Ex Parte Fitz et alDownload PDFPatent Trial and Appeal BoardJan 21, 201612180834 (P.T.A.B. Jan. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/180,834 07/28/2008 Matthew Fitz 37374 7590 01/25/2016 INSKEEP INTELLECTUAL PROPERTY GROUP, INC 2281W.190TH STREET SUITE 200 TORRANCE, CA 90504 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. 388700-507 1816 EXAMINER SHI, KATHERINE MENGLIN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 01125/2016 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): inskeepstaff@inskeeplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW FITZ, CATHY LEI, JOSEPH GULACHENSKI, MARICRUZ CASTANEDA, and GARY CURRIE Appeal2014-000085 Application 12/180,834 Technology Center 3700 Before: CHARLES N. GREENHUT, JILL D. HILL, and JASON W. MELVIN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 10, 22, and 24--31. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. The claims are directed to a detachable coil incorporating stretch resistance. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-000085 Application 12/180,834 1. A detachable implant delivery system comprising: a delivery device having a distal end and a heater proximate said distal end; an implant attached to said distal end of said delivery device, wherein said implant defines a lumen; a stretch-resistant member characterized by a single monofilament connecting said delivery device and said implant, said stretch-resistant member passing through said lumen and attached to said implant near a distal end of said implant, and tied to said implant making a knot near a proximal end of said implant, said stretch-resistant member continuing proximally in operable proximity to said heater, such that upon activation of said heater, said stretch-resistant member breaks, releasing said implant. REJECTION 1 Claims 1-10, 22, 24--31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fitz (US 2006/0052815 Al, pub. Mar. 9, 2006) and Simon (US 2007/0239193 Al, pub. Oct. 11, 2007). OPINION The claims are argued as a group. We select claim 1 as representative. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). 1 The Final Office Action of November 7, 2012 rejected the pending claims under 35 U.S.C. § 112, first paragraph. Final Act. 2. Appellants filed an After-Final Amendment on March 4, 2013, essentially adopting certain recommendations that the Examiner suggested to overcome this rejection. The Advisory Action mailed March 28, 2013, indicated that, for purposes of this appeal, the After-Final Amendment would be entered. Although there does not appear to be any express indication of record, the Examiner appears to consider the After-Final Amendment to render the rejection under 35 U.S.C. § 112, first paragraph moot, as this rejection is not addressed in the Examiner's Answer. We do not consider the rejection under 35 U.S.C. § 112, first paragraph as being before us for review. 2 Appeal2014-000085 Application 12/180,834 The Examiner rejected claim 1, determining that it would have been obvious to incorporate a secondary fixation location, as taught by Simon, into Fitz, in order to prevent unwanted stretching of the implant. Final Act. 3--4. Although Appellants argue that the Examiner distilled the invention down to its "gist" (App. Br. 11 ), Appellants do not identify any specific language of the claim left unsatisfied if the Examiner's proposed modification to Fitz were made. Appellants' main argument is that the Examiner's proposed combination would destroy the so-called "cue" functionality of Simon, produced due to the presence of slack in Simon's stretch-resistant member. Id. at 7. As the Examiner correctly points out, this argument does not address the rejection set forth by the Examiner which involves a proposed modification to Fitz, not Simon. Ans. 7-9. It is true that a proposed modification that impairs or destroys functionality for an intended purpose may be indicative of the improper use of hindsight in an obviousness analysis. App. Br. 10-11. However, hindsight in the Examiner's analysis is not demonstrated by arguing against a combination never proposed by the Examiner. In any case, Appellants' arguments are based on extrapolating, from two sentences of a single paragraph (55) of Simon, a device that is inconsistent with the express teachings of Simon, taken as a whole. Id. at 6- 9. Slack in Simon's filament 30 is felt because of the interaction of Simon's hook 67 with the loop into which filament 30 is formed. Paras. 49-55; Fig. 6. As recognized by the Examiner, a secondary fixation location of the filament would not necessarily hinder the physicians' ability to feel slack due to the filament-hook interface. Adv. Act. 2. In fact, as the Examiner 3 Appeal2014-000085 Application 12/180,834 correctly points out, Simon itself suggests multiple attachment locations for the filament. Final Act. 4; Ans. 6 (both citing Simon paras 49--51). In doing so, Simon suggests only a location distal of the attachment junction 60. Appellants argue that "the combined Fitz/Simon device will always have a constant amount of slack between the proximal filament attachment point on [sic and] the distal end of the pusher member." App. Br. 8. In order for Appellants' supposition that to be true, both sides of Simon's filament loop would need to be fixed at locations distal to the hook-filament interface. Appellants' argument again does not address the Examiner's basis for rejection. It is only Appellants, and not the Examiner, that propose a modification that involves non-slack-transmitting knots placed at a specific location to destroy the slack-observing interface of the filament and hook. Simon may teach away from the absence of slack (id. at 9--10), but it is only Appellants, and not the Examiner, that proposes such an arrangement. As noted above, Simon itself suggests multiple attachment locations for the filament. We cannot agree with Appellants that the only way to effectuate this would be to do so in a manner that destroys functionality Simon regards as desirable. Adv. Act. 2. We recognize that Simon does not disclose that knot 35 is connected to the coil 50. App. Br. 5. However, merely as an alternate example of how Appellants propose to provide a secondary knot, a proximal connection at that location (near reference numeral 35 in Figure 6) would not hinder the hook-filament interface's slack indicating ability. Appellants' arguments are based on the shortcomings of an arrangement only they propose to make. As far as Appellants' attack on the Examiner's first rationale for making the proposed combination, the Examiner correctly points out that 4 Appeal2014-000085 Application 12/180,834 "unwanted stretching" is not, as Appellants suggest (App. Br. 7-8), only that stretching that might occur prior to deployment (Final Act. 4). It is stretching from the secondary or relaxed configuration into an undesired (non-relaxed) state that is discouraged by Simon's stretch resistant member. Ans. 10; Adv. Act. 2; Final Act. 4 (citing Simon para. 42); see also Simon para. 54. It is undisputed that Simon's proximally and distally attached stretch-resistant member can provide this function. As diameter uniformity would be affected by unwanted stretching, there is also a rational basis for the Examiner's alternate reason for making the proposed modification. Adv. Act. 2 (citing Simon para. 26); Ans. 10. We recognize that when Simon elaborates on exactly why the diameter is more uniform, it is due to the absence of heat treating as opposed to the presence of a knot. App. Br. 8-9; Simon para. 52. However, first, though not expressly stated by Simon, it is reasonably implied that the anchor and knots facilitate avoiding heat-treatment. Second, the Examiner need not rely on only the benefits expressly stated in a reference to support an obviousness rejection. "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). Either of the rationales discussed above supports the Examiner's conclusion of obviousness. We note that the amount of rebuttal to include in an Examiner's Answer is a matter of discretion. See Reply Br. 6-9; MPEP § 1207.02. The absence of an elaborate response, particularly to unsupported arguments, is not necessarily prejudicial. We review appeals on the totality of the record with due consideration to all evidence and 5 Appeal2014-000085 Application 12/180,834 argument before us. On that record, we agree with the Examiner's factual findings, analysis, and legal conclusions. DECISION The Examiner's rejection 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 cda 6 Copy with citationCopy as parenthetical citation