Ex Parte Weitzner

Patent Trial and Appeal Board

Nov 29, 2016

12334713 (P.T.A.B. Nov. 29, 2016)

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.
10121/14601 8765
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/334,713 12/15/2008
30636 7590 11/29/2016
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
Barry WEITZNER
11/29/2016 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 BARRY WEITZNER
Appeal 2014-010006
Application 12/334,713
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Barry Weitzner (“Appellant”) seeks review under 35 U.S.C. § 134(a)
of the Examiner’s decision, as set forth in the Final Office Action dated
March 13, 2014 (“Final Act.”), and as further explained in the Advisory
Action, dated May 2, 2014 (“Adv. Act.”), rejecting claims 1, 3—11, and 13—
19.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Boston Scientific Scimed, Inc. as the real party
in interest. Br. 2.
Appeal 2014-010006
Application 12/334,713
BACKGROUND
The disclosed subject matter “relates to systems and method for the
sealing of a blood vessel, duct, etc.” Spec. 14,11. 6—7. Claim 1, the sole
independent claim, is reproduced below, with emphasis added:
1. A clip for compressing tissue, comprising:
first and second legs, each extending from a
free distal end to a proximal end; and
a joint coupled between proximal ends of the
first and second legs and biasing the first and second
legs into one of a closed configuration in which the
first and second legs are separated from one another
by a selected clipping distance and an open
configuration in which the first and second legs are
separated from one another by a tissue receiving
distance greater than the clipping distance, the joint
connected to a connection point on each of the first
and second legs, the connection point on each of the
first and second legs being located at a position such
that each leg extends inwardly from the connection
point towards an interior of the clip and terminates
at a point on the leg indirectly connected to the joint,
the first and second legs being shaped so that, when
in the closed configuration with no tissue received
therebetween, the first and second legs have a
bearing surface extending substantially an entire
length of the clip, a distance between the first and
second legs is substantially constant from the joint
to the distal ends of the first and second legs, and
the free distal end of each of the first and second
legs is unconnected to one another.
2
Appeal 2014-010006
Application 12/334,713
REJECTIONS
1. Claims 1, 6, 7, and 17—19 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bendel (US 4,449,530, issued May 22, 1984).
2. Claims 3—5, 8—11, and 13—16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bendel and Reynolds (US 6,015,417, issued
Jan. 18, 2000).
DISCUSSION
Rejection 1 — The rejection of claims 1, 6, 7,
and 17—19 under 35 U.S.C. § 102(b)
Appellant argues independent claim 1, and does not separately argue
claims 6, 7, and 17—19, which depend from claim 1. Br. 8. Thus, we
address only claim 1, with claims 6, 7, and 17—19 standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). Claim 1 recites a clip,
having first and second legs, in which “the first and second legs have a
bearing surface extending substantially an entire length of the clip.” Br. 11
(Claims App.).2 The Examiner found that Bendel discloses the recited “first
and second legs,” and found that “the first and second legs have a bearing
surface (the surfaces that bear down on tissue) extending substantially an
entire length of the clip (for example, see Figure 5(d)).”3 Final Act. 2.
2 We will refer to this as the “limitation at issue.”
3 Although the Examiner identifies leg members 11 and 12 as the
“first and second legs” (Final Act. 2; see also Bendel, Figs. 1, 3), in light of
the citation to Figure 5d, we understand this finding as relying on Figure
5d—showing a portion of leg members 35 and 36 contacting vessel 31—as
one demonstration of the recited “bearing surface.” This is further supported
by the additional reliance on Figure 3 (which includes leg members 11 and
12) as showing a “bearing surface [that] extends substantially an entire
length of the clip.” Final Act. 5 (citing “Figures 3 and 5”).
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Appeal 2014-010006
Application 12/334,713
First, Appellant argues that “Bendel does not describe or suggest a
bearing surface length” or “that the bearing surface extends substantially an
entire length of the clip.” Br. 4. Appellant notes that Bendel does not
indicate that its figures are to scale and argues, quoting section 2125 of the
MPEP, that “[w]hen the reference does not disclose that the drawings are to
scale and is silent as to dimensions, arguments based on measurement of the
drawing features are of little value.” Id. at 8 (citing Hockerson-Halberstadt,
Inc. v. Avia Grp. Inti, 222 F.3d 951, 956 (Fed. Cir. 2000)).
Although Appellant is correct that Bendel does not indicate that its
figures are to scale and does not disclose specific numerical values for (1)
the length (Y) of thinned portion 13 (see Fig. 1), (2) the lengths of the
bearing surfaces of the leg members, or (3) the overall length of the clip, for
the reasons discussed below, we are not apprised of error in the Examiner’s
reliance on Figures 3 and 5 of Bendel to address the limitation at issue. See
Final Act. 2, 5.
Although patent drawings not designated as drawn to scale should not
be relied on for measurements or to define precise proportions of depicted
