Ex Parte Sauer

Patent Trial and Appeal Board

Jan 21, 2016

12766967 (P.T.A.B. Jan. 21, 2016)

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.
12/766,967 04/26/2010 Jude S. Sauer LSI-PAT-0031.04 DIV 2678
118339 7590 01/21/2016
LSI Solutions, Inc
7796 Victor-Mendon Road
Victor, NY 14564
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
01/21/2016 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 JUDE S. SAUER
____________

Appeal 2013-007291
Application 12/766,967
Technology Center 3700
____________

Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Noda
(US 5,336,229, iss. Aug. 9, 1994) and also as unpatentable under 35 U.S.C.
§ 103(a) over Noda. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2013-007291
Application 12/766,967
2
THE INVENTION
Appellant’s invention relates to a medical device for placement of a
suture. Spec. ¶ 6. Claim 1, reproduced below, is the only currently pending
claim.
1. A tissue suturing instrument comprising:
a handle having an operating lever on the handle;
an elongated body extending from the handle to a distal
end;
a tip at a distal end of the elongated body;
a tissue receiving region in the tip;
first and second retractable needles coupled to the operating
lever and positioned for selectively extending across the tissue
receiving region through a tissue section disposed in said
region, and retracting;
a cutter arranged generally parallel to the tissue receiving
region; and
a suture having first and second ends disposed at the distal
end of the tissue receiving region, the first and second ends
engaging the first and second retractable needles when the
needles are extended across the tissue receiving region, and
being carried proximally across the regions by the needles when
the needles are retracted.

OPINION
Anticipation by Noda
The Examiner finds that Noda discloses all of the elements of claim 1.
Final Action 3. In particular, the Examiner finds that Noda’s rods 50 satisfy
Appellant’s claim limitation directed to “needles.” Id. The Examiner also
finds that such needles extend across the tissue receiving region. Id.
However, the Examiner makes no finding that such “needles” are positioned
to extend “through” a tissue disposed in the tissue receiving region.
Appellant traverses the Examiner’s rejection by arguing that Noda’s
rods 50 are not “needles” within the scope of claim 1 as properly construed.
Appeal 2013-007291
Application 12/766,967
3
Appeal Br. 3–4. Appellant also argues that Noda’s rods are not positioned to
pass through a tissue section as required by claim 1. Id. at 4. We agree.
Noda discloses a ligating apparatus. Noda, col. 3, ll. 9–10. Noda’s
apparatus has a shaft with a distal end. Id. at col. 3, ll. 10–13. Slot 28 on the
distal end forms a receiving space in which a tissue structure may be
positioned for ligation and/or transection. Id. at col. 6, ll. 45–48. A suture is
detachably mounted at the distal end of the shaft. Id. at col. 3, ll. 13–14.
The suture is wrapped around the tissue structure and Noda’s apparatus has
means to thread a free end of the suture through a knotted loop on the
opposite end of the suture. Id. at col. 3, ll. 14–31. The apparatus also
contains means for tightening the ligature and cinching the knotted loop so
as to lock the ligature. Id. col. 3, ll. 32–39. In short, Noda’s rods 50 are
positioned to pass a suture around a tissue structure and then tie it off.
Furthermore, we do not agree with the Examiner’s finding that Noda
discloses “needles” as claimed. The Examiner identifies rods 50 as
corresponding to the claimed needles and states that such rods are fully
capable of penetrating tissue. Ans. 2. However, Noda teaches that, at the
distal ends 52 of capture rods 50, snap fittings 54 are attached. Noda, col. 6,
ll. 64–65. Furthermore, snaps 56 are attached to the free ends 42 of
sutures 40. Id. at col. 6, ll. 65–67. By sliding capture rods 50 distally within
knotted loops 44, snaps 56 become engaged in snap fittings 54. By then
sliding capture rods 50 proximally, free ends 42 may be drawn through
knotted loops 44, forming a ligature “around the tissue structure.” Id. at
col. 6, l. 67–col. 7, l. 3, Figs. 15A–15E. We do not reach or decide the issue
of whether Noda’s rods 50, considered in isolation relative to the overall
structure of Noda, may be properly be construed as “needles” within the
Appeal 2013-007291
Application 12/766,967
4
scope of claim 1. It is sufficient to note that the Examiner’s rejection lacks
any finding that snap fittings 54, attached to the distal ends of capture
rods 50, are capable of passing through tissue. To anticipate a claim, a
single prior art reference must disclose each claim element “arranged as in
the claim.” Finisar Corp. v. Direct Group, Inc., 523 F.3d 1323, 1334 (Fed.
Cir. 2008). Because Noda’s rods 50 have snap fittings 54 attached to their
distal end, such rods are not “arranged as in the claim” in accordance with
controlling law.
In summary, Noda’s apparatus is designed to circumvent or surround
a tissue section. In view of Noda’s teaching that rods 50 have snap
fittings 54 attached to the distal end, we find that the Examiner’s position
that rods 50 are fully capable of functioning as needles to extend through
tissue lacks evidentiary support in the record. Although Noda arguably has a
tissue receiving region in the tip of the distal end of its elongated body, it
does not have retractable needles positioned for selectively extending across
the tissue receiving region through a tissue section disposed in said region as
required by claim 1.
Accordingly, we do not sustain the anticipation rejection of claim 1.
Unpatentability over Noda
The Examiner finds that element 224 in the Figure 11 embodiment of
Noda is a “substantially pointed rod” that meets the needle limitation of
claim 1. Final Action 3. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to combine the Figure 1 and Figure 11 embodiments of Noda to
achieve the claimed invention. Id. According to the Examiner, using the
Appeal 2013-007291
Application 12/766,967
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Figure 11 means of capturing the suture is merely a matter of using a known
equivalent that would have yielded predictable results. Id.
Appellant traverses the rejection by arguing that Noda loops a suture
around a tissue section and does not pass a needle through a tissue section.
Appeal Br. 4. Appellant argues that fittings at the distal ends of the sutures
are designed so that they can be captured by the baskets at the end of the
rods. Id. Appellant distinguishes this configuration from capturing the
pointed end of a needle after it has passed through a tissue section as in
Appellant’s invention. Id.
We think that Appellant has expressed the better position here.
Although Noda shares many similarities with Appellant’s invention, it is
clearly designed to surround tissue and then tie it off as opposed to passing
through the tissue. Element 224 of Noda is a snap that is fixed to free
end 220 of suture 218. Noda, col. 10, ll. 56–64. The Examiner’s finding
that element 224 is pointed and therefore capable of serving as a needle to
penetrate tissue is not supported by a preponderance of the evidence.
Accordingly, we do not sustain the Examiner’s unpatentability
rejection of claim 1 over Noda.
DECISION
The decision of the Examiner to reject claim 1 as anticipated by Noda
under 35 U.S.C. § 102(b) is reversed.
The decision of the Examiner to reject claim 1 as unpatentable over
Noda under 35 U.S.C. § 103(a) is reversed.
REVERSED

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