Ex Parte Duffy et al

Patent Trial and Appeal Board

Mar 30, 2017

12768124 (P.T.A.B. Mar. 30, 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.
12/768,124 04/27/2010 Niall Duffy P0035321.00 4990
77218 7590 04/03/2017
MeHtrnnio Vasionlar - APV Division
EXAMINER
c/o IP Legal Department
3576 Unocal Place
PREBILIC, PAUL B
Santa Rosa, CA 95403 ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
rs. docketingap v @ medtronic .com
medtronic_apv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIALL DUFFY, YUEQIANG XUE,
and LUKE HUGHES
Appeal 2015-007809
Application 12/768,124
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Niall Duffy et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 3—5, and 7.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Medtronic, Inc. is identified as the real party in interest. Appeal Br. 2.
2 Claims 2, 6, and 8—20 have been withdrawn from consideration. Final
Act. (Office Action Summary).
Appeal 2015-007809
Application 12/768,124
INVENTION
Claim 1 is representative of the claimed subject matter, and reads:
1. A chordae support device for repairing the native chordae
of a mitral valve, the device comprising:
an elongated member having first and second ends;
a first anchor extending from the first end of the elongated
member, the first anchor comprising a first member at the first
end of the elongated member and a second member spaced from
the first member, wherein the first and second members are
configured to contact tissue when the first anchor is engaged, and
wherein the first and second members in a deployed
configuration are slideably moveable relative to each other along
the elongated member; and
a second anchor spaced from the first anchor and slideably
moveable along the elongated member relative to the first
anchor,
wherein the first anchor is configured to engage the mitral
valve, and wherein the second anchor is configured to engage a
papillary muscle or an apex of a heart.
Appeal Br. 11 (Claims App.).
REJECTION3
Claims 1, 3—5, and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or, alternatively, under 35 U.S.C. § 103(a) as unpatentable
over, Nelson (US 2007/0265658 Al, published Nov. 15, 2007).
ANALYSIS
Anticipation
As to claim 1, the Examiner finds that Nelson discloses a device
comprising an elongate member (tether 50), a first anchor (proximal anchor
3 The rejection of claims 1, 3—5, and 7 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, has
been withdrawn. Ans. 2; Adv. Act. 1 (filed Dec. 31, 2014).
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Application 12/768,124
30) including a first member (first expanded diameter portion 32, hereinafter
“first portion 32”) and a second member (second expanded diameter portion
34, herein after “second portion 34”), and a second anchor (distal anchor
20). Final Act. 4 (citing Nelson || 66—71, 73, 82, 85, 89, Figs. 1—5, 8). The
Examiner finds that Nelson describes that first and second portions 32, 34
are “stretched into an elongate shape for delivery via a catheter and return to
the shape shown in FIG. 3 automatically when deployed from the catheter
and unconstrained by the inside wall of the catheter.” Id. (citing Nelson
| 69) (italics omitted). The Examiner interprets this description to mean that
before first and second portions 32, 34 are fixed to tether 50, they are
“slideably moveable relative to each other,” as claimed, along tether 50. Id.
The Examiner determines that first and second portions 32, 34 “must slide
relative to each other to move from the delivery configuration to the
deployed configuration.” Id.
Appellants contend that that Nelson does not disclose or suggest the
limitation “the first and second members [of the first anchor] in a deployed
configuration are slideably moveable relative to each other along the
elongated member.” Appeal Br. 5 (emphasis added). Appellants reference
Figures 3 and 8 of Nelson and contend that first portion 32 and second
portion 34 of anchor 30 cannot slide along tether 50 relative to each other.
Id. Rather, Appellants contend, “because first and second portions 32, 34
are connected to each other by neck 36,”4 they can only slide along tether 50
4 More accurately, Nelson states: “As is also shown in FIG. 3, the anchor
30 has a first expanded diameter portion 32 and a second expanded diameter
portion 34 separated by a neck 36 of an appropriate length.” Nelson 170
(emphasis added).
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Application 12/768,124
together. Id. (emphasis added). Appellants further contend that paragraph
69 of Nelson does not mention that first and second portions 32, 34 slide
along tether 50 relative to each other. Id. at 6. Appellants contend that the
Examiner fails to establish that first and second portions 32, 34 return (i.e.,
expand from a compressed configuration) to the deployed shape shown in
Figure 3 from the “elongated shape” by sliding along tether 50 relative to
each other. Id. at 6—7.
Paragraph 69 of Nelson, which describes the embodiment of Figure 3,
provides no indication that either first portion 32 or second portion 34 is
“slideably moveable” relative to the other. The teaching that first and
second portions 32, 34 each return from a stretched, elongated shape to the
shape shown in Figure 3 (i.e., change shape) does not establish that these
portions undergo sliding movement relative to each other when moving from
the delivery configuration to the deployed configuration.
Additionally, Appellants contend that Nelson does not teach that first
and second portions 32, 34 of anchor 30 are slideably movable relative to
each other “in a deployed configuration,” as claimed. Appeal Br. 7—8.
Appellants contend that the Examiner’s statement, in contrast, recognizes
that the alleged sliding movements of first and second portions 32, 34
