Ex Parte Farnan et al

Patent Trial and Appeal Board

Sep 12, 2016

13022105 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/022,105 02/07/2011
26875 7590 09/14/2016
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Robert C. Farnan
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.
CIRC-15DV 6043
EXAMINER
CAREY, MICHAEL JAMES
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. FARNAN, OLIVER MARSEILLE,
and WOLFGANG KERKHOFFS 1
Appeal2014-008349
Application 13/022, 105
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of inserting an inflow cannula which have been rejected as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Real Party in Interest as CircuLite, Inc. (Br. 1.)
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Application 13/022, 105
STATEMENT OF THE CASE
Appellants' "invention generally relates to medical devices and
methods and, more particularly, to methods and devices for fluid coupling to
the heart of a patient in systems for assisting blood circulation in a patient."
(Spec. ii 2.)
Claims 1-13 are on appeal. Claim 1 is illustrative:
1. A method of inserting an inflow cannula having a lumen
into a chamber in a heart of a patient comprising:
inserting an insertion device into the lumen of the inflow
cannula wherein at least a portion of a tip of the insertion device
protrudes beyond a distal end portion of the inflow cannula, the
insertion device further including a shaft, with the tip being
secured to a distal end portion of the shaft, and an expandable
member coupled to the distal end portion of the shaft;
expanding the expandable member to releasably secure the
inflow cannula to the insertion device; and
inserting the tip of the insertion device and the distal end
portion of the inflow cannula into the chamber of the heart by
pushing the insertion device through a wall of the heart and into
the chamber while the inflow cannula is releasably secured to the
insertion device.
(Br. 10 (Claims App'x).)
Claims 1-13 are rejected under 35 U.S.C. § 102(b) as anticipated by
Nissenbaum. 2
2 Nissenbaum et al., US 6,669,708 Bl, issued Dec. 30, 2003
("N issenbaum").
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Application 13/022, 105
DISCUSSION
Appellants' independent claims 1 and 10 require, inter alia,
"expanding the expandable member to releasably secure the inflow cannula
to the insertion device." (Br. at 10, 12 (Claims App'x).) Independent claim
8 requires, inter alia, "temporarily securing a distal end portion of an
insertion device to a distal end portion of the inflow cannula." (Id. at 11
(Claims App'x).)
Additionally, independent claim 1 requires "inserting the tip of the
insertion device and the distal end portion of the inflow cannula into the
chamber of the heart by pushing the insertion device through a wall of the
heart and into the chamber while the inflow cannula is releasably secured to
the insertion device." (Id. at 10 (Claims App'x).) Independent claim 8
similarly requires "inserting a tip of the insertion device and the distal end
portion of the inflow cannula into the chamber of the heart by pushing the
insertion device through a wall of the heart and into the chamber while the
inflow cannula is releasably secured to the insertion device," and
independent claim 10 similarly requires "inserting at least the tip of the
insertion device and the distal end portion of the cannula through the
biologic tissue by pushing the insertion device through the biologic tissue
while the inflow cannula is releasably secured to the insertion device." (Id.
at 12 (Claims App'x).)
The Examiner finds that Nissenbaum discloses
inserting the tip of the insertion device and the distal end portion
of the inflow cannula into the chamber of the heart (Fig. 12) by
pushing the insertion device through a wall of the heart and into
the chamber while the inflow cannula is releasably secured to the
insertion device (Fig. 13, cannula 80 remains inserted after
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Application 13/022, 105
balloon 40 is deflated and assembly 2, which includes the
insertion device 10, is removed).
(Final Act. 3--4; see also Final Act. 5-6.)
Appellants argue that Nissenbaum does not disclose all of the
elements of claims 1, 8, and 10. According to Appellants, "[ u ]nlike
Nissenbaum' s volumetric sheath 50 and perforating instrument 10,
Appellants' claimed inflow cannula is releasably secured to the insertion
device during insertion into biologic tissue." (Br. 6.) Appellants contend
that "[t]he Examiner now considers the prepared communication channel 80
