Ex Parte McGuckin

Board of Patent Appeals and Interferences

May 24, 2006

09697306 (B.P.A.I. May. 24, 2006)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAMES F. McGUCKIN JR.
________________

Appeal No. 2006-1714
Application No. 09/697,306
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ON BRIEF
________________

Before KIMLIN, GARRIS, AND WALTZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 36-48.
Claims 49-51, the other claims remaining in the present
application, have been allowed by the examiner. Claim 36 is
illustrative:
36. An apparatus for resecting tissue within a body lumen,
comprising:

an operating capsule including a coupling structure
for selectively coupling to a flexible endoscope, the operating
capsule being sized so that, when in an operative position
entirely located within a body lumen adjacent to a selected
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Application No. 09/697,306

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portion of tissue to be resected structural integrity of lumenal
tissue is maintained, the operating capsule including a suturing
assembly and defining a cutting zone adjacent to the suturing
assembly;

a flexible member extending proximally from the
operating capsule to a control handle, wherein, when the
operating capsule is in an operative position within a body
lumen, the flexible member extends through the body and out a
natural body orifice to the control handle; and

a tissue grabber grasping a full thickness fold of
tissue including the selected portion of tissue and drawing the
grasped fold of tissue into the cutting zone, wherein the
suturing assembly fastens abutting portions of the grasped fold
of tissue.

In the rejection of claims on appeal, the examiner relies
upon the following references:
Tsuruta et al. 5,389,098 Feb. 14, 1995
(Tsuruta)
Kuramoto et al. 5,395,030 Mar. 7, 1995
(Kuramoto)
Sauer et al. 5,562,694 Oct. 8, 1996
(Sauer)

Kessel DE 4,006,673 Sep. 5, 1991
(German Patent)

Appellant’s claimed invention is directed to an apparatus
for resecting tissue within a body lumen. The apparatus
comprises an operating capsule that is sized to be located
within a body lumen and which is coupled to a flexible
endoscope. The operating capsule includes a suturing assembly
and defines a cutting zone adjacent to the suturing assembly for
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a selected portion of tissue that is to be resected. The
apparatus also comprises a flexible member that extends from the
operating capsule and out a natural orifice of the body.
Appealed claims 36-38, 40-44 and 46-48 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Kuramoto. Claims
36-48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tsuruta in view of Sauer and Kessel.
Appellant submits at page 2 of the Supplemental Reply Brief
that claims 36-43 stand or fall together, as do claims 44-48.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we find
that the examiner’s § 102 rejection is well-founded and in
accord with current patent jurisprudence. However, we concur
with appellant that the examiner’s § 103 rejection is not
sustainable.
For the reasons set forth by the examiner in the Answer and
Supplemental Answer, which we incorporate herein, we find that
Kuramoto describes the subject matter defined by independent
claims 36 and 44 within the meaning of § 102. There is no
dispute that Kuramoto does not teach that forceps 150 act as a
tissue grabber, as presently claimed. However, the examiner
properly explains that it is only necessary that the forceps of
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the reference be capable of performing the claimed function of
grabbing tissue and drawing it into the cutting zone of the
reference device, as explained at page 5 of the Examiner’s
Supplemental Answer. Figures 22 and 23 of Kuramoto indicate
that at some point in time between the operations shown in the
pictures, “the anvil shaft 147 would not have yet penetrated the
fold of tissue at 114” (page 5 of Supplemental Answer). During
this period of time, we concur with the examiner that the device
of Kuramoto would be capable of extending the forceps to grasp
section 114 of the tissue and draw it into a position between
member 138 and a position where anvil 146 will pierce through
tissue 114. We further agree with the examiner that “[t]he
forceps could even be used to assist in holding the tissue still
while the anvil pin 147 pierced through tissue 114” (id.). In
addition, since Figure 25 of Kuramoto illustrates that forceps
150 can be moved laterally, the forceps can be aligned away from
the axis of anvil shaft 147 whereby the forceps can “grasp
another section of tissue, pull it over the pin and even cause
the pin to puncture the new tissue, followed by using the
forceps to grasp the pin 147 and draw the pin to the stapler
[and] . . . into the cutting zone” (id.).
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Appellant argues that “Kuramoto does not disclose or
suggest grasping tissue using the forceps 150, and certainly
never discloses grasping and pulling tissue with enough force to
pierce the tissue” (page 4 of Supplemental Reply Brief, first
paragraph). As noted above, the examiner appreciates that the
reference provides no such teaching or suggestion. However, it
is our view that appellant has not refuted the examiner’s
rationale that the device of Kuramoto is capable of performing
the claimed function. While appellant maintains that Kuramoto
does not teach “any control mechanism or steering apparatus
which would allow the type of maneuvering required to position
the forceps 150 adjacent to the tissue 114” (id.), we agree with
the examiner that tube 136 of the reference is capable of being
moved to guide the forceps to the required positions. Also,
notwithstanding appellant’s arguments to the contrary, we agree
with the examiner that the broadly claimed “cutting zone” is met
by the area of Kuramoto adjacent to the cutter wherein the
tissue would be drawn by the forceps.
We now turn to the examiner’s § 103 rejection. The
appealed claims define an apparatus that is capable of resecting
tissue within a body lumen comprising an operating capsule that
is sized to be located within a body lumen. As recognized by
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the examiner, the device of Tsuruta is not meant to operate
within a body lumen but, rather, the device of the reference is
inserted into a body cavity through an incision. Indeed,
neither Tsuruta, nor Sauer nor Kessel, which the examiner relies
upon for modifying the device of Tsuruta, is designed to operate
within a body lumen. Accordingly, we cannot subscribe to the
examiner’s position that it would have been obvious for one of
ordinary skill in the art to modify the device of Tsuruta to
arrive at the claimed device that is sized to function within a
body lumen. The examiner’s statement that the device of Tsuruta
“certainly could have been used in, or through a body orifice”
misses the point (page 6 of Supplemental Answer, third
paragraph). Even if the apparatus of Tsuruta could be inserted
in a body orifice, such as the mouth or anus, this is a far cry
from being capable of functioning in the claimed manner in the
more restricted area of a body lumen.
In conclusion, the examiner’s rejection under § 102 is
sustained, whereas the examiner’s rejection under § 103 is
reversed. Accordingly, the examiner’s decision rejecting the
appealed claims is affirmed-in-part.
Appeal No. 2006-1714
Application No. 09/697,306

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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)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED-IN-PART

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )

ECK:clm

Appeal No. 2006-1714
Application No. 09/697,306

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