Ex Parte Buiser et al

Patent Trial and Appeal Board

May 4, 2016

12188585 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/188,585 08/08/2008
121974 7590 05/06/2016
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Marcia BUISER
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.
7314022001 5308
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
kddocketing@cpaglobal.com
bbonneville@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCIA BUISER and CHRISTOPHER NARDONE
Appeal2014-003505
Application 12/188,585 1
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marcia Buiser and Christopher Nardone (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner's Final Rejection of claims 1-11, 14,
and 16-22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Boston Scientific
Scimed, Inc. Br. 2.
2 Claims 12, 13, 15, and 23-27 were canceled. Id.
Appeal2014-003505
Application 12/188,585
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. An implant delivery system, comprising:
a detachable link connecting an implantable device to a
pusher wire, the detachable link comprising an elongate body
extending along a longitudinal axis from a proximal end to a
distal end, the elongate body comprising
a first arm having a slot and a first arm extension portion
distal to the slot, and
a second arm having a second arm extension portion
adapted to mate with the first arm slot, and a recessed area
proximal of second arm extension portion, the recessed area
comprising a guide protrusion configured to mate with a guide
recess located on the first arm extension portion when the second
arm extension portion mates with the first arm slot to thereby
inhibit relative transverse and/or rotational movement between
the first and second arms when the first and second arms are
mated.
REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1-10 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1-11, 14, and 18-22 are rejected under 35 U.S.C. § 102(b)
as anticipated by Palermo (EP 0829236 Al, pub. Mar. 18, 1998).
3. Claims 1-11, 14, and 16-22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Palermo and Orr (US 5,853,375, iss. Dec. 29,
1998).
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Application 12/188,585
Indefiniteness rejection
ANALYSIS
As the Examiner points out, Appellants do not argue the rejection of
claims 1-10 under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which applicants regard as the invention. Ans. 6. We summarily sustain the
Examiner's decision to reject claims 1-10 as being indefinite. See Hyatt v.
Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to
contest a ground of rejection to the Board .... the Board may treat any
argument with respect to that ground of rejection as waived") (citation
omitted).
Anticipation of Claims 1-11, 14, and 18-22 by Palermo
We are persuaded by Appellants' arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 1-11,
14, and 18-22 over Palermo.
The Examiner finds that Palermo anticipates claims 1 and 11 by
disclosing an implant delivery system with all the elements recited by those
independent claims, including "a guide protrusion (distal tip of control wire
106) configured to mate with a guide recess (hole in first arm extension)
located on the first arm extension portion ... to inhibit relative transverse
and/or rotational movement between the first and second arms when the first
and second arms are mated." Final Act. 3. (emphasis added).
However, Appellants explain that "Palermo does not disclose or
suggest a 'guide recess located on the first arm extension portion,' as
required by claims 1 and 11," but "discloses 'an interior axial passageway'
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in the first arm extension portion, i.e., a lumen defined by the first [arm]
extension portion." Br. 4 (citing Palermo, para. 29, and Figs. lA-5).
Appellants also point out that "the Examiner admits on page 7 of the Final
Office Action that Palermo 'fails to disclose the recessed area comprises a
guide protrusion configured to mate with a guide recess located on the first
arm extension portion.'" Id.
While at page 3 of the Answer, the Examiner responds that "Palermo
clearly discloses a recessed area ... with a guide protrusion (distal tip of
control wire 106)," we agree with Appellants that Figure 5 of Palermo does
not disclose a guide protrusion on the recessed area of Palermo as recited by
claims 1 and 11. See the annotated figures on page 5 of the Appeal Brief.
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
For the foregoing reasons, we do not sustain the Examiner's decision
rejecting claims 1-11, 14, and 18-22 as anticipated by Palermo.
Obviousness of Claims 1-11, 14, and 16--22 over Palermo and Orr
In rejecting claims 1-11, 14, and 16-22 over Palermo and Orr, the
Examiner relies on Palermo for teaching essentially all of the limitations of
claim 1, but looks to Orr for disclosing "a guide protrusion and socket (Fig
1, peg and socket) extending between the first and second arms (Fig 1)
adapted to inhibit relative transverse and/or rotational movement between
the first and second arms (abstract)." Final Act. 7-8. The Examiner then
reasons that "[i]t would have been obvious ... to add the guide member of
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Application 12/188,585
Orr to the device of Palermo in order to provide a stronger fit for the
detachable link." Id. at 8 (emphasis added).
While acknowledging that Orr "discloses a guide wire extension
assembly having a 'peg-and-hole' connection for mating the ends of a
respective guide wire and extension wire," Appellants contend that
"[a]dding a 'peg-and-hole' connection to the interlocking clasps of Palermo
would in fact interfere with the control wire of Palermo by physically
obstructing the passageway of the control wire within the interlocking
clasps, (i.e. by placing the peg in the wire passageway), thus, rendering the
device of Palermo inoperable for its intended purpose." Br. 6.
However, Appellants' contention amounts to unsupported attorney
arguments, and thus is entitled to little, if any, weight. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and conclusions
unsupported by factual evidence carry no evidentiary weight). As the
Examiner illustrates with an annotated version of figure 5 of Palermo, a "peg
and hole [like that of Orr] could be provided that would not interfere with
the control wire mechanism [of Palermo] as argued by [Appellants],"
because "[i]t would not obstruct the passageway of the control wire 106 of
Palermo." Ans. 5. Appellants have not provided any persuasive factual
evidence or technical reasoning that the Examiner's proposed modification
of Palermo with the teachings of Orr would have been beyond the level of
ordinary skill in the art or unpredictable to a person of ordinary skill in the
art. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton.").
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Appellants also contend that "only by using improper hindsight in
view of the Appellants' specification would someone remove and replace the
control wire in Palermo with the peg-and-hole connection of Orr." Br. 6.
However, the Examiner explains that the rejection was not based on
"substituting the peg and hole mechanism of Orr [for] the control wire
mechanism of Palermo," but on "providing an additional means of
interlocking the detachable portions of Palermo," who already "clearly
discloses multiple mechanisms of attachment to ensure a stable connection
between detachable portions 110 and 104." Ans. 4. We agree, having been
instructed by our reviewing court that the presence of additional structures in
the prior art does not undermine a rejection where the claim uses
"comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312,
1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which is well
understood in patent law to mean 'including but not limited to."').
For these reasons, we are not persuaded that the Examiner erred in
rejecting claims 1-11, 14, and 16-22 under 35 U.S.C. § 103(a) over Palermo
and Orr.
DECISION
The rejection of claims 1-10 under 35 U.S.C. § 112, second
paragraph, is AFFIRMED.
The rejection of claims 1-11, 14, and 18-22 under 35 U.S.C. § 102(b)
as anticipated by Palermo is REVERSED.
The rejection of claims 1-11, 14, and 16-22 under 35 U.S.C. § 103(a)
as unpatentable over Palermo and Orr is AFFIRMED.
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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)(l )(iv).
AFFIRMED
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