Ex Parte Hermann et al

Patent Trial and Appeal Board

Sep 8, 2014

10664273 (P.T.A.B. Sep. 8, 2014)

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.
10/664,273 09/16/2003 George D. Hermann 06-516 US 3435
34704 7590 09/08/2014
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
RYCKMAN, MELISSA K
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
09/08/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE D. HERMANN, DAVID J. DANITZ,
and KARRIE L. STURTZ
____________

Appeal 2012-005726
Application 10/664,2731
Technology Center 3700
____________

Before CATHERINE Q. TIMM, ERIC B. GRIMES, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving apparatus and
method claims related to jaw-type surgical instruments and inserts therefor.
The Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

1 According to Appellants, the real party in interest is Vitalitec International,
Inc. App. Br. 2.

Appeal 2012-005726
Application 10/664,273

2
STATEMENT OF THE CASE
Background
The present application describes a jaw-type surgical instrument
including an insert for engaging body tissue with increased traction.
Spec. ¶ 0001.
The Claims
Claims 1–3, 5–19,2 23–49, and 51–54 are on appeal. Independent
claim 1 is representative and reads as follows.
1. An insert for attachment to a jaw-type surgical
instrument adapted for grasping or occluding a vessel, said
insert comprising an elongate member having opposed
proximal and distal ends, 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 of unitary
construction with said tissue engaging contact surface, said
insert further comprising a back surface opposite to said contact
surface, and a jaw attachment member on the back surface,
wherein said contact surface and said back surface extend
between said opposed proximal and distal ends and face
opposite directions.
App. Br. 18 (Claims App’x).

2 Although the Examiner and Appellants indicate that claims 20 and 21 also
stand rejected (Ans. 3, App. Br. 4), none of the rejections in the Office
Action mailed Apr. 26, 2011 or in the Answer includes claim 20 or claim 21.
Therefore, these claims are not subject to any outstanding rejection.
Appeal 2012-005726
Application 10/664,273

3
The Rejections
1. The Examiner maintains that claims 1–3, 15–19, 30–33, 48, 49,
and 51–53 are unpatentable under 35 U.S.C. § 103(a) over
Fogarty3 in view of Pierce.4
2. The Examiner maintains that claims 5–7, 23–25, and 42–47 are
unpatentable under 35 U.S.C. § 103(a) over Fogarty and Pierce in
view of Bramstedt.5
3. The Examiner maintains that claims 8–14, 26–29, and 34–41 are
unpatentable under 35 U.S.C. § 103(a) over Fogarty, Pierce, and
Bramstedt in view of Romanko.6
4. The Examiner maintains that claim 54 is unpatentable under 35
U.S.C. § 103(a) over the combination of Fogarty and Pierce in
view of Romanko.
DISCUSSION
1. Fogarty in view of Pierce
Appellants argue for reversal of this rejection on the basis of the
limitations in three groups of claims: (a) independent claims 1, 19, 30, 32,
48, and 497; (b) dependent claim 3; and (c) dependent claims 52 and 53. See
App. Br. 13–15. We address these groups separately below.
(a) Claims 1, 19, 30, 32, 48, and 49.

3 Fogarty et al., US 6,228,104 B1, issued May 8, 2001.
4 Pierce, US 5,893,878, issued Apr. 13, 1999.
5 Bramstedt, US 2,706,987, issued Apr. 26, 1955.
6 Romanko et al., US 6,484,371 B1, issued Nov. 26, 2002.
7 Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2008), this ground of rejection, as
it applies to this group of claims, is decided on the basis of claim 1.
Appeal 2012-005726
Application 10/664,273

4
According to the Examiner, Fogarty teaches an insert for attachment
to a jaw-type surgical instrument as required by claim 1, except that Fogarty
does not include hooked traction elements on the insert. Ans. 5. With
respect to the hooked traction elements, the Examiner relies on Pierce. The
Examiner finds that Pierce teaches a jaw-type instrument with a surface
having a plurality of molded, hooked traction elements (24 and 80 together
in Figure 13) of unitary construction with the tissue engaging surface of the
device. Id. The Examiner concludes that it would have been obvious “to
have hooked elements as this aids in securely holding tissue.” Id.
Appellants raise two issues with respect to this ground of rejection as
it applies to claim 1. First, Appellants argue that the structures 24 and 80 in
Pierce are not hooks as called for in the claims. App. Br. 13. Second,
Appellants argue that the devices taught by Fogarty and Pierce are
“sufficiently different” such that a person of ordinary skill in the art would
not consider combining them and would not expect there to be
interchangeable features between them. Id. at 13–14.
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Fogarty discloses a surgical clamp comprising:
a pair of elongate jaws connected together for movement
toward each other, at least one of the jaws having an
outer surface in opposition to the other jaw. An elongate
cavity extends longitudinally within the jaw. The cavity
is adapted for slidably receiving a clamp pad. An
elongate channel opens through the outer surface and
longitudinally connects the cavity to the outer surface.
The channel is generally commensurate with the cavity
longitudinally.
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Appeal 2012-005726
Application 10/664,273

7
2011) (citation omitted). During prosecution, an application’s claims are
given their broadest reasonable scope consistent with the specification. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
words used in a claim must be read in light of the specification, as it would
be interpreted by one of ordinary skill in the art. Id. Further,
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Similarly,
the Federal Circuit has stated:
It is well-established that a determination of obviousness based
on teachings from multiple references does not require an
actual, physical substitution of elements. In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that
Azure cannot be incorporated in Ambrosio are basically
irrelevant, the criterion being not whether the references could
be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole.”);
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”); In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference . . . .”).
In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Analysis
Appellants do not dispute that Fogarty discloses every limitation of
claim 1 other than the requirement that the tissue-engaging surface includes
Appeal 2012-005726
Application 10/664,273

8
a plurality of molded, hooked traction elements. See Ans. 5; App. Br. 13–
14; FF 1. Pierce discloses “[a]n apparatus for surgically manipulating tissue
without causing irreparable damage to the tissue during retention and
manipulation.” FF 2. Pierce describes a tissue manipulator 10 with a
contact member 18 attached near its distal end with a plurality of projections
24 on the contact member. FF 3. Pierce states that the contact member
includes “a plurality of serrations, teeth, stipples, barbs, hooks or other type
projections[.]” FF 4. Pierce also discloses that the “projections are
preferably configured to point in the desired direction of traction or
retrograde of the tissue.” FF 5. Further, Pierce describes an embodiment in
Figure 13 that is the result of one method of constructing the pointed
projections on its device, resulting in a plurality of second lower profile
projections 80 beneath the pointed projections 24. FF 6.
Appellants first argue that the structures 24 and 80 in Pierce are not
hooks as called for in the claims. App. Br. 13. Rather, Appellants assert,
“24 is a point of material which is raised up out of the base material, leaving
the underlying depression 80 as shown.” Id. (citing Pierce, col. 6, ll. 3–19).
Appellants contend that these structures are not hooks because “[t]here is a
structural difference between a projection and a hook.” Id. We find this
argument unpersuasive.
Pierce expressly states that the projections on the contact member may
be hooks. FF 4. Further, the Examiner defines a hook as “a curved
substance for catching, pulling, holding or suspending something.” Ans. 5.
We find that the Examiner’s definition of hook is consistent with the
ordinary meaning of the term (see, e.g., FF 8), and we find that the
Examiner’s interpretation of hooked traction elements is consistent with the
Appeal 2012-005726
Application 10/664,273

9
broadest reasonable interpretation of the claims in light of the Specification.
We conclude that under the definition of hook provided by the Examiner, the
portions of the device of Pierce including projections 24 and 80, as shown in
Figure 13, are hooked traction elements as required by the claims because
together they constitute a curved portion for catching and holding tissue.
Appellants also argue that the devices taught by Pierce and Fogarty
are sufficiently different that a skilled artisan “would not consider
combining them.” App. Br. 13. Appellants state that “Fogarty already
discloses a textured surface . . . and there is no need to look for a hook
structure . . . for incorporation into [the device of] Fogarty.” Id. at 13–14.
Further, Appellants argue that it is not clear how the injection molded
surface of Fogarty would be substituted for the gouged surface disclosed in
Pierce and there is no suggestion in either reference to make this
substitution. Id. at 14. Finally, Appellants assert that “a person skilled in
the art would not expect interchangeable features between [the devices of
Fogarty and Pierce].” Id.
We find that this argument by Appellants is also unpersuasive. First,
we agree with the Examiner that both Fogarty and Pierce “describe surgical
instruments with jaws for retaining tissue.” Ans. 9. Thus, we find that they
are not so different that one of ordinary skill in the art would not consider
combining them. We also agree with the Examiner that Pierce provides
sufficient teaching to suggest that it would have been obvious to combine
Fogarty and Pierce to include hooked elements that cause minimal trauma
and aid in securely holding tissue. See Ans. 5. As noted, Pierce discloses
that the contact member of the device includes hooks that “minimally
puncture the tissue surface” and are “configured to point in the desired
Appeal 2012-005726
Application 10/664,273

10
direction of traction.” FF 4; FF 5. Pierce also discloses that the device is
designed to provide “substantial holding power over the contact surface with
less reliance on pressure induced friction” where the incisions made by the
device are “of insufficient size to [affect] the structural integrity of the
organ.” FF 7. Finally, we note that, contrary to the assertions made by
Appellants, “a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d at 1332 (citations omitted). We
conclude that the teachings of Fogarty and Pierce are sufficient to suggest to
one of ordinary skill in the art the combination proposed by the Examiner.
See In re Keller, 642 F.2d at 425.
Based on the foregoing, we find that the Examiner has established a
prima facie case of obviousness with respect to claims 1, 19, 30, 32, 48, and
49, which Appellants have failed to rebut. Accordingly, we affirm this
rejection with respect to this group of claims. Claims 2, 1518, 31, 33, and
51 fall with their respective independent claim. 37 C.F.R. § 41.37(c)(1)(vii).
(b) Claim 3
Claim 3 requires that the molded, hooked traction elements of claim 1
be “configured to have at least one crook.”
With respect to claim 3, the Examiner finds that the hooked traction
elements in the device of Pierce include two crooks, elements 24 and 80 in
Figure 13. Ans. 5. Appellants argue that elements 24 and 80 in Pierce are
separate structures and cannot be considered one hook with two crooks.
App. Br. 14–15.
As noted above, the Examiner defines a hook as “a curved substance
for catching, pulling, holding or suspending something.” Ans. 5. Further,
Appeal 2012-005726
Application 10/664,273

11
with respect to claim 3, the Examiner defines the word crook as “a curved or
hooked thing” according to the World English Dictionary. Id. at 9. The
Examiner then defines the hook of Pierce as elements 24 and 80 together,
which have two curved areas, or crooks, as shown in Figure 13. Id.; FF 6.
As an initial matter, we find that the Examiner’s definition of “crook”
is consistent with the ordinary meaning of the term. See, e.g., FF 9. Under
the definitions of hook and crook provided by the Examiner, we find that
each hooked traction element in Figure 13 of Pierce includes two curved
portions, which may reasonably be described as crooks, as required by the
claim. See FF 6. Appellants assert that elements 24 and 80 are separate
structures that cannot be considered together to form a hooked traction
element because these elements independently extend from the surface of
the device of Pierce. Reply Br. 2–3. While elements 24 and 80 may be
considered as two hooks, as suggested by Appellants, we disagree with the
conclusion that they cannot also be defined together as a hooked traction
element as required by the claims, particularly because they are formed as a
pair in the construction process. See FF 6. Further, Appellants have not
pointed to any portion of the record before us that would preclude this
interpretation.
Based on the foregoing, we find that the Examiner has established a
prima facie case of obviousness with respect to claim 3, which Appellants
have failed to rebut. Accordingly, we affirm the rejection of claim 3.
(c) Claims 52 and 53.
Regarding claims 52 and 53, the Examiner asserts that Fogarty and
Pierce teach the claimed invention other than the requirement that the device
have two separate overmolds that connect the jaw attachment member to the
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05726
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Appeal 2012-005726
Application 10/664,273

