, Administrative Patent
Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-11, which are
all of the pending claims.

Appeal No. 2006-1376
Application No. 09/596,806

THE INVENTION
The appellant claims a device and method for applying non-
penetrating clips to wound sites or tissue separation sites.
Claim 1, which claims the device, is illustrative:
1. A device for applying non-penetrating clips to small
blood vessels or other wound sites or tissue separation sites
where suturing or other wound closure techniques would be
impossible or undesirable, comprising:
a hand-held clip applier, including:
a handle suitable for gripping in the hand of a
surgeon,
a clip storing and dispensing stem extending from a
forward end of the handle, the stem having a tip at a remote end,
the tip including means for dispensing and serially applying
metal clips in non-penetrating engaging configuration against
sections of tissue on either side of a wound or tissue separation
to clamp the two sections of tissue together, upon the receipt of
mechanical force to a clip-applying component of the stem,
a movable member within the handle which, when caused
to move by a force applied from outside the handle, is effective
to cause movement of the clip-applying component in the stem so
as to cause dispensing and application of a clip, and
linkage means engaged with the movable member within
the handle and extending to a position in the handle capable of
receiving a pushing force from the exterior of the handle, and
a flexible cable release device comprising a cable
sheath, and an internal cable capable of delivering a compressive
pushing force through the sheath, a hand operable actuator at a
remote hand-grippable end of the cable release, remote from the
clip applier, for applying a pushing force to slide the cable
through sheath so as to cause extension of a pusher tailpiece out
of a proximal end of the cable sheath when the hand operable
actuator is engaged, the sheath at the proximal end having means
for connection to the handle of the hand-held clip applier in a
position to apply force to the linkage means in the handle by
motion of the pusher tailpiece, thus advancing the linkage means
and movable member within the handle, and thus advancing the
clip-applying component to dispense and apply a clip when the
thumb button on the flexible cable release device is pushed, the
cable sheath and internal cable being sufficiently flexible as to
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Appeal No. 2006-1376
Application No. 09/596,806

avoid movement of the tip when the hand operable actuator is
moved to apply said pushing force,
whereby with the cable release device connected to the clip
applier the hand-held clip applier can be held very steadily in
one hand with its tip under the microscope while the force to
apply a clip is supplied at the remote end of the cable release
device, avoiding any movement of the tip at the instant of clip
application.

THE REFERENCE
Swiggett 4,485,817 Dec. 4, 1984
THE REJECTION
Claims 1-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art (figures 1-4) in view
of Swiggett.
OPINION
We reverse the aforementioned rejection. We need to
address only the independent claims, i.e., claims 1, 3 and 9.
Claim 1 requires a hand-held clip applier that includes a cable
sheath and an internal cable that are sufficiently flexible to
avoid movement of the tip of the clip applier’s clip storing and
dispensing stem when a remote hand operable actuator is moved to
apply, via the internal cable, a pushing force to the handle of
the hand-held clip applier. Claim 3 requires a hand-held clip
applier that includes a tubular sheath and an internal movable
medium that are sufficiently flexible to avoid movement of the
tip of a clip storing and dispensing stem when a remote actuator
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Appeal No. 2006-1376
Application No. 09/596,806

is engaged and moved to apply, via the moveable medium, a force
to the handle of the clip applier. Claim 9 requires a method
for applying non-penetrating surgical clips using a hand-held
clip applier wherein the engaging of a remote actuator of a
flexible remote force-transmitting device connected to the
handle of the clip applier is not performed by the hand holding
the handle of the clip applier.
The admitted prior art is a hand-held clip applier having
on its handle a pair of thumb/finger wings (18) that are
squeezed together by a surgeon when the tip (12) of the
stem (14) of the clip applier’s clip applying component (36)
has been correctly placed and a clip is to be applied
(specification, page 8, lines 17-19; figure 1).
Swiggett discloses a surgical stapler having an
applicator (16) that is inserted into the lumen of an organ to
be stapled (col. 3, lines 47-49 and 55-56). The stapler’s
actuator (12) is connected to the applicator by a flexible
shaft (14) that is longitudinally flexible in any direction but
retains a shape into which it is bent (col. 2, lines 20-22;
col. 3, lines 49-56). “The transmission of the actuation force
by the flexible shaft is effected in such a manner that it has
no significant tendency to straighten the shaft” (col. 2,
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Appeal No. 2006-1376
Application No. 09/596,806

lines 26-29). “Preferably, a stiffer, but still flexible,
second tube or sleeve containing the small-diameter tube gives
the shaft the relatively slight degree of rigidity necessary to
enable the flexible shaft to maintain a desired shape into which
the shaft has been bent” (col. 2, lines 41-45).
Regarding claims 1 and 3 the examiner argues that
“appellant has not defined sufficiently flexible in the current
application specification such that it would preclude that of
Swiggett to be considered ‘sufficiently flexible.’
‘Sufficiently flexible’ is a relative term and a base for
comparison has not been established” (answer, page 5). The
degree of flexibility required by claims 1 and 3 is sufficient
flexibility to avoid movement of the tip of a clip storing and
dispensing stem when a hand operable actuator is moved (claim 1)
or a remote actuator is engaged (claim 3). The examiner
has not established that Swiggett’s shaft has that degree of
flexibility, or explained how Swiggett would have fairly
suggested, to one of ordinary skill in the art, a shaft having
that degree of flexibility. The examiner argues that Swiggett’
shaft “would necessarily yield isolation movement via the
surgeon’s hand” (answer, page 4), but the examiner does not
provide supporting evidence or reasoning.
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Appeal No. 2006-1376
Application No. 09/596,806

Regarding claim 9 the examiner argues that Swiggett’s
handle surely is suitable for gripping (answer, page 3), and
that the appellant’s claimed method would be “inherently
obvious” (answer, page 7). As argued by the examiner,
Swiggett’s applicator, when not in use, can be held in a
person’s hand. However, the appellant’s claim 16 requires that
in use, the engaging of the actuator at the remote end of the
flexible device is not performed by the hand holding the handle
of the clip applier. Swiggett’s disclosure that the applicator
is inserted into the lumen of an organ to be stabled (col. 3,
lines 55-56) indicates that, in use, the applicator is not held
by a hand. Also, Swiggett’s disclosure that the stiffness of
the flexible shaft sufficient to avoid significant straightening
during staple application (col. 1, lines 59-68; col. 2,
lines 20-29 and 41-45) indicates that it is the stiffness of the
shaft, not a hand, that holds the applicator in place. The
examiner has not explained why, in light of these disclosures
by Swiggett, one of ordinary skill in the art would have been
led by the applied prior art to not engage a hand-held clip
applier’s remote actuator using the hand holding the clip
applier’s handle.
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Appeal No. 2006-1376
Application No. 09/596,806

For the above reasons we conclude that the examiner has not
established a prima facie case of obviousness of the appellant’s
claimed invention.
DECISION
The rejection of claims 1-11 under 35 U.S.C. § 103 over the
admitted prior art (figures 1-4) in view of Swiggett is
reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal No. 2006-1376
Application No. 09/596,806

Thomas M. Freiburger
P.O. BOX 1026
Tiburon, CA 94920

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