Amr Salahieh et al.

Patent Trials and Appeals Board

Sep 5, 2019

13612119 - (D) (P.T.A.B. Sep. 5, 2019)

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.
13/612,119 09/12/2012 Amr Salahieh 1001.2626102 5602
11050 7590 09/05/2019
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
EXAMINER
COLELLO, ERIN L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMR SALAHIEH, ULRICH R. HAUG, CLAUDIO ARGENTO,
DWIGHT MOREJOHN, DANIEL HILDEBRAND, and TOM SAUL
____________

Appeal 2019-000026
Application 13/612,119
Technology Center 3700
_______________

Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 23–25, 27–29, and 31–35.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Boston Scientific Scimend, Inc. is identified as the real party in interest.
Appeal Br. 4.
2 Appeal is taken from the Final Office Action dated November 24, 2017, as
supplemented by the Advisory Action dated March 8, 2018.
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CLAIMED SUBJECT MATTER
Claims 23 and 32 are the independent claims on appeal. Claim 23,
reproduced below, is exemplary of the subject matter on appeal, with
disputed limitations italicized for emphasis.
23. An implant system, comprising:
a releasable implant adapted for endovascular delivery and
deployment, the implant having a plurality of actuation element
interface sites disposed circumferentially about the implant at a
common axial position along a longitudinal axis of the implant;
wherein the implant includes, for each actuation element
interface site, a distal male locking element and proximal female
locking element;
an elongated deployment tool body having a lumen
extending therethrough;
an outer sheath, the deployment tool body disposed within
the outer sheath and the implant disposed within the outer sheath
distal of the deployment tool body in a pre-deployment state;
an actuation controller disposed at a proximal end of the
deployment tool body and proximal of the outer sheath; and
a plurality of actuation elements extending from the
implant toward a distal end of the deployment tool body each
actuation element detachably coupled directly to one distal male
locking element;
wherein the plurality of actuation elements merge into a
single unit near the distal end of the deployment tool body, the
single unit being slidably disposed within the lumen of the
deployment tool body, a proximal end of the single unit being
coupled to the actuation controller;
wherein the implant is actuated from the pre-deployment
state to a transitional deployed state by advancing the implant
distally relative to the outer sheath until the implant is disposed
outside of the outer sheath;
wherein operating the actuation controller to effect
proximal translation of the single unit actuates the implant from
the transitional deployed state to a final deployment state.

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THE REJECTIONS3
I. Claims 23, 27–29, and 31–35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Salahieh (US 2005/0143809 A1; published
June 30, 2005) and Partosh4 (RU 2 149 037 C1; published May 20, 2000).
II. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Salahieh, Partosh, and Vanney (US 5,807,405; issued
Sept. 15, 1998).
III. Claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Salahieh, Partosh, and Derus (US 2003/0225445 A1;
published Dec. 4, 2003).

ANALYSIS
Rejection I
Appellants present the same arguments for independent claims 23
and 32, and do not present separate arguments for the patentability of
dependent claims 27–29, 31, and 32–35. Appeal Br. 18–20. Thus, we select
claim 23 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Regarding independent claim 23, the Examiner finds, inter alia, that
Salahieh discloses a releasable implant (i.e., anchor 30) having actuation
element interface sites (i.e., anchor attachment elements 32, 34) each with a
distal male locking element (i.e., post 32) and a proximal female locking
element (i.e., buckle 34), as claimed. Final Act. 8 (citing, e.g., Salahieh ¶¶

