Ex Parte Greenblatt et al

Patent Trial and Appeal Board

Sep 26, 2016

13123591 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/123,591 04/11/2011 Elliot Eliyahu Greenblatt
24737 7590 09/28/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P01174WOUS 8980
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELLIOT ELIYAHU GREENBLATT,
KAREN IRENE TROVATO,
ALEKSANDRA POPOVIC, and DOUGLAS STANTON
Appeal2014-009991
Application 13/123,591
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134 involves claims 1--4 and 17 (App.
Br. 5). Examiner entered a rejection under 35 U.S.C. §102(b). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Koninklijke Philips N.V.
(App. Br. 3).
Appeal2014-009991
Application 13/123,591
STATEMENT OF THE CASE
Appellants' "invention generally relates to nested cannula design and
configurations that are customized for a patient to facilitate minimally
invasive surgical procedures" (Spec. 1 :3-5). Independent claim 1 is
representative and reproduced in Appellants' Appeal Brief.
Claims 1--4 and 17 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Selmon.2
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner's finding that Selmon teaches Appellants' claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Selmon's Figure 3C is reproduced below:
DD"
-------------------·----------------------·--------·--------------------------·------·----------------·------·------------·i "' ! Tlle lntim;1 (1) and Media (Ml !aym of advl!llced Athern~lerotic occlusions
! may evolve !nm a 1-h:;~mgt!ne@s !ayer of &ftuse di~e~se (DD). l
:, ......................................................................................................................... 3
FIG JC
Figure 3C "shows a procedure for crossing a total occlusion using a catheter
system" (Selmon if 10; see also Final Act. 4).
2 Selmon et al., US 2006/0276749 Al, published Dec. 7, 2006.
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Appeal2014-009991
Application 13/123,591
FF 2. Selmon's Figure 10 is reproduced below:
{48--" ./
i.··
FIG.10
Figure 10 shows that "the actuator hub 112 comprises a pair of coaxial,
telescoping tubes 130 and 132" (Selmon ,-r 90; see also Final Act. 4).
FF 3. Selmon's Figure 1 lB is reproduced below:
FIG.i lB
Figure 1 lB shows
rotational keying in cross-sectional views of a proximal region
104 of the defecting catheter system 100, under an embodiment.
As an example, telescoping tubes 130 and 132 of the catheter
1102 of an embodiment include asymmetric, mating peripheral
geometries having oval cross-sections. Likewise, telescoping
tubes 130 and 132 of the catheter 1112 of an alternative
embodiment include asymmetric, mating peripheral geometries
having triangular cross-sections. These geometries are shown as
examples only, and do not limit the catheter systems described
herein to these geometries.
(Selmon ,-r 92; see also Final Act. 4).
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Appeal2014-009991
Application 13/123,591
Claim 1:
ANALYSIS
Appellants' independent claim 1 requires, inter alia, "a plurality of
telescoping tubes cooperatively configured and dimensioned to reach a
specific target location relative to an anatomical region" (see Appellants'
claim 1 ).
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 4--5; Ans. 2--4; FF 1-3), and agree that claim 1 is
anticipated by Selmon. We address Appellants' arguments below.
We recognize, but are not persuaded by, Appellants' contention that
"a structural limitation of 'a plurality of telescoping tubes cooperatively
configured and dimensioned to reach a specific target location relative to an
anatomical region' in fact unequivocally covers what the claimed
interlocking nested cannula set is, not what the claimed interlocking nested
cannula set does" (App. Br. 10-11; see also Reply Br. 9-11.) Appellants
argue that "the structural difference between the claimed interlocking nested
cannula and the catheter body of Selmon is analogous to a structural
difference between a ruler and a tape measure" (App. Br. 14).
Selmon teaches that "the actuator hub 112 comprises a pair of coaxial,
telescoping tubes 130 and 132" (FF2), and that "telescoping tubes 130 and
132 of the catheter 1102 of an embodiment include asymmetric, mating
peripheral geometries having oval cross-sections. Likewise, telescoping
tubes 130 and 132 of the catheter 1112 of an alternative embodiment include
asymmetric, mating peripheral geometries having triangular cross-sections"
(FF 3). Thus, Selmon teaches all of the structural limitations of claim 1.
