Ex Parte Donohoe et al

Board of Patent Appeals and Interferences

Mar 7, 2011

10054745 (B.P.A.I. Mar. 7, 2011)

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.
10/054,745 01/22/2002 Brendan M. Donohoe 057 3564
33109 7590 03/07/2011
CARDICA, INC.
900 SAGINAW DRIVE
REDWOOD CITY, CA 94063
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/07/2011 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 BRENDAN M. DONOHOE, THEODORE M. BENDER,
BRIAN R. DUBOIS, SCOTT O. CHAMNESS, STEPHEN A. YENCHO,
JAIME S. VARGAS, NATHAN H. WHITE, GREGORY B. ARCENIO,
HEATHER L. KLAUBERT, and RUSSELL C. MEAD, JR.
____________________

Appeal 2009-008688
Application 10/054,745
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

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.
Appeal 2009-008688
Application 10/054,745

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STATEMENT OF THE CASE
Brendan M. Donohoe et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-15, 17-31, 33-39 and 51.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to creating an opening in a
wall of a blood vessel by a cutter and a piercing member positioned within
the cutter (Spec. 1: 15-16 and Spec. 8: 2).
Claims 1 and 17, reproduced below, are representative of the subject
matter on appeal.
1. A tool for making an incision in and removing tissue
from a vessel wall, comprising:
a cutter; and
a piercing member positioned within said cutter, wherein
said piercing member and said cutter are
configured to translate together to penetrate the
wall of the vessel.

17. A surgical tool for removing tissue from the wall of a
vessel to create an opening, comprising:
a rotatable cuter;
an auger assembly fixed to and substantially coaxial with
said cutter, said auger assembly comprising an
auger at its distal end;
an actuator connected to at least one of said auger
assembly and said cutter.

Appeal 2009-008688
Application 10/054,745

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THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1-6, 8-14, 17-31, 33-392 and 51 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hougen (US 3,825,362, issued Jul.
23, 1974).
2. Claims 1, 7 and 15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by “St. Jude Medical, Instruction for use” (published “on
or around Aug. 2000”3) (hereinafter “St. Jude Medical”).

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that both Hougen and St. Jude Medical describe a piercing member and a
cutter configured to translate together to penetrate the wall of a vessel, as
called for in independent claim 1 (App. Br. 4, 6), and (2) whether the
Examiner erred in finding that Hougen describes an auger assembly fixed to
a cutter, as called for in independent claim 17 (App. Br. 7).

ANALYSIS
Rejection of claims 1-6 and 8-14 over Hougen
Claim 1 recites, inter alia, that “said piercing member and said cutter
are configured to translate together to penetrate the wall of the vessel.”

2 In the Examiner’s Answer, claim 34 was indicated as being both rejected
and objected to (Ans. 4). However, in the Final Rejection, claim 34 was
only indicated as being rejected (Final Rejection 2-3). Thus, we find that the
indication of claim 34 as being objected to in the Examiner’s Answer was a
typographical error. Accordingly, we will treat claim 34 as being rejected in
our analysis.
3 The publication date has been provided by Appellants on pages 11-12 of a
communication filed Feb. 16, 2006.
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Application 10/054,745

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The Examiner found that the Specification “does not explicitly define
the meaning of the phrase ‘translate together’” (Ans. 6).
Appellants contend that “the claimed phrase ‘translate together’
means that the piercing member and the cutter . . . are fixed [to one another]
with respect to translation, but not with respect to rotation (App. Br. 4, citing
to Spec. 3, 21-22 and Spec. 8: 17-19).
Appellants’ Specification describes that “the auger 6 and cutter 4 are
configured to translate together at the same rate in the axial direction, but are
free to rotate independently of one another, . . . [t]hat is, the auger 6 and the
cutter 4 are fixed axially, but independent rotationally” (Spec. 8: 13-19)
(emphasis bolded).
Thus, we conclude that the claimed phrase “translate together to
penetrate the wall of the vessel” means that a piercing member and a cutter
must be fixed to move together axially when the tool penetrates a wall. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (When
construing claim terminology in the United States Patent and Trademark
Office, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.)
Appellants contend that Hougen does not describe that the piercing
member and the cutter are configured to translate together to penetrate the
wall of a vessel, as called for in independent claim 1 (Reply Br. 4, App. Br.
4). In support thereof, Appellants contend that in Hougen, the pilot pin 42
progressively retracts as cutter 14 advances into the workpiece, that is, the
pilot pin 42 and the cutter 14 translate in opposite directions to cut a hole in
the workpiece (App. Br. 5).
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Application 10/054,745

