Ex Parte Carranza et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10972124 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSE R. CARRANZA, BRENDAN M. DONOHOE,
THEODORE M. BENDER, and BENJAMIN SHERMAN
____________________

Appeal 2009-010621
Application 10/972,124
Technology Center 3700
____________________

Decided:1 July 22, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before LINDA E. HORNER, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010621
Application 10/972,124

2
SUMMARY OF DECISION
We AFFIRM.

STATEMENT OF THE CASE
Jose R. Carranza et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision finally rejecting claims 1, 4-6, 9, 10, 13
and 18-20. App. Br. 1. Claims 2, 3, 7, 8, 11, 12 and 14-17 have been
canceled. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

THE INVENTION
The Appellants’ claimed invention is directed to a pull-through tool
that allows loading of a graft vessel onto an anastomotic device. Spec. 3,
para. 0007. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A pull-through tool, comprising:
a compressible handle;
a flexible tube connected to said handle, said tube having
a lumen, wherein said handle includes a passage substantially
coaxial with said lumen;
a plurality of wires fixed to said handle, wherein said
wires extend through and are movable relative to said tube; and
wherein the distal end of each said wire is bent to form a
generally J-shaped hook.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hoogeboom US 5,752,972 May, 19, 1998
Bark US 5,972,002 Oct. 26, 1999
Appeal 2009-010621
Application 10/972,124

3
The Examiner rejected independent claim 1 and dependent claims 4-6,
9, 10, 13 and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over
Hoogeboom and Bark. Ans. 3.

ISSUES
Appellants argue rejected claims 1, 5, 6, 9, 10, 13, 18, and 19 as a
group. App. Br. 2-5. Appellants’ comment regarding claims 4 and 20 is
treated below as a separate argument. App. Br. 5. Claims 5, 6, 9, 10, 13, 18,
and 19 will stand or fall with claim 1, which is selected as the representative
claim. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellants contend that the Examiner erred in rejecting claim 1 by
failing to provide an adequate articulation of a rationale for the Examiner’s
proposed combination of Hoogeboom and Bark. App. Br. 2-3; Reply Br 5.
Appellants contend that the failure to articulate such reasoning amounts to
an agency decision that is not supported by substantial evidence in violation
of the Administrative Procedure Act. App. Br. 3. In light of these
contentions, the first issue presented is:
Have Appellants established that the Examiner erred in rejecting
claim 1 as unpatentable over Hoogeboom and Bark because the Examiner
did not provide sufficient reasoning to support the rejection?
Appellants additionally contend that the combination of Hoogeboom
and Bark does not teach or suggest the claimed “plurality of wires fixed to
[a] handle” since there is an intermediate structure, a rod 32, between the
wires 28 and the grip 62 of Bark. App. Br. 4. Appellants assert that a
construction that includes intermediate structure, rather than direct fixation,
Appeal 2009-010621
Application 10/972,124

4
does not fall within the broadest reasonable interpretation of the claim.
Reply Br. 4. In light of these contentions, the next issue presented is:
Have Appellants established that the Examiner erred in rejecting
claim 1 as unpatentable over Hoogeboom and Bark because the claimed
“plurality of wires fixed to [a] handle” requires the wires to be fixed directly
to the handle?
Appellants additionally contend that the combination of Hoogeboom
and Bark does not teach or suggest the claimed “flexible tube connected to
[the] handle” since the tubes of Hoogeboom and Bark are not described as
“flexible.” App. Br. 4-5; Reply Br. 4-5. In light of this contention, the next
issue presented is:
Have Appellants established that the Examiner erred in rejecting
claim 1 as unpatentable over Hoogeboom and Bark because the combination
of Hoogeboom and Bark would not have rendered obvious the claimed pull-
through tool having a tube that is flexible?
Appellants’ argument concerning the hinges of claims 4 and 20 is
based upon a misunderstanding of the Examiner’s rejection. The Examiner
found that hinges 196 of Hoogeboom are the claimed hinges, not the tissue
100 of Bark. App. Br. 5. Since Appellants’ argument fails to address the
Examiner’s finding that Hoogeboom’s hinges 196 are the claimed hinges,
the Appellants’ argument is not persuasive of error in the Examiner’s
rejection of claims 4 and 20, and is not addressed further.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
Appeal 2009-010621
Application 10/972,124

