Ex Parte Finch et al

Patent Trial and Appeal Board

Mar 29, 2017

12954529 (P.T.A.B. Mar. 29, 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.
12/954,529 11/24/2010 Matthew J. Finch 12679-700.507 5591
66854 7590 03/31/2017
SHAY TtT FNN T T P
EXAMINER
2755 CAMPUS DRIVE DAVID, SHAUN L
SUITE 210
SAN MATEO, CA 94403 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
info@ shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. FINCH and EDWARD MCNAMARA
Appeal 2015-002616
Application 12/954,529
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew J. Finch and Edward McNamara (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 3, 7—9, 11, 20-
25, and 28.1 Claims 1, 2, 4—6, 10, and 12—19 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The cover sheet for the Final Action erroneously omits claim 20 from the
claims under rejection. Final Act. 1.
Appeal 2015-002616
Application 12/954,529
THE INVENTION
Appellants’ claimed invention is directed to a method of deploying an
implantable prosthesis. Claim 20, reproduced below, is illustrative:
20. A method of deploying an implantable prosthesis in a
patient via a catheter, the method comprising:
attaching an inner control wire of the catheter to a first portion
of a control device;
attaching an outer sheath of the catheter to a second portion of
the control device;
advancing the catheter to a desired location adjacent to the atrial
septum of the patient, such that a tip of the catheter is in the left
atrium;
verifying the desired location via a non-invasive imaging
technique;
retracting the outer sheath a first instance of a fixed length by a
first actuation of the control device and exposing a left atrium
flange and legs of the implantable prosthesis in the left atrium;
and
retracting the outer sheath a second instance of a fixed length
by a second actuation of the control device and exposing a right
atrium flange and legs of the implantable prosthesis in the right
atrium,
wherein the first and second fixed lengths are determined by
fixed lengths of a track in the control device.
THE REJECTIONS
The Examiner rejects:
(i) claims 3, 7, 8, 20, 22, 24, 25, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Pavcnik (US 2010/0030259 Al,
published Feb. 4, 2010) in view of Dwyer (US 6,395,017 Bl, issued
May 28, 2002);
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Application 12/954,529
(ii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable
over Pavcnik in view of Dwyer and Glenn (US 2007/0209957 Al,
published Sep. 13, 2007);
(iii) claim 23 under 35 U.S.C. § 103(a) as being unpatentable
over Pavcnik in view of Dwyer and Das (US 6,077,281, issued June
20, 2000);
(iv) claim 11 under 35 U.S.C. § 103(a) as being unpatentable
over Pavcnik in view of Dwyer and Gerberding (US 2010/0094335
Al, published Apr. 15, 2010); and
(v) claim 21 under 35 U.S.C. § 103(a) as being unpatentable
over Pavcnik in view of Dwyer and Callaghan (US 2006/0122647 Al,
published June 8, 2006).
A rejection of claims 2, 3, and 25—28 under 35 U.S.C. § 112,
second paragraph, appearing in the final action is indicated as having
been overcome. Adv. Act. 1 (dated May 16, 2014).
ANALYSIS
Claims 3, 7, 8, 20, 22, 24, 25, and 28—Obviousness—Pavcnik/Dwyer
Appellants argue these rejected claims as a group, presenting
arguments only directed to the subject matter of independent claim 20.
Appeal Br. 4—10. No arguments for the separate patentability of any of the
dependent claims are presented. Id. at 10. We treat claim 20 as
representative of the group, and claims 1—3, 7, 8, 22, 24, and 25—28 stand or
fall with claim 20.
The Examiner proposes to modify Pavcnik to include a control handle
having fixed length tracks as taught in Dwyer, in order to better ensure that
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Application 12/954,529
the implant will not deploy prematurely, but only when satisfactory
placement is achieved, as well as to allow the device to be operated by feel.
Final Act. 7—8. The Examiner further concludes that it would have been
obvious to make this modification in order to limit the amount of retraction
that the sheath can undergo, aiding in preventing improper deployment of
the device. Adv. Act. 2; see also Ans. 6—8.
Appellants argue that the reason to modify Pavcnik in view of Dwyer
advanced by the Examiner is based on an incorrect understanding or
mischaracterization of the Pavcnik device. Appeal Br. 6—9; Reply Br. 2-4.
Appellants maintain that Pavcnik already includes a safety feature that
prevents inadvertent or premature deployment of the closure device carried
within a catheter. Appeal Br. 7. Appellants thus assert that a person of
ordinary skill in the art would have no reason to modify Pavcnik based on
the teachings of Dwyer to provide a function already provided in Pavcnik.
Id. at 9.
Appellants’ arguments focus too heavily on the embodiment shown in
Figures 7b and 7c of Pavcnik, which, as acknowledged by Appellants,