ofNissenbaum as the claimed inflow cannula" but "[t]his slightly altered
construction ofNissenbaum remains inadequate, and is clearly erroneous."
(Id. at 7.) Appellants argue that "in Nissenbaum, prepared communication
channel 80 and perforator instrument 10 are free to move axially relative to
one another when the balloon appliance 40 is in the deflated state" and that
"[h]owever, when the balloon appliance is inflated, the balloon 40 'will thus
hold the entirety of the prepared communication channel firmly and
indefinitely and prevent the channel [80] from moving linearly until such
time that the balloon 40 is deflated again.' Id. at col. 14, line 67 to col. 15,
line 3 (emphasis added)." (Id. at 7-8.) Appellants argue that, in the device
and method disclosed in Nissenbaum, "[t]he balloon appliance 40 is inflated
only after the perforator instrument 10 and prepared communication channel
80 have been inserted through the wall 102." (Id. at 8.)
In order to anticipate, all of the claim elements and their limitations
must be shown, expressly or inherently, in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
("[U]nless a [prior art] reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
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Application 13/022, 105
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.")
We agree with Appellants that Nissenbaum does not disclose the
method of claims 1, 8, and 10. Claim 1, for example, requires the step of
"inserting the tip of the insertion device and the distal end portion of the
inflow cannula into the chamber of the heart by pushing the insertion device
through a wall of the heart and into the chamber ... while the inflow cannula
is releasably secured to the insertion device." (Br. 10-12 (Claims App'x).)
In other words, the insertion device and inflow cannula are releasably
secured to each other as the tip of the insertion device is being pushed
through the wall of the heart. Claims 8 and 10 include substantially the
same step. In Nissenbaum, in contrast, the structures cited by the Examiner
are not releasably secured to each other at the time the device penetrates the
wall of the hollow organ (e.g., heart). (See Nissenbaum, Figs. 9-10; Br. 6-
7.) Instead, as illustrated in Figures 11 and 12, expandable member 40 of
Nissenbaum is inflated (thus securing perforator instrument 10 to
communication channel 80) only after the device has already been inserted
through the wall of the heart and into the chamber. (Nissenbaum, Figs. 11-
12.)
The Examiner responds to Appellants' argument by asserting that
Fig. 12 ofNissenbaum shows the tip (Element 30) and the distal
portion of the inflow cannula inserted into the chamber of the
heart by pushing the insertion device through a heart wall. Fig.
13 ofNissenbaum shows the deflation of the expandable member
(now Element 40) and the removal of the insertion device while
the inflow cannula remains in the heart. Therefore, the inflow
cannula must be releasably secured if the cannula remains in the
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Application 13/022, 105
heart after the inflation/deflation process of the expandable
member is complete and the insertion device is removed. More
clearly, Fig. 12 ofNissenbaum shows the balloon in an expanded
state and the cannula in a secure state, and Fig. 13 shows the
balloon deflated and the cannula in a released state from the
insertion device.
(Ans. 3.) This response from the Examiner is, however, unpersuasive.
Insofar as the Examiner appears to interpret the phrase "releasably secured"
in the claims as reading on a cannula releasably secured to the heart, we
disagree with such an interpretation. On the record before us, the Examiner
has not sufficiently rebutted Appellants' contention that, in Nissenbaum,
"[t]he balloon appliance 40 is inflated only after the perforator instrument 10
and prepared communication channel 80 have been inserted through the wall
102." (Br. 8.) We thus conclude that the Examiner has not established by a
preponderance of the evidence that Nissenbaum anticipates claims 1, 8, and
10.
For the reasons discussed above; we reverse the rejection of claims 1;
8, and 10. Claims 2-7, 9, and 11-13 all depend (directly or indirectly) from
claim 1, claim 8 or claim 10, so we reverse the rejection as to those claims as
well.
CONCLUSION OF LAW
We reverse the rejection of claims 1-13 under 35 U.S.C. § 102(b) as
being anticipated by Nissenbaum.
REVERSED
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