3 The Examiner’s rejection of claims 23, 27–29, and 31–35 under 35 U.S.C.
§ 102(b) as anticipated by Salahieh (US 2005/0143809 A1; published June
30, 2005) has been withdrawn. Final Act. 2–3; Ans. 2–3.
4 We rely on the English language translation as provided in the record.
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72–74, 76, 86, 92–97, Figs. 1A, 1B, 3A–E). The Examiner also finds that
Salahieh discloses an elongated deployment tool body having a lumen (i.e.,
delivery system 100, multi-lumen shaft or catheter 108, central lumen 109)
and an outer sheath (i.e., external sheath 110), and an actuation controller
(i.e., control handle 120), as claimed. Id. (citing Salahieh, Figs. 1A, 3A); see
also Salahieh ¶ 71. The Examiner further finds that Salahieh discloses
actuation elements (i.e., actuators 106[a], 106b, 112), as claimed. Id. at 8–9
(citing, e.g., Salahieh ¶¶ 72–74, 76–78, 83 86, 89, 92–97, 99–101, Figs. 1A–
F, 2A–F, 3C, 3D).
The Examiner relies on Partosh for teaching that “it is well known in
the art” for an implant deployment device to include actuation elements
detachably coupled to actuation element interface cites, wherein the
actuation elements merge into a single unit near the end of a deployment tool
body to allow the single unit to be slidably disposed within a lumen of the
deployment tool body to allow the elements to be actuated simultaneously.
Final Act. 9–10 (citing, e.g., Partosh, Figs. 1–4) (emphasis added); see also
Partosh ¶ 16. The Examiner specifically finds that Partosh’s “hooks [4]
merge into string [3]” to form a single unit, as claimed (Adv. Act. 2), and
that Partosh’s single unit (i.e., string 3, hooks 4) “can move relative to
catheter Ref 1” (Ans. 4), as claimed.5 See also Adv. Act. 2 (finding that
Partosh discloses “relative motion between the string/hooks and the
catheter” (emphasis added)); Partosh ¶¶ 11, 16, Figs. 2–4.
The Examiner reasons that it would have been obvious to modify
Salahieh’s actuation elements to merge into a single unit, as suggested by

5 Cf., e.g., Final Act. 10 (apparently relying on relative movement between
hooks 4 and string 3, and capillary 5, which is not supported by a
preponderance of the evidence); see also Appeal Br. 19; Reply Br. 5–7.
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Partosh, because the modification “allows the plurality of actuation elements
of Salahieh to be combined such that a single element passes through a
lumen of [the] device, while enabling the plurality of actuation elements to
be actuated simultaneously.” Final Act. 10.
Appellants argue that Partosh teaches that “a single string 3, having
two or more hooks 4, is disposed within and stationary relative to a
capillary 5” and that Partosh does not appear to disclose that “the use of
string 3, a single unit, is slideably disposed within the lumen of capillary 5.”
Appeal Br. 19; Reply Br. 5–6, 8. However, Appellants’ arguments fail to
address the Examiner’s finding supra that Partosh’s single unit (i.e., string 3,
hooks 4) moves relative to either main or additional catheters 1, 2.
Notably, the Specification discloses that
[t]o at least partially compensate for differences in path length
from the interface sites to the actuator, the actuation elements are
disposed along a single actuation element path, such as by
placing all actuation elements within a single lumen 506. The
actuation elements may also be bundled together, either into a
single line 310 such as a cable, or bundled to move together as a
single unit in a harness so that the actuation elements reduce to a
single primary actuation element extending to the proximal end
to be linked to a single actuator 204. . . . Instead of being
intertwined, the individual elements are laid side by side with a
minimal amount of twining or braiding. Then at the actuation
controller, each actuation element 308a–n is separated out and
linked to an individual actuator 204a-n. In this manner it is
possible to construct the same relationship of actuators 204 and
actuation elements 308 and actuation element interface sites 408
without having to construct numerous additional paths.
Spec. 19:12–21; see also Appeal Br. 7 (Summary of Claimed Subject
matter) (referencing Spec. 19:15–21, 26:2–5, Fig. 6B (reference
numeral 310) for disclosing that the actuation elements “merge into a single
unit”).
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A preponderance of the evidence supports the Examiner’s finding that
Partosh discloses that it is known to arrange actuation elements, and in
particular, hooks 4 of string 3, such that hooks 4 merge into a single unit: (i)
hooks 4 are depicted in Figures 2 to 4 of Partosh as bundled together into
string 3; and alternatively, (ii) hooks 4 and string 3 are depicted in Figures 2
to 4 of Partosh as disposed within a harness (i.e., capillary catheter 5); such
that, in either case, hooks 4 move together as a single unit within catheter 2.
Partosh ¶ 11 (identifying “main catheter 1” and “additional catheter 2”); ¶ 14
(“string 3 is placed into the capillary catheter 5 [and] is provided with four
hooks placed at its corresponding end, and placed in front of a
supplementary catheter 2”), ¶ 17 (with reference to Figure 4, “[r]emoving
the hook from 4 mesh prosthesis 6 is carried out breeding strings 3 of
[additional] catheter 2 further forward”), Figs. 2–4. Figure 4 of Partosh is
reproduced below.

