Ex Parte Chin-Chen et al

Patent Trial and Appeal Board

Feb 27, 2017

13434266 (P.T.A.B. Feb. 27, 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.
13/434,266 03/29/2012 Chao Chin-Chen CRD5222USCNT1 6499
79439 7590
Cardinal Health, Inc.
1500 Waukegan Road
West Building
Waukegan, IL 60085
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
Kim.Luna@cardinalhealth.com
Marlene. Poulos @ cardinalhealth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAO CHIN-CHEN, RANDY DAVID B. GRISHABER,
GENE W. KAMMERER, ISAAC JOHN KHAN,
and JIN PARK
Appeal 2014-006018
Application 13/434,266
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
AMANDA F. WIEKER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chao Chin-Chen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—10. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2014-006018
Application 13/434,266
THE INVENTION
Appellants’ claimed invention is directed to methods of using closure
devices to close a passageway in a body, for example a patent foramen ovale
(PFO) in a heart. Spec. 1:17—20. Claim 1, reproduced below, is illustrative:
1. A method to facilitate closure of a [patent foramen ovule, or]
PFO in a heart, the heart having an interatrial septum comprised
of a septum primum and a septum secundum between a first
atrium and a second atrium, the method comprising:
introducing a mechanical closure device into the first atrium of
the heart, the closure device having a proximal end portion and
a distal end portion, and further comprising a flexible closure
line coupled to a proximal expandable anchor and a distal
expandable anchor, the proximal and distal expandable anchors
each having a plurality of longitudinally oriented legs attached
between proximal and distal end rings, the proximal and distal
end rings being held in a longitudinally extended constrained
position by a constraining force;
penetrating only the septum primum or the septum secundum
from the first atrium to the second atrium in the heart at a first
location along the interatrial septum so that at least the distal
end portion of the closure device is located in the second
atrium;
deploying the distal expandable anchor associated with the
closure device into the second atrium by releasing the
constraining force, allowing the legs of the distal expandable
anchor to expand radially outward, causing the proximal and
distal end rings of the distal anchor to move longitudinally
inward towards one another;
partially withdrawing the closure device from the second atrium
to the first atrium;
deploying the proximal expandable anchor associated with the
closure device into the first atrium by releasing the constraining
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Application 13/434,266
force, allowing the legs of the proximal expandable anchor to
expand radially outward, causing the proximal and distal end
rings of the proximal expandable anchor to move longitudinally
inward towards one another; and
radially expanding the proximal and distal expandable anchors
into a flat shape by tensioning the closure line.
THE REJECTIONS
The Examiner rejects:
(i) claims 1—4 and 6—10 under 35 U.S.C. § 103(a) as being
unpatentable over Wahr (US 2002/0183787 Al, published Dec. 5,
2002) in view of Devellian (US 2005/0267523 Al, published Dec. 1,
2005) and Chanduszko (US 2003/0144694 Al, published July 31,
2003) ; and
(ii) claim 5 under 35 U.S.C. § 103(a) as being unpatentable
over Wahr in view of Devellian, Chanduszko, and Adams (US
2005/0119675 Al, published June 2, 2005).
ANALYSIS
Claims 1—4 and 6—10—Obviousness—Wahr/Devellian/Chanduszko
The Examiner finds that Wahr discloses many of the element of the
claimed method, but does not disclose that the legs of each of proximal and
distal end anchors are attached between proximal and distal end rings. Final
Act. 4. Lacking such disclosure, the Examiner further finds that Wahr does
not disclose a step of causing proximal and distal end rings of proximal and
distal anchors to move longitudinally inward toward one another by
allowing the legs of the anchors to expand radially outwardly. Id.
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Application 13/434,266
The Examiner cites to Devellian as teaching proximal (524) and distal
(522) expandable anchors having longitudinally oriented legs attached
between a proximal (1106) and distal (1110) end ring, and as teaching
causing the two end rings to move longitudinally inward toward one another
by allowing the legs of the proximal and distal anchors to expand radially
outwardly. Final Act. 4—5. The Examiner concludes that it would have been
obvious to modify the Wahr device to include the proximal and distal
anchors with end rings as disclosed in Devellian, “in order to obtain the
advantage of allowing the operator to recover or reposition the . . . device if
the operator decides that the . . . device[] is not properly deployed.” Id. at 5
(citing to Devellian, para. 39).
Appellants argue, in essence, that Devellian discloses only a single
pair of proximal and distal end rings bookending the proximal and distal
anchors, whereas the claims require that each of the anchors has a proximal