14
support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
Analysis
Claim 52 requires that the insert of claim 1 includes four elements: a
first overmold, a second overmold, a compliant cushion, and a jaw
attachment member. Figure 9A depicts such an arrangement of elements
including first overmold 510 and second overmold 508. FF 10. Fogarty
discloses an insert having a neck 96 that connects a draw cord 86 to a pad
body 98. FF 11. Fogarty also discloses that the pad body is made of an
elastomer having a shore durometer between 15A and 70A and that the neck
96 may be made of a different material than the pad body, such as plastic.
FF 12; FF 13.
We find that the Examiner, on this record, fails to establish why one
of ordinary skill in the art would have modified the structure of Fogarty as
shown in Figure 4 to include the arrangement of separate elements required
by claim 52, including a first overmold with the required rigidity, a second
overmold with the required rigidity and lower rigidity than the first
overmold, a compliant cushion, and a jaw attachment member.
The Examiner acknowledges that Fogarty does not disclose separate
pieces connecting the jaw attachment member to the cushion. Ans. 6.
However, the Examiner asserts that “constructing a formerly integral
structure in various elements involves only routine [skill] in the art.” Id.
We disagree that this principle alone is sufficient to reject the claims as
obvious, and the Examiner provides no reason why a person of ordinary skill
in the art would have found it obvious make such a change in Fogarty.
Appeal 2012-005726
Application 10/664,273

15
The Examiner also asserts that it would have been obvious to use a
more rigid material, such as plastic, for the first overmold in order “to
maintain the position of the cushion in the jaws.” Ans. 6. While Fogarty
does disclose that the neck 96 may be made of plastic (FF 13), the Examiner
does not explain how the use of plastic in the neck of Fogarty would lead a
person of ordinary skill in the art to modify Fogarty to meet the arrangement
of elements required by these claims. Accordingly, we conclude that the
Examiner has not provided an apparent reason to modify the structure of
Fogarty to meet the claim requirements.
Based on the foregoing, we find that the Examiner has not established
a prima facie case of obviousness, and thus, we reverse the rejection of
claims 52 and 53.
2. Fogarty and Pierce in view of Bramstedt
Regarding the limitations added by dependent claims 5–7, 23–25, and
42–47, the Examiner acknowledges that Fogarty and Pierce are silent
regarding the height of the traction elements. Ans. 7. The Examiner relies
on Bramstedt for these limitations, stating that Bramstedt teaches surgical
clamp inserts with elements that are 0.004–0.008 inches high “in order to
provide lessened or reduced residual witness marks corresponding to less
trauma to the clamped vessel.” Id. (citing Bramstedt, col. 1, l. 35). The
Examiner concludes that it would have been obvious to modify the device of
Fogarty and Pierce to include traction elements that are no more than 0.3
mm high “in order to provide lessened or reduced residual witness marks
corresponding to less trauma to the clamped vessel.” Id.
The sole issue presented with respect to this rejection is whether the
evidence of record supports the Examiner’s conclusion that it would have
Appeal 2012-005726
Application 10/664,273

