Ex Parte Wright

Patent Trials and Appeals Board

Apr 29, 2016

11237132 - (D) (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111237, 132 0912712005
59582 7590 05/02/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
David W. Wright
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35540-7 5314
EXAMINER
OU, JING RU!
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
05/02/2016 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 DAVID W. WRIGHT
Appeal2014-003837
Application 11/237,132
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
David W. Wright (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 102(b) claims 1, 3,
6-10, 13-15, 17-19, and 21 as anticipated by Berg (US 2002/0082627 Al;
pub. June 27, 2002) and under 35 U.S.C. § 103(a) claims 4, 5, 11, and 12 as
unpatentable over Berg and Bolduc (US 6,962,596 B2; iss. Nov. 8, 2005).
Claims 2, 16, and 20 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 The Examiner has withdrawn the rejection of claims 1, 3-15, 17-19, and 21
under 35 U.S.C. § 112, second paragraph, for indefiniteness. See Ans. 2.
Appeal2014-003837
Application 11/237,132
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "devices for surgically joining
separate pieces of tissue to one another, and more particularly to surgically
joining a tubular graft of tissue to a separate piece of tissue." Spec. para. 1;
Figs. 1-3. Claims 1 and 18 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An apparatus for securing a tubular duct having a wall to
a vessel having a wall in a side by side configuration, comprising:
a circumferentially continuous annulus formed in a plane,
the annulus having a longitudinal axis extending along the plane
and a perpendicular axis perpendicular to the plane; wherein the
annulus has a bias imparted therein to provide said annulus with
a biased first configuration and an unbiased second
configuration; wherein the biased first configuration has opposite
sides of the annulus across the longitudinal axis in close
proximity to each other along the longitudinal axis to form an
elongated, substantially closed slit and, wherein the unbiased
second configuration has opposite sides of the annulus across the
longitudinal axis spaced apart from each other; and wherein the
annulus is automatically biased by the imparted bias therein to
move from the biased first configuration toward the unbiased
second configuration;
a first set of fingers attached to and extending from the
annulus in a first direction, the first set of fingers being biased by
a bias imparted therein to automatically curl from a stressed first
configuration toward a relaxed second configuration, the first set
of fingers extending outwardly from the annulus in the direction
of the perpendicular axis while in their first and second
configurations;
the first set of fingers being configured to penetrate and
grasp the wall of either the tubular duct or vessel as they move
from their biased first configuration toward their relaxed second
configuration; and
wherein the first set of fingers are configured in relatively
planar fashion with one another along said perpendicular axis
when in their biased first configuration and curl radially
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Appeal2014-003837
Application 11/237,132
outwardly from said perpendicular axis automatically under the
bias imparted in said first set of fingers toward their relaxed
second configuration.
ANALYSIS
Anticipation by Berg- Claims 1, 3, 6-10, 13-15, 17-19, and 21
Independent claim 1 calls for, in relevant part, "wherein the biased
first configuration [of the annulus] has opposite sides of the annulus across
the longitudinal axis in close proximity to each other along the longitudinal
axis to form an elongated, substantially closed slit." Appeal Br. Exh. A,
Claims App. 12 (italics added). Independent claim 18 recites similar claim
language to "an elongated, substantially closed slit." Appeal Br. Exh. A,
Claims App. 4. The Examiner finds that Berg teaches the limitations of
claim 1 including the aforementioned elongated, substantially closed slit.
See Final Act. 4. Specifically, the Examiner states:
As disclosed in paragraph [58] of Berg, "flexibility of medial
portion 16 mav allow a connector or plu~ to be resilientlv
circumferentially compressed to a relatively small size to
facilitate delivery of the connector or plug to an installation
site." Therefore, the slit/central opening of the medial portion
16 in the compressed configuration (first configuration) would
be considered to be a substantially closed slit.
Ans. 4; see also id. at 5.
Appellant contends:
Berg does teach that, "flexibility of medial portion 16 may allow
a connector or plug to be resiliently circumferentially
compressed to a relatively small size to facilitate delivery of the
connector or plug to an installation sight (e.g., delivery through
2 The Claims Appendix does not include page numbers. Accordingly, page
numbers have been assigned based on their numerical order following the
Claims Appendix cover sheet entitled "EXHIBIT A."
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Appeal2014-003837
Application 11/237,132
the lumen of a patient's body conduit)" (paragraph [58]). This
said, [A ]ppellant contends that circumferentially compressing
the medial portion 16 does not result in an elongated,
substantially closed slit, as claimed. Rather, circumferential
compression results in a relatively large diameter hoop being
circumferentially compressed to a relatively small diameter
hoop, which does not form an elongated, substantially closed slit,
as shown for example in Figure 3 (1st Configuration) [] of
[A ]ppellant' s application.
Reply Br. 3; see also Appeal Br. 7.
Appellant's argument is persuasive. As noted by both the Examiner
and Appellant, paragraph 58 of Berg states that "flexibility of medial portion
16 may allow a connector or plug to be resiliently circumferentially
compressed to a relatively small size to facilitate delivery of the connector or
plug to an installation sight." However, in this case, the Examiner fails to
establish by sufficient evidence or technical reasoning that circumferential
compression of medial portion 16 of Berg necessarily results in formation of
an elongated, substantially closed slit as claimed. Ans. 4; see also id. at 5;
Reply Br. 3; Appeal Br. 7. As such, the Examiner fails to establish by a
preponderance of the evidence that Berg anticipates the apparatus of
independent claims 1 and 18.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 18 and their respective
dependent claims 3, 6-10, 13-15, 17, 19, and 21 as anticipated by Berg.
Obviousness over Berg and Bolduc - Claims 4, 5, 11, and 12
The Examiner's rejection of claims 4, 5, 11, and 12 as unpatentable
over Berg and Bolduc is based on the same unsupported findings discussed
above with respect to independent claim 1. See Final Act. 7-8. The
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Appeal2014-003837
Application 11/237,132
Examiner does not rely on Bolduc to remedy the deficiency of Berg.
Accordingly, for similar reasons, we do not sustain the Examiner's rejection
of claims 4, 5, 11, and 12 as unpatentable over Berg and Bolduc.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3-15,
17-19, and 21.
REVERSED
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