Ex Parte Amos et al

Patent Trials and Appeals Board

Jun 17, 2019

14623264 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/623,264 02/16/2015
121974 7590 06/19/2019
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Michael Devon Amos
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.
8150BSC0480Cl 4834
EXAMINER
WENG,KAIH
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DEVON AMOS, JOHN LANE, JACOB GRAHAM,
GARY J. LEANNA, ANDREW K. HOLLETT, and MICHAL WEISMAN
Appeal2018-009192 1
Application 14/623,2642
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from Examiner's final
rejection of claims 1-20, which are all the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 2, 2018) and Reply Brief ("Reply Br.," filed Sept. 26, 2018), and the
Examiner's Answer ("Ans.," mailed July 26, 2018) and Final Office Action
("Final Act.," mailed Nov. 2, 2017).
2 Appellants identify "Boston Scientific Scimed, Inc." as the real party in
interest. Appeal Br. 2.
Appeal2018-009192
Application 14/623,264
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' "disclosure is directed to a stent retention structure for
selectively securing a stent to a shaft of a drainage stent delivery system."
Spec. 1 :8-9. Claim 1, reproduced below with added bracketed matter, is
illustrative of the subject matter on appeal.
1. A stent delivery system comprising:
[ (a)] a drainage stent having a proximal end, a distal
end, and lumen extending therethrough, [ (b)] the drainage stent
including a tab extending radially inward into the lumen from a
tubular wall of the drainage stent; and
[ ( c)] an elongate shaft extending distally from a handle
assembly, [(d)] the elongate shaft having a distal end portion
extending into the lumen of the drainage stent;
[ ( e)] wherein the tab is configured to mate with an
opening in the distal end portion of the elongate shaft to
selectively couple the drainage stent to the elongate shaft.
Appeal Br. 14, Claims App.
Rejection
Examiner rejected claims 1-20 under 35 U.S.C. § I02(b) as being
anticipated by Goto et al. (US 2005/0085891 Al, pub. Apr. 21, 2005)
("Goto"). Final Act. 2-5.
ANALYSIS
Anticipation of claims 1-20 by Goto
Examiner maintains that claims 1-20 are anticipated by Goto because
Goto discloses each and every element of Appellants' claimed invention.
See Ans. 2--4. Goto "relates to a stent delivery device which is used in
combination with an endoscope to insert a stent into a body cavity of a
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Appeal2018-009192
Application 14/623,264
patient and place it there." Goto ,r 4. Figure IA of Goto is reproduced
below:
Figure IA of Goto depicts an embodiment of a stent delivery device in an
engagement stage, which includes a stent 14, a pusher tube 15, a guide
catheter cock 13 at the proximal end of a guide catheter 11, a pusher tube
cock 18 at the proximal end of the pusher tube 15, and an engagement
member 21 at the distal end of a linear member 20 led out of the lumen of
the pusher tube 15 and brought into engagement with an engagement
depression 17. Id. ,r,r 43--45, 47, 53.
Goto' s Figure 9B is reproduced below:
14
11
19 \
17
{ ."':>':~ .... .... ' ..• ' .....
~'
FIG,9B n
Figure 9B depicts another embodiment of a stent delivery device in an
engagement state, which includes a guide catheter 11 that is rotatable on its
longitudinal axis inside of stent 14 and pusher tube 15. Goto ,r,r 90, 93. In
this embodiment,
opening 22 is formed in the circumferential wall of the guide
catheter 11, and the engagement member 21 can drop into the
opening 22. The opening is in the plane which is substantially
perpendicular to the central axis of the stent and which passes
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Appeal2018-009192
Application 14/623,264
the engagement depression 17. With this structure, the
engagement member 21 drops into the opening 22 by slightly
rotating the guide catheter 11. In this manner, the stent 14 and
the engagement member 21 are disengaged from each other.
Id. ,T 93.
In rejecting independent claim 1, Examiner finds:
Goto discloses a drainage stent ( 14 & 15) having a proximal
end, distal end, and a lumen extending therethrough
(figure IA), the drainage stent including a tab (21) extending
radially inward into the lumen from a tubular wall of the stent
(the tab is attached to tube 15, figure 9B), an elongated shaft
(11) extending distally from a handle assembly (13 & 18[,
figure 9B]), the distal portion of the shaft is inside of the lumen
of the stent (figure 9B), the tab is configured to mate with an
opening (22) in the distal end of the shaft to couple the stent to
the shaft ([0093]).
Final Act. 3; Ans. 2. In particular, Examiner cites Figure IA of Goto as
disclosing elements (a) and (c), and Figure 9B of Goto as disclosing
elements (b ), ( d), and ( e) of claim 1. We find Examiner improperly relies
upon different embodiments of Goto to disclose elements recited in claim 1.
It is well-settled that
[ s ]uch picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.
Application of Arkley, 455 F.2d. 586, 587-88 (CCPA 1972); see also Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008) ("Thus, it is not
enough that the prior art reference ... includes multiple, distinct teachings
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Appeal2018-009192
Application 14/623,264
that the artisan might somehow combine to achieve the claimed invention.";
citation to Arkley omitted). As such, Examiner fails to demonstrate that
Goto discloses, in a single embodiment, each and every element of claim 1,
as set forth in the claim. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
814 F .2d 631 (Fed. Cir. 1987). Similarly, Examiner selects elements from
embodiments of Goto's Figures IA and 9B in order to meet the limitations
of independent claims 9 and 14. See Final Act. 4; see also Ans. 3--4.
Because Examiner has failed to establish a prima facie case of anticipation,
we do not sustain the rejection of independent claims 1, 9, and 14 as
anticipated by Goto, including claims 2-8, 10-13, and 15-20 dependent
thereon.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § I02(b) is reversed.
REVERSED
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