Ex Parte Guenst et al

Board of Patent Appeals and Interferences

Jun 15, 2011

10804391 (B.P.A.I. Jun. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY W. GUENST and CHRISTOPHER OLIG
____________________

Appeal 2009-012056
Application 10/804,391
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Gary W. Guenst and Christopher Olig (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1, 4-10, 13, 15-17 and
24-31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention is directed to a device having a collar
with suction apertures to hold and position a blood vessel (Spec. 4: para.
[0011]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A device used to hold and position a blood vessel in the
performance of a coronary artery bypass graft procedure,
comprising:
a handle;
a collar coupled to the handle, the collar adapted to
substantially encircle a blood vessel, the collar having a number
of suction apertures;
a vacuum port adapted to be coupled to a vacuum source,
the vacuum port communicating a suction to the suction
apertures to hold the blood vessel; and
wherein the collar is comprised of two collar halves that
together form a cylinder; and
further comprising a ring for encircling the collar halves
to attach the collar halves together.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 4-10, 13, and 15-17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kimberley (US 3,361,133, issued Jan. 2,
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1968) in view of Collito (US 3,254,650, issued Jun. 7, 1966) or Toch
(US 3,916,875, issued Nov. 4, 1975).
2. Claims 1, 4-10, 13, 15-17 and 24-31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peternel (US 3,561,448, issued
Feb. 9, 1971) in view of Collito or Toch.

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that the combined teachings of Kimberley, and Collito or Toch
would have led a person having ordinary skill in the art to “a ring for
encircling the collar halves to attach the collar halves together,” as called for
in independent claims 1 and 10 (App. Br. 12-13); (2) whether the Examiner
erred in concluding that the combined teachings of Peternel, and Collito or
Toch would have led a person having ordinary skill in the art to “a ring for
encircling the collar halves to attach the collar halves together,” as called for
in independent claims 1 and 10 (App. Br. 16); (3) whether the Examiner
erred in finding that Peternel describes two collars that are spaced apart a
first distance from each other, as called for in claim 24 (App. Br. 18); and
(4) whether the Examiner erred in finding that Peternel describes a handle
that is malleable, as called for in claims 7, 16 and 26 (App. Br. 19).

ANALYSIS
Rejection of claims 1, 4-10, 13, 15-17 over Kimberley, and Collito or Toch
Independent claims 1 and 10 call for, inter alia, “a ring for encircling
the collar halves to attach the collar halves together.”
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The Examiner found that (1) Kimberley describes the claimed
invention including collar halves 1, 2 (Ans. 3), (2) Kimberley does not
describe using a ring for encircling collar halves to hold the collar halves
together (Ans. 4), and (3) both Collito and Toch describe using a ring type
clamp to hold two halves of a cylindrical device together (id.).
The Examiner concluded that “a modification of Kimberley et al such
that the collar is further held together using a ring would have been obvious
to one skilled in the art in view of Collito or Toch” (id.).
Appellants contend that there is no reason to further hold Kimberley’s
collar together by a ring as taught by Collito or Toch since Kimberley’s
housing halves 1, 2 are already urged to a closed position by a spring bias
(App. Br. 12-13).
Kimberley describes a clamp having housing halves 1, 2, a handle 5
fixed to each housing half by swingable arms 6, 7, and that “[i]t is
preferable… [to] have a spring bias urging the two housing halves to the
closed position” (col. 2, ll. 6-21).
We agree with Appellants and conclude that the Examiner’s
conclusion of obviousness is unreasonable, as a person having ordinary skill
in the art would not look to add a ring to hold Kimberley’s housing halves 1,
2 together, that is, in a closed position, when they are already urged to the
closed position by a biasing spring. To add such a ring to Kimberley’s collar
halves 1, 2 would have been redundant and as such, would not have been
obvious to a person of ordinary skill in the art.
We reverse the rejection of independent claims 1 and 10 and
dependent claims 4-9, 13 and 15-17 over Kimberley, and Collito or Toch.

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Rejection of claims 1, 4-10, 13, 15-17 and 24-31 over Peternel, and Collito
or Toch
Claims 1, 4-6, 8-10, 13, 15 and 17
Appellants argue claims 1, 4-6, 8 and 9 as a group (App. Br. 15, 18).
As such, we select claim 1 as representative of the group, and claims 4-6, 8
and 9 will stand or fall with claim 1. Appellants argue claims 10, 13, 15 and
17 as a group (App. Br. 15, 18). As such, we select claim 10 as
representative of the group, and claims 13, 15 and 17 will stand or fall with
claim 10. 37 C.F.R. § 41.37(c)(1)(vii).
Independent claims 1 and 10 call for, inter alia, “a ring for encircling
the collar halves to attach the collar halves together.”
The Examiner found that (1) Peternel describes a malleable handle 80,
108, a first and a second collar 16, 18, wherein each collar comprises two
collar halves (Ans. 4); (2) Peternel does not describe a ring for encircling the
collar halves (Ans. 4-5); and (3) both Collito and Toch describe using a ring
type clamp to hold two halves of a cylindrical device together (Ans. 5).
The Examiner concluded that “a modification of Peternel such that the
collar is further held together using a ring would have been obvious to one
skilled in the art in view of Collito or Toch,” wherein “the addition of a
ring… would provide added securement to further ensure the device
maintains a closed position while in use” (id.).
Appellants contend that (1) while Peternel includes two positioning
assemblies 16, 18, Peternel already provides an assembly for holding them
in close proximity and thus teaches away from being combined with the
teachings of Collito or Toch (App. Br. 16), (2) the ring of Collito is not
necessary in Peternel (id.), and (3) the clamp of Toch would be a hindrance
and destroy the functionality of Peternel (id.).
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Peternel describes positioning assemblies 16, 18 including cylindrical
sleeves 36, 38, wherein the sleeves 36, 38 have an upper and a lower section
pivotally interconnected by a hinge 78 (col. 2, ll. 7-10, 49-70; and figs. 1, 3).
Collito describes mating connector devices 14, 16 having parts 18, 20,
22, 24 for encircling a blood vessel 10 (col. 3, ll. 43-57 and fig. 1), wherein
the mating parts are held together by a retainer ring 48 (col. 4, ll. 40-50 and
fig. 5).
Toch describes a resilient clamp 20 for holding the two
semicylindrical members 15a, 15b in place around a lymph duct 12 (col. 2, l.
60-col. 3, l. 6).
We find that Peternel does not already include a member to hold the
upper and lower sections of the sleeves together.1
Further, while Collito’s ring 48 does hold the spaced mating
connector devices 14, 16 together, it also holds the two parts 18, 20 and 22,
24 of the mating connector devices 14, 16 together.
Thus, we see no error in the Examiner’s conclusion of obviousness
and conclude that holding Peternel’s upper and lower sections of the sleeves
36, 38 together as taught by Collito at 48 and Toch at 20 could have been
reasonably predicted to yield the result of further ensuring that Peternel’s
upper and lower sections maintain a closed position while in use. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (holding 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.”)

