Ex parte Grooters

Board of Patent Appeals and Interferences

Sep 26, 2001

08763728 (B.P.A.I. Sep. 26, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONALD K. GROOTERS
_____________
Appeal No. 2000-0908
Application No. 08/763,728
______________
ON BRIEF
_______________
Before FRANKFORT, STAAB, and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-5, 7, 9-11 and 15-20, all the claims currently
pending in the application.
Appellant’s invention pertains to an aortic cannula
(claims 1-5, 7, 9, 10 and 15-19) having one or more openings
that are oriented such that, in use, blood may be directed
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toward the ascending aorta and away from the aortic arch.
Appellant’s invention also pertains to a method of providing
blood to the aorta (claim 11), and a method of cannulization
for heart by-pass surgery (claim 20). A further understanding
of the invention can be derived from a reading of
representative claims 1 and 11, which appear in the appendix
to appellant’s main brief (Paper No. 14).
The references relied upon by the examiner as evidence of
obviousness are:
Fecht 4,795,446 Jan. 03,
1989
Cosgrove et al. (Cosgrove) 5,643,226 Jul. 01,
1997
(filed Oct. 6,
1994)
Claims 1-5, 7, 9-11 and 15-20 stand rejected under 35
U.S.C. § 103 as being unpatentable over Fecht in view of
Cosgrove.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 14 and 18) and to the examiner’s answer (Paper No.
17) for the respective positions of appellant and the examiner
regarding the merits of this rejection.
Looking first at claim 1, this claim is directed to an
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aortic cannula comprising an elongated tube having a terminal
end with forward and rearward surfaces, at least one opening
in the rearward surface, the forward surface being closed “to
prevent blood flow in the direction of the aortic arch,” and
an inverted cup at the terminal end for deflecting the flow of
blood exiting the cannula rearwardly.
Fecht discloses an aortic cannula comprising an elongated
tube having a tip, shown in the cross section in Figure 7,
comprising a generally elliptical opening 65 provided in a
sidewall of the tip. The tip also includes a smoothly curved
wall 74 extending between the inner wall of the cannula and
the distal end of the opening so that blood flowing distally
in lumen 70 flows into the tip, against the smoothly curved
wall, and out the opening 65 with minimal turbulence even
though there is a substantial change in the direction of the
blood flow. Column 3, line 64 through column 4, line 5.
Cosgrove is directed to an aortic cannula designed to
overcome the problems associated with high velocity “jet” flow
emanating from the distal end of an aortic cannula. As
explained by Cosgrove at column 1, lines 23-36, the high
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velocity “jet” flow of blood can cause atheromatous material
and/or adherent thrombi from the walls of the aorta to
dislodge, causing embolisms. Cosgrove’s solution to this
problem involves the provision of a cap 30 at the distal end
of the cannula to substantially block the axial flow of blood
and redirect it in a more radial direction (column 3, lines
41-48). Particularly preferred by Cosgrove is the provision
of a land 42 at the distal end 40 of the cannula. The
following quote from column 4, line 66 through column 5, line
16, of Cosgrove’s specification illustrates the perceived
advantages of diverting the flow of blood to a more radial and
less axial direction:
The blood flow encounters the rounded, blunt
distal end 40 of the lumen which redirects the flow
axially in the proximal direction. When the axial
distal flow encounters the rebounding proximal flow,
the bulk of the distal flow is diverted radially
outwardly through the outlet openings in a sheet-
like cone. Thus, rather than a jetting, axial flow
experienced with conventional aortic cannula, the
cannula 20 and 20’ provide a diffused flow that more
quickly establishes a stable, more uniform velocity
blood flow in the aorta. The flow properties of the
blood are such that the cannula creates an
“umbrella” flow pattern, as shown in FIGS. 8 and 9,
that more quickly establishes a uniform flow in the
aorta.
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The cannulas 20 and 20’ of this invention thus
reduce maximum flow velocity, the variation in flow
velocity, and the maximum flow force, while
maintaining the overall flow rate. These reductions
are believed to be significant in the reduction of
thrombo-atheroembolisms, and other possible
complications of heart surgery.
In rejecting claim 1 as being unpatentable over Fecht in
view of Cosgrove, it is the examiner’s position that Fecht
discloses an aortic cannula that corresponds to the aortic
cannula called for in the claim except perhaps for a clear
disclosure of an inverted cup at the terminal end of the
cannula. The examiner considers, however, that it would have
been obvious to one of ordinary skill in the art “to modify
Fecht by providing the inverted cup of Cosgrove et al. at the
terminal end [of Fecht’s cannula] in order to improve the
deflection of the blood flow outwardly as shown by Cosgrove et
al.” (answer, pages 4-5). Implicit in the rejection is the
examiner’s position that the modified cannula of Fecht would
correspond structurally to the cannula set forth in claim 1 in
all respects.
The positions taken by the examiner in rejecting claim 1
are well founded. In particular, we are in agreement with the
examiner’s bottom line position that (1) it would have been
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obvious to modify the distal end of Fecht’s cannula to direct
the flow of blood in a more radial and less axial direction to
gain the advantages set forth in Cosgrove (i.e., more diffused
blood flow that reduces “jet” flow and thus decreases the
chances of thrombi from dislodging from the walls of the
aorta), and the examiner’s bottom line position that (2) the
modified Fecht cannula would result in the subject matter of
claim 1.
Concerning (2), appellant argues (main brief, page 7)
that Fecht’s cannula and manner of use are precisely the
opposite of that which is claimed. More specifically,
appellant contends that, in contrast to appellant’s cannula,
Fecht’s cannula has an opening in the forward facing surface
of the cannula and no opening in the rearward facing surface
of the cannula, and that, in use, Fecht’s cannula is
positioned with the forward (open) sidewall facing the aortic
arch and the rearward (closed) sidewall facing the ascending
aorta. While we appreciate that Fecht’s Figure 1 appears to
show the cannula thereof positioned in the aorta with the
opening in the tip facing the aortic arch, appellant’s
argument is not well taken with respect to claims such as
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claim 1 that are directed to the cannula per se.
It is generally well settled that the particular manner
in which a device or article is intended to be used cannot be
relied on to distinguish a claimed structure from the prior
art. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); In re Yanush, 477 F.2d 958, 959, 177 USPQ
705, 706 (CCPA 1973); In re Casey, 370 F.2d 576, 580, 152 USPQ
235, 238 (CCPA 1967). Also note In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), and
LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 958
F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992). In
that the cannula of Fecht reasonably appears to be fully
capable of directing blood flow into the ascending aorta and
away from the aortic arch, claim 1 does not distinguish over
Fecht’s cannula on the basis of the intended use recited in
the claim. Furthermore, appellant’s attempt to distinguish
the subject matter of claim 1 over Fecht on the basis of
“forward” and “rearward” designations for the closed and open
sides, respectively, is misplaced. The structure of
appellant’s cannula does not undergo a metamorphosis to a new
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cannula structure distinct from the cannula structure of Fecht
merely because appellant chooses to denominate the open side
of the cannula as the “rearward” surface and the closed side
of the cannula as the “forward” surface of the cannula’s
terminal end.
We do not agree with appellant’s contention on page 3 of
the reply brief that “the forward and rearward surfaces of the
cannula are defined with respect to the ascending aorta and
aortic arch.” From our perspective, appellant’s article
claims do not define any relationship between the cannula and
the anatomy of the heart that the cannula of Fecht would be
incapable of achieving. We also note appellant’s argument on
pages 8-9 of the main brief that the examiner has failed to
provide the requisite motivation or suggestion for the
proposed combination, and that Fecht teaches away from the
proposed combination; however, we simply disagree with
appellant in this regard. We therefore shall sustain the
standing § 103 rejection of claim 1, as well as claims 2-5
that depend therefrom and have not been separately argued.
We shall also sustain the standing § 103 rejection of
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claims 7, 9, 10 and 15-19, all of which are directed to the
cannula per se, as being unpatentable over Fecht in view of
Cosgrove. As to claim 7, the claim language calling for “the
forward surface being free from openings” does not distinguish
over the cannula of Fecht for the reasons discussed above.
Concerning claim 15, the modified Fecht cannula would have an
“inverted cup” at the end thereof. In the matter of claim 17,
the intended use recitation therein calling for an opening
“oriented so as to direct blood from the tube outwardly only
in the direction of the ascending aorta” does not distinguish
over the applied prior art because Fecht’s cannula reasonably
appears to be capable of functioning as claimed. As to the
requirement of claim 16 that the inverted cup has “an apex
angle of at least 10E,” we agree with the examiner that this
feature appears to be met by Cosgrove’s distal end 40. See,
for example, the inner peripheral wall of Cosgrove’s distal
end 40 as illustrated in Figure 6B. In any event, in that
appellant’s specification states on page 4 that an apex angle
of between about 10E and about 45E is merely preferred, we
consider that an apex angle of at least 10E for the inverted
cup, as called for in claim 16, is merely a matter of
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Application No. 08/763,728
Since the range of apex angles covered by claim 161
includes angles in excess of 45E, in the event of further
prosecution the examiner may wish to consider whether
appellant’s original disclosure provides 35 U.S.C. § 112,
first paragraph, descriptive support for this limitation.
10
engineering design choice and thus does not serve to
patentably distinguish the claimed invention over the prior
art. See In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 8-91
(CCPA 1975).
We shall not sustain the standing rejection of method
claims 11 and 20 as being unpatentable over Fecht in view of
Cosgrove. Claim 11 positively recites the step of preventing
blood flow from the cannula in the direction of the aortic
arch, and claim 20 positively recites the step of orienting
the opening in the terminal end of the cannula away from the
aortic arch such that blood is directed only toward the
ascending aorta. The examiner has not explained, and it is
not apparent to us, where these positively recited steps are
taught or suggested by the applied prior art. Accordingly,
the standing rejection of these method claims cannot be
sustained.
In summary, the rejection of claims 1-5, 7, 9-11 and 15-
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20 as being unpatentable over Fecht in view of Cosgrove is
affirmed with respect to claims 1-5, 7, 9, 10 and 15-19, but
is reversed with respect to claims 11 and 20.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS:hh
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