10861757 (B.P.A.I. Mar. 19, 2012)

Ex Parte Danitz et al

Board of Patent Appeals and InterferencesMar 19, 2012

10861757 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/861,757 06/04/2004 David J. Danitz 06-516-2 1943 34704 7590 03/19/2012 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 EXAMINER DOWE, KATHERINE MARIE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 03/19/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DAVID J. DANITZ, GEORGE D. HERMANN, and KARRIE L. STURTZ __________ Appeal 2010-009708 Application 10/861,757 Technology Center 3700 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-009708 Application 10/861,757 2 STATEMENT OF CASE Claim 1 is representative and reads as follows: 1. An insert for attachment to a surgical instrument adapted for contacting tissue, said insert comprising a compliant cushion having a tissue- engaging contact surface and having a plurality of molded, hooked traction elements on at least a region of said surface, wherein said hooked traction elements are integrally formed with said tissue engaging contact surface, and wherein said hooked traction elements are not more than 1 mm in height. Cited References Fogarty US 4,821,719 Apr. 18, 1989 Miller et al. US 5,845,375 Dec. 8, 1998 Hunt et al. US 2002/0072766 A1 Jun. 13, 2002 Grounds of Rejection Claims 1-4, 6-11 and 26-42 are rejected under 35 U.S.C. § 103(a) for obviousness over Fogarty in view of Miller. Claim 40 is rejected under 35 U.S.C. § 103(a) for obviousness over Fogarty in view of Miller and Hunt. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3-6. Discussion ISSUE The Examiner concludes that Fogarty discloses each element claimed except: Fogarty does not disclose the specific dimensions of the hooked-traction elements. Miller (US 5,845,375) discloses a fastening device with traction elements that may have a height Appeal 2010-009708 Application 10/861,757 3 less than 0.3 mm and a density of traction elements that may be greater than 300 per square cm (col 4, ln 34-39). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the device of Fogarty such that the hooked-traction elements are not more than 0.3 mm in height and have a density greater than 300 hooks per square cm. Thus, there would be a sufficient amount of hooks to firmly grasp the tissue and the height would be such that residual witness marks on the tissue would be reduced, which would in turn reduce trauma to the tissue. (Ans. 4.) Appellants argue that Miller is drawn to solving a different problem in a non-analogous art to the claimed invention. (App. Br. 15.) Appellants argue that, in the claimed invention, the hooked traction elements are intended to contact organs and tissue, and in Miller, the material is designed to contact a second side of a fastener. (Id. at 15-16.) The issue is: Is Miller analogous art to the claimed invention? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at Appeal 2010-009708 Application 10/861,757 4 issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” [In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)]. . . . “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” [In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)]. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir 2011): “In order to rely on a reference as a basis for rejection [under § 103] of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Although § 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is “too remote to be treated as prior art.” In re Sovish, 769 F.2d 738, 741, 226 USPQ 771,773 (Fed. Cir. 1985). . . . Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the Appeal 2010-009708 Application 10/861,757 5 reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Clay, 966 F.2d at 658-659. ANALYSIS The issue in the present case controls both obviousness rejections, so we address both rejections together. We are persuaded by Appellants’ argument that the Miller reference is non-analogous art. We look to the two criteria which have evolved for “determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d at 658-659. As to the first criterion, we do not find that the Miller patent – directed to “a mushroom-type hook strip for a mechanical fastener” (Miller, col. 2, ll. 35-36) – is from the same field of endeavor as the claimed insert for attachment to a surgical device adapted for contacting tissue as claimed and as in Fogarty. The second criterion is whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. We also answer this question in the negative. We agree with Appellants that the velcro-like substance of Fogarty is designed to contact tissue, whereas the hook strip of Miller is designed to contact a second side of a fastener. (App. Br. 15-16.) Appeal 2010-009708 Application 10/861,757 6 For this reason, we determine that Miller is non-analogous art to the claimed invention, and the obviousness rejections are reversed. CONCLUSION OF LAW Miller is not analogous art to the claimed invention. The obviousness rejections are reversed. REVERSED cdc