16
been obvious to one of ordinary skill in the art to modify the device of
Fogarty and Pierce based on the teachings of Bramstedt.
Findings of Fact
14. Bramstedt discloses “an insert member for surgical needle
clamps,” designed to “securely hold a surgical needle against
slipping.” Bramstedt col. 1, ll. 15–16 and 37–38.
15. Bramstedt discloses that the “needle clamp jaw insert” has
“pyramidal teeth and made from a material having a Rockwell
hardness of between 53 and 70 with the angle of inclination of the
sides of the pyramid forming each tooth being between 40 and 45
deg. and the height of each tooth being between .004 and .008
inch.” Bramstedt col. 1, ll. 30–35.
16. Bramstedt teaches that “the design and hardness of the teeth of
these insert members determines their gripping power and
durability.” Bramstedt col. 1, l. 77–col. 2, l. 1.
Principles of Law
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed . . . .” KSR, 550 U.S.
at 418. “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. (quoting In re Kahn, 441 F.3d at 988).
Analysis
In making this rejection the Examiner asserts that Bramstedt discloses
traction elements that are 0.004–0.008 inches in height “in order to provide
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lessened or reduced residual witness marks corresponding to less trauma to
the clamped vessel.” Ans. 7. The Examiner concludes that one of ordinary
skill in the art would modify the device of Fogarty and Pierce to include
traction elements of similar height for the same reason. Id. The Examiner
also argues that Bramstedt is in the same field of endeavor as the present
application and is directed to clamping and holding tissue, as are Fogarty
and Pierce. Id. at 10.
Bramstedt discloses “an insert member for surgical needle clamps.”
FF 14. Bramstedt does disclose that teeth of the insert are between 0.004–
0.008 inches tall and that the design and hardness of the teeth determine
their gripping power and durability. FF 15; FF 16. However, contrary to the
Examiner’s assertions, we find that Bramstedt is not “directed to clamping
and holding tissue” and does not disclose that the height of the teeth on the
disclosed clamp insert is designed “to provide lessened or reduced residual
witness marks corresponding to less trauma in the clamped vessel.” See
Ans. 7, 10. Rather, Bramstedt’s insert member is designed to “securely hold
a surgical needle against slipping.” FF 14. Thus, we find that the Examiner
mischaracterizes the disclosures in Bramstedt.
Beyond these mischaracterizations, the Examiner bases this rejection
only on the fact that Bramstedt discloses teeth with a height of 0.004–0.008
inches and that the design and hardness of the teeth determines their
gripping power and durability. See Ans. 7, 10; FF 15; FF 16. We find that
these disclosures are not sufficient to support the Examiner’s rejection
because there is no apparent reason to employ the tooth height of Bramstedt
in the tissue clamping device of Fogarty and Pierce, given that Fogarty and
Pierce are concerned with clamping or manipulating tissue without
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damaging the tissue, whereas Bramstedt is concerned with providing an
insert with sufficient gripping power and durability for clamping a surgical
needle.
Based on the foregoing, we conclude that the Examiner has not
established that one of ordinary skill in the art would have had an apparent
reason to combine Fogarty and Pierce with Bramstedt to create the claimed
device, and thus, the Examiner has not established a prima facie case of
obviousness. Accordingly, we reverse this rejection.
3. Fogarty, Pierce, and Bramstedt in view of Romanko
We find that the Examiner erred in rejecting claims 8–14, 26–29, and
34–41 for the same reasons articulated with respect to the preceding
rejection. The Examiner has not identified anything in Romanko that would
rectify the Examiner’s error in combining Fogarty and Pierce with
Bramstedt. Accordingly, we reverse this rejection.
4. Fogarty and Pierce in view of Romanko
With respect to claim 54, the Examiner acknowledges that Fogarty
and Pierce do not disclose a hook with a single stem and two crooks
extending in opposite directions. Ans. 8. The Examiner asserts that
Romanko teaches a hook with this configuration, and the Examiner argues
that replacing the hook of Pierce with the hook of Romanko is an obvious
substitution of one known element for another and would be expected to
yield a device that hooks tissue. Id.
The issue presented with respect to this rejection is whether the
Examiner erred in considering Romanko as analogous art.
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Findings of Fact
17. Romanko is concerned with providing:
a new class of fasteners which have reduced notch