1 As we previously found supra with Kimberley.
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We affirm the rejection of independent claims 1 and 10 over Peternel,
and Collito or Toch, and dependent claims 4-6, 8, 9, 13, 15 and 17, which
fall with claims 1 and 10, respectively.
Claim 24
Appellants argue claims 24, 25 and 27-31 as a group (App. Br. 17-18).
As such, we select claim 24 as representative of the group, and claims 25
and 27-31 will stand or fall with claim 24. 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 24 calls for, inter alia, “the second collar separated
from the first collar by a first distance.”
Appellants contend that Peternel does not describe two collars that are
spaced apart a first distance from each other, as called for in claim 24 (App.
Br. 18).
Peternel shows in Figure 2 that the positioning assemblies 16, 18
including cylindrical sleeves 36, 38, are separated by outwardly flaring ends
20, 22 of the blood vessels 12, 14.
Thus, we agree with the Examiner that Peternel describes first and
second collars, that is, sleeves 36, 38, that are spaced apart by a first
distance, as called for in claim 24.
We affirm the rejection of independent claim 24 over Peternel, and
Collito or Toch, and dependent claims 25 and 27-31, which fall with claim
24.
Claims 7, 16 and 26
Claims 7 and 16 call for the handle to be malleable, and claim 26 calls
for first and second prongs of the handle to be malleable.
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Appellants contend that Peternel does not describe a handle that is
malleable since being malleable and including parts that are adjustable or
movable with respect to one another are not the same thing (App. Br. 19).
As set forth supra, the Examiner found that Peternel describes a
malleable handle 80, 108 (Ans. 4). In support thereof, the Examiner proffers
a definition of malleable as being “1) capable of being shaped or formed, as
by pressure of hammering 2) capable of being altered or influenced” (Ans. 6,
see also Ans. 7).
Appellants’ Specification describes a handle as a positioning rod 18,
wherein “the rod 18 may be malleable such that a surgeon can bend the rod
18 into a particular orientation during surgery and have the rod maintain that
position” (Spec. 6: paras. [0027] and [0029]) (emphasis bolded).
Appellants’ Specification does not assign or suggest a particular
definition to the term “malleable” or otherwise indicate that this term is used
in a manner other than its ordinary and customary meaning. Therefore, in
determining the ordinary and customary meaning of the claim term
“malleable” as viewed by a person of ordinary skill in the art, it is
appropriate to consult a general dictionary definition of the word
“malleable” for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010).
The ordinary meaning of the word “malleable” includes “capable of
being extended or shaped by beating with a hammer or by the pressure of
rollers.”2

2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1999)
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We find that the Examiner’s definition of the word “malleable” is
consistent with Appellants’ Specification and the ordinary meaning of the
word.
We find that Peternel’s handles 80, 108 are not malleable since they
are not described as capable of being shaped, bent, or drawn.
Thus, we reverse the rejection of claims 7, 16 and 26 over Peternel,
and Collito or Toch.

CONCLUSIONS
The Examiner has erred in concluding that the combined teachings of
Kimberley, and Collito or Toch would have led a person having ordinary
skill in the art to “a ring for encircling the collar halves to attach the collar
halves together,” as called for in independent claims 1 and 10.
The Examiner has not erred in concluding that the combined teachings
of Peternel, and Collito or Toch would have led a person having ordinary
skill in the art to “a ring for encircling the collar halves to attach the collar
halves together,” as called for in independent claims 1 and 10.
The Examiner has not erred in finding that Peternel describes two
collars that are spaced apart a first distance from each other, as called for in
claim 24.
The Examiner has erred in finding that Peternel describes a handle
that is malleable, as called for in claims 7, 16 and 26.

DECISION
We reverse the rejection of claims 1, 4-10, 13 and 15-17 over
Kimberley, and Collito or Toch.
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We affirm the rejection of claims 1, 4-6, 8-10, 13, 15 and 17 over
Peternel, and Collito or Toch.
We affirm the rejection of claims 24, 25 and 27-31 over Peternel, and
Collito or Toch.
We reverse the rejection of claims 7, 16 and 26 over Peternel, and
Collito or Toch.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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