Ex Parte Binmoeller et alDownload PDFPatent Trials and Appeals BoardJun 13, 201913865098 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/865,098 04/17/2013 121974 7590 06/17/2019 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR Kenneth F. Binmoeller 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. 8150BSC0008Cl 7044 EXAMINER NGUYEN, TUAN VAN ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 06/17/2019 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 KENNETH F. BINMOELLER and CORBETT W. STONE Appeal2018-008440 1 Application 13/865,0982 Technology Center 3700 Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-6, 29, 30, and 32--43. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Apr. 20, 2018), the Reply Brief ("Reply Br.," filed Aug. 13, 2018), the Examiner's Answer ("Ans.," mailed June 12, 2018), and the Final Office Action ("Final Act.," mailed Nov. 16, 2017). 2 According to Appellants, the real party in interest is Boston Scientific Scimed, Inc. Appeal Br. 2. Appeal2018-008440 Application 13/865,098 BACKGROUND The Specification discloses that "[t]he invention relates to a device for endoscopy or endosonography-guided translmninal interventions whereby an anastomosis can be formed between two luminal structures in the body. More specifically devices and methods are described to anchor, create a fluid conduit and to approximate luminal structures using an expandable hollow stent." Spec. ,r 2. ILLUSTRATIVE CLAIM Claim 1 is the only independent claim on appeal and recites: 1. A [sic] 3 to form a fluid pathway between a first luminal body and a second body comprising: a penetrating member; a central member forming a lumen and having distal and proximal end portions, a length, and a diameter; the distal end portion including a distal retention member and the proximal end portion including a proximal retention member, the distal and proximal retention members configured to move from a first configuration to a second configuration such that the length of the central member between the distal and proximal end portions decreases and the diameter of the central member increases, thereby presenting an anchor interface to appose the first luminal body and second body. REJECTIONS 1. The Examiner rejects claims 1---6, 33, 34, and 35--43 under 35 U.S.C. § 102( e) as anticipated by Phelps. 4,5 3 Appellants indicate that the word "system" is missing. Appeal Br. 6, n. 1. 4 Phelps et al., US 6,610,100 B2, iss. Aug. 26, 2003 (hereinafter "Phelps"). 5 The Examiner relies on Salmon et al., US 6,315,708 Bl, iss. Nov. 13, 2001, and Yip et al., US 6,846,323 B2, iss. Jan. 25, 2005, as evidentiary support for the rejection of claim 35. 2 Appeal2018-008440 Application 13/865,098 2. The Examiner rejects claims 29, 30, and 32 under 35 U.S.C. § I03(a) as unpatentable over Phelps in view of Kim6 and Freidberg 7 as evidentiary evidence. DISCUSSION As discussed below, we are persuaded by Appellants' argument that the Examiner has not established that Phelps discloses a system as claimed. With respect to claim 1, the Examiner finds that Phelps discloses a system including a second configuration as claimed. See Final Act. 4--5. In relevant part, the Examiner finds that the overall length of Phelps's central member decreases in a second configuration in which proximal and distal end portions are curved to form anchors. Id. ( citing Phelps Figs. 7, 8). The Examiner also finds that this second configuration presents "an anchor interface ... to oppose the first luminal body ... and [a] second body." Id. at 4--5. The Examiner interprets the length referred to in the claim with respect to the second configuration to be the overall length of the device, i.e., the Examiner states that "the limitation of 'length' and 'the length of the central member between the distal and proximal end portions' have been interpreted as the longest extent as measured from end to end of the central member." Ans. 3--4. We agree with Appellants that the Examiner has not established that Phelps discloses a system with a second configuration as claimed. We agree with Appellants that the Examiner has not shown that Phelps discloses that the length between the proximal and distal end portions decreases in the 6 Kim, US 6,719,781 Bl, iss. Apr. 13, 2004. 7 Freidberg et al, US 6,699,277 Bl, iss. Mar. 2, 2004 (hereinafter "Freidberg"). 3 Appeal2018-008440 Application 13/865,098 second configuration. See Reply Br. 5---6. More specifically, we determine that the length between the distal and proximal end portions recited in the claim is not inclusive of the distal and proximal end portions. The claim first describes the central member as including distal and proximal end portions and having a "length," and thus, this "length" does include the end portions. The claim later requires that "the length of the central member between the distal and proximal end portions decreases." Interpreting the claim in the manner proposed by the Examiner renders the later language "between the distal and proximal end portions" superfluous. If the "length of the central member between the distal and proximal end portions" includes both the distal and proximal end portions, as the Examiner proposes, the recitation of "between the distal and proximal end portions" would be unnecessary in light of the use of the term "length" to describe the central member's length inclusive of the those end portions. This point is further demonstrated by the fact that the claim then requires that "the diameter of the central member increases" without reference to the proximal and distal end portions. We also note that the claim limitation at issue recites "between the distal and proximal end portions" ( emphasis added) as opposed to merely reciting that the length is between the distal and proximal ends, which indicates that the length is something different than the overall length from one end of the device to the other. Thus, we interpret the "length of the central member between the distal and proximal end portions" to be the length of the central member not inclusive of those end portions so as to give meaning to all words in the claim. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (declining to adopt an interpretation that rendered a claim term superfluous in view of 4 Appeal2018-008440 Application 13/865,098 other limitations of the claim, where an alternative interpretation was available). Our interpretation is consistent with the Specification, which indicates that the portion of the central member located in between the proximal and distal end portions decreases in length when the distal and proximal retention members move from a first configuration to a second configuration. See, e.g., Spec. Fig. 23. Based on the foregoing, we agree with Appellants that the claim requires that the length of the central lumen, between the end portions and not inclusive thereof, decreases when the retention members move from the first to the second configuration. Because the Examiner has not established that Phelps discloses such a decrease in length, we do not sustain the rejection of claim 1 as anticipated. See Final Act. 4--5 (indicating that the overall length of Phelps's system decreases without specifically finding that the particular portion of the central member in between the first and second end portions decreases). We also do not sustain the anticipation rejection of dependent claims 2-6 and 33--43 for the same reasons. Finally, because the Examiner does not rely on the other art of record in manner that cures the deficiency in the rejection of claim 1, we also do not sustain the rejection of claims 29, 30, and 32 as obvious. CONCLUSION We REVERSE the rejections of claims 1---6, 29, 30, and 32--43. REVERSED 5 Copy with citationCopy as parenthetical citation