sensitivity, especially in the lateral direction, and which
are lightweight, strong, thin, and flexible (e.g., have a
low normalized flex modulus or degree of stiffness), and
whose holding power is comparable to or greater than the
holding power of conventional hook and loop type
fasteners.
Romanko col. 4, ll. 32–38.
18. Romanko discloses “a mechanical fastener, such as a hook and
loop type fastener, which is uniaxially oriented in the longitudinal
direction.” Romanko col. 4, ll. 39–41.
19. Romanko discloses that uniaxial orientation in the longitudinal
direction provides “improved tensile strength and reduced flex
modulus in the longitudinal direction . . . and improved notch
sensitivity in the lateral direction.” Romanko col. 4, ll. 44–47.
20. Romanko teaches that “[b]ecause of these properties, the fasteners
of the present invention are uniquely suited to provide improved
performance in applications such as bundling.” Romanko col. 4,
ll. 48–50.
21. The present application is concerned with “atraumatic, jaw-type
surgical instruments” having inserts with “an engaging surface
that provides increased traction on body tissues.” Spec. ¶ 0001.
22. The Specification states that “there remains a need for jaw-type
surgical instruments with atraumatic inserts having improved
grasping capabilities, including atraumatic inserts that can
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approach or match the gripping and traction supplied by
conventional steel jawed instruments.” Spec. ¶ 0010.
Principles of Law
To rely upon a reference as a basis for an obviousness rejection of
Appellants’ claims, the reference must either (1) be in the field of
Appellants’ endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F.3d 977, 986–87
(Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
Analysis
To support this rejection, the Examiner argues that the hooks in
Romanko are analogous to the hooks in Pierce and it would have been
obvious to modify the hooks in Pierce with the shape of the hooks in
Romanko to aid in capturing different types of tissue. Ans. 10. We disagree
with the Examiner’s unsupported conclusion for the reasons that follow.
Romanko discloses “a mechanical fastener, such as a hook and loop
type fastener, which is uniaxially oriented in the longitudinal direction[,]”
which provide “improved tensile strength and reduced flex modulus in the
longitudinal direction . . . and improved notch sensitivity in the lateral
direction.” FF 18; FF 19. Because of these properties, Romanko discloses
that the hook and loop fasteners “are uniquely suited to provide improved
performance in applications such as bundling.” FF 20.
Based on these disclosures, we agree with Appellants that Romanko
deals with hook and loop fasteners and not tissue clamping structures. See
App. Br. 16. Thus, we find that Romanko is not in the same field of
endeavor as the present application.
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Next, we consider whether Romanko is reasonably pertinent to the
particular problem with which the present application is concerned.
Romanko is concerned with providing fasteners with improved properties
having holding power comparable to or greater than traditional hook and
loop fasteners. FF 17. The present application is concerned with
“atraumatic, jaw-type surgical instruments” having inserts with “an engaging
surface that provides increased traction on body tissues.” FF 21. The
Specification further states that “there remains a need for jaw-type surgical
instruments with atraumatic inserts having improved grasping capabilities,
including atraumatic inserts that can approach or match the gripping and
traction supplied by conventional steel jawed instruments.” FF 22. We find
no connection between the problems addressed by Romanko and the need
for improved atraumatic inserts expressed in the Specification, and we note
that the Examiner does not provide any support in concluding that the hooks
of Romanko and Pierce are analogous. Thus, we find that Romanko is not
reasonably pertinent to the problem addressed by the present application,
and we agree with Appellants that it is not clear why a person of skill in the
art would consider the hooks of Romanko “‘to aid in capturing different
types of tissue’ as stated by the [E]xaminer.” See Reply Br. 7
Accordingly, we find that the Examiner erred in concluding that
Romanko was analogous art, and we conclude that this rejection should be
reversed.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1–3,
15–19, 30–33, 48, 49, and 51, and we reverse the rejections of claims 5–14,
23–29, 34–47, and 52–54.
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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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