Ex Parte Feinberg

Patent Trial and Appeal Board

Aug 25, 2014

10674653 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC E. FEINBERG
____________

Appeal 2012-005728
Application 10/674,6531
Technology Center 3700
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a tissue
approximation device. The Examiner rejected the claims as not enabled and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 According to Appellant, the real party in interest is Ethicon, Inc. of
Somerville, New Jersey. App. Br. 1.

Appeal 2012-005728
Application 10/674,653

2
STATEMENT OF THE CASE
Background
The present Specification describes the invention as follows.
Described herein is a tissue approximation device that is
capable of maintaining approximation of a wound without
substantial eversion of the edge surfaces of the wound during
application of a topical skin adhesive, an adhesive film or skin
staples to close a wound, without requiring the physician or
health care attendant to manually secure the approximation
device. In particular, described herein is a tissue approximation
device comprising two elongate arms, an attachment means to
secure the two elongate arms to each other, adhesive pads to
anchor the tissue approximation device to the skin, and a
locking means to lock the two elongate arms in place relative to
each other[.]
Spec. 2.
The Claims
Claims 5, 6, 8, 38–42, and 46–48 are on appeal. The only
independent claims, 8 and 38, read as follows (emphasis added):
8. A tissue approximation device comprising two elongate
arms having proximal and distal ends, an attachment means to
secure the elongate arms to each other at one or more locations,
adhesive pads movably connected on the ends of the elongate
arms to anchor the tissue approximation device to the skin, and
a locking means to lock the elongate arms in place relative to
each other, wherein (i) the adhesive pads are spaced apart from
the one or more locations of the attachment means in the
direction of the elongate arms, and (ii) the tissue approximation
device has an open and a closed position, and when in the
closed position, the adhesive pads are parallel and non-
contiguous to each other, where the adhesive pad has a first
adhering surface and a second surface rotatably coupled to the
distal end of each of the elongate arms by a ball and socket
connector, wherein the second surface has one of a socket and a
ball that communicates with the other one of a ball and a socket
Appeal 2012-005728
Application 10/674,653

3
on the distal end of each of the elongate arms, and the adhesive
pad is rotatable around the ball and socket connector about at
least two axes.

38. A tissue approximation device for application to a skin
surface adjacent to a wound, comprising:
a pair of arms, each arm having a longitudinal axis and
opposed ends, wherein one end includes a handle and the other
end includes a tong with a connector;
an attachment mechanism coupled to each arm that
movably couples the arms to each other so that a distance
between each tong is selectively variable;
an adhesive pad removably coupled to the connector of
each tong, wherein each adhesive pad has an adhesive surface
that extends in a plane generally parallel to the longitudinal axis
of the respective tong, the adhesive surface having a high shear
resistance for holding the skin surface and a low peel resistance
for removal from the skin surface, and wherein the connectors
support the adhesive pads to be positionable in a common plane
on opposed sides of the wound and conform to the skin surface
adjacent to the wound; and
a locking mechanism coupled to each arm to selectively
lock the pair of arms in a fixed position relative to each other,
wherein the connector is a rotatable connector that
connects the adhesive pad to the tong to pivot at least about the
longitudinal axis and an axis substantially perpendicular to the
longitudinal axis and the rotatable connector is one of a ball
and a socket and the adhesive pad includes the other of the ball
and the socket, wherein the ball and socket are snap fit together
in an interference fit.
Reply Br. 14–15 (Revised Claims App’x).
The Rejections
1. The Examiner maintains that claims 38–42 are unpatentable under
35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
Appeal 2012-005728
Application 10/674,653

4
2. The Examiner maintains that claims 5, 6, 8, and 46–48 are
unpatentable under 35 U.S.C. § 103(a) over Hasson2 in view of
Taylor.3
DISCUSSION
1. Enablement
As an initial matter, we note that Appellant first raises arguments with
respect to this rejection in reply to the Examiner’s Answer. Although we do
not always consider arguments raised for the first time in the Reply Brief,
we exercise our discretion to do so here in light of the specific
circumstances4 set forth by the Appellant and the nature of the Examiner’s
rejection and support provided therefor. See Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative).
In rejecting claims 38–42 as failing to comply with the enablement
requirement, the Examiner asserts that the Specification does not enable the
requirement in independent claim 38 that “the connector is a rotatable