relative to each other does not occur in the deployed configuration, but
occurs “from the delivery configuration to the deployed configuration.” Id.
at 8 (citing Final Act. 4,11. 8—16). The Examiner responds that “‘deployed’
is merely a statement of intended use.” Ans. 4.
Claim 1 recites that “the first and second members are configured to
contact tissue when the first anchor is engaged, and wherein the first and
second members in a deployed configuration are slideably moveable relative
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Application 12/768,124
to each other along the elongated member.” (Emphasis added). Regarding
the meaning of a “deployed configuration,” Appellants state:
This deployed configuration is explained as when a
compression force on the members/discs 182, 186 is removed
to allow the discs 182, 186 to expand to their original shape and
size. Therefore, this describes a structure that the first and
second members must be slideable relative to each other when
the first and second members are expanded/deployed.
Reply Br. 3 (emphasis added); see also Appeal Br. 4—5 (describing
expansion/deployment of first and second members/discs 184, 186).
The Specification describes relative movement of discs 184, 186 of
anchoring mechanism 180 after “the discs expand back toward their original
shape and size,” stating “[a]fter the discs 184, 186 are positioned on opposite
sides of a tissue and allowed to expand, they can then be moved closer
together in order to capture the tissue and secure the wire portion 182 in its
final position relative to the patient’s anatomy.” Spec. 143 (emphasis
added); see also id. Tffl 44-45, Figs. 10-11. Appellants’ explanation of the
meaning of “a deployed configuration” of the first and second members is
consistent with this disclosure.
Furthermore, Nelson describes first and second portions 32, 34 have
the shape shown in Figure 3 “when deployed from the catheter,” indicating
that the term “deployed” corresponds to the depicted, expanded structure of
first and second portions 32, 34. Nelson | 69.
The Examiner also references paragraph 73 of Nelson. Ans. 3. This
paragraph describes the embodiment of Figure 5 (emphasis added):
As shown, the distal end 52 of the tether 50 is fixed to clamp 44
of the anchor 40 and passes through and is in slidable
engagement with the clamp 44 of anchor 41. This slidable
engagement is a temporary condition necessary for the tether 50
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Application 12/768,124
to be pulled tight between the two anchors 40 and 41 and so that
the anchors 40 and 41 and tether 50 can cooperate to draw
together the two walls to which the anchors are respectively
coupled.
The Examiner indicates that this paragraph describes how one clamp 44 is
fixed and another clamp 44 is slidable such that the ends can be drawn tight.
Ans. 3. The Examiner further indicates that paragraphs 85 and 86 of Nelson
suggest distal clamp 38 is fixed while proximal clamp 36 is not fixed until
the device is at a proper location. Id.
Appellants respond that this disclosure regarding clamps 36, 38 has no
relation to the movement of first portion 32 and second portion 34 relative to
each other. Reply Br. 2; see also Nelson, Fig. 3. Rather, Appellants
contend, “[w]ith the clamps 38, 36 not fixed, the first and second portions
32, 34 are free to move, together, along tether (50). Id.
We agree with Appellants that paragraphs 85 and 86 of Nelson do not
disclose that first portion 32 and second portion 34 of anchor 30 can slide
relative to each other along tether 50. Paragraph 73 of Nelson describes the
embodiment in Figure 5 including separate anchors 40, 41, neither having
separate portions as shown in Figure 3, and as called for in claim 1.
Thus, the Examiner does not establish that Nelson discloses all
limitations of claim 1. We do not sustain the rejection of claim 1, and claims
3—5 and 7 depending therefrom, as anticipated by Nelson.
Obviousness
Alternatively, the Examiner determines that because Nelson teaches
making slideably separable opposed anchors 40, 41 (Figure 5), it would have
been obvious to make first and second portions 32, 34 (of anchor 30)
separable “for the same reasons that Nelson et al does the same in the other
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Application 12/768,124
embodiment,” or because this would have been “a mere combination of
known features to yield a predictable result.” Final Act. 5.
Although Appellants acknowledge the Examiner’s obviousness
rejection (Appeal Br. 3), they do no more than contend that Nelson does not
“suggest” the claimed invention (id. at 5) and that “the Examiner has not met
his burden of showing the each and every feature of claim 1 of the present
application is . . . obvious in view of Nelson (id. at 7).” However, there is no
requirement that Nelson provide an explicit teaching, suggestion, or
motivation, as this is not test for obviousness. The Supreme Court has stated
that a rigid insistence on teaching, suggestion, or motivation is incompatible
with its precedent concerning obviousness. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). The Examiner’s obviousness rejection is not
predicated on a position that Nelson suggests the claimed invention.
Appellants do not address, and, thus, fail to point out error in, the
Examiner’s reasoning. Accordingly, we sustain the rejection of claim 1, and
claims 3—5 and 7 depending therefrom, as unpatentable over Nelson.
DECISION
The Examiner’s decision to reject claims 1, 3—5, and 7 under 35
U.S.C. § 102(b) as anticipated by Nelson is reversed.
The Examiner’s decision to reject claims 1, 3—5, and 7 under 35
U.S.C. § 103(a) as unpatentable over Nelson is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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