Ex Parte Ginn et alDownload PDFPatent Trial and Appeal BoardMay 4, 201812841100 (P.T.A.B. May. 4, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/841, 100 07/21/2010 Richard S. Ginn 30764 7590 05/08/2018 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200 SAN DIEGO, CA 92130 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. 35SH-178437 1359 EXAMINER LYNCH, ROBERT A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/08/2018 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): DOCKETING@SHEPPARDMULLIN.COM SheppardMullin_Pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD S. GINN, NICANOR DOMINGO, HANS F. VALENCIA, ROBERT ELLIOT DECOU, and SCOTT YERBY Appeal2017-008547 1 Application 12/841, 100 Technology Center 3700 Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL 2 The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 37--45 and 47-51. We have jurisdiction under 35 U.S.C. § 6(b ). The Appellants' representative appeared via telephone for oral hearing in this appeal on April 26, 2018. We REVERSE. 1 We note related appeal 2017-005461, application 12/947,543. 2 Throughout this Decision, we refer to the Appellants' Appeal Brief ("Appeal Br.," filed Mar. 24, 2017), Reply Brief ("Reply Br.," filed May 26, 2017), and Specification ("Spec.," filed July 21, 2010), and to the Examiner's Answer ("Ans.," mailed May 17, 2017) and Final Office Action ("Final Act.," mailed Dec. 21, 2016). 3 According to the Appellants, the real party of interest is ProMed, Inc. Appeal Br. 2. Appeal2017-008547 Application 12/841, 100 STATEMENT OF THE CASE The Appellants' invention "relates generally to closure of surgically created vascular access ports or holes, such as arteriotomies, and more specifically to closure technologies pertinent to relatively large surgically- created access defects." Spec. 1, 11. 13-16. Claims 37 and 49 are the independent claims on appeal. Claim 37 (Appeal Br. 10 (Claims App.)) is illustrative of the subject matter on appeal and is reproduced below: 37. An assembly for closing a hole in a blood vessel compnsmg: (a) an elongate deployment member configured to pass through a hole in a blood vessel comprising a proximal portion and a distal portion, said distal portion being capable of moving from a first configuration wherein said distal portion is substantially aligned with said proximal portion to a second configuration wherein the distal portion is rotated to form an angle with said proximal portion, and (b) a closure device removably coupled to the distal portion of said deployment member comprising: (i) an expandable scaffold member that, when expanded from a first compressed state to a second expanded state, forms a generally cylindrical tubular member in the expanded state defining a lumen having a discontinuous surface and having first and second open ends, said scaffold being free of any element which would constrain its expans10n; (ii) a cover member coupled to the scaffold member to provide a substantially continuous surface over a portion of the circumference of the discontinuous surface of the scaffold in its expanded state without closing the first and second 2 Appeal2017-008547 Application 12/841, 100 ends thereof or obstructing the lumen thereof, wherein said cover does not constrain the expansion of said scaffold; (iii) wherein the scaffold member is provided with a loop configured to serve as a point of engagement for a coupling element capable of coupling said scaffold to said cover; and (iv) wherein the cover member is configured to occlude a hole in a blood vessel when the scaffold is expanded within the vessel. REJECTIONS 4 Claims 37, 39--45, 47, and 49-51 stand rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Teichman (US 2012/0253387 Al, pub. Oct. 4, 2012). Final Act. 3. Claim 38 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Teichman and Hashi (US 2010/0070020 Al, pub. Mar. 18, 2010). Id. at 8. Claim 48 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Teichman and Sherman (US 2008/0004653 Al, pub. Jan. 3, 2008). Id. at 9. ANALYSIS We agree with the Appellants' contention that the Examiner has not adequately shown that Teichman discloses the assembly comprising a closure device removably coupled to a distal portion of an elongated 4 The rejection under 35 U.S.C. § 112 has been withdrawn. Adv. Act. mailed Feb. 1, 2017. 3 Appeal2017-008547 Application 12/841, 100 deployment member, as recited in independent claims 37 and 49. See Appeal Br. 5---6; Reply Br. 3--4. The Examiner finds that Teichman's expandable device 18 meets the claimed closure device, and its positioning tube 25 meets the claimed elongated deployment member. Final Act. 3--4. The Examiner appears to find that positioning tube 25 passing through aperture 28 meets the claimed coupling. See Ans. 2. Specifically, the Examiner finds Teichman's "aperture 28 formed/defined by frame arcs 40,42 that [sic] are biased to a closed position and thereby affirmatively clamp or couple the positioning tube 25 to the closure device 18 ([0084])." Id. (citing Teichman, Fig. 9). The Examiner further finds that Teichman's "stent-graft device 18 is 'attached' to the positioning tube 25 ([0072]) and that such an attachment allows a withdrawal of the positioning tube 25 to also maneuver and withdraw the closure device 18 into position against the vascular access site ([0073])." Id. at 2-3. Teichman discloses a device for closure of a vascular access site including radially expandable device 18 and delivery catheter 16 for the device. Teichman, Abstract, i-fi-f l 0, 71. Radially expandable device 18 can expand to assume a tubular configuration (id. i-fi-1 59---60) and can be fabricated as "two opposing expandable rings connected via rods or struts" (id. i1 61 ). The tubular structure of device 18 can be covered with a graft on its external or internal surface, the graft "glued, stitched or cast onto a unitary sub frame (e.g. stent or strut-interconnected rings) or a sub frame including two discrete rings." Id. i163. Catheter 16 includes lumen 24 within which is device 18. Id. i171. "[G]uide wire 20 is threaded within a positioning tube 25 which runs through lumen 24 (within internal tube 23, 4 Appeal2017-008547 Application 12/841, 100 described below) of delivery catheter and through an aperture 28 of device 18; guide wire exits system 10 through a distal end 30 of device 18." Id. "[W]hen internal tube 23 is advanced distally, it pushes device 18 with attached positioning tube 25 out of the outer housing of delivery catheter 16." Id. i-f 72. Once device 18 is exposed, it is maneuvered into position by pulling positioning tube 25. Id. i-f 73. Tube 25 also serves to route guide wire 20 through catheter 16 and into device 18 through aperture 28. Id. The Examiner does not adequately show that Teichman discloses that a distal portion of elongate deployment member 25 is coupled to device 18, as claimed. See Appeal Br. 5. Although Teichman discloses that positioning tube 25 is attached to device 18 (Teichman i-f 72), the Examiner does not adequately explain how this discloses device 18 removably coupled to a distal portion of tube 25. The Examiner's finding that "such an attachment allows a withdrawal of the positioning tube 25 to also maneuver and withdraw the closure device 18 into position against the vascular access site ([0073])" does not address how Teichman discloses that the attachment allows for tube 25 to be separated or removed from device 18, i.e., that tube 25 and device 18 are removably attached. One of ordinary skill in the art would not understand, from the cited portions of Teichman, that tube 25 and device 18 are removably coupled at a distal end of tube 25. Based on the foregoing, we do not sustain the Examiner's rejection under 35 U.S.C. § 102(e) of independent claims 37 and 49 and dependent claims 39--45, 47, 50, and 51. We also do not sustain the rejections under 35 U.S.C. § 103(a) of dependent claims 38 and 48, which rely on the same inadequately supported finding. 5 Appeal2017-008547 Application 12/841, 100 DECISION The Examiner's rejection of claims 37, 39--45, 47, and 49-51 under pre-AIA 35 U.S.C. § 102(e) is REVERSED. The Examiner's rejections of claims 38 and 48 under pre-AIA 35 U.S.C. § 103(a) are REVERSED. REVERSED 6 Copy with citationCopy as parenthetical citation