2 U.S. Patent No. 4,724,838, issued Feb. 16, 1988.
3 U.S. Patent No. 6,394,951 B1, issued May 28, 2002.
4 Appellant acknowledges that these arguments were not previously
presented, but requests our consideration of them “in view of the Examiner’s
delay (more than three months) in responding to Appellants’ [sic] proposed
amendment under 37 C.F.R. 41.33(a).” Reply Br. 3. In response to the
Examiner’s rejection under 35 U.S.C. § 112, Appellant submitted a proposed
amendment in an attempt to cure the rejection on September 6, 2011. Id.
However, the Examiner did not respond to the proposed amendment until
issuing an Advisory Action that denied entry of the amendment on
December 21, 2011, two days before the Examiner’s Answer issued. Id.
Appellant asserts that the Advisory Action should have been issued within
thirty days, and had that occurred, Appellant would have had an opportunity
to file a revised Appeal Brief to address the substance of the rejection. Id. at
3–4.
Appeal 2012-005728
Application 10/674,653

5
connector.” Ans. 4–5. According to the Examiner, “the connector as shown
in the drawings . . . does not rotate as it is fixed to the arm.” Id. at 5 (citing
Spec. Fig. 7, element 139).
In response, Appellant argues that the Examiner improperly limits the
connector to element 139 in Figure 7 of the Specification. Reply Br. 5.
Appellant asserts that there is nothing in claim 38 that limits the connector to
this element and that the description of the connector as being rotatable in
claim 38 would have been well understood by a skilled artisan. Id. To wit,
Appellant explains that “[b]all and socket connectors are known to be
designed and used to provide a certain degree of rotation between two
elements connected thereby.” Id.
We find that the Examiner erred in rejecting claims 38–42 under 35
U.S.C. § 112 based on an unduly narrow interpretation of the term “rotatable
connector” in light of the remainder of claim 38 and the Specification.
Specifically, the Examiner’s interpretation of the claim would require that
connector 139 is rotatable about arm 122 in Figure 7 of the Specification.
The Examiner points to no language in the claim or Specification to support
this limited interpretation. We find that this interpretation does not
acknowledge that the connector 139 in Figure 7 is rotatable in relation to the
pad 132 when connected to the ball 141. The language of claim 38 supports
this interpretation, stating that the “rotatable connector . . . connects the
adhesive pad to the tong to pivot at least about the longitudinal axis and an
axis substantially perpendicular to the longitudinal axis . . . .” Claim 38
(emphasis added). We find that this language would inform one of skill in
the art that the connector becomes “a rotatable connector” only when it
forms a connection between the tong/arm and the pad. Further, the claim
Appeal 2012-005728
Application 10/674,653

6
requires that the connection between the tong and pad is a ball and socket
connection, and we agree with Appellant that these “connectors are known
to be designed and used to provide a certain degree of rotation between two
elements connected thereby.” Reply Br. 5.
Based on the foregoing, we find that the Examiner’s rejection of
claims 38–42 under 35 U.S.C. § 112, for failing to comply with the
enablement requirement, should be reversed.
2. Obviousness: Hasson in view of Taylor
In rejecting independent claim 8, from which claims 5, 6, and 46–48
depend, the Examiner asserts that Hasson teaches the following.
Hasson teaches a tissue approximation device comprising two
elongate arms (54, Fig. 7), an attachment means (56) to secure
the elongate arms to each other at one or more locations, pads
(24, pad is defined in the World English Dictionary as any of
various level surfaces of flat-topped structures) movably
connected (move via the ball and socket (301, 302, Fig. 14)[)]
on at least a portion of the elongate arms to anchor the tissue
approximation device to the tissue, and a locking means (64) to
lock the elongate arms in place relative to each other, wherein
(i) the pads are spaced apart from the one or more locations of
the attachment means (56) in the direction of the elongate arms
(the pads 24 are spaced apart from 56 in the direction of the
arms), and (ii) the tissue approximation device has an open
(when moving 62 it opens and closes, Fig. 7) and a closed
position, and when in the closed position, the pads are parallel
and non-contiguous to each other ([F]ig. 7, the pads are not
touching when closed). The pad has a second surface that is
rotatably coupled to the distal end of each of the elongate arms
by a ball and socket connector (301,302, col. 5, ll. 11, 12),
wherein the second surface [has] a socket (302) and the distal
end of the elongate arms has a ball (301), the pad is rotatable
about the ball and socket connector about at least two axes (col.
5, ll. 15–18).
Appeal 2012-005728
Application 10/674,653

7
Ans. 5–6 (emphasis added). The Examiner acknowledges that Hasson fails
to disclose that the pad is an adhesive pad and relies on Taylor for this
limitation. Id. at 6.
Appellant contends that the Examiner has failed to establish a prima
facie case of obviousness because Hasson fails to disclose that the pads are
non-contiguous to each other when the device of Hasson is in the closed
position. App. Br. 12–16. Appellant asserts that the forceps blades are
attached at the lateral edges of the feet 24 of Hasson such that the medial
edges of the feet are contiguous when the device is closed, contrary to the
requirements of claim 8. Id. at 12–13 (citing Hasson, Fig. 2; col. 3, ll. 34–
40; Fig. 3; col. 3, ll. 56–59). According to Appellant, “the Examiner’s
interpretation of Hasson fails to consider the clear teaching therein that the
forceps blades thereof are ‘closable at their distal ends.’” Reply Br. 7 (citing
Hasson, Abstract).
In response, the Examiner asserts that the claims do not state what the
closed position consists of and that when element 64 in Figure 7 of Hasson
is locked on the first tab the pads are non-contiguous. Ans. 7. The
Examiner concludes that “[t]he device of Hasson would be considered
‘closed,’ for example, when fully engaged with tissue and in this instance
the pads are non-contiguous to each other because the tissue is between
them.” Id.
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003). During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
Appeal 2012-005728
Application 10/674,653

8
art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). In this case, the issue is drawn to the
limitation “closed position” in claim 8. Therefore, we first turn to the
Specification to interpret the term “closed position.”
The Specification states:
Ratchet mechanism 224 is designed such that when the ratchet
catch 228 is engaged with the first ratchet tooth of ratchet arm
226, the tissue approximation is defined herein as being in a
closed position, and tongs 212b and 214b remain parallel to
each other and are non-contiguous such that the distance
between the distal end of tongs 212b and 214b allows access to
the wound for application of a permanent wound closure
means.
***
Ratchet mechanism 124 is designed such that when the first
ratchet catch is engaged with ratchet arm 126, the tissue
approximation is defined herein as being in a closed position
and the distance between the distal end of tongs 112 band 114b
allows access to the wound for application of a permanent
wound closure means.
Spec. 8, 10 (emphasis added). Based on this definition, we find that claim 8
requires that locking means must be engaged for the device to be in the
closed position.
The Examiner relies on Figure 7 of Hasson to show that the pads are
non-contiguous when the device of Hasson is closed. This figure is
reproduced below:
App
App

Figu
force
first
Ans.
first
when
“clos
betw
cont
we c
requ
eal 2012-0
lication 10
re 7 shows
ps.” Hass
asserts tha
5. The Ex
tab, the pa
this devi
ed” and th
een them.
First, we
iguous, the
onclude th
ired by cla
05728
/674,653
a tissue a
on col. 4,
t in this fig
aminer al
ds 24 are n
ce is “fully
e pads wo
Id. .
note that,
locking m
at this figu
im 8. We
pproximat
ll. 53–55.
ure “the p
so argues
on-contig
engaged
uld not be
while the
eans 64 d
re does no
also find t
9
ion device
Referring
ads are no
that when
uous. An
with tissue
contiguou
pads 24 in
oes not ap
t depict a
hat Hasso

in the for
to this fig
t touching
element 64
s. 7. The E
” it would
s because
Figure 7
pear to be
device in
n is silent
m of “scis
ure, the Ex
when clo
is locked
xaminer a
be consid
there is ti
of Hasson
engaged,
the closed
regarding
sors-type
aminer
sed.”
on the
sserts that
ered
ssue
are non-
and thus,
position a
the

s
Appeal 2012-005728
Application 10/674,653

10
position of the pads when locking means 64 is engaged. See Hasson col. 4,
ll. 53–63. However, the pads 24 in Figure 7 appear to project inward
relative to distal ends 58 and Hasson teaches, with respect to Figure 3, that
“the inward projection of feet 24 relative to forceps blades 12 [is] for closing
beneath a tubular structure 40 for gently lifting or stabilizing the structure.”
Hasson col. 3, ll. 56–59; col. 4, ll. 53–63. We conclude that this suggests the
pads are intended to be contiguous when the device of Hasson is in the
closed position, and the Examiner has not persuasively shown otherwise.
Finally, we disagree with the Examiner’s unsupported conclusion that
the device of Hasson is closed when fully engaged with tissue and the pads
are non-contiguous because there is tissue between them. To the extent the
Examiner is arguing that the device of Hasson is closed simply because it is
fully engaged with tissue, we disagree because, as shown above, claim 8
requires that the closed position occurs only when the locking means is
engaged and there is no description of the device of Hasson in the closed
position—i.e. when ratchet 64 is engaged—beyond what can be inferred
from Figure 7.
Based on the foregoing, we conclude that the Examiner has not
provided sufficient persuasive evidentiary support for the conclusion that
pads on the device of Hasson are non-contiguous when the device is in the
closed position, as required by claim 8. Accordingly, we find that the
Examiner has not established a prima facie case of obviousness because the
proposed combination of Hasson and Taylor does not disclose all elements
of claim 8.
Appeal 2012-005728
Application 10/674,653

11
CONCLUSION
For the reasons set forth above, we reverse the Examiner’s rejections
of claims 5, 6, 8, 38–42, and 46–48.

REVERSED

Klh