5
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Hoogeboom discloses two embodiments of a surgical instrument.
Figs. 1-10; 11-32. In each embodiment, the instrument 10, 110
includes a handle portion 14, 118, having a tube 28, 126 connected to
the handle 14, 118. The tube 28, 126 has an actuator rod 22, 127
extending through and movable relative to the tube 28, 126. The
actuator rod 22, 127 causes movement of the end effectors 18, 19,
114, 116 and is fixed to the handle 14, 118. Col. 3, ll. 29-31, 58-65;
col. 4, l. 9-11; col. 5, ll. 5-16.
2. Hoogeboom teaches that the end effectors described are exemplary
and could be substituted with a variety of other configurations. Col.
10, ll. 39-42.
3. Hoogeboom teaches that the tube 28, 126 is provided to maintain the
end effectors 18, 19, 114, 116 at a fixed distance from the handle 14,
118. Col. 3, l. 67 - col. 4, l. 4.
4. Hoogeboom teaches that the tube 28, 126 can be made from stainless
steel, aluminum or a variety of different types of surgically acceptable
plastics. Col. 3, ll. 60-64; col. 4, ll. 11-132; col. 6, ll. 34-40.
5. Bark teaches a surgical instrument for grasping tissue.
6. Bark employs a grasping assembly 26 having a grasper 28 and
connecting rod 32. Col. 6, ll. 64-65. Grasper 28 may be in the form
of forceps made from wires formed into a J-shaped hook. Col. 7,
ll. 23-25; fig. 8.

2 Hoogeboom incorrectly cites reference numeral 22 in place of numeral 28
in column 4, line 11.
Appeal 2009-010621
Application 10/972,124

6
7. Appellants’ Specification provides that the tube 50 is constructed
from a substantially flexible biocompatible material, such as
polyethylene, or in the alternative the tube 50 is not substantially
flexible. Para. [0044].
8. The Specification further provides that the flexible members 54 of the
handle 48 “are connected to one another, directly or indirectly.” Para.
[0043].
9. The Specification further provides that “[t]he proximal end of each
tension member 52 is connected to the proximal end of the handle 48.
The proximal end of the handle 48 may include a stud 66 to which the
proximal end of each tension member 52 is fixed. More than one stud
66 may be provided, such that each tension member 52 is connected
to a separate stud 66.” Para. [0046].

PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
The PTO applies to verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
Appeal 2009-010621
Application 10/972,124

7
the written description contained in applicant’s specification. In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Reading a claim in light of the
specification, to thereby interpret limitations explicitly recited in the claim,
is a quite different thing from reading limitations of the specification into a
claim, to thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the claim. In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969). Although the claims are interpreted
in light of the specification, limitations from the specification are not read
into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
“35 U.S.C. § 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
Appeal 2009-010621
Application 10/972,124

8
field, and such modification yields a predictable result. See id. (citing United
States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
KSR, 550 U.S. at 417. When considering obviousness of a combination of
known elements, the operative question is thus “whether the improvement is
more than the predictable use of prior-art elements according to their
established functions.” Id.

ANALYSIS
The subject matter of claim 1 involves no more than the predictable
use of prior-art elements according to their well-established functions.
Appellants’ argument regarding the sufficiency of the rationale and evidence
supplied by the Examiner to support the rejection of claim 1 is not
persuasive. App. Br. 2-3.3 As noted by the Examiner, substituting
Hoogeboom’s end effector structure with Bark’s involves the mere
substitution of one element for another known in the field, and such
modification yields the predictable result of a device which grasps tissue.
Ans. 3-4. (See Facts 1 and 5.) The teachings of cited references themselves
also form part of the evidentiary record upon which the Examiner relies in
support of the rejection. Hoogeboom, which discloses the basic structure

3 Appellants’ argument concerning the deletion of the term “tension
member” in claim 1 is noted. App. Br. 3. Since this term remains in claim
9, however, we are not persuaded that the Examiner’s Answer is addressing
limitations present only in previous versions of claim 1.

Appeal 2009-010621
Application 10/972,124

9
claimed, expressly suggests modifying the disclosed end effectors, or “jaw
elements,” by replacing them with alternate types of end effectors. (See
Facts 1 and 2.) The Examiner’s explanation of the rejection, in addition to
the disclosures of Hoogeboom and Bark, provides sufficient factual support
for the Examiner’s legal conclusion of obviousness. The fact that the
Examiner employed the term, “jaw configuration” to characterize features of
the prior art and explain the proposed modification does not show error on
the Examiner’s part. App. Br. 2; Reply Br. 5. There is no requirement
confining an Examiner’s discussion of the scope and content of the prior art
to the specific language of the claim.
Regarding the phrase, “plurality of wires fixed to said handle,” the
Examiner correctly points out that there is no requirement in the claim for
direct fixation. Appellants use the term “fixed” interchangeably with the
term “connected” in the Specification. (See Fact 9.) See Genentech, Inc. v.
Chiron Corp. 112 F.3d 495 (Fed. Cir. 1997) (“To be joined or connected
does not necessitate a direct joining or connection.”); Ullstrand v. Coons,
147 F.2d 698 (CCPA 1945) (“the accepted definition of the term ‘connected’
is restricted to neither a direct nor an indirect connection, and the term is
therefore applicable to an indirect connection”). Appellants also recognize
that the term “directly” may be used to distinguish from a connection that is
indirect. (See Fact 8.) Thus, contrary to Appellants’ suggestion, when read
in light of the Specification, it is reasonable to interpret the term “fixed” as
restricted to neither direct nor indirect fixation.
Regarding the phrase, “flexible tube,” the Examiner cites to
Hoogeboom and not Bark to teach this feature. Ans. 3, App. Br. 4. The
Examiner opines that the tube of Hoogeboom, like all materials, has some
Appeal 2009-010621
Application 10/972,124

10
degree of flexibility. Ans. 4. Appellants have not pointed to any language in
the claim or the Specification that provides a standard that would serve to
limit the phrase, “flexible tube” to tubes having a particular degree of
flexibility. The Examiner’s construction of the term “flexible tube” to
include the tube of Hoogeboom is therefore reasonable.
Appellants correctly point out the particular material used to construct
the tube, whether stainless steel, aluminum, polyethylene or some other
surgically acceptable plastic, is not dispositive of the degree of flexibility of
the tube. Reply Br. 4. However, the fact that Hoogeboom’s tube functions to
maintain the end effectors at a fixed distance from the handle does not
require Hoogeboom’s tube to be inflexible; rather, it requires only that the
tube provides some degree of resistance in the axial direction. Reply Br. 4;
(Fact 3). Further, Appellants’ conclusion regarding the tube 126 of
Hoogeboom’s second embodiment is inaccurate. Reply Br. 4-5. The quoted
portion of Hoogeboom describes the end block 196, which includes a bore
that can be axially aligned with the actuator rod 127, cannula tube 126, and
handle adapter 120, whether the tube 126 is flexible or not. The assembly
need not always maintain the exact alignment depicted in figure 11 and
achieving that alignment does not require the outer cannula tube to be
inflexible.
The fact that Hoogeboom is silent regarding the degree of flexibility
of the tube does not mean that one of ordinary skill in the art would not
know how to fabricate the tube from the suggested materials (Fact 4) in
order to achieve the desired flexibility. What a reference teaches or suggests
must be examined in the context of the knowledge, skill, and reasoning
ability of a skilled artisan. What a reference teaches a person of ordinary
Appeal 2009-010621
Application 10/972,124

11
skill is not limited to what a reference specifically “talks about” or what is
specifically “mentioned” or “written” in the reference. Syntex (U.S.A.) LLC
v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). “[A] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR v. Teleflex, 550 U.S. 398, 421 (2007).

CONCLUSIONS OF LAW
On the record before us, Appellants have not established that the
Examiner erred in rejecting claim 1 as unpatentable over Hoogeboom and
Bark for lack of an adequate articulation of a rationale to support the legal
conclusion of obviousness. Appellants have not established that the
Examiner erred in rejecting claim 1 because the claimed “plurality of wires
fixed to [a] handle” requires the wires to be fixed directly to the handle.
Appellants have not established that the Examiner erred in rejecting claim 1
because the combination of Hoogeboom and Bark would not have rendered
obvious the claimed pull-through tool wherein the tube is flexible.

DECISION
For the above reasons, the Examiner's rejection of claims 1, 4-6, 9, 10,
13 and 18-20 is affirmed.
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)(1)(iv) (2007).

AFFIRMED
vsh

Appeal 2009-010621
Application 10/972,124

12
CARDICA, INC.
900 SAGINAW DRIVE
REDWOOD CITY, CA 94063