Ex Parte Jonkman

Board of Patent Appeals and Interferences

Sep 27, 2001

09012530 (B.P.A.I. Sep. 27, 2001)

1
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not written for publication and is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENNETH R. JONKMAN
__________
Appeal No. 2000-2029
Application 09/012,530
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 10. Claims 11 through 16, the only
other claims pending in this application, have been withdrawn
from further consideration as being directed to a non-elected
invention.
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Application 09/012,530
2
Appellant’s invention relates to a dilator for a cannula
assembly (claim 6) and to a cannula assembly including such a
dilator telescopically received in the lumen of the cannula
(claim 1). Independent claims 1 and 6 are representative of the
subject matter on appeal and a copy of those claims can be found
in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Toye et al. (Toye) 4,978,334 Dec. 18, 1990
Fonger et al. (Fonger) 5,190,528 Mar. 2, 1993
Claims 6 through 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Toye.
Claims 1 through 5 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fonger in view of Toye.

Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced by
the examiner and appellant regarding those rejections, we make
reference to the examiner's answer (Paper No. 16, mailed April
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Application 09/012,530
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10, 2000) for the reasoning in support of the rejections, and to
appellant’s brief (Paper No. 15, filed January 19, 2000) and
reply brief (Paper No. 17, filed June 15, 2000) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
In rejecting claims 6 through 10 under 35 U.S.C. § 102(b) as
being anticipated by Toye it is the examiner’s position (answer,
page 3), that Toye discloses a dilator (22) with a tapered
portion (26) and a generally cylindrical portion (28) located
distally of the tapered portion and that the dilator (at 20) is
capable of receiving a guide wire and a needle. On page 5 of the
answer, the examiner indicates that the part of the dilator seen
in Figure 5 of Toye located between portions (26) and (28) where
the taper changes to a straight portion is a transition stop and
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Application 09/012,530
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that such a stop would temporarily halt insertion of the dilator.
Appellant argues that Toye does not disclose a dilator for a
cannula assembly that is configured to receive simultaneously a
needle and a guide wire. In addition, appellant argues that Toye
does not disclose a dilator tip that is configured to limit
insertion of the needle.
Having reviewed and evaluated the Toye reference, we must
agree with the examiner that the dilator (22) seen in Toye
anticipates the dilator defined in claim 6 on appeal. Like the
examiner, it is our view that the enlarged proximal portion of
passage (20) in the dilator (22) of Toye, seen in Figures 2 and
4, is sized and configured to receive simultaneously a needle and
a guide wire. We recognize that the Toye patent does not
expressly describe or teach that the enlarged proximal portion of
passage (20) is actually used to simultaneously receive a needle
and a guide wire, but it is apparent to us from the showing in
Figures 2 and 4 of Toye that the enlarged proximal portion of
passage (20) is clearly capable of such a use and thus is clearly
“configured to receive simultaneously a needle and a guide wire,”
as broadly set forth in appellant’s claim 6 on appeal. In this
regard, we point out that claim 6 is directed to the structure of
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the dilator per se and not to a combination of the dilator with a
guide wire and a needle.
As for the recitation in claim 6 that the dilator includes a
tip which is “configured to limit insertion of the needle,” we
agree with the examiner that the dilator of Toye includes a tip
structure that is so configured. In reaching this conclusion we
have compared Figures 2, 4 and 5 of Toye with appellant’s Figures
4 and 5, noting that the dilator tips seen in the present
application and in the Toye patent are substantially identical to
one another. Each has a distal substantially cylindrical portion
(28 of Toye and 40 in the present application) which transitions
into an increasing diameter tapered portion (26 of Toye and 38 of
appellant’s application) and then again transitions into a larger
diameter cylindrical portion. In describing the “transition
stop” (36) of the present application appellant indicates
(specification, page 5) that the dilator tip is “configured such
that the dilator tip 32 temporarily stops insertion of the
dilator 14 into an incision or puncture site.” More
specifically, on page 6 of the specification, appellant describes
the operation of this aspect of the cannula assembly in the
following language
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[t]he cannula assembly 10, with the needle 42
extended through the opening 34 of the dilator tip 32,
is advanced to the center of the purse string suture
54. As shown in FIG. 8, the distal end 48 of the
needle 42 punctures the aorta, in the center of the
purse string suture 54, and the cannula assembly 10 is
inserted into the puncture site until the transition
stop 36 of the dilator tip 32 contacts the outer wall
of the aorta. In the preferred embodiment of the
invention, at this stage, only the distal end 48 of the
needle 42 and the generally cylindrical portion 40 of
the dilator tip 32 are situated in the aorta. By
temporarily halting further advancement of the cannula
assembly 10 in the aorta, the transition stop 36 is
able to control the insertion depth of the needle 42 in