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The Examiner found that in Hougen, the
cutter 14 and auger/spike/piercing member 42 [are]
configured to translate together to penetrate the
wall 12 because a user of the Hougen
device/assembly will move/translate the
device/assembly including cutter 14 and
auger/spike/piercing member 42 in a direction
substantially perpendicular to the surface of wall
12 to cut the wall.
(Ans. 6) (emphasis bolded).
The Examiner found “that during a translation movement of [the]
Hougen device before contacting wall 12, cuter 12 [sic, cutter 14] and
auger/spike/piercing member 42 are axially fixed one to each other because
there is substantially no relative motion between cutter 14 and
auger/spike/piercing member 42” (id.) (emphasis bolded).
Hougen describes that:
[r]eferring to FIG. 3, when it is desired to cut a
hole in workpiece 12 the rotating spindle 40 is
advanced axially so that shank 32 of arbor 16 is
rotated and advanced axially toward the work.
Initially the pointed end 72 of pilot pin 42 engages
workpiece 12 since it projects axially beyond
cutting teeth 58. . . . As the arbor advances axially
toward the workpiece pilot pin 42 progressively
retracts as cutter 14 advances into the workpiece.
(col. 3, l. 54-col. 4, l. 2, and fig. 3).
We find that in Hougen, while the pilot pin 42 and the cutter 14
translate together before a hole is cut in a workpiece; the pilot pin 42 and the
cutter 14 translate in opposite directions when a hole is cut in a workpiece.
Thus, we find that in Hougen, pilot pin 42 and the cutter 14 are not
Appeal 2009-008688
Application 10/054,745

6
configured to translate together to penetrate the wall of the vessel, as called
for in independent claim 1.
We reverse the rejection of independent claim 1, and dependent
claims 2-6 and 8-14, over Hougen.
Rejection of claims 1, 7 and 15 over St. Jude Medical
Appellants contend that St. Jude Medical does not describe that the
piercing member and the cutter are configured to translate together to
penetrate the wall of a vessel, as called for in independent claim 1 (App. Br.
6).
The Examiner found that in St. Jude Medical, Figures 14 and 15 show
a device as recited in the claims (Ans. 4).
Appellants contend that in St. Jude Medical (citing to Figures 13-15),
the advancement of the cutter takes place while the needle is substantially
stationary, which means that the needle and the cutter translate relative to
each other, and not together (App. Br. 6).
We find that in St. Jude Medical, after the needle is moved to engage
the inside wall of the aorta, the cutter is advanced through the aorta until the
hole is complete (p. 7, figs. 14-15). Thus, the needle and cutter do not
translate together and do not penetrate the vessel at the same time.
Accordingly, we find that in St. Jude Medical, the needle and the
cutter are not configured to translate together to penetrate the wall of the
vessel, as called for in independent claim 1.
We reverse the rejection of independent claim 1, and dependent
claims 7 and 15 over St. Jude Medical.
Appeal 2009-008688
Application 10/054,745

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Rejection of claims 17-31, 33-39 and 51 over Hougen
Claim 17 calls for, inter alia, an auger assembly fixed to a cutter.
Appellants contend that Hougen does not describe an auger assembly
fixed to a cutter, as called for in claim 17 (App. Br. 9).
The Examiner found that “[a]s to independent claim 17, the same
reasoning for the rejection is applicable” (Ans. 7). As set forth supra, the
Examiner found that “[cutter 14] and auger/spike/piercing member 42 are
axially fixed one to each other because there is substantially no relative
motion between cutter 14 and auger/spike/piercing member 42” (Ans. 6)
(emphasis bolded).
As we found supra, in Hougen, while the pilot pin 42 and the cutter
14 translate together before a hole is cut in a workpiece; the pilot pin 42 and
the cutter 14 translate in opposite directions when a hole is cut in a
workpiece (col. 3, l. 54-col. 4, l. 2, and fig. 3).
We find that Hougen’s pilot pin 42 and cutter 14 are not axially fixed
to each other. We find that the lack of any relative axial movement between
Hougen’s pilot pin 42 and cutter 14 prior to a hole being cut in a workpiece
does not mean that the pilot pin 42 and the cutter 14 are axially fixed to each
other since the pilot pin 42 and the cutter 14 are capable of moving relative
to each other as shown by their movement in opposite directions when a hole
is cut in a workpiece.
Thus, we find that in Hougen, pilot pin 42 and the cutter 14 are not
fixed to each other, as called for in independent claim 17.
We reverse the rejection of independent claim 17, and dependent
claims 18-31, 33-39 and 51, over Hougen.

Appeal 2009-008688
Application 10/054,745

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CONCLUSIONS
The Examiner has erred in finding that both Hougen and St. Jude
Medical describe a piercing member and a cutter configured to translate
together to penetrate the wall of a vessel, as called for in independent claim
1.
The Examiner has erred in finding that Hougen describes an auger
assembly fixed to a cutter, as called for in independent claim 17.

DECISION
The decision of the Examiner to reject claims 1-15, 17-31, 33-39 and
51 is reversed.

REVERSED

mls

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