Ex Parte Jahns et al

Patent Trial and Appeal Board

Sep 12, 2016

12688219 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/688,219 01115/2010
77218 7590 09/14/2016
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
FIRST NAMED INVENTOR
Scott E. Jahns
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.
P0009198.06 3148
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
rs. docketingapv@medtronic.com
medtronic _apv _docketing@ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SCOTT E. JAHNS, JAMES R. KEOGH, PAUL A. PIGNATO,
CHRISTOPHER P. OLIG, KAREN P. MONTPETIT,
CYNTHIA T. CLAGUE, RAYMOND W. USHER,
PHILIP J. HAARSTAD, and GARY W. GUENST
Appeal2014-007103
Application 12/688,219
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Scott E. Jahns et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-13 and 17-24, 27-30, 34,
and 35. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Claims 14--16, 25, 26, and 31-33 have been canceled. Appeal Br. (Claims
App.).
Appeal2014-007103
Application 12/688,219
CLAIMED SUBJECT MATTER
Independent claims 1, 19, and 2 7 are pending. Independent claim 1,
reproduced below, illustrates the subject matter on appeal. The disputed
limitation is italicized.
1. A device for creating an opening in a first blood
vessel and for sealing the opening in the first blood vessel while
an anastomosis is created between the first blood vessel and a
second blood vessel, the device comprising:
a cutting mechanism for creating the opening in the first
blood vessel, the cutting mechanism including a plurality of
cutting elements each including a proximal tip and a distal tip
and an elongate electrode extending substantially from the
proximal tip to the distal tip, wherein the cutting mechanism
includes a closed configuration for creating the opening in the
first blood vessel and an opened configuration, wherein the
electrode is configured to cut the opening by piercing the first
blood vessel and then moving from the closed position to the
opened position;
a seal for sealing the opening in the first blood vessel
wherein the seal is attached to a tether independent of the cutting
mechanism and configured to facilitate removal of the seal
during or after anastomosis;
a tool body pivotably coupled to the cutting mechanism,
the tool body comprising a distal end having a distal opening and
a proximal end having a proximal opening, the cutting
mechanism attached to the distal end of the tool body such that
elongate electrodes extend distally from the distal end of the tool
body, and such that the proximal tips of the plurality of cutting
elements are pivotably coupled to the distal end of the tool body,
wherein distal tips of the cutting elements are urged together in
the closed configuration and the distal tips are pivotably spaced-
apart laterally in the open configuration; and
2
Appeal2014-007103
Application 12/688,219
the tool body having an inner lumen extending between
the distal opening and the proximal opening for delivering the
seal through the tool body and into the opening in the first blood
vessel when the cutting mechanism is in the opened
configuration, and wherein the seal is moveable distally and
proximally with respect to the cutting mechanism.
Appeal Br. 13 (Claims App.).
REJECTIONS
I. Claims 1---6, 8-13 and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Golden (US 6,695,859 Bl, iss. Feb. 24, 2004),
Manhes (US 7,131,985 Bl; iss. Nov. 7, 2006), and Burbank (US 6,689,071
B2; iss. Feb. 10, 2004). Ans. 2.
II. Claims 19, 20, 22, 24, 27, 29, 30, 34, 35 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Golden and Manhes. Ans. 4.
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, Burbank, and Fortune (US
2004/0215231 Al; pub. Oct. 28, 2004). Ans. 7.
IV. Claims 21and28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, and Fortune. Ans. 8.
V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, Burbank, and Diaz (US 5,690,674; iss.
Nov. 25, 1997). Ans. 8.
VI. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, and Brinkerhoff (US 5,366,478; iss.
Nov. 22, 1994). Ans. 8.
3
Appeal2014-007103
Application 12/688,219
ANALYSIS
The dispositive issue in this case is whether the prior art teaches or
suggests an electrode or cutting surfaces that are configured to cut an
opening in a first blood vessel by piercing the first blood vessel and then
moving from the closed position to the opened position. Although separate
headings are provided in the Appeal Brief, Appellants make the same
argument to support patentability of all pending claims.
The Examiner finds that Manhes discloses cutting surfaces 11, 12
configured to cut an opening by piercing and then moving from the closed
position to the opened position. Final Act. 3.
Appellants argue that this finding is in error because Manhes discloses
opening its longitudinal sections 11, 12 only after cutting has occurred, the
longitudinal sections 11, 12 bearing against an inner surface of the
abdominal wall rather than furthering the cutting process. Appeal Br. 8;
Manhes 3:25-51.
The Examiner responds that the claim has not been interpreted to
require that "the process of cutting occurs while the cutting mechanism
moves from the closed position to the open position." Ans. 10. According
to the Examiner, the recitation of "configured to cut the opening by piercing
the first blood vessel and then moving from the closed position to the open
position" does not require that cutting occurs while the electrode (or cutting
surface) is moved from the closed to the open position, but rather that the
electrode cuts the vessel and, afterward, moves from a closed position to an
opened position. Id. The Examiner contends that this interpretation is
supported by Appellants' Specification, which states that Appellants' cutting
4
Appeal2014-007103
Application 12/688,219
mechanism 140 advances in a closed configuration through vessel wall V
and then opens into a delivery configuration allowing seal 710 to move into
vessel V. Id.; Spec. Figs. 29-31 and i-f 141 (referring to "a closed cutting
configuration" and "an open delivery configuration").
Appellants argue that the Examiner's interpretation of the claim
language is unreasonable because it ignores an entire claim element. Reply
Br. 23. According to Appellants, the Specification supports their position
that the claim requires the electrode (or cutting surfaces) be configured to
cut an opening by piercing the first blood vessel and by moving from a
closed position to an opened position. Id. (citing Spec. i-f 141 ). The cited
language from the Specification includes the following:
Seal 710 is advanced or pushed through lumen 136 of tool body
135, through cutting electrode 140 and into vessel V (see FIG.
31 ). Power may be provided to cutting electrode 140 at any
time while seal 710 is advanced through lumen 136 of tool
body 135, through cutting electrode 140 and into vessel V.
Cutting mechanism 140 is coupled to the proximal end of tool
body 13 5 [allowing] cutting mechanism 140 to change from a
closed cutting configuration to an open delivery configuration.
Spec. ,-r 141.
The Examiner has the better argument. Paragraph 141 of Appellants'
Specification supports the Examiner's claim interpretation. Although
opening of the cutting configuration is discussed, the Specification fails to
refer to such opening as causing cutting. Instead, the Specification supports
the Examiner's position that the electrode (or cutting surfaces) moves to the
opened position after the vessel opening is cut. We therefore sustain
Rejections I-VI.
5
Appeal2014-007103
Application 12/688,219
DECISION
We AFFIRM the rejection of claims 1---6, 8-13 and 17 under
35 U.S.C. § 103(a) as unpatentable over Golden, Manhes, and Burbank.
We AFFIRM the rejection of claims 19, 20, 22, 24, 27, 29, 30, 34, 35
under 35 U.S.C. § 103(a) as unpatentable over Golden and Manhes.
We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, Burbank, and Fortune.
We AFFIRM the rejection of claims 21 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Golden, Manhes, and Fortune.
We AFFIRM the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, Burbank, and Diaz.
We AFFIRM the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Golden, Manhes, and Brinkerhoff.
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
6