Ex Parte Meagher

Patent Trial and Appeal Board

Jun 24, 2013

10556125 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD C. MEAGHER
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Appeal 2011-006633
Application 10/556,125
Technology Center 3700
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Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Edward C. Meagher (“Appellant”) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-8. We have jurisdiction
under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1 and 2 are the independent claims on appeal. Claims 1 and 2
are representative of the claimed subject matter and are reproduced below.
1. A surgical fastener for use with an anastomosis of
two tissues, comprising:
a base leg and a support leg, said base leg being
selectively deformable and including at least one traumatic tip
for piercing tissue; and
at least one capillary fixed to an external surface of at
least one of the base leg or support leg having a reservoir
defined therein for retaining a liquid, each of said at least one
capillary being rupturable simultaneously with the deformation
of said surgical fastener to dispense said liquid simultaneously
upon being ruptured.
2. A surgical fastener for use with a surgical
instrument for performing an anastomosis between two tissues
wherein the surgical instrument includes a selectively
engageable loading unit for supporting an array of surgical
fasteners and an actuator for initiating deformation of the
surgical fasteners, each of the surgical fasteners comprising:
a base leg and a support leg, said base leg being
selectively deformable and including a tip for piercing tissue;
and
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at least one capillary fixed to an external surface of at
least one of the base leg or support leg having a reservoir
defined therein for retaining a liquid, each of said at least one
capillary being rupturable to dispense said liquid upon actuation
of the surgical instrument and simultaneously with the
deformation of each surgical fastener.
App. Br. 19 (Claims App’x, Claims 1-2).1
References
The Examiner relies upon the following prior art references:
Trumbull US 5,263,629 Nov. 23, 1993
McKean US 6,045,560 Apr. 4, 2000
Rejections
The Examiner makes the following rejections:
I. Claims 1-5 and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by McKean; and
II. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McKean and Trumbull.
SUMMARY OF DECISION
We REVERSE.

1 Dependent claims 3-8 each recite that they are directed to a surgical
fastener for use with an anastomosis “according to any preceding claim.”
App. Br. 20 (Claims App’x, Claims 3-8). We remind Appellants and the
Examiner of MPEP § 608.01(n) and 37 C.F.R. § 1.75 regarding improper
multiple dependent claims.
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OPINION
Rejection I – Anticipation
The Examiner found that McKean discloses each and every element
of claims 1-5 and 7. Ans. 3-4. In particular, the Examiner found that
McKean’s surgical fabric 140 is porous and that the pores define a capillary
structure. Id. at 5. The Examiner found that McKean discloses that “the
fabric may include ‘therein’ useful substances such as drugs, enzymes and
proteins” and thus “[w]hether the substance ‘therein’ is liquid, gel or solid
does not negate the structural disclosure by [McKean] of a capillary defining
a reservoir capable of containing a substance.” Id. at 5-6 (citing McKean,
col. 5, ll. 1-4). The Examiner also found that McKean discloses an
embodiment wherein multiple pieces or layers of fabric can be used. Id. at
6. In such circumstance, the Examiner found that as the fastener is ejected
from a cartridge, it pierces and ruptures the first surface of the fabric
adjacent the anvil, and as the legs of the fastener are deformed by the anvil,
the points of the fastener re-enter the fabric adjacent the anvil at a second
position, thus rupturing the fabric/capillary during deformation of the
fastener. Id.
Appellant contends that McKean does not disclose at least two
elements of claims 1 and 2: (1) at least one capillary fixed to an external
surface of at least one of the base leg or support leg having a reservoir
defined therein for retaining a liquid; and (2) each of said at least one
capillary being rupturable simultaneously with the deformation of said
surgical fastener to dispense said liquid simultaneously upon being ruptured.
App. Br. 11. With respect to the first element identified above, Appellant
asserts that the claims require that the rupturable capillary be “fixed to an
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external surface of at least one of the base leg or support leg” of the surgical
fastener. See, e.g., id. at 12. Appellant contends that McKean teaches a
fastener and a separate fabric which is not fixed to an external surface of at
least one of the base leg or support leg of the fastener. Id. Appellant further
asserts that if the Examiner’s interpretation of this element of the claims is
correct—that McKean’s fabric becomes fixed to the fastener when the staple
is deformed—that precludes a finding that McKean also discloses that the
capillary is rupturable simultaneously with the deformation of the fastener.
Id. at 13-14.
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, we interpret the claim language, where
necessary, giving the claims their broadest reasonable interpretation in light
of the Specification. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Second, we compare the construed claim to a prior art reference and make
factual findings to determine whether “each and every limitation is found
either expressly or inherently in [that] single prior art reference.” Id. The
elements in the reference “must be arranged as in the claim . . . but this is not
an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Further, an Examiner’s factual finding regarding what a reference discloses
must be supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the
standard that must be met by the PTO in making rejections”); see also In re
Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In
rejecting an application, factual determinations by the PTO must be based on
a preponderance of the evidence, and legal conclusions must be correct.”).
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The claims are directed to surgical fasteners comprising “at least one
capillary fixed to an external surface of at least one of the base leg or support
leg.” App. Br. 19-20 (Claims App’x, Claims 1-2) (emphasis added).
McKean’s surgical fabric prosthesis is separate from McKean’s staple until
the staple is driven through the fabric upon actuation of the stapling device.
See, e.g., McKean, col. 4, ll. 52-64; see also fig. 7. The Examiner’s
interpretation relies upon the pores between the fibers of the fabric 140 as
corresponding to the claimed capillaries. The pores, however, since they are
simply empty space without a confining membrane or the like, are not
rupturable. Even assuming that the pores are rupturable by rupturing the
surrounding fibers of the fabric, McKean’s fabric 140 clearly has numerous
pores between the fibers of the fabric. Thus, assuming the staple may be
said to rupture the pores or fibers through which it is driven, there are
numerous other pores or fibers (those through which the staple is not driven)
that would not be ruptured. Thus, even under the Examiner’s interpretation,
McKean does not disclose a surgical fastener wherein each of said at least
one capillary is rupturable simultaneously with the deformation of the
surgical fastener as required by independent claims 1 and 2. See, e.g., In re
Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (noting that “[t]he signal
‘comprising’ does not render a claim anticipated by a device that contains
less (rather than more) than what is claimed.”).
Accordingly, we do not sustain Rejection I.
Rejection II
The Examiner relied upon McKean as disclosing the elements of the
claims discussed above in concluding that the combination of McKean and
Trumbull rendered obvious the subject matter of claims 6 and 8. Ans. 4.
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Accordingly, for the reasons we discussed in the context of Rejection I, we
do not sustain Rejection II.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1-8.

REVERSED

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