Figure 4 of Partosh depicts “a device for delivery of a mesh prosthesis (in
cross section) at the time when the mesh prosthesis is disconnected from the
hooks of the string”), wherein an arrow identifies relative movement
between additional catheter 2 (i.e., an alongated deployment tool body
having a lumen) and actuation elements (i.e., hooks 4), which are bundled
and/or harnessed as string 3 within capillary catheter 5 into a single unit.
Partosh ¶ 10. In other words, the single unit (i.e., comprised of hooks, string
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3, and capillary catheter 5) moves relative to both main and additional
catheters 1, 2.
Appellants also argue that Partosh discloses “releas[ing] hooks 4 by
advancing capillary 5, string 3, and hooks 4 distally beyond the distal end of
catheter 2, as indicated by an arrow in Fig. 4, rather than retracting
activation elements as taught by Salahieh,” and therefore, “[i]n the absence
of a common mode of action, there is no reasonable expectation of success
in the combination.” Appeal Br. 19; see Reply Br. 7–10. Appellants submit
that “Partosh does not appear to make any presentation that hooks 4 release
simultaneously.” Appeal Br. 19. Appellants further submit that “[t]he
Examiner clearly errs in asserting that the withdrawal of an actuation
element (3, 4, 5) of Partosh, when substituted into the delivery system of
Salahieh, would function to release the prosthesis, a function contrary to the
teaching of Partosh.” Reply Br. 9.
The Examiner relies on Salahieh for disclosing a plurality of actuation
elements, namely, actuators 106b, and indeed, Salahieh discloses at least
“distal anchor actuation elements” (i.e., actuators 106b releasably coupled to
a distal region of anchor 30), as relied on by the Examiner—in addition to
proximal anchor actuation elements (i.e., actuators 106a) and release
actuators 112. Salahieh ¶¶ 72, 73, Fig. 1A. Salahieh discloses that
“actuators 106b may include control wires (e.g., st[r]ands of suture, or metal
or polymer wires) which pass through one or more lumen Lu of shaft 108.”
Id. ¶ 73 (emphasis added). Salahieh further discloses that “[c]ontrol handle
120 is coupled to a multi-lumen shaft 108” and “comprises knob 126, e.g.,
manipulating the actuators 106b to control movement of the distal region of
apparatus 10 relative to its proximal region,” wherein “[k]nob 126 optionally
may move actuators 106b in unison with their concomitant release actuators
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112.” Id. ¶ 74 (emphasis added). Thus, in view of Partosh’s teaching of
bundling individual actuators in a single unit for common actuation, we are
not persuaded by Appellants’ argument that due to a different “mode of
action,” bundling Salahieh’s actuators 106b with one lumen for actuation in
unison lacks a reasonable expectation of success.
To the extent Appellants are interpreting the Examiner’s proposed
modification as requiring a substitution of Partosh’s string 3, hooks 4, and
capillary 5 into the device of Salahieh, Appellants are not addressing the
Examiner’s rejection as articulated supra. The Examiner is proposing to
modify Salahieh’s device to merge actuation elements that are actuated in
unison into a single element to allow actuation simultaneously. In other
words, the Examiner is not bodily incorporating Partosh’s actuation
elements into the device of Salahieh.
Appellants further argue that “Salahieh does not disclose a deficiency
with regard to simultaneous actuation of the actuators 106b” and thus, “the
Examiner’s proposed combination . . . appears to be directed toward solving
a problem which has not been shown to exist in Salahieh alone.” Appeal
Br. 20. Appellants conclude that “there is no established motivation for the
proposed combination other than to replicate Appellants’ invention in
hindsight.” Id.
We are not persuaded by Appellants’ argument, in that, as set forth
supra, Salahieh discloses the desirability to operate at least actuators 106b in
unison. Further, the Examiner relies on Partosh for disclosing merging
actuators into a single unit for common actuation. In other words,
Appellants’ hindsight argument is of no moment where, as here, the
Examiner provided a sufficient, non-hindsight reason to combine the
references. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).
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Accordingly, we sustain the Examiner’s rejection of independent
claim 23, and claims 27–29 and 31–35 fall therewith.
Rejection II
Regarding dependent claim 24, Appellants argue that the Examiner’s
