Ex Parte Jordan et al

Patent Trial and Appeal BoardMar 9, 2016

13241677 (P.T.A.B. Mar. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/241,677 09/23/2011 Gary JORDAN 30636 7590 03/09/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 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. 10121114002 3341 EXAMINER DAVID, SHAUN L ART UNIT PAPER NUMBER 3731 MAILDATE DELIVERY MODE 03/09/2016 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 GARY JORDAN, BARRY WEITZNER, and MICHAEL ZUPKOFSKA Appeal2014-000456 Application 13/241,677 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from a final rejection of claims 1---6. App. Br. 2. Claims 10-19 have been canceled, and claims 7-9 and 20-27 have been withdrawn from consideration. App. Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to "devices for tissue approximation and, in particular, relates to devices for fastening tissue." Appeal2014-000456 Application 13/241,667 Spec. il 5. Sole independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A device for fastening tissue, comprising: a shaft extending longitudinally from a distal end insertable into a body to a proximal end attached to a controller which remains outside of the body, the shaft including a lumen extending therethrough and an opening extending through a wall of a distal portion thereof to open the lumen to an exterior of the shaft; a first roller housed within the lumen adjacent to a first longitudinal edge of the opening such that a rotation of the first roller grasps and draws tissue from the body into the lumen via the opening; and a fastening element housed within the lumen adjacent to the opening and movable from a tissue receiving configuration to a tissue gripping configuration in which the tissue drawn into the lumen is fastened thereby. REFERENCES RELIED ON BY THE EXAMINER Deem Selis US 6,558,400 B2 US 2004/0097981 Al May 6, 2003 May 20, 2004 THE REJECTION ON APPEAL 1 Claims 1--6 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Selis and Deem. ANALYSIS Independent claim 1 recites "a fastening element housed within the lumen adjacent to the opening and movable from a tissue receiving 1 The Examiner's rejection of claims 1-6 under 35 U.S.C. Â§ 112, second paragraph, has been withdrawn. Advisory Act. 1 (mailed April 24, 2013). 2 Appeal2014-000456 Application 13/241,667 configuration to a tissue gripping configuration in which the tissue drawn into the lumen is fastened thereby." In relying on Selis for teaching this limitation, the Examiner identifies Selis' clip 120 as corresponding to the claimed fastening element. Final Act. 4 (citing Selis, Fig. 1; i-fi-1 43, 50). According to the Examiner: [T]he language of claim 1 does not require that the clip fasten the tissue (by changing configurations) within the lumen of the device, nor does it even require that the tissue be within the lumen when fastening the tissue using the clip. The claim merely requires that tissue, drawn into a lumen of a device, is fastened by a fastening element, the fastening element housed within the lumen adjacent to an opening, the fastening element moveable from a tissue receiving configuration to a tissue gripping configuration. Ans. 5---6. Appellants disagree that Selis discloses this limitation because "the device of Selis is specifically configured only to eject the clip from the device into a target area and that this clip never grips tissue that is drawn into []any portion of the device." App. Br. 4. Appellants argue that "the claim language clearly requires that the same tissue that is drawn into the lumen be gripped by the clip." App. Br. 5; see also Reply Br. 4. In order to resolve this dispute as to whether this claim lirnitation reads on Selis' deployable clip 120, we look to the Specification. The Specification describes the operation of the Appellants' invention as follows: An exemplary tissue fastening technique according to the present invention, includes insertion of the device 100 into a living body (e.g., via a naturally occurring bodily orifice) such until the distal portion 108 is adjacent a tissue perforation to be treated. A vacuum source may then be activated to apply a vacuum force through the lumen 104 drawing edges of the perforation through the opening 106 in proximity to the rollers 110, 112. The rollers 110, 112 may then be actuated so that the rollers 110, 112 rotate inward relative to one another to draw 3 Appeal2014-000456 Application 13/241,667 the edges of the tissue 15 0 therebetween into the lumen 104 gripping the tissue 15 0 between the rollers 110, 112. Once the edges 150 are gripped between the rollers 110, 112, as desired, the approximated edges 150 are fastened together via the fastener 114, which is moved to the second configuration with the approximated edges 150 slidably received between the arms 120 thereof. The arms 120 fasten the edges together, providing closure of the perforation. Spec. i-f 12 (emphasis added). Thus, as explained in the Specification, fastener 114 fastens together tissue edges 150 while edges 150 are gripped between rollers 110, 112 within lumen 104. Although the Specification explains the timing of the fastening of tissue 150 by fastener 114, namely while tissue 150 is within lumen 104, the Specification does not provide an express definition for the term "fasten." Accordingly, we tum to applicable dictionary definitions for guidance. See Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). For example, per the Merriam-Webster Dictionary, "fasten" means "to secure against opening. "2 Per the Random House College Dictionary, "fasten" means "to close firmly or securely." 3 Based on these definitions we construe the term "fasten" to mean "to close firmly," which is consistent with the use of this term in the Specification. In view of this construction, the claim limitation at issue requires a fastening element that is itself within the lumen, to close portions of tissue that are "drawn into the lumen" firmly against each other. We understand the limitation in question to involve fastening with a fastening element while 2 Merriam-Webster Online Dictionary, http://www.merriam- webster.com/dictionary/fasten (last visited Feb. 8, 2016). 3 Random House College Dictionary, 480 (Revised Ed. 1980). 4 Appeal2014-000456 Application 13/241,667 the tissue is within the lumen. In contrast, clip 120 of Selis is ejected from a delivery tube 116 (Selis, Figs. 1, 1 lC; i-fi-f 14, 36, 37, 43, 51, and 53) whereupon it engages and attaches to bodily tissue (Selis, i-fi-f 13, 59) such as breast tissue to be used as a marker for mammography (Selis, i-fi-12, 35). Thus, Selis' clip 120 attaches to tissue outside of delivery tube 116, and we agree with Appellants that Selis does not teach a fastening element that fastens tissue within a lumen, as claimed (see App. Br. 4). Not only must Selis' clip 120 be deployed before it attaches to tissue, but once deployed, clip 120 does not fasten tissue. That is, clip 120 merely engages tissue but does not close portions of tissue firmly against each other as this claim term is defined. Selis, i-fi-159, 60. Thus, Selis does not teach a fastening element that fastens tissue together. See App. Br. 4. Furthermore, Selis discloses that the tissue drawn into delivery tube 116 is removed or excised from the body and hence is not available for attaching a clip thereto. Selis, i150. In other words, the tissue drawn into Selis' delivery tube is excised, not fastened. Accordingly, we agree with Appellants that Selis does not disclose a fastening element that fastens tissue drawn into the lumen, as claimed (see App. Br. 4, 5; Reply Br. 4, 5). For the foregoing reasons, we agree with Appellants (App. Br. 4--5; Reply Br. 3-5) that Selis fails to disclose "a fastening element housed within the lumen adjacent to the opening and movable from a tissue receiving configuration to a tissue gripping configuration in which the tissue [is] drawn into the lumen is fastened thereby," as recited in claim 1. The Examiner does not rely on Deem in any way that would cure the deficiencies of Selis. Accordingly, we do not sustain the rejection of independent claim 1 and dependent claims 2-6. 5 Appeal2014-000456 Application 13/241,667 DECISION The Examiner's rejection of claims 1-6 is reversed. REVERSED 6