Ex Parte Cichocki

Board of Patent Appeals and Interferences

Dec 8, 2010

10727367 - (D) (B.P.A.I. Dec. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK RICHARD CICHOCKI, JR.
____________

Appeal 2009-014574
Application 10/727,367
Technology Center 3700
____________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1

This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4, and 6. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The claims are directed to an active suture. Claims 1 and 2 are
representative and are reproduced in “APPENDIX” of Appellant’s Brief
(App. Br. 21-22).
The rejections presented by the Examiner follow:
1. Claims 1, 4, and 6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Burton.2
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Burton and Davis.3
We reverse the anticipation rejection and affirm the obviousness
rejection.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Burton teaches the claimed invention?
FINDINGS OF FACT
FF 1. For clarity we reproduce Appellant’s Figure 4b below

Figure 4b is a longitudinal cross-sectional view of a portion of an active
suture and illustrates a passageway 12 that has a distal end 46 disposed

2 Burton, US 4,159,720, issued July 3, 1979.
3 Davis et al., US 3,474,703, issued October 28, 1969.
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between the proximal and distal ends of the braided suture 14 (see, e.g.,
Spec. 11: 11-16).
FF 2. The Examiner recognizes that “Burton does not specifically disclose
wherein the distal end of the passageway is disposed between the proximal
and distal ends of the braided suture” (Ans. 3).
FF 3. Burton teaches a wick that (1) may be made of an absorbent suture
material and (2) can serve as a suture as well as a carrier or conduit for
delivering fluid to an affected area (Burton, col. 4, ll. 28-42).
FF 4. Burton teaches that “[t]he ends of the wicks absorb the fluid that is
gradually fed along the length of the wick by absorption or capillary action”
(Burton, col. 5, ll. 6-8).
FF 5. The Examiner reasons that since Burton teaches that the braided
suture material absorbs fluid “suture material must be present at the distal
end to take in the fluid” (Ans. 4).
ANALYSIS
Appellant contends that “the [E]xaminer incorrectly characterize[s]
Burton as disclosing that suture material must be present or is inherent at a
distal end to take in fluid” (App. Br. 15; Cf. FF 5). We agree.
The Examiner failed to establish an evidentiary basis to support a
conclusion that in order for Burton’s wick, which is made of absorbent
material, to serve as a carrier or conduit the distal end of the passageway in
Burton’s wick must necessarily (i.e. inherently) be disposed between the
proximal and distal ends of the braided suture.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support the
Examiner’s finding that Burton teaches the claimed invention. The rejection
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of claims 1, 4, and 6 under 35 U.S.C. § 102(b) as being anticipated by
Burton is reversed.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FINDINGS OF FACT
FF 6. The Examiner interprets the term “tube” as recited in Appellant’s
claim 2 as being distinct from the term “passageway” as recited in
Appellant’s claim 1. Specifically, the Examiner finds that “[a] passageway
is simply a lumen or corridor, whereas a tube is a hollow body and therefore
is a separate component” (Ans. 6).
FF 7. The Examiner finds that Burton does not specifically disclose a tube
within the lumen of a suture (Ans. 4).
FF 8. The Examiner relies on Davis to teach “a braided wick for
transmitting fluids . . . [that] comprises a hollow inner braid within an outer
braid where[in] the inner braid comprises openings between the braided
filaments” (Ans. 4).
FF 9. The Examiner finds that Davis teaches that the configuration of the
inner and outer braided filaments “provides an efficient method of
transporting . . . fluid along the length of the wick through capillary action”
(id.).
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FF 10. Davis teaches that the flow through the capillary device will depend,
inter alia,
[U]pon the diameter of the filaments used in preparing the
braid. It can be appreciated that the larger the diameter, the
larger will be the open areas between the various filaments of
the braid and, accordingly, the greater will be the rate of flow.
Also, some control over the open areas can be obtained by
using filaments having differing diameters or filaments having
non-circular cross sections.

(Davis, col. 3, ll. 66-74.)

ANALYSIS
We are not persuaded by Appellant’s contention that “Davis does not
disclose a hollow inner tube” (App. Br. 17; Cf. FF 8). We are also not
persuaded by Appellant’s contention that Davis “is silent with respect to the
relationship or advantages of the ratio of the diameters of the outer braid . . .
and the inner braid” (id.; see also Reply Br. 8-9; Cf. FF 9-10). Instead, we
agree with the Examiner’s conclusion that
Although Davis does not specifically disclose the ratio of
the outer diameter of the inner tube to the inner diameter of the
tube, it would have been obvious to one of ordinary skill at the
time of the invention for Davis to also comprise a tube diameter
ratio of greater than 1.7, since it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art.

(Ans. 5.)

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We recognize Appellant’s contention regarding the disclosed
advantages of the active suture (see App. Br. 18). However, for the reasons
set forth by the Examiner, we find Appellant’s contention and disclosed
advantages are not commensurate in scope with the claimed invention (see
Ans. 9-10). For the foregoing reasons, we are not persuaded by Appellant’s
contention that they “are entitled to claim more broadly than the
representative examples of the experimental evidence” (Reply Br. 9). While
this may be true, absent evidence to the contrary we find no error in the
Examiner’s conclusion that the broader subject matter is encompassed by the
prior art.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Burton and Davis is affirmed.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
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