Ex Parte Wright

Patent Trials and Appeals BoardApr 29, 2016

11237132 - (D) (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111237, 132 0912712005 59582 7590 05/02/2016 DICKINSON WRIGHT PLLC 2600 WEST BIG BEA VER ROAD SUITE 300 TROY, MI 48084-3312 FIRST NAMED INVENTOR David W. Wright 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. 35540-7 5314 EXAMINER OU, JING RU! ART UNIT PAPER NUMBER 3731 MAILDATE DELIVERY MODE 05/02/2016 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 DAVID W. WRIGHT Appeal2014-003837 Application 11/237,132 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 David W. Wright (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 102(b) claims 1, 3, 6-10, 13-15, 17-19, and 21 as anticipated by Berg (US 2002/0082627 Al; pub. June 27, 2002) and under 35 U.S.C. Â§ 103(a) claims 4, 5, 11, and 12 as unpatentable over Berg and Bolduc (US 6,962,596 B2; iss. Nov. 8, 2005). Claims 2, 16, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 The Examiner has withdrawn the rejection of claims 1, 3-15, 17-19, and 21 under 35 U.S.C. Â§ 112, second paragraph, for indefiniteness. See Ans. 2. Appeal2014-003837 Application 11/237,132 CLAIMED SUBJECT MATTER The claimed subject matter relates to "devices for surgically joining separate pieces of tissue to one another, and more particularly to surgically joining a tubular graft of tissue to a separate piece of tissue." Spec. para. 1; Figs. 1-3. Claims 1 and 18 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. An apparatus for securing a tubular duct having a wall to a vessel having a wall in a side by side configuration, comprising: a circumferentially continuous annulus formed in a plane, the annulus having a longitudinal axis extending along the plane and a perpendicular axis perpendicular to the plane; wherein the annulus has a bias imparted therein to provide said annulus with a biased first configuration and an unbiased second configuration; wherein the biased first configuration has opposite sides of the annulus across the longitudinal axis in close proximity to each other along the longitudinal axis to form an elongated, substantially closed slit and, wherein the unbiased second configuration has opposite sides of the annulus across the longitudinal axis spaced apart from each other; and wherein the annulus is automatically biased by the imparted bias therein to move from the biased first configuration toward the unbiased second configuration; a first set of fingers attached to and extending from the annulus in a first direction, the first set of fingers being biased by a bias imparted therein to automatically curl from a stressed first configuration toward a relaxed second configuration, the first set of fingers extending outwardly from the annulus in the direction of the perpendicular axis while in their first and second configurations; the first set of fingers being configured to penetrate and grasp the wall of either the tubular duct or vessel as they move from their biased first configuration toward their relaxed second configuration; and wherein the first set of fingers are configured in relatively planar fashion with one another along said perpendicular axis when in their biased first configuration and curl radially 2 Appeal2014-003837 Application 11/237,132 outwardly from said perpendicular axis automatically under the bias imparted in said first set of fingers toward their relaxed second configuration. ANALYSIS Anticipation by Berg- Claims 1, 3, 6-10, 13-15, 17-19, and 21 Independent claim 1 calls for, in relevant part, "wherein the biased first configuration [of the annulus] has opposite sides of the annulus across the longitudinal axis in close proximity to each other along the longitudinal axis to form an elongated, substantially closed slit." Appeal Br. Exh. A, Claims App. 12 (italics added). Independent claim 18 recites similar claim language to "an elongated, substantially closed slit." Appeal Br. Exh. A, Claims App. 4. The Examiner finds that Berg teaches the limitations of claim 1 including the aforementioned elongated, substantially closed slit. See Final Act. 4. Specifically, the Examiner states: As disclosed in paragraph [58] of Berg, "flexibility of medial portion 16 mav allow a connector or plu~ to be resilientlv circumferentially compressed to a relatively small size to facilitate delivery of the connector or plug to an installation site." Therefore, the slit/central opening of the medial portion 16 in the compressed configuration (first configuration) would be considered to be a substantially closed slit. Ans. 4; see also id. at 5. Appellant contends: Berg does teach that, "flexibility of medial portion 16 may allow a connector or plug to be resiliently circumferentially compressed to a relatively small size to facilitate delivery of the connector or plug to an installation sight (e.g., delivery through 2 The Claims Appendix does not include page numbers. Accordingly, page numbers have been assigned based on their numerical order following the Claims Appendix cover sheet entitled "EXHIBIT A." 3 Appeal2014-003837 Application 11/237,132 the lumen of a patient's body conduit)" (paragraph [58]). This said, [A ]ppellant contends that circumferentially compressing the medial portion 16 does not result in an elongated, substantially closed slit, as claimed. Rather, circumferential compression results in a relatively large diameter hoop being circumferentially compressed to a relatively small diameter hoop, which does not form an elongated, substantially closed slit, as shown for example in Figure 3 (1st Configuration) [] of [A ]ppellant' s application. Reply Br. 3; see also Appeal Br. 7. Appellant's argument is persuasive. As noted by both the Examiner and Appellant, paragraph 58 of Berg states that "flexibility of medial portion 16 may allow a connector or plug to be resiliently circumferentially compressed to a relatively small size to facilitate delivery of the connector or plug to an installation sight." However, in this case, the Examiner fails to establish by sufficient evidence or technical reasoning that circumferential compression of medial portion 16 of Berg necessarily results in formation of an elongated, substantially closed slit as claimed. Ans. 4; see also id. at 5; Reply Br. 3; Appeal Br. 7. As such, the Examiner fails to establish by a preponderance of the evidence that Berg anticipates the apparatus of independent claims 1 and 18. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of independent claims 1 and 18 and their respective dependent claims 3, 6-10, 13-15, 17, 19, and 21 as anticipated by Berg. Obviousness over Berg and Bolduc - Claims 4, 5, 11, and 12 The Examiner's rejection of claims 4, 5, 11, and 12 as unpatentable over Berg and Bolduc is based on the same unsupported findings discussed above with respect to independent claim 1. See Final Act. 7-8. The 4 Appeal2014-003837 Application 11/237,132 Examiner does not rely on Bolduc to remedy the deficiency of Berg. Accordingly, for similar reasons, we do not sustain the Examiner's rejection of claims 4, 5, 11, and 12 as unpatentable over Berg and Bolduc. DECISION We REVERSE the decision of the Examiner to reject claims 1, 3-15, 17-19, and 21. REVERSED 5