and distal end ring. Appeal Br. 7—8. Thus, according to Appellants, both
Wahr and Devellian fail to disclose the claim limitations asserted by the
Examiner to be taught by Devellian. Id. at 6—8.
The Examiner takes the position that claim 1 does not require that the
proximal and distal end rings of the proximal and distal anchors be different
structures for each anchor. Ans. 3. The Examiner states that proximal end
ring 1106 in Devellian can serve as the proximal end ring of both the
proximal and distal anchor, whereas the distal end ring 1110 can serve as the
distal end ring for both anchors. Id. This construction of claim 1 ignores the
language requiring that each of the proximal and distal anchors has a
plurality of longitudinally oriented legs attached between proximal and
distal end rings. In Devellian, the legs of the proximal anchor are attached
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Application 13/434,266
between proximal end ring 1106 and center joint 1108, and the legs of the
distal anchor are attached between center joint 1108 and distal end ring.
Thus, the Examiner’s construction is at odds with the claim language, and
we reject the same.
The Examiner, for the first time in the Answer, presents alternative
findings as to the structure disclosed in Devellian, stating that “the center
joint [1108] can be considered as the end ring because it’s attached to the
end of each of the proximal and distal expandable anchors,” with the center
joint serving as a distal end ring for the proximal anchor, and as a proximal
end ring for the distal anchor. Ans. 3. As a result, according to the
Examiner, each of the proximal and distal anchors include longitudinal legs
attached to a proximal and distal end ring. Id.
There is no Reply Brief of record responding to this new application
of the teachings of Devellian to the claims, however, Appellants may have
presaged such an interpretation, in that the Appeal Brief points out how the
center joint does not act in a manner required by claim 1. More specifically,
Appellants point out that, in deploying the Devellian device, when the legs
of the distal anchor are radially expanded, the center joint (the so-called
proximal end ring of distal anchor) remains fixed in place, and does not
move longitudinally toward the distal end ring, as required by claim 1
(“causing the proximal and distal end rings ... to move longitudinally
inward towards one another”). Appeal Br. 10. By the same token, when the
legs of the proximal anchor are radially expanded, at least in the
embodiment relied on by the Examiner, the center joint remains in its
position in the PFO track between the right and left atria. See Devellian,
Figs. 35, 36.
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Claim 1, however, requires that the radial outward expansion of the
legs of each of proximal and distal anchors causes the proximal and distal
end rings of the associated anchor to move longitudinally inward towards
one another. In other words, both end rings move longitudinally inward
when the anchor legs are expanded. We are cognizant that the Devellian
device effects relative longitudinal movement between the end rings and the
center joint, but the Examiner provides claim construction equating that
relative movement to the claimed movement. Indeed, the Examiner does not
address the end ring movement limitation in any way in the alternative
application of the teachings of Devellian.
The Examiner does not rely on Chanduszko in any manner that cures
the above-noted deficiencies in the teachings of Devellian. Accordingly, we
do not sustain the rejection of claims 1—4 and 6—10 as being unpatentable
over Wahr, Devellian, and Chanduszko.1
1 We further note that, although not argued by Appellants, the stated reason
to combine the teachings of Devellian with Wahr is not adequate, as it now
stands, to sustain the rejection. The Examiner states that the reason to
modify Wahr is to provide the advantage/capability of being able to recover
or reposition the device being deployed if it is determined that proper
deployment is not achieved. Final Act. 5. Devellian explicitly discloses that
its devices provide that capability, in paragraph 39 cited by the Examiner, as
well as in paragraph 58, and possibly elsewhere. However, the Wahr
disclosure itself also explicitly states that the device disclosed therein has the
same capability and advantage. Wahr, para. 90. The Examiner does not
adequately explain why, in view of this disclosure in Wahr, one of ordinary
skill in the art would have found it obvious to modify Wahr to include the
Devellian anchor structure.
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Claim 5—Obviousness—Wahr/Devellian/Chanduszko/Adams
Claim 5 depends indirectly from claim 1. The Examiner does not rely
on Adams in any manner that cures the deficiencies in the teachings of
Devellian relative to claim 1. Accordingly, the rejection of claim 5 over
Wahr, Devellian, Chanduszko, and Adams is not sustained.
DECISION
The rejections of claims 1—10 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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