Ex Parte Gonzalez et alDownload PDFPatent Trial and Appeal BoardNov 27, 201713073443 (P.T.A.B. Nov. 27, 2017) Copy Citation 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. 13/073,443 03/28/2011 Hugo X. Gonzalez SPIRTN.021P2C2 7949 110075 7590 11/29/2017 Gyrus ACMI, Inc. (D.B.A. Olympus Surgical Technologies America) 136 Turnpike Road EXAMINER FLICK, JASON E Southborough, MA 01772 ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): docketing@olympus-osta.com rhonda.zaffino@olympus-osta.com msmith@ spiration.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUGO X. GONZALEZ, STEVEN CHASE SPRINGMEYER, RICHARD O. SHEA, JOHN H. WANG, and LAURI J. DEVORE Appeal 2016-004112 Application 13/073,443 Technology Center 3700 Before CHARLES N. GREENHUT, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 4, 6, 9, 10, and 27—41. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-004112 Application 13/073,443 CLAIMED SUBJECT MATTER The claims are directed to a device and method for intra-bronchial provision of a therapeutic agent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A method for providing a therapeutic agent to a patient, the method including the steps of: delivering a therapeutic agent to a lung portion, wherein the therapeutic agent is delivered via an intra-bronchial device, the intra-bronchial device having at least one anchor having an anchor end configured to pierce a wall of an air passage in communication with the lung portion upon implantation of the intra-bronchial device in the air passage; and inhibiting movement of the therapeutic agent from the lung portion by implanting the intra-bronchial device within the air passage in communication with the lung portion, such that the anchor end of the at least one anchor pierces the wall of the air passage into which the intra-bronchial device is implanted. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hughes US 6,746,686 June 8, 2004 Deem US 2001/0037808 A1 Nov. 8, 2001 Mair US 2002/0147462 A1 Oct. 10, 2002 Wilson US 2005/0166925 A1 Aug. 4, 2005 Gifford US 2005/0222580 A1 Oct. 6, 2005 REJECTIONS Claims 1—4, 6, 10, 27-32, 34, and 37—41, are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilson and Deem. Claims 9 and 36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilson, Deem, and Gifford. 2 Appeal 2016-004112 Application 13/073,443 Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilson, Deem and Mair. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilson, Deem, and Hughes. OPINION Appellants argue the rejected claims based on either the combination of Wilson and Deem or dependency. App. Br. 5-11. The Examiner correctly found Wilson discloses the basis method claimed albeit without express discussion of the anchor-air-passage-wall interaction. Final Act. 4- 5. The Examiner relied on Deem to demonstrate that wall piercing was a known method of anchoring and, from this, concluded it would have been obvious to modify Wilson, to the extent necessary, to pierce an air passage wall and thereby arrive at the claimed subject matter. Id. Appellants initially argue the Examiner’s proposed combination was improper for lack of motivation to combine the reference teachings, because Wilson already provides anchoring. App. Br. 8. However, first, as the Examiner correctly points out (Ans. 11), the express details of such anchoring with regard to the piercing or not piercing the passage wall are not expressly discussed in Wilson, so Deem fills in a potential gap in this regard. Second, and perhaps more importantly, the fact that a primary reference may already possess structure sufficient for accomplishing a particular task does not, without more, demonstrate the absence of motivation for seeking other ways to accomplish that task. “[Wjhen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a 3 Appeal 2016-004112 Application 13/073,443 predictable result.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 538, 416 (2007) “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” Id. at 421 (citations omitted). The Examiner correctly finds piercing may facilitate Wilson’s goal of anchoring. Final Act. 5; Ans. 11; see Reply Br. 3. One skilled in the art would have at least a reasonable expectation that embedding would improve upon or be as good as abutting for the purpose of anchoring. Absolute predictability that the substitution will be successful is not required, all that is required is a reasonable expectation of success. See In re O ’Farrell 853 F.2d 894, 903- 04 (Fed. Cir. 1988). Appellants next argue that piercing would defeat Wilson’s goal of preventing distal migration. App. Br. 9; Reply Br. 3—4. As the Examiner correctly points out (Ans. 11), Wilson’s goal is to prevent distal migration once anchored, not necessarily to avoid any distal displacement during the anchoring process itself. This argument is therefore not persuasive. Fastly, Appellants argue that Wilson discloses an atraumatic structure designed to “lodge against,” as opposed to penetrate, the walls of the bronchial passageway, which teaches away from Deem’s piercing step. App. Br. 10 (citing Wilson para. 126 and Figure 8); Reply Br. 4 (citing Wilson Figure 5A). However, as the Examiner correctly points out, Wilson is silent on the topic of piercing. Ans. 12. At most, the cited portions of Wilson teach an alternative to piercing but do not actually criticize or discredit it as an alternative anchoring technique. “[M]ere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed....” In re Fulton, 391 F.3d 1195, 4 Appeal 2016-004112 Application 13/073,443 1201 (Fed. Cir. 2004). Where Wilson encouraged the use of atraumatic elements, Wilson specified so. See, e.g., Wilson paras. 188-190, 251-252. The absence of any such comments relating to the prongs 627 in Wilson, therefore, would not have led the skilled artisan away from structures and techniques that were not necessarily atraumatic. For the foregoing reasons we sustain the Examiner’s rejections. DECISION The Examiner’s rejections 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 5 Copy with citationCopy as parenthetical citation