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Appeal2014-009991
Application 13/123,591
"A patent applicant is free to recite features of an apparatus either
structurally or functionally .... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). "'Functional' terminology may render a
claim quite broad. By its own literal terms a claim employing such language
covers any and all embodiments which perform the recited function." In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971).
Moreover, Selmon teaches, as shown in Figure 3C, "a procedure for
crossing a total occlusion using a catheter system" (FF 1 ). As Examiner
explains,
the examiner agrees that the limitation "a plurality of telescoping
tubes" is a structural limitation[;] however, the limitation
"configured and dimensioned to reach a specific target location
relative to an anatomical region" is a functional limitation.
Although the clause may impart structural limitations on the
device of the prior art in order to perform the functions recited,
the limitation does not require a specific structure on the device
of the prior art. In the instant case, since the device of Selmon is
dimensioned to reach an anatomical region, the prior art meets
the claim limitations.
(Ans. 2.) Therefore, we agree with Examiner that "this limitation is
sufficiently broad to be encompassed by the device of Selmon being
delivered to the specific target location shown in Figure 3C of the Selmon
disclosure (paragraphs 0063---0068 and 0125---0130)" (id. at 3.)
We further recognize, but are not persuaded by, Appellants'
contention that
Of importance is a failure by Selmon to describe any
process for specifically identifying a target location within the
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Appeal2014-009991
Application 13/123,591
vasculature region as a basis for configuring and dimensioning
catheter body 102. More particularly, Selmon fails to describe a
specific identification of an entry point and a target location for
catheter body 102 within a three-dimensional image of the
vasculature region as a basis for configuring and dimensioning
catheter body 102 to reach the target location.
(App. Br. 13.) We note that claim 1 is drawn to an apparatus that is "[a]n
interlocking nested cannula set" as opposed to a method of using the cannula
set. Further, as Examiner explains, [t ]he claim is silent to the identification
of an entry point and a target location within a three-dimensional image of
the vasculature or the target location being the basis for configuring and
dimensioning a plurality of telescoping tubes, as reflected in [Appellants']
specification and not in the claims" (Ans. 3). "[L]imitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). See also In re Self, 671F.2d1344, 1348
(CCPA 1982) ("[A]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims.").
Claim 17:
We recognize, but are not persuaded by, Appellants' contention that
Selmon unequivocally fails to describe, expressly or inherently,
"wherein a ratio of a length of each outer side of the inner tube
to a length of each inner side of the outer tube is greater than a
factor derived from a number of the plurality of inner sides of the
outer tube" as recited in dependent claim 17. Specifically, the
present patent application teaches compliance with identified
equations associated with corresponding sides of the tubes to
thereby facilitate an interlocking of the tubes, but does not state
such compliance is mandatory for an interlocking of the tubes.
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Appeal2014-009991
Application 13/123,591
. . . Thus, it cannot be argued that Selmon inherently teaches the
aforementioned limitation of dependent claim 1 7.
(App. Br. 14; see also Reply Br. 11.)
As Examiner explains,
this limitation is sufficiently broad to encompass the ratio of the
length of each outer side of the inner tube to a length of each
inner side of the outer tube of the device of Selmon being greater
than any arbitrary factor derived from a number of the plurality
of inner sides of the outer tube to meet the limitations, since the
equation and factors are not specifically claimed.
(Ans. 4.) See In re Van Geuns, 988 F.2d at 1184 and Jn re Self, 671 F.2d at
1348. Therefore, we are not persuaded by Appellants' intimation to the
contrary.
CONCLUSION OF LAW
The rejection of claim 1under35 U.S.C. § 102(b) as being anticipated
by Selmon is affirmed. Claims 2--4 and l 7 fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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