Ex Parte Ginn et al

Patent Trial and Appeal Board

May 4, 2018

12974543 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/974,543 12/21/2010 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.
OC35SH-l 78829 3909
EXAMINER
SCHERBEL, TODD J
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
Appeal 2017-005461 1
Application 12/974,543
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. 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 2-30. 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 2017-008547, application 12/841, 100.
2 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed July 13, 2015), Reply Brief ("Reply Br.," filed Oct. 6,
2015), and Specification ("Spec.," filed Dec. 21, 2010), and to the
Examiner's Answer ("Ans.," mailed Oct. 2, 2015) and Final Office Action
("Final Act.," mailed Apr. 9, 2015).
3 According to the Appellants, the real party of interest is ProMed, Inc.
Appeal Br. 2.
Appeal2017-005461
Application 12/974,543
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. i-f 2.
Claims 21 and 26 are the independent claims on appeal. Claim 21
(Appeal Br. 19 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below:
21. An apparatus for closing a hole in a vessel comprising:
(a) a closure device that is insertable into the vessel
through the hole, the closure device being expandable from a
substantially cylindrical collapsed state to a substantially
cylindrical expanded state when placed under tension at one or
more locations at its periphery to a geometry sufficient to
substantially occlude the hole;
(b) one or more tensioning members coupled to one or
more peripheral locations on the closure device and capable of
placing the closure device under tension at the peripheral
locations to cause the closure device to expand into the
substantially cylindrical expanded state; and
( c) a cinching member that engages the one or more
tensioning members and is capable of causing them to put the
closure device under tension at said peripheral locations and
expand to the geometry whereby the hole is substantially
occluded and to maintain said closure device in the expanded
state.
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Appeal2017-005461
Application 12/974,543
REJECTIONS 4
Claims 2, 4--7, 9, 11, 12, 14--19, and 21-30 stand rejected underpre-
AIA 35 U.S.C. § 102(b) as being anticipated by Zeiner
(US 2009/0275962 Al, pub. Nov. 5, 2009). Ans. 2.
Claim 3 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Zeiner and Fricke (US 2005/0228408 Al, pub. Oct. 13,
2005). Id.
Claims 8, 10, and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Zeiner and Ken (US 2009/0062848 Al, pub.
Mar. 5, 2009). Id.
Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Zeiner and the Appellants' Admitted Prior Art ("AAP A").
Id.
ANALYSIS
We agree with the Appellants' contention that the Examiner has not
adequately shown that Zeiner discloses a structure that "expand[ s] from a
collapsed substantially cylindrical state to an expanded substantially
cylindrical state when placed under tension by tensioning members," as
recited in independent claims 21 and 26. Appeal Br. 6; see also id. at 7;
Reply Br. 2-3.
The Examiner finds that "Zeiner discloses an apparatus 10 capable of
closing a hole in a vessel" including closure device 12, tensioning
4 The rejections under 35 U.S.C. § 102(b) as being anticipated by Sirota and
under 35 U.S.C. § 103(a) as being unpatentable over Sirota and either Fricke
or Eldar have been withdrawn. Ans. 3.
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Appeal2017-005461
Application 12/974,543
members 18, and cinching member 23. Final Act. 2. The Examiner further
finds that
[t]he closure device is capable of being expanded from a
substantially cylindrical collapsed state (e.g., rolled up state for
delivery at P0052-P0053 which is or is at least capable of being
"substantially cylindrical" and similar to FIG. 18A of this
application) to a substantially cylindrical expanded state
(FIG. 12) when placed under tension at one or more locations at
its periphery to a geometry sufficient to substantially occlude the
hole (capability at P0045 and P0052-P0053; FIG. 11-12).
Id. at 3; Ans. 3. The Examiner finds that because Zeiner's "structures are
essentially the same, Zeiner's closure device is fully capable of the intended