reliance on Vanney for teaching a single unit activation element comprising
a plurality of actuation elements harnessed together side-by-side does not
overcome the deficiencies in the Examiner’s reliance on Salahieh and
Partosh, as argued with respect to independent claim 23 in Rejection I supra.
Appeal Br. 20–21. Because we do not agree that the Examiner erred in the
rejection of claim 23 supra, for essentially the same reasons as stated supra,
we sustain the Examiner’s rejection of claim 24.
Rejection III
Regarding dependent claim 25, which depends from independent
claim 23 and recites, in relevant part, “wherein the single unit comprises the
plurality of actuation elements intertwined together,” the Examiner finds that
although Salahieh, as modified by Partosh, discloses actuation elements
merging into a single unit, neither reference discloses actuation elements
intertwined together, as claimed. Final Act. 14; Appeal Br. 25 (Claims
App.). The Examiner relies on Derus for disclosing that “the plurality of
actuation elements connect closely and can cross over one another as they
pass proximally and therefore, given the broadest reasonable interpretation
of ‘intertwine’ to mean close together, link closely or connect,” the
Examiner interprets such a configuration as meeting the limitation of claim
24. Ans. 6; see also Final Act. 14 (citing Derus, Figs. 2, 3, 5 (reference
numerals 52, 412). The Examiner reasons that it would have been obvious
to modify a Salahieh’s single unit, as suggested by Partosh, such that the
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actuation elements are intertwined together, as taught by Derus, “since such
a modification provides an art recognized alternate construction that would
have yielded predictable results, namely, allowing the actuation elements to
be actuated simultaneously.” Final Act. 14.
Appellants argue that the Examiner’s finding is speculative. Appeal
Br. 21. In support, Appellants submit that Figures 2 and 3 of Derus depict
“a single thread 52 . . . looped through a proximal end of a stent 46 and
pass[ing] proximally through a straight transfer region 38.” Id. Appellants
conclude that “[t]here is no disclosure that the thread 52 is ‘intertwined’ with
itself and no suggestion that the thread of Derus would benefit from being
twisted about itself,” nor does Derus, which exhibits a straight lumen,
“suggest to one of ordinary skilled in the art that the asserted combination
with Salahieh would be beneficial in addressing the technical problem
addressed by the instant invention.” Id. at 22. Appellants submit that the
Examiner’s interpretation of the claim term “intertwined” is “overly broad”
and effectively reads the claim term out of the claim. Reply Br. 10.
An ordinary meaning of the claim term “intertwined,” consistent with
the Specification, is “to unite by twining one with another” (https://merriam-
webster.com/dictionary/intertwined (last visited Aug. 19, 2019)), wherein
“twining” means “a strong string of two or more strands twisted together”
(https://merriam-webster.com/dictionary/twining (last visited Aug. 19,
2019)). Derus discloses that “[s]tent 40 is preferably provided with at least
one transfer mechanism, such as one or more threads or sutures 52 . . . for
facilitating the transfer of the stent 46 from the storage area 34 to the transfer
area 38.” Derus ¶ 33. Derus further discloses that “additional threads 52
can be similarly attached [(i.e., inserted through a hole or opening in one
side of the stent 46)] at various points around the stent, if desired, to better
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distribute the forces that will be imparted to the stent when it is pulled,” and
that “[i]n a configuration of this type, the threads 52 may cross over each
other in the center area of the stent.” Id. at ¶ 34. Thus, a preponderance of
the evidence supports the Examiner’s finding that Derus discloses a plurality
of actuation elements (i.e., threads 52) that cross-over or are twisted together
to be intertwined, as claimed. Appellants’ argument also does not apprise us
of error in the Examiner’s reasoning that when operating Salahieh’s
actuators 106b in unison, which are merged into a single unit, as taught in
Partosh, intertwining actuators 106b (which may be sutures) would further
ensure that the actuators 106b are actuated simultaneously.
Accordingly, we sustain the Examiner’s rejection of claim 25.

DECISION
The Examiner’s decision rejecting claims 23–25, 27–29, and 31–35 is
AFFIRMED.
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