elements if the specification is silent on the issue (see Hockerson, 222 F.3d
at 956), that does not mean “that things patent drawings show clearly are to
be disregarded.'''’ In reMraz, 455 F.2d 1069, 1072 (CCPA 1972). Here, we
are not apprised of error in the Examiner’s finding that Figures 3 and 5 of
Bendel disclose legs with bearing surfaces “extending substantially an entire
length of the clip” because figures alone can be relied on for what they
disclose with sufficient particularity to one of ordinary skill in the art. See
Mraz, 455 F.2d at 1072; see also In re Aslanian, 590 F.2d 911, 914 (CCPA
1979) (“[A] drawing in a utility patent can be cited against the claims of a
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Appeal 2014-010006
Application 12/334,713
utility patent application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference patent.”).
For example, we agree that Figure 5 discloses with sufficient
particularity to one of ordinary skill in the art that the identified bearing
surfaces extend substantially the entire length of the clip—i.e., that “the
surfaces that bear down on tissue” (Final Act. 2) extend substantially from
apex 32 to distal ends 33, 34. See Bendel, Fig. 5; id., col. 3,11. 18—29
(stating that, in Figure 5a, “the clip 30 is placed about a blood vessel 31 with
the vessel as close to the apex 32 of the clip as possible” and that Figures
5b—5d show the clip closing such that “the distal ends 33 and 34 of the leg
members 35 and 36 start to close to entrap the vessel 31”).
Second, Appellant contends that “those skilled in the art would
conclude that [the bearing surface length in Bendel] does not extend
substantially an entire length of the clip because the clip 10 of Bendel
includes a thinned portion 15 which apparently coincides with the portion of
the clip that does not include a bearing surface.” Br. 4—5. According to
Appellant, “[t]he pinching motion that the clip 10 of Bendel must utilize to
close the legs requires that the thinned portion 15 extends a significant
distance from the end of the clip 10” to provide “the desired result shown in
Fig. 3.” Id. at 5. In addition, Appellant notes that Bendel discloses a
variable (Y) for the length of the thinned portion of each leg, and argues that
“this variable (although not indicative of an actual distance) indicates that
this corresponds to a measurable, significant distance from the hinged
portion 13.” Id. at 5—6. Appellant also argues that the manufacturing
method of Bendel suggests that the bearing surface does not extend the
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Appeal 2014-010006
Application 12/334,713
entire or a substantial length of the clip because “the cutting performed to
create the hinged area will always decrease the bearing surface length.” Id.
These arguments are not persuasive of error. Here, Appellant does
not provide evidence to support the asserted views of one of ordinary skill in
the art at the time of the invention. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”). Moreover, even assuming that one of skill in the art would have
understood that the length (Y) of thinned portion 13 must span a “significant
distance” from the hinge portion, Appellant does not explain why that
necessarily precludes the identified bearing surfaces from “extending
substantially an entire length of the clip,” as required by claim 1. Further, as
to the argument that “the cutting performed to create the hinged area will
always decrease the bearing surface length,” Appellant does not explain why
the bearing surface length would necessarily be decreased by an amount
such that it would not “extend substantially an entire length of the clip.”
Third, Appellant contends that the thinned portion of the clip should
not be considered part of the “bearing surface” because “the thinned portion
of Bendel provides a very specific functionality, none of which includes or is
suggestive of being a bearing surface and providing a similar functionality.”
Br. 6, 7. This argument does not apprise us of error because Bendel satisfies
the limitation at issue without relying on the thinned portion of the clip as
part of the identified bearing surface. See, e.g., Final Act. 2 (identifying the
“bearing surface” in Figure 5d as “the surfaces that bear down on tissue”).
For these reasons, we sustain the rejection of independent claim 1 as
anticipated by Bendel. Claims 6, 7, and 17—19 fall with claim 1.
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Appeal 2014-010006
Application 12/334,713
Rejection 2 — The rejection of claim 3—5, 8—11,
and 13—16 under 35 U.S.C. § 103(a)
Appellant argues claims 3—5, 8—11, and 13—16 are patentable because
“Reynolds does not disclose or suggest. . . whether the length of the bearing
surface extends substantially an entire length of the clip” and “Bendel and
Reynolds, taken alone or in combination, do not disclose or suggest the
above recitation of claim 1,” from which claims 3—5, 8—11, and 13—16
depend. Br. 8—9. Because we are not apprised of error in the finding that
Bendel discloses the feature identified by Appellant (see supra Rejection 1),
we also sustain the rejection of claims 3—5, 8—11, and 13—16.
DECISION
We AFFIRM the decision to reject claims 1, 6, 7, and 17—19 under
35 U.S.C. § 102(b), and AFFIRM the decision to reject claims 3—5, 8—11,
and 13-16 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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