use of being expanded from a substantially cylindrical collapsed state to a
substantially cylindrical expanded state when placed under tension in the
same manner as disclosed in this application." Ans. 4.
Zeiner discloses a device "used to appose tissue through the
application of a sheet of material with a built in tensioning system" that
"bring[ s] the sheet of material from an undeployed configuration to the
desired deployed configuration." Zeiner i-f 2. Applications of the described
apposition system can include "closing surfaces for healing" and for
"partitioning/sealing off cavities." Id. i-f 48. Tensioning system 10
comprises a mesh sheet 12 "that is shaped and dimensioned for surgical
attachment (stapled, sutured, glued, etc.) to surfaces on or within the body
via attachment elements 40." Id. i-f 44. Incorporated into sheet 12 are
multiple tensioning members 18 that each include a first end and a second
end and contain portions that slide relative to the sheet. Id. i-fi-1 44, 45.
Tensioning members 18 are woven to extend from one side of sheet 12 with
the first end to the opposite side of sheet 12 with the second end, such that
pulling on either or both of the ends will cause the edges of sheet 12 to be
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Appeal2017-005461
Application 12/974,543
drawn together. Id. i-f 45. "The desired effect" of pulling both the ends of
tensioning member 18 together and cinching by knotting element 23, is that
"the opposed edges 28, 30 of the sheet 12, which the tensioning member 18
extend[s] between, are brought together." Id. "Once performed, the result
of cinching the first end 22 and second end 24 of the tensioning member 18
together is to transform a sheet 12 that was initially flat into a cylindrical
structure with opposed edges 28, 30 of the sheet 12 in alignment." Id. Mesh
sheet 12 can be compressed and packaged "into a delivery system (small
tube or similar) where it can be delivered to the surgical site." Id. i-f 52. The
sheet 12 would be "positioned in the surgical site and ejected from the
delivery tube and unfolded into the expanded second configuration using
graspers or other tools." Id. i-f 53. Once unfolded, sheet 12 is placed on the
tissue and securely attached along the edges that correspond to the lines of
tissue to be brought together. Id.
The Examiner does not adequately show how Zeiner discloses that the
tensioning members cause the sheet to expand from the collapsed state, as
claimed. See Appeal Br. 6-7. The Examiner equates Zeiner' s "rolled-up"
state of sheet 12, i.e., when sheet 12 is in the delivery tube, with the claimed
"substantially cylindrical collapsed state," and Zeiner's unfolded expanded
second configuration with the claimed "substantially cylindrical expanded
state." Final Act. 3; Ans. 3--4. Zeiner expressly discloses that the tensioning
members can transform an initially flat sheet 12 into a cylindrical structure
when the opposing edges of sheet 12 are drawn together (Zeiner i-f 45).
However, Zeiner is silent as to whether the tensioning members can
transform sheet 12 from a cylindrical, i.e., tubular, shape into an unfolded
expanded shape. Rather, Zeiner discloses that sheet 12 is unfolded from the
tube shape "using graspers or other tools." Id. i-f 53. As such, the Examiner
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Appeal2017-005461
Application 12/974,543
has not adequately shown that Zeiner' s tensioning members are capable of
causing the closure device to expand from the collapsed state into a
substantially cylindrical expanded state, as required by the claims.
Based on the foregoing, we do not sustain the Examiner's rejection
under 35 U.S.C. § 102(b) of independent claims 21and26, and dependent
claims 2, 4--7, 9, 11, 12, 14--19, 22-25, and 27-30. We also do not sustain
the rejections under 35 U.S.C. § 103(a) of dependent claims 3, 8, 10, 13,
and 20, which rely on the same inadequately supported finding.
DECISION
The Examiner's rejection of claims 2, 4--7, 9, 11, 12, 14--19, and
21-30 underpre-AIA 35 U.S.C. § 102(b) is REVERSED.
The Examiner's rejections of claims 3, 8, 10, 13, and 20 under pre-
AIA 35 U.S.C. § 103(a) are REVERSED.
REVERSED
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