includes an additional safety feature preventing premature disengagement of
the closure device from one or more anchors. Appeal Br. 7—8, citing
Pavcnik, para. 152. Appellants’ arguments also presume that deployment of
the closure device will be effected correctly, as illustrated in the sequence in
Figures 9A—9E.
In contrast, part of the Examiner’s reason to modify Pavcnik, to limit
the amount of retraction for each stage of deployment, and to allow this to be
done by feel, is precisely so that the chances of improperly deploying the
closure device are greatly reduced. See Ans. 3—6. In addition, while, as
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Application 12/954,529
Appellants point out, the embodiment of Figure 7B of Pavcnik includes a
further safety feature (locking catheter sheath 64) that will prevent anchor 22
from deploying prematurely even after delivery catheter 54 is retracted away
from that anchor, the embodiment of Figure 7 A of Pavcnik, as discussed by
the Examiner, does not have such a safeguard—anchor 22 will deploy
immediately upon retraction of delivery catheter 54 therefrom. Pavcnik,
Figures 7A, 7B, 9C. Accordingly, the Examiner’s stated reasons to modify
Pavcnik in view of Dwyer provides a benefit to any of the embodiments
disclosed in Pavcnik, and provides an additional benefit in the instance of
the Figure 7A embodiment.
Appellants argue that the Examiner must do more than identify a
benefit from a combination of features shown in different references, and
“must also show that a skilled artisan would have been motivated ... to
create that combination.” Appeal Br. 6; Reply Br. 5. Appellants appear to
be asserting that a rigid application of a “teaching, suggestion, motivation”
test is to be applied. This argument is foreclosed by KSR International Co.
v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid
requirement of a teaching or suggestion or motivation to combine known
elements in order to show obviousness. KSR Int’l Co., 550 U.S. at 415.
KSR, citing to In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006), requires only
that a reason to combine be articulated and be supported by rational
underpinnings. KSR Int’l Co., 550 U.S. at 418.
Appellants eventually appear to recognize this at the conclusion of the
arguments presented. Reply Br. 7. We do not agree, however, with
Appellants’ characterization of the Examiner’s stated reason to combine as
being conclusory and insufficient to establish the obviousness of claim 20.
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We have considered all other ancillary arguments presented by
Appellants, including the indirect attempts to paint Dwyer as nonanalogous
art, and do not find that they point to error on the Examiner’s part. The
same applies with respect to Appellants’ arguments to the effect that Pavcnik
does not inherently operate using two distinct retraction steps. Reply Br. 6—
7. Figure 9B of Pavcnik illustrates a retraction step that exposes covered
frame 14 outside delivery catheter 54, whereas Figure 9C illustrates that a
second retraction step, which additionally exposes anchor 22 as well as
additional components, is effected in deploying the closure device.
In view of the foregoing, we are not apprised of Examiner error in the
rejection of claim 20 as being unpatentable over Pavcnik and Dwyer. The
rejection is sustained. Claims 3, 7, 8, 20, 22, 24, 25, and 28 fall with claim
20.
Claim 9—Obviousness—Pavcnik/Dwyer/Glenn
Appellants do not present any additional substantive arguments
directed to claim 9. Appeal Br. 10. Accordingly, the rejection of claim 9
over Pavcnik, Dwyer, and Glenn is sustained for the same reasons presented
above relative to the rejection of claim 20.
Claim 23—Obviousness—Pavcnik/Dwyer/Das
Appellants do not present any additional substantive arguments
directed to claim 23. Appeal Br. 10—11. Accordingly, the rejection of claim
23 over Pavcnik, Dwyer, and Das is sustained for the same reasons
presented above relative to the rejection of claim 20.
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Claim 11—Obviousness—Pavcnik/Dwyer/Gerberding
Appellants do not present any additional substantive arguments
directed to claim 11. Appeal Br. 11. Accordingly, the rejection of claim 11
over Pavcnik, Dwyer, and Gerberding is sustained for the same reasons
presented above relative to the rejection of claim 20.
Claim 21—Obviousness—Pavcnik/Dwyer./Callaghan
Appellants do not present any additional substantive arguments
directed to claim 21. Appeal Br. 11. Accordingly, the rejection of claim 21
over Pavcnik, Dwyer, and Callaghan is sustained for the same reasons
presented above relative to the rejection of claim 20.
DECISION
The rejections of claims 3, 7—9, 11, 20-25, and 28 under 35 U.S.C.
§ 103(a) are 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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