Ex Parte Haffner et al

Patent Trial and Appeal Board

May 31, 2016

11836112 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111836, 112 08/08/2007
20995 7590 06/02/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
David Steven Haffner
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.
GLAUK0.11CP1C2 2625
EXAMINER
RODJOM, KATHERINE MARIE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID STEVEN HAFFNER, GREGORY T. SMEDLEY,
HOSHENG TU, and THOMAS W. BURNS
Appeal2014-001554 1
Application 11/836,1122
Technology Center 3700
Before JAMES A. WORTH, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
July 19, 2013) and Reply Brief ("Reply Br.," filed Nov. 19, 2013), and the
Examiner's Final Office Action ("Final Action," mailed Sept. 26, 2012) and
Answer ("Ans.," mailed Sept. 19, 2013).
2 According to Appellants, the real party in interest is Glaukos Corporation.
(Appeal Br. 3).
Appeal2014-001554
Application 11/836, 112
STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1---6, 39, and 63---69. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b ).
Appellants appeared for an oral hearing on May 23, 2016.
We REVERSE.
Introduction
Appellants' disclosure relates to "shunt-type stenting devices for
permitting and/or enhancing aqueous outflow from the eye's anterior
chamber toward existing outflow pathways and associated methods thereof
for the treatment of glaucoma in general." (Spec. i-f 2).
Claims 1 and 39 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. An instrument for delivering implants for treating an
ophthalmic condition and dispensing implants through a wall of a
physiologic outflow pathway; the instnnnent comprising:
an elongate body, said elongate body comprising a tube and
sized to be introduced into an eye through an incision in the eye;
a trocar in said tube, wherein said trocar has a cutting edge
sufficiently sharp to cut through said wall of said physiologic outflow
pathway;
a plurality of biocompatible implants positioned in the elongate
body, each of said implants sized and shaped to convey aqueous
humor from an anterior chamber of the eye to a fluid outflow path of
the eye so as to reduce elevated intraocular pressure; and
said elongate body further comprising an actuator that serially
dispenses the implants from the elongate body for implanting in eye
tissue;
wherein when said implants are positioned in the elongate body
at least one of said implants has an outlet orifice positioned in a
direction transverse to a longitudinal axis of the elongate body.
(Appeal Br., Claims App.)
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Appeal2014-001554
Application 11/836, 112
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
Claims 1-6, 39, and 63-67 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Yu (US 6,544,249 Bl, iss. Apr. 8, 2003),
Grieshaber (US 2002/0013546 Al, pub. Jan. 31, 2002), and Paraschac (US
6,050,999, iss. Apr. 18, 2000).
Claims 68 and 69 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Yu, Grieshaber, Paraschac, and Berlin (US 2002/0013572
Al, pub. Jan. 31, 2002).
ANALYSIS
Independent claims 1 and 39 and dependent claims 2-6 and 63-67
Appellants argue that the Examiner does not explain how the
proposed combination of Yu, Grieshaber, and Paraschac meets "an elongate
body, said elongate body comprising a tube and sized to be introduced into
an eye through an incision in the eye," as recited by independent claim 1
(see Appeal Br. 8-12; Reply Br. 3). In particular, Appellants assert that "it
is clear that the implant-containing body [of Paraschac] is many times larger
in diameter than the slide portion that is actually introduced in the eye and
such that no rational practitioner would consider a surgical procedure in
which such a large portion of the device was placed into the eye." (Appeal
Br. 9). Appellants further argue that the Examiner erred in concluding that
"'it would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify [the combination of Yu and
Grieshaber] such that the device was adapted for delivering multiple
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Appeal2014-001554
Application 11/836, 112
implants . . . and the actuator was adapted for serially dispensing the
implants, as taught by Paraschac."' (Appeal Br. 13 (quoting Final Act. 3)).
The Examiner reasons that the claim phrase "sized to be introduced
into an eye," is not limiting because it is merely language of intended use
(see Ans. 5). We disagree that this claim phrase is merely language of
intended use because the term "size[]" in the claim phrase "sized to be
introduced into an eye" is a structural feature which limits the dimensions of
the device (see Reply Br. 2).
The Examiner additionally relies on the elongate body of Yu, as
modified by Paraschac, for the "elongate body" limitation, but does not
provide further evidence or reasoning as to whether and how the elongate
body of Yu would remain "sized," as in Yu, when internally loaded with
multiple implants, as taught by Paraschac (see Appeal Br. 9; Reply Br. 2-3).
We, therefore, do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of claim 1. For the same reason, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claim 2---6, which depend
therefrom.
Independent claim 3 9 contains similar language and requirements as
independent claim 1. For similar reasons as for independent claim 1, we do
not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
independent claim 39, and claims 63---67, which depend therefrom.
Dependent claims 68 and 69
Claims 68 and 69 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Yu, Grieshaber, Paraschac, and Berlin. The Examiner
does not rely on additional evidence or reasoning to remedy the deficiency
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Appeal2014-001554
Application 11/836, 112
in the rejection based on the combination of Yu, Grieshaber, and Paraschac.
We, therefore, do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 68 and 69, each of which depends respectively from one
of claims 1 and 39.
DECISION
The Examiner's decision to reject claims 1---6, 39, and 63---69 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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