Ex Parte Dakov

Patent Trial and Appeal BoardNov 9, 2012

11660487 (P.T.A.B. Nov. 9, 2012)

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. 11/660,487 02/16/2007 Pepi Dakov 9212 7590 11/09/2012 Pepi Dakov 62-60 99th Street Apt 1227 Rego Park, NJ 11374 EXAMINER EASTWOOD, DAVID C ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 11/09/2012 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 PEPI DAKOV ____________ Appeal 2010-006947 Application 11/660,487 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-20. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006947 Application 11/660,487 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter on appeal: Claim 1. An annular cutter for body organs comprising: a cutting blade at a lower end of a tubular body rotational around a central axis; a finger slot extending from upper end of said central axis and retaining means extending from lower end of said axis, wherein a finger inserted in said slot stabilizes turning of said tubular body and cutting with said cutting blade of an annular portion out of a body organ held by said retaining means inserted into said portion of said body organ. REJECTIONS Claims 1-3, 7-10, and 14-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Young (US 5,827,316; iss. Oct. 27, 1998) and Vetter (US 2002/0002354 A1; pub. Jan. 3, 2002). Claims 4-6, 11-13, and 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Young, Vetter, and Golden (US 6,695,859 B1; iss. Feb. 24, 2004). ANALYSIS Claims 1-3, 7-10, and 14-17 as unpatentable over Young and Vetter Appellant argues claims 1-3, 7-10, and 14-17 as a group. App. Br. 9- 18. We select claim 1 as representative. 37 C.F.R. 41.37(c)(1)(vii) (2011). The Examiner found that Young discloses a cutter with a cutting blade (cutter 44) at a lower end of a tubular body that is rotational around a central axis and has a retaining means (anvil 54) at a lower end. Ans. 3-4. The Examiner found that Vetter discloses a finger slot (thumb rest 10) and determined that it would have been obvious to modify Young with the finger slot of Vetter to stabilize the tubular body. Ans. 4. Appeal 2010-006947 Application 11/660,487 3 Appellant argues that Vetter discloses the well-known use of a finger slot (thumb ring) on a piston type syringe to ease filling of the syringe with one hand as the piston is pulled back with the thumb inserted in the ring and to improve syringe stability, but this movement, operation, and purpose are completely different than the claimed annular cutter, which rotates and is held with the index finger placed in the thumb ring and the thumb is placed on the side of the body to turn the body for cutting purposes, not for ejecting fluids. App. Br. 9-11. This argument is not commensurate with the scope of claim 1, which recites an annular cutter, not a method of using an annular cutter. The positioning of fingers on the device to rotate the device is merely an intended use that does not serve to distinguish the structure of the claimed annular cutter from the prior art. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (A statement of intended use does not impart patentability to apparatus or composition claims unless it recites structure or functional features that distinguish over the prior art.). Therefore, these arguments do not persuade us of error in the Examiner’s finding that Young discloses an annular cutter that rotates around a central axis, or determination that it would have been obvious to replace a flat thumb seat 18 of Young with a circular finger slot as taught by Vetter, to stabilize the tubular body during use. Ans. 4. The Examiner’s reason for substituting a closed ring for a flat thumb seat is supported by a rational underpinning of stabilizing Young’s device during rotation and cutting based on Vetter’s disclosure that a loop 10b (open ring) or a closed ring 10c can be substituted for flat thumb seat 10 Appeal 2010-006947 Application 11/660,487 4 to improve engagement of a thumb with the plunger. Ans. 13; Vetter, paras. [0037-0038]; figs. 4a-4c. The Examiner had a sound basis for finding that the modified device of Young has all the claimed structure and this structure is capable of stabilizing turning of the tubular body as claimed. Ans. 11-12. Appellant has not persuaded us that Young and Vetter are not capable of performing this function. See In re Schreiber, 128 F.3d at 1478 (where Patent Office has a reason to believe that a functional feature is an inherent characteristic of the prior art, the burden can be shifted to an applicant to show that the prior art structure is not capable of performing the claimed function). Appellant also argues that it would not have been obvious to combine the thumb ring of a syringe with an aortic cutter because rotary punches such as that disclosed in Young have been used for many years without adding a finger slot to the back of the rotary punch. App. Br. 11-12. Appellant cites the Symmetry Bypass System Aortic Connector and HEARTSTRING™ Proximal Seal System Anastomotic system as exemplary rotary cutters that lack a finger slot. App. Br. 12-18. Appellant argues that these products are evidence that “thousands at [the] level of ordinary skilled in the art and above have failed to come up with this combination.” App. Br. 9. These arguments are not persuasive because it is well-settled that absent a showing of long-felt need or failure of others, the mere passage of time without a claimed invention is not evidence of nonobviousness. In re Kahn, 441 F.3d 977, 990-91 (Fed. Cir. 2006). After carefully considering all the evidence and arguments submitted by Appellant regarding aortic cutters, we are not persuaded that they establish an art-recognized problem that existed for a long period of time without a solution that was a persistent one recognized Appeal 2010-006947 Application 11/660,487 5 as such by skilled artisans regarding a need to improve the stability of aortic cutters, or that the use of a finger slot on a rotary aortic cutter satisfied such a long-felt need in the industry. See In re Cavanaugh, 436 F.2d 491, 496 (CCPA 1971) (once a long-felt need is established, evidence must show that the claimed invention satisfied that need). If anything, the articles provided by Appellant are evidence that the industry did not recognize a need for an aortic cutter with finger slots and was satisfied with aortic cutters with a flat thumb rest in the case of the HEARTSTRING™ Proximal Seal System Anastomotic system, a push button in the case of the HEARTSTRING™ II/III Proximal Seal Systems, or a hand rotated device in the case of the Symmetry Bypass System Aortic Connector developed by St. Jude Medical Anastomotic Technology Group. See App. Br. 12-18; see also The St Jude Medical symmetry aortic connector system for proximal vein graft anastomoses in coronary artery bypass grafting, The Journal of Thoracic and Cardiovascular Surgery, Vol. 123, pp. 777-782 (2002); First Clinical Experience with the HEARTSTRING, a Device for Proximal Anastomoses in Coronary Surgery, The Annals of Thoracic Surgery, vol. 79, pages 1732-37 (2005); K. Meader, Boston Scientific’s Clampless Heart Surgery HEARTSTRING® II Proximal Seal System (undated); HEARTSTRING Aortic Cutter: Information for Prescribers (Maquet, undated). We sustain the rejection of claims 1-3, 7-10, and 14-17. Claims 4-6, 11-13, and 18-20 as unpatentable over Young, Vetter, and Golden Appellant argues that claims 4-6, 11-13, and 18-20 are patentable because Young and Vetter do not render the claimed subject matter obvious as discussed supra. App. Br. 18. Because we sustain the rejection of claims Appeal 2010-006947 Application 11/660,487 6 1-3, 7-10, and 14-17 as unpatentable over Young and Vetter, this argument is not persuasive. We sustain the rejection of claims 4-6, 11-13, and 18-20. DECISION We AFFIRM the rejection of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls