AtriCure, Inc.

Patent Trials and Appeals Board

Mar 24, 2022

2021002595 (P.T.A.B. Mar. 24, 2022)

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. 15/874,257 01/18/2018 James David Hughett SR. ATR04-MN359 6932 146902 7590 03/24/2022 Dorton & Willis LLP 9545 Kenwood Road Suite 202 Cincinnati, OH 45242 EXAMINER DAVID, SHAUN L ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 03/24/2022 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): mblades@dortonwillis.com uspto@dortonwillis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES DAVID HUGHETT SR., SALVATORE PRIVITERA, and MICHAEL D. HOOVEN Appeal 2021-002595 Application 15/874,257 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, SHEILA F. McSHANE, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 27-31, 36, and 39. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies “AtriCure, Inc. [a]s the real party in interest by way of an assignment from the three named inventors of the instant application, Mr. James David Hughett, Sr., Mr. Salvatore Privitera, and Mr. Michael Hooven.” Appeal Br. 4. Appeal 2021-002595 Application 15/874,257 2 STATEMENT OF THE CASE Subject Matter on Appeal The Appellant’s invention “generally presents apparatus[es] and methods for use in clamping tissue or occluding anatomical structures.” Spec. ¶ 4. Claims 27, 36, and 39 are the independent claims on appeal. Claim 27, reproduced below, is illustrative of the claimed subject matter. 27. An apparatus for occluding an anatomical structure comprising: a first beam having first and second ends, where at least a portion of the beam is axially and longitudinally hollowed to receive a line; a second beam having first and second ends, where at least a portion of the beam is hollowed to receive the line; and, the line operatively coupling the first beam to the second beam, the line extending through a hollowed portion of the second beam and extending through a longitudinal hollow and an axial hollow of the first beam, the line configured to be repositionable with respect to at least one of the first beam and the second beam to cause the first and second beams to approach one another. Appeal Br. 54, Claims App. References The prior art relied upon by the Examiner is: Name Reference Date Stewart et al. (“Stewart”) US 2006/0020271 A1 Jan. 26, 2006 Chin et al. (“Chin”) US 2008/0039879 A1 Feb. 14, 2008 Rejections To facilitate our analysis, we set forth the rejections in a different order than that of the Final Office Action, the Answer, and the Appeal and Reply Briefs. Appeal 2021-002595 Application 15/874,257 3 Claims 27-31 and 39 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Chin and Stewart. Claim 36 is rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Stewart. ANALYSIS The rejection of independent claims 27 and 39 and dependent claims 28-31 as unpatentable over Chin and Stewart The Examiner’s rejection of independent claim 27 is based on a simple substitution rationale; i.e., a simple substitution of one known element for another to obtain predictable results. See Final Act. 7-8; see also Appeal Br. 28 (citing MPEP § 2143). More specifically, the Examiner finds Chin’s plate 130 corresponds the claimed “second beam,” but acknowledges that plate 130 lacks a hollow portion to receive a line “where at least a portion of the [second] beam is hollowed to receive the line,” as recited in claim 27. See Final Act. 7-8 (citing Chin ¶¶ 155-159, Figs. 8A- 8C). The Examiner turns to Stewart and finds that plate 154 (i.e., a beam) includes longitudinal tie channel 156 (i.e., is hollowed) to receive tie 158 (i.e., a line). See Final Act. 8 (citing Stewart Abstract, ¶ 110, Figs. 21, 22). The Examiner concludes: [I]t would have been obvious to one having ordinary skill in the art . . . as a matter of simple substitution of one known element for another (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007)), to obtain the predictable result of connecting a connecting member or line or suture to a plate in a pair of plates configured to be drawn together to occlude an anatomical structure by pulling the ends of the connecting member or line or suture by connecting the connecting member or line or suture to the plate via a longitudinally extending channel in the plate, as taught by Stewart. Appeal 2021-002595 Application 15/874,257 4 Final Act. 8. In view of the foregoing, we understand the Examiner’s rationale to be a simple substitution of Chin’s plate 130 with Stewart’s teaching of a longitudinally hollowed plate.2 The Appellant argues “this is not a case of a simple substitution of one element for another element with predictable results” because the proffered substitution would result in Chin’s device operating differently and losing the ability to be independently controlled. See Appeal Br. 30-36; Reply Br. 4-5. The Appellant points out that the device in Chin’s Figure 8A shows a pair of separate connecting members (i.e., lines) 134 that are fixed to different locations on beam 130, where each line 134 has a free end that can be controlled independently to move a portion of beam 130 to clamp tissue against another beam 132. See Appeal Br. 31. The Appellant points out that Stewart’s line 158 is threaded longitudinally through plates 152, 154 by use of channels 156; and plates 152, 154 can slide with respect to line 158. Appeal Br. 32. The Appellant contends that “one cannot separately pull on either free end of the tie 158 to individually control and cause the forward or 2 For the rejection of dependent claim 29, the Examiner’s explains that “the simple substitution of one known mechanism for another would result in providing a longitudinal channel in Chin’s Fig. 8A so that connecting member 134 can pass therethrough as an alternative mechanism for connecting the connecting member 134 to plate 130.” Ans. 13. The Appellant persuasively argues that Stewart’s beam “consists simply of a linear through-bore, the end-face openings [that] cannot reasonably be described as being in a different (i.e., axial) direction.” Appeal Br. 39. We agree with the Appellant’s argument. Here, the Examiner’s proffered simple substitution rationale lacks rational underpinning because it requires Stewart to teach both longitudinal and axial hollow portions of a beam and Stewart only teaches a single longitudinal hollow portion of a beam. Appeal 2021-002595 Application 15/874,257 5 rearward portions of the plates 152, 154 to draw closer to one another.” Appeal Br. 32. The Appellant’s argument is persuasive. In response, the Examiner’s position is that the Appellant’s contention that Chin contemplates independent control/operation of lines 134 is based on speculation. See Ans. 10-11. We disagree with the Examiner. The Appellant’s argument is based on Chin’s disclosure -- specifically, the embodiments shown in Figures 8A-8C that are described in paragraphs 155-159 -- and technical reasoning. See Appeal Br. 24-26, 31-36. Also, the Examiner appears to focus on the ultimate result of the substitution, i.e., “Chin’s device would still function as intended by the plates being configured to be drawn together to sandwich the walls of the atrial appendage therebetween under compression by applying tension to the connecting members which thereby draws the plates together in compression.” Ans. 13. The Examiner’s focus on the ultimate result of the substitution fails to account for differences in operation (e.g., the loss of control) during the process of reaching the ultimate result. Thus, we do not sustain the Examiner’s rejection of independent claim 27 and dependent claims 28-31. The Examiner’s rejection of claim 39 includes the same deficiency as the rejection of claim 27. See Final Act. 11-13. Therefore, we likewise do not sustain the Examiner’s rejection of independent claim 39. The rejection of independent claim 36 as anticipated by Stewart In view of our determination that claim 36 is indefinite, infra, it follows that the Examiner’s rejection of this claim under 35 U.S.C. § 102(b) must fall because it is necessarily based on a speculative assumption as to the meaning of the claim. See In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. Appeal 2021-002595 Application 15/874,257 6 2011) (“[A] claim cannot be both indefinite and anticipated.”) (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)); see also In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Thus, we do not sustain the Examiner’s rejection of claim 36 under 35 U.S.C. § 102(b) as anticipated by Stewart. It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter set forth below, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. New ground of rejection Independent claim 36 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that the Applicant/Appellant regards as the invention. Independent claim 36 recites: 36. An apparatus for occluding an anatomical structure comprising: a first beam having first and second ends, where at least a portion of the beam is hollowed to receive a line; a second beam having first and second ends, where at least a portion of the beam is hollowed to receive the line; and, the line operatively coupling the first beam to the second beam, the line extending through the hollowed portion of the second beam and extending through the hollowed portion of the first beam, the line including a first segment configured to be repositionable with respect to at least one of the first beam and the second beam to cause the first and second beams to approach one another, the line further including a second segment configured to retard motion of the line with respect to at least one of the first beam and the second beam while the first and second beams approach one another. Appeal Br. 56, Claims App. (emphasis added). Appeal 2021-002595 Application 15/874,257 7 The italicized portion of claim 36 requires that the line’s second segment includes at least one physical attribute that is configured to (e.g., designed to) “retard motion of the line with respect to at least one of the first beam and the second beam while the first and second beams approach one another.” Appeal Br. 56, Claims App. However, we cannot discern the limits of the scope of the at least one physical attribute that provides the claimed functionality. Therefore, we determine that the italicized portion of claim 36 is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. See In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); Ex parte McAward, Appeal No. 2015- 006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential). Further, we note that the Appellant identifies support for the italicized portion of claim 36 in the Specification at paragraph 72, which in-part describes: In FIG. 19C, one free end 399 of the closure element 391 is secured to one of the beams 393, and the closure element is threaded between the beam members through apertures 401 in beams such that it engages both beams. Closure force is applied to the beams 393 by pulling on the other free end 403 of the closure element 391, and the apertures 401 cooperate to act like a buckle to lock the closure element 391 relative to the beams. See Appeal Br. 7-8, 11-12. The Appellant identifies free end 399 of line 391 as corresponding to the claimed “second segment” of the “line,” as well as in an annotated version of Figure 19C. Appeal Br. 12 (stating “[o]ne free end 399 of the line 391 (e.g., the ‘second segment’) is secured to the second beam.” (citing Spec. ¶ 72, ll. 1-2)). Paragraph 72 describes free end 399 as secured to one of the beams 393, but does not explain the manner by which Appeal 2021-002595 Application 15/874,257 8 free end 399 is secured to the beam.3 We note that there are many ways that free end 399 can be secured to beam 393 (e.g., adhesives, knots, connectors, etc.). If, by example, an adhesive was used to secure free end 399 to beam 393, then it would be the adhesive that secures free end 399 to beam 393 and not any physical attribute or attributes of free end 399 itself. In this case, it would be proper to claim the adhesive as being configured to prevent or retard the motion of free end 399. It would not be proper to claim that free end 399 is configured to prevent or retard the motion of free end 399. Thus, we reject independent claim 36 under 35 U.S.C. § 112, second paragraph, as indefinite. CONCLUSION We REVERSE the Examiner’s rejection of claims 27-31 and 39 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Chin and Stewart. We REVERSE pro forma the Examiner’s rejection of claim 36 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Stewart. We enter a NEW GROUND OF REJECTION of claim 36 under 35 U.S.C. § 112(b) as indefinite pursuant to our authority under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 3 We view the phrases “secured to,” “to prevent,” and “to retard” as having separate meanings. See also Appeal Br. 12 (“One free end 399 of the line 391 (e.g., the ‘second segment’) is secured to the second beam. This second segment 399 is configured to prevent (e.g., ‘retard’) motion of the line 391 with respect to the second beam 393.” (footnote omitted)). Appeal 2021-002595 Application 15/874,257 9 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 27-31, 39 103 Chin, Stewart 27-31, 39 36 102 Stewart 36 36 112 Indefiniteness 36 Overall Outcome 27-31, 36, 39 36 REVERSED; 37 C.F.R. § 41.50(b)