Ex Parte Watanabe et al

Patent Trial and Appeal Board

Oct 19, 2012

10550819 (P.T.A.B. Oct. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/550,819 06/21/2006 Go Watanabe 49288.1500 1793
20322 7590 10/22/2012
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
ALEMAN, SARAH WEBB
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
10/22/2012 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 GO WATANABE, YOSHIKI SAWA,
and SATOSHI TAKETANI
__________

Appeal 2012-000628
Application 10/550,819
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
holder. The Examiner rejected the claims as anticipated and as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“The present invention relates to a surgical holder, particularly, a
surgical holder for blood vessel surgery which is suitable for coronary
bypass surgery” (Spec. 1 ¶ 0001).
The Claims
Claims 1-3, 5-7, 9, 10, 12-14, and 18-29 are on appeal. Claim 1 is
representative and reads as follows:
1. A surgical holder comprising a grasping member for
grasping a tubular tissue, a manipulation member for
manipulating the grasping member, and a connection portion
with one end connected to the manipulation member,
wherein:
the grasping member includes a first grasping plate,
and a second grasping plate provided so as to oppose the
first grasping plate in a movable manner so that they are able
to become closer to each other or more distanced from each
other;
the first grasping plate includes a retaining portion
having an opening which is opened toward a first outer side
of the first grasping plate and a supporting portion having a
recessed portion which extends towards a second outer side
of the first grasping plate, the first outer side being opposed
to the second outer side and the opening being of a U-shape
or substantially a U-shape,
the retaining portion includes two edge portions each
having an elongated end portion, the two edge portions
together forming the peripheral portion of the opening to
define the shape of the opening, and the end portion of the
edge portion having a length and being configured to be
inserted into a tube of the tubular tissue for grasping the
tubular tissue,
the second grasping plate includes a covering portion
formed so as to cover an entire surface or a part of the
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opening of the first grasping plate, a non-covering portion
which does not cover the first grasping plate, and a fixing
portion having a curved portion, the covering portion being
provided in one end of the second grasping plate and the
curved portion being provided in the other end of the second
grasping plate,
the curved portion opposing the recessed portion to
form a generally tubular tissue grasping space for grasping
the tubular tissue when the first grasping plate and the
second grasping plate are positioned so as to oppose one
another,
a first grasping portion which can grasp a part of the
tubular tissue between the retaining portion of the first
grasping plate and the covering portion of the second
grasping plate are provided in one end portion of the
grasping member, and the opening exposing another part of
the tissue when a part of the tubular tissue is grasped by the
first grasping portion; and
a second grasping portion which can form the tissue
grasping space for the tubular tissue between the recessed
portion of the first grasping plate and the curved portion of
the second grasping plate is provided in another end portion
of the grasping member.

The issues
A. The Examiner rejected claims 1, 5-7, 9, 10, 12-14, and 18-29 under 35
U.S.C. § 102(b) as anticipated by Porat1 (Ans. 4-7).
B. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a) as
obvious over Porat and Mandel2 (Ans. 8).

1 Porat, G., US 6,234,448 B1, issued May 22, 2001.
2 Mandel et al., US 2002/0177863 A1, published Nov. 28, 2002.
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A. 35 U.S.C. § 102(b) over Porat
The Examiner finds that:
Porat discloses a device that includes all the claimed
structural features and is capable of being used as a surgical
holder for grasping tissue . . . The device . . . has a first
grasping plate (30) and a second grasping plate (20) that
form a first grasping portion at one end of the device (left
hand side) and a second grasping portion (right hand side) at
the other end of the device. The first grasping portion is
defined between a U-shaped opening (56) in the first plate
(30) and a covering portion (21) of the second plate (20).

(Ans. 4.) The Examiner finds that the “U-shaped opening (56) is defined on
either side by a pair of elongated edge portions (50 and 60). Each end (58
and 68) of each edge portion (50 and 60) is capable of being inserted into a
tubular tissue” (id. at 4-5). The Examiner finds that “second grasping
portion is defined between a ‘recessed portion’, or curved cut-out (36), in the
first plate (30) and a corresponding curved portion (26) in the second plate
(20) that form a generally tubular tissue grasping space (44)” (id. at 5).
Appellants contend that:
Porat does not disclose or contemplate that the “portion
(60)” is “configured to be inserted into a tube of the tubular
tissue for grasping the tubular tissue,” as required by the
claimed “elongated edge portions.” According to Porat, the
portion (60) in the reference device is called a “catch arm,”
which has at least one catch member (62) arranged thereon
for engaging with a latching means (53), in order that the
device (“clamp (10)”) can pinch a tubing (90) about its
external circumferential surface.

(App. Br. 9.) Appellants assert “that it is not evident how the ‘catch arm
(60)’ in Porat’s clamp device would be ‘capable of’ inserting into a tubular
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tissue for grasping the tubular tissue, like the claimed ‘elongated edge
portion’” (App. Br. 9).
Appellants contend that “Porat teaches away from the claimed
invention. In this regard, Appellant asserts that one skilled in the art would
not be remotely motivated to modify Porat's pinch clamp for grasping a
tubular tissue by inserting a part thereof into the tubular tissue” (id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Porat anticipates claim 1?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Figure 2 of Porat is reproduced below:

“FIG. 2 illustrates, in perspective view, the structural characteristics of a
preferred embodiment” (Porat, col. 5, ll. 6-7).
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2. Porat teaches “the upper arm (20) and the lower arm (30)
optionally comprise suitable lateral extensions (120), (130) respectively,
which project laterally in the same direction and substantially to the same
extend to the said base (40) as said laterally projecting portion of clamping
abutments (124), (134)” (Porat, col. 8, ll. 37-42).
3. Porat teaches that “tube (90) may be accommodated in the slot
(56) as shown in FIG. 2, further ensuring that the clamp (10) remains on the
tubing (90) even when the clamp is in the unclamped configuration.
Optionally, and preferably, the lower longitudinal end (55) of said slot (56)
is substantially rounded” (Porat, col. 8, l. 65 to col. 9, l. 3).
4. The Examiner finds that “[e]ach end (58 and 68) of each edge
portion (50 and 60) is capable of being inserted into a tubular tissue” (Ans.
4-5).
5. Porat teaches that “free edges (26), (36) of said second
longitudinal ends (22) and (32), and a facing lateral edge (42) of said
resilient base (40) thus define a substantially longitudinal, laterally open
aperture (44) . . . for enabling a tube having a diameter within said
predetermined range of diameters to be accommodated therein” (Porat, col.
10, ll. 41-48).
6. Porat teaches that “lateral guard means (70) may comprise at
least one tab element (72) projecting from one said clamping abutment, (24)
or (34), in the general direction towards the facing clamping abutment”
(Porat, col. 9, ll. 36-39).

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7. Figures 7(A)-7(C) are reproduced below:

“FIG. 7 illustrates, in perspective view, the operation of the embodiment of
FIG. 2-FIG. 7(a)-clamp in the open configuration; FIG. 7(b)-clamp in the
closed configuration; FIG. 7(c)-clamp in the closed configuration” (Porat,
col. 5, ll. 21-24).
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8. The Specification teaches that the “opening 14 is a notch
portion of a U-shape or substantially a U-shape which is located in an end
portion of the first grasping plate” (Spec. 11 ¶ 0069).
9. The Specification teaches that “[e]nd portions of the edge
portion 16 which defines the shape of the opening 14 define upper edges of
the ‘u’ in the U-shape” (Spec. 11 ¶ 0069).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
“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.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on. ...
Whether the rejection is based on “inherency” under 35
U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).

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Analysis
We adopt the findings of fact and conclusions of the Examiner. There
is no dispute that Porat teaches a surgical holder comprising a grasping
member with opposing grasping plates, a U-shaped opening, to grasp tubular
tissue between the opposing plates (FF 1-3, 5-7).
Appellants contend that:
Porat does not disclose or contemplate that the “portion
(60)” is “configured to be inserted into a tube of the tubular
tissue for grasping the tubular tissue,” as required by the
claimed “elongated edge portions.” According to Porat, the
portion (60) in the reference device is called a “catch arm,”
which has at least one catch member (62) arranged thereon
for engaging with a latching means (53), in order that the
device (“clamp (10)”) can pinch a tubing (90) about its
external circumferential surface.

(App. Br. 9.)
We are not persuaded. The “configured to be inserted into a tube of
the tubular tissue for grasping the tubular tissue” may be reasonably
interpreted as an intended use type recitation, and therefore encompasses any
structure capable of performing that function. See In re Swinehart, 439 F.2d
210, 213, (CCPA 1971) (“‘Functional’ terminology may render a claim quite
broad . . .[;] a claim employing such language covers any and all
embodiments which perform the recited function.”); see also Schreiber, 128
F.3d at 1478-79 (prior art apparatus meeting all claimed structural
limitations found anticipatory because it was inherently capable of
functioning in accordance with claimed intended use).
Appellants assert “that it is not evident how the ‘catch arm (60)’ in
Porat’s clamp device would be ‘capable of’ inserting into a tubular tissue
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for grasping the tubular tissue, like the claimed ‘elongated edge portion’”
(App. Br. 9).
We are not persuaded. As the Examiner explains “each of the ends
(58 and 68) of the elongated edge portions (50 and 60) has the capability of
being inserted into a tubular tissue that has an appropriate diameter for
engagement by the elongated edge portion” (Ans. 9). Specifically, any tube
with a diameter larger than the “d5” diameter shown in figure 2 of Porat
would necessarily allow insertion of the edge elements 58 and 68 into the
tube, as well as impingement or grasping, when the device was appropriately
manipulated (see FF 2). Therefore, the Examiner has provided a reasonable
interpretation showing that Porat inherently teaches a structure which
satisfies the “configured to be inserted” element of claim 1, and Appellants
do not identify any claimed structural difference between their edges and
those of Porat. See In re Best, 562 F.2d at 1255 (“Where, as here, the
claimed and prior art products are identical or substantially identical . . . the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”)
Appellants have provided no evidence to satisfy this burden.
Appellants contend that “Porat teaches away from the claimed
invention. In this regard, Appellant asserts that one skilled in the art would
not be remotely motivated to modify Porat’s pinch clamp for grasping a
tubular tissue by inserting a part thereof into the tubular tissue” (App. Br. 9).
We do not find the teaching away argument persuasive. First,
arguments directed to teaching away are irrelevant to anticipation. See
Seachange Int’l, Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005).
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In addition, a teaching away requires a reference to actually criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”). Appellants do not identify, and
we do not find, any teaching in Porat which criticizes, discredits, or
otherwise discourages the grasping of tubular tissue by inserting a part into
the tubular tissue.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Porat
anticipates claim 1.
B. 35 U.S.C. § 103(a) over Porat and Mandel
The Examiner finds that “Mandel et al. disclose providing an
antimicrobial and/or antibiotic coating to the surfaces of various types of
surgical clips in order to prevent and kill microorganisms in the area of the
clip” (Ans. 8). The Examiner finds it obvious “to include a tissue protecting
coating containing antibiotic or anti-microbial medicines on the Porat
device, as taught by Mandel, in order to prevent growth and to kill
microorganisms in the area of the clip” (id.).
The Examiner provides sound fact-based reasoning for combining
Mandel with Porat. We adopt the fact finding and analysis of the Examiner
as our own. Appellants argue the merits of the anticipation rejection of claim
1, but Appellants do not identify any material defect in the Examiner's
reasoning for combining Mandel with Porat. Since Appellant only argues the
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rejection which we affirmed above, we affirm this rejection for the reasons
stated by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Porat. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we
also affirm the rejection of claims 5-7, 9, 10, 12-14, and 18-29 as these
claims were not argued separately.
We affirm the rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
obvious over Porat and Mandel.

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

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