the aorta, thereby minimizing the risk of damage to the
back wall of the aorta.
Once the cannula assembly 10 has been inserted in
the aorta, up to the transition stop 36, the needle 42
is retracted into the passage 30 of the elongate tube
24, and the guide wire 44 is extended through the
opening 34 of the dilator tip 32 and into the aorta
(FIG. 9). The guide wire 44 facilitates insertion of
the cannula 12 in the aorta. The cannula 12 and
dilator 14 are then advanced over the guide wire 44 and
into the aorta (FIG. 10).
In light of this disclosure, it appears to us that it is the
individual who is inserting the dilator tip into the blood vessel
who temporarily halts insertion of the cannula assembly when the
“transition stop” contacts the outer wall of the blood vessel,
rather than the transition stop itself that prevents further
insertion of the cannula assembly into the blood vessel. This is
particularly true, since after retraction of the needle and
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insertion of the guide wire (44) through the opening (34) of the
dilator tip, both the cannula (12) and the dilator (14) are then
advanced over the guide wire and into the blood vessel. Like the
examiner, it is our opinion that the transition region between
the cylindrical portion (28) and the tapered portion (26) at the
tip of the dilator in Toye is likewise “configured to limit
insertion of the needle” therein, at least to the same extent
that appellant’s tip temporarily does so under manipulation by
the individual doing the insertion (i.e., the individual
“temporarily halting further advancement of the cannula assembly”
into the blood vessel when the transition stop contacts the outer
wall of the vessel).
Appellant provides no indication as to exactly how the
individual inserting the cannula assembly into a blood vessel
knows when the transition stop contacts the outer wall of the
vessel. We presume that some form of viewing device allows the
individual to see that such contact has occurred or that an
increase in resistance to insertion is noticed due to the
increasing diameter of the tip at the transition region. Both of
these possibilities would also allow one using the dilator in
Toye to temporarily halt further advancement of the cannula
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Application 09/012,530
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assembly/dilator tip into a blood vessel at the transition region
of the tip and thereby provide the same form of “stop” described
by appellant.
In light of the foregoing, we will sustain the examiner’s
rejection of independent claim 6 under 35 U.S.C. § 102(b) as
being anticipated by Toye. Given appellant’s grouping of the
claims (brief, page 3) and the lack of any separate argument as
to claims 7 through 10, those claims will fall with independent
claim 6 from which they depend.
Regarding the examiner’s rejection of claims 1 through 5
under 35 U.S.C. § 103(a) as being unpatentable over Fonger in
view of Toye, the examiner has indicated that Fonger discloses a
cannula assembly substantially as claimed by appellant, except
that the structure in Fonger does not have a dilator tip
configured in the manner required in claims 1 through 5 on
appeal. To provide for that deficiency in Fonger, the examiner
points to the teachings of Toye. In the examiner’s view
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[b]ecause the two dilators are art-recognized
functional equivalents, it would have been obvious to
one of ordinary skill in the art at the time the
invention was made to use the dilator in Toye et al.
with the cannula assembly in Fonger et al.
Like appellant, we are of the opinion that the examiner has
not made out a proper case of prima facie obviousness based on
the attempted combination of Fonger and Toye. Having carefully
reviewed the applied patents, we see no reason why one of
ordinary skill in the art would have viewed the dilator (22) of
Toye and the catheter structure (5) of Fonger to be “art-
recognized functional equivalents,” as is urged by the examiner.
Moreover, we see no motivation or suggestion in the applied
references, and the examiner has pointed to none, that would have
led one of ordinary skill in the art to use the dilator of Toye
in the percutaneous transseptal left atrial cannulation system of
Fonger. In particular, given the entirely different manner of
inserting the cannula (3) of Fonger into the heart and through
the septum into the left atrium, we see no reason whatsoever to
use the dilator of Toye in Fonger. Thus, since we have
determined that the teachings and suggestions that would have
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Application 09/012,530
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been fairly derived from Fonger and Toye would not have made the
subject matter as a whole of claim 1 on appeal obvious to one of
ordinary skill in the art at the time of appellant’s invention,
we must refuse to sustain the examiner’s rejection of that claim
under 35 U.S.C. § 103(a). It follows that the examiner's
rejection of dependent claims 2 through 5 under 35 U.S.C.
§ 103(a) based on Fonger and Toye will also not be sustained.
In summary, the decision of the examiner rejecting claims 1
through 5 under 35 U.S.C. § 103(a) based on Fonger and Toye is
reversed, while the examiner’s decision to reject claims 6
through 10 under 35 U.S.C. § 102(b) as anticipated by Toye is
affirmed.
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Application 09/012,530
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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
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF:dal
Appeal No. 2000-2029
Application 09/012,530
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Elaine H. Lo
Foley & Lardner
Firstar Center
777 East Wisconsin Ave.
Milwaukee, WI 53202-5367