2020006473 (P.T.A.B. Jun. 30, 2021)

Acclarent, Inc.

Patent Trials and Appeals BoardJun 30, 2021

2020006473 (P.T.A.B. Jun. 30, 2021)

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. 15/373,649 12/09/2016 Sivette Lam ACC5056USDIV1.0642957 4459 110990 7590 06/30/2021 Acclarent, Inc. c/o Frost Brown Todd LLC 3300 Great American Tower 301 East Fourth Street Cincinnati, OH 45202 EXAMINER ROSEN, ERIC J ART UNIT PAPER NUMBER 3700 NOTIFICATION DATE DELIVERY MODE 06/30/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): jdewar@fbtlaw.com patents@fbtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIVETTE LAM, LAWRENCE D. WASICEK, KETAN P. MUNI, SHOW-MEAN WU, ANDY NGUYEN, NICHOLAS E. SHERMAN, and RANDY S. CHAN Appeal 2020-006473 Application 15/373,649 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21, 22, 24, 41, 42, 44, 57, and 58. Claims 45–47, 50, 51, 53–55, and 61 are allowed, and claims 25 and 59 are objected to as allowable, but being dependent on a rejected base claim. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Acclarent, Inc. Appeal Br. 3. Appeal 2020-006473 Application 15/373,649 2 Claim 60 was canceled prior to the appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to apparatus and method for puncturing a balloon in an airway dilation shaft. Claim 21, the sole rejected independent claim and reproduced below, is illustrative of the claimed subject matter: 21. A method of treating and dilating an airway stenosis or other anatomical passageway, the method comprising: (a) introducing a dilation catheter through an opening in a patient’s body while a dilator of the dilation catheter is in an unexpanded configuration; (b) advancing a shaft of the dilation catheter into an airway of the patient’s body until reaching a stenotic region; (c) inflating the dilator with fluid to an expanded configuration to thereby dilate the stenotic region; (d) extending a puncture assembly outwardly from a lumen positioned on or within the dilation catheter; (e) puncturing the dilator with the puncture assembly when the dilator is disposed within the stenotic region; (f) deflating the dilator to the unexpanded configuration by draining the fluid contained in the dilator to reduce fluid pressure in the dilator; (g) contracting the puncture assembly inwardly into the lumen; and (h) retracting the shaft of the dilation catheter from the airway and removing the dilation catheter from the patient’s body. Appeal 2020-006473 Application 15/373,649 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Penar US 3,985,139 Oct. 12, 1976 Mobley US 4,043,346 Aug. 23, 1977 Bern US 7,708,687 B2 May 4, 2010 Chang US 7,803,150 B2 Sept. 28, 2010 Muni US 2010/0168511 A1 July 1, 2010 REJECTIONS Claims 21, 24, and 58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chang, Bern, and Mobley. Final Act. 3. Claims 21 and 57 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Muni, Chang, Bern, and Mobley. Final Act. 4. Claims 22, 41, 42, and 44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chang, Bern, Mobley, and Penar. Final Act. 6. OPINION Chang/Bern/Mobley Appellant presents essentially two arguments against the Examiner’s combination of Chang, Bern, and Mobley. First, Appellant asserts that Bern fails to teach puncturing the dilator “when the dilator is disposed within the stenotic region.” See Appeal Br. 11. Second, Appellant asserts that there is no motivation for combining Bern and Mobley with Chang because Chang is intended to be moved along to various locations and puncturing the balloon/dilator would prevent reinflation, thus the combination “would render Chang unsatisfactory for its intended purpose.” Id. at 13. As to Appellant’s first argument, the Examiner does not use Mobley or Bern for the specific location where puncturing and deflation occurs. As Appeal 2020-006473 Application 15/373,649 4 the Examiner points out, Chang is used to teach deflation of the dilator when it is disposed within the stenotic region as claimed. Accordingly, Appellant’s arguments are not directed to the rejection at issue. As to the second issue, although we agree that the Examiner’s combination would render Chang’s device unsuitable for further use, this does not defeat the purpose of Chang’s invention. As the Examiner correctly points out, Chang only states that it “may” be used for dilation at additional locations. Ans. 7. Further, the Examiner is also correct that “Mobley teaches puncturing balloons in order to deflate balloons that cannot be deflated.” Id. (citing Mobley col. 1, ll. 30–33). One of skill in the art would understand that even in Chang, if the dilator were to be stuck or the balloon could not otherwise be deflated in a normal fashion, puncturing would be a desirable method of deflating the dilator to allow removal. Chang could still be used as intended and only deploy the puncturing of Mobley when problems are encountered. Accordingly, we do not find this argument persuasive. Muni/Chang/Bern/Mobley Appellant essentially repeats the same argument as above for the rejection with the additional inclusion of Muni. The rejections are similar, but Muni fails to teach deflation at the claimed location, so the Examiner adds Chang for the same reasons as the first rejection. The Examiner has stated a reasonable basis with rational underpinnings for combining Muni with Chang. Final Act. 6. We do not find the arguments regarding location nor motivation persuasive for the same reasons as stated above. Chang/Bern/Mobley/Penar The Examiner rejects the remaining dependent claims over the combination of Chang, Bern, and Mobley with the addition of Penar for Appeal 2020-006473 Application 15/373,649 5 certain limitations contained within those dependent claims. Appellant makes no specific arguments as to these dependent claims and relies solely on their dependence from claim 21 for allowability. Having found those arguments unpersuasive, we affirm the Examiner’s rejection of the claims over Chang, Bern, Mobley, and Penar. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 24, 58 103 Chang, Bern, Mobley 21, 24, 58 21, 57 103 Muni, Chang, Bern, Mobley 21, 57 22, 41, 42, 44 103 Chang, Bern, Mobley, Penar 22, 41, 42, 44 Overall Outcome 21, 22, 24, 41, 42, 44, 57, 58 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED