Ex Parte Callister et al

Patent Trial and Appeal Board

Jul 28, 2017

11048237 (P.T.A.B. Jul. 28, 2017)

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.
11/048,237 02/01/2005 Jeffrey P. Callister ESU00051 US03 8123
131006 7590 08/01/2017
Bayer HealthCare LLC (ESU)
Patent Department
attn: Aseem V. Mehta, U.S. Chief Patent Counsel
EXAMINER
JACKSON, BRANDON LEE
2 T.W. Alexander Drive, P.O. Box 12014 ART UNIT PAPER NUMBER
Research triangle Lark, INI l!
3772
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
uspoccs @ bayer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY P. CALLISTER and
WILLIAM S. TREMULIS
Appeal 2015-007697
Application 11/048,237
Technology Center 3700
Before JOHN C. KERINS, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey P. Callister and William S. Tremulis (“Appellants”) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1,
3—8, 16, 28, 29, and 33—41.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is Bayer Essure Inc. Appeal Br.
3.
Appeal 2015-007697
Application 11/048,237
THE CLAIMED SUBJECT MATTER
Appellants’ invention relates to devices “useful for the occluding of
reproductive lumens such as a female patient’s fallopian tubes or a male
patient’s vas deferens to affect contraception.” Spec. 12. Claim 1,
reproduced below with italics added, is illustrative of the claimed subject
matter.
1. A contraceptive device for occluding a patient's
reproductive lumen, comprising:
an occluding component comprising a tubular
body having a longitudinal axis, said tubular body
structured to radially self-expand about the longitudinal
axis within the reproductive lumen from a first tubular
configuration to a second tubular configuration having a
larger transverse dimension than the first tubular
configuration, said tubular body defining a lumen;
a porous fibrous body disposed within and
extending across said tubular body lumen and connected
to the tubular body, wherein said porous fibrous body
radially expands about the longitudinal axis and extends
across said tubular body lumen as said tubular body
radially self-expands about the longitudinal axis such that
the porous fibrous body expands to the larger transverse
dimension simultaneously with the tubular body, and
wherein said porous fibrous body comprises a plurality of
woven or interspersed strands including first strand
formed of a first metallic material and a second strand
formed of a second metallic material different from the
first metallic material; and
wherein the first and second strands are configured
to generate sufficient electrical activity between the first
and second strands when in contact with conductive fluid
within the reproductive lumen to stimulate tissue growth
from the reproductive lumen into said porous fibrous
body across said tubular body lumen to occlude the
reproductive lumen sufficiently to prevent the passage of
reproductive cells therethrough.
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Appeal 2015-007697
Application 11/048,237
REJECTIONS
Claims 1, 3—8, 16, 28, 33—39, and 41 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nikolchev ’884 (US 6,684,884 B2; issued
Feb. 3, 2004) and Pianetti (US 5,433,217; issued July 18, 1995).
Claims 29 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nikolchev ’884, Pianetti, and further in view of Nikolchev
’361 (US 6,634,361 Bl; Oct. 21, 2003).
DISCUSSION
Appellants argue claims 1, 3—8, 16, 28, 33—39, and 41 as a group. Br.
9. We select claim 1 as representative and all claims stand or fall with claim
1. 37C.F.R. §41.37(c)(iv).
The resolution of this appeal is centered on the limitation in claim 1 of
“a porous fibrous body disposed within and extending across said tubular
body lumen and connected to the tubular body, wherein said porous fibrous
body radially expands about the longitudinal axis and extends across said
tubular body lumen.” The same or substantially the same limitation appears
in independent claims 33, 34, 35 and 41. Appeal Br. 17—21 (Claims App.).
The Examiner finds that Nikolchev ’884 discloses a contraceptive
device with “a radially self-expandable tubular body (230) having a
longitudinal axis . . . and a porous fibrous body (236) within the tubular
body comprising interspersed strands.” Final Act. 3 (citing Nikolchev ’884,
14:4—14, Fig. 12C). The Examiner also finds that Nikolchev ’884 discloses
that “the porous body (236) may optionally be connected to the tubular
body.” Id. (citing Nikolchev’884, 13:34-40). The Examiner determines it
would have been obvious “to attach the fibrous body (236) to the tubular
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Appeal 2015-007697
Application 11/048,237
body (230) by tying them together in loops . . . because it is the method
disclosed by Nikolchev []884 in order to attach the fibrous body to the
tubular body.” Id. at 3^4.
Appellants contend that the “Examiner’s arguments and reasoning
completely overlook the claimed feature of ‘wherein said porous fibrous
body radially expands about the longitudinal axis [of the tubular body] and
extends across said tubular body lumen. Br. 10—11. Appellants submit
annotated versions of Nikolchev ’884’s Figures 12C and 11D. Id. at 11.
Appellants argue that Nikolchev ’ 884’s method of connecting the porous
fibrous body to the tubular body illustrated in Figure 1 ID would not result in
the fibrous porous body expanding about the longitudinal axis of the tubular
body but rather would expand about an axis offset from the longitudinal axis
of the tubular body. Id.
The Examiner responds that Appellants’ reliance on Nikolchev ’884’s
Figure 1 ID is misplaced because it is not to scale and, if the axis of the
fibrous body were to be offset as shown in Figure 1 ID, it would be
impossible for the device to function to occlude a fallopian tube. Ans. 6—7.
The Examiner asserts that “[t]he Figure merely illustrates a manner in which
the fibers (226) are tied to the tubular body.” Id. at 7. The Examiner
continues:
The fibrous body (226) would obviously be tied all around the
tubular body (230) in order to expand with tubular body (230)
in order for the fibrous body (230)... to promote tissue
ingrowth all around the tubular body (230) and not merely on
one side. When the Nikolchev []884 device is used the fibrous
body (226) is tied to the coils of the tubular body (230); and the
fibrous body (226) would expand simultaneously with the
tubular body (230), thereby sharing the same longitudinal axis.
Id. For the following reasons, we sustain the rejection of claim 1.
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Appeal 2015-007697
Application 11/048,237
In Figure 11A, Nikolchev ’884 discloses a straight primary coil 202
with a secondary helical coil 204. Nikolchev ’884, 11:55—56, Fig. 11A. In
Figure 1 ID, Nikolchev ’884 discloses fibers 226 connected to secondary coil
204 by tying “in loops around the secondary coil.” Id. at 13:38—40. In
Figure 12C, Nikolchev ’884 discloses, “braided fiber material 236 may also
be disposed between the primary and secondary coils.” Id. at 14:7—8, Fig.
12C.
In the rejection, the Examiner combines the teachings of the two
embodiments. Figure 12C discloses the “porous fibrous body disposed
within . . . [the] tubular body lumen.” Figure 1 ID discloses the fibrous body
“connected to the tubular body” by tying in loops. The Examiner
determines, based on the function of Nikolchev ’884’s device of occluding a
fallopian tube, that it would have been obvious to one of ordinary skill in the
art to tie the fibers (236) in Figure 12C to the secondary coil based on the
teaching in Figure 1 ID resulting in the fibers expanding along the
longitudinal axis of the tubular body. See Final Act. 3. Appellants’
contention that the porous fibers would not expand about the longitudinal
axis of the tubular body in the proposed combination is not persuasive
because it amounts to an individual attack on the embodiments when the
rejection is based on the combined teachings of the two embodiments. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references.) We, thus, sustain the rejection of
claim 1. Claims 3—8, 16, 28, 33—39, and 41 fall with claim 1.
Claim 29 depends from claim 1 and claim 40 depends indirectly from
claim 35. Appeal Br. 17, 20 (Claims App.). Appellants argue that
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Appeal 2015-007697
Application 11/048,237
Nikolchev ’361 does not remedy the deficiencies in the combination of
Nikolchev ’884 and Pianetti in connection with the rejection of claim 1.
Appeal Br. 13. We sustain the rejection of claims 29 and 40 because there
are no deficiencies in the rejection of claim 1 for the reasons stated above.
DECISION
The Examiner’s decision rejecting claims 1, 3—8, 16, 28, 29, and 33—
41 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)(l)(iv).
AFFIRMED
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