Ex Parte Kantrowitz et al

Patent Trial and Appeal Board

Feb 27, 2013

10770269 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/770,269 02/02/2004 Adrian Kantrowitz LTI-10302/38 9595
13173 7590 02/28/2013
Patent Procurement Services
450 North Old Woodward
First Floor
Birmingham, MI 48009
EXAMINER
EVANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
02/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADRIAN KANTROWITZ and
ROBERT MERRILL SMITH
____________________

Appeal 2011-002921
Application 10/770,269
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, REMY J. VANOPHEM, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4, 5, 10-13, and 26-31. We have jurisdiction under 35 U.S.C. § 6(b). A
hearing was held on Feb. 12, 2013.
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. An implantable aortic blood pump, comprising:
a wall having an outer surface, the wall
adapted to maintain stability of the implantable
aortic blood pump when implanted;
a flexible membrane attached to the wall;
an interior volume defined by the wall and
the membrane;
an inflation port housing integral with the
wall, the inflation port housing having an aperture
therein in fluid communication with the interior
volume;
a stiffener on the outer surface, or integral
with the wall; and
a suture flange extending from the outer
surface, said suture flange adapted to secure to a
human aorta, wherein the pump maintains
geometry when implanted.

REFERENCES
The prior art relied upon by the Examiner in this appeal is:
Kantrowitz 4,630,597 Dec. 23, 1986
Dobak 5,820,542 Oct. 13, 1998
Freed 6,511,412 B1 Jan. 28, 2003

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REJECTIONS
Appellants seek our review of the following rejections.
1. Claims 1, 4, 5, 10-13, 26, 27, and 29 stand rejected under 35
U.S.C. § 103(a) as obvious over Kantrowitz and Dobak.
2. Claim 28 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kantrowitz, Dobak, and Freed.
3. Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kantrowitz and Dobak.

ANALYSIS
Rejection of Claims 1, 4, 5, 10-13, 16, 27, and 29
Appellants argue claims 1, 4, 5, 10-13, 26, 27, and 29 as a group.
App. Br. 3 and 5. We select independent claim 1 as representative, and we
treat claims 4, 5, 10-13, 26, 27, and 29 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Kantrowitz discloses a pump meeting most of
the limitations of claim 1. Ans. 4. The Examiner finds, however, that
“Kantrowitz does not disclose an integral stiffener or stiffener connected to
the outer surface to maintain geometry of the pump when implanted.” Id.
To address this, the Examiner finds that Dobak discloses using a stent with a
pump to maintain pump geometry when implanted, and the Examiner
concludes that it would have been obvious to modify Kantrowitz’s pump to
include Dobak’s stent. Id.
Appellants advance three arguments traversing the Examiner’s
position. We consider each of Appellants’ arguments in turn below.

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Appellants’ Argument 1
Appellants argue that the Examiner’s proposed combination of the
prior art does not meet claim 1 because “[a] stiffener cannot be equated with
a stent.” App. Br. 6. In support of this, Appellants assert that the Markush
group in original claim 3 set forth a “stent” and a “stiffener” as distinct
elements of the species “element for stiffening,” and that the Specification
similarly discloses a stent and a stiffener as distinct elements described in
separate paragraphs. See Id. Additionally, Appellants argue that the term
“stent” requires a collapsible configuration, whereas the term “stiffener”
precludes a collapsible construction. Id. at 7. In support of this position,
Appellants state that “in contrast to the collapsible nature taught by the
specification as a characteristic of a stent, a stiffener is not taught to be
collapsible.” Id. Appellants also argue that the collapsible nature of a stent
conflicts with the claim language “wherein the pump maintains geometry
when implanted.” Id. Appellants then assert that “[t]he three distinct
elements available for stiffening an apparatus taught by the specification are
separated by the unique and non-overlapping characteristics of each” and
that any implication that the terms “stent” and “stiffener” overlap
“represents an improper interpretation of pending claims in view of the
guidance and definition provided in the specification.” Id. at 8 (emphasis
added).
The Examiner counters that the Specification does not define
“stiffener.” Ans. 8. The Examiner also indicates that the term “stiffener”
has a very broad ordinary meaning, and the Examiner notes that the
Specification indicates that a “stent” falls within the scope of the similarly
broad language “stiffening element.” Id. at 7-8. Regarding Appellants’
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arguments about the collapsible nature of a stent, the Examiner states “the
applicant has not claimed a non-collapsible stiffener.” Id. at 9. Regarding
the related argument that the combination of Dobak’s stent with
Kantrowitz’s pump would not meet the claim language “wherein the pump
maintains geometry when implanted,” the Examiner indicates that the claim
language does not clearly require that the pump maintain geometry at all
times. Id. at 8. The Examiner further notes that the Specification suggests
that the construction of the pump may allow it to deform (e.g., twisting and
flexing) during installation and then maintain geometry after completion of
installation. Id. In connection with this, the Examiner notes that “Dobak
states that the purpose of the expansion mechanism/stent is to hold the
housing in the expanded state and will retain its larger diameter until
compressed by the application of fluid pressure (e.g. column 7, lines 19-37,
column 8, etc. of Dobak).” Id.
In response, Appellants reiterate the argument that original claim 3
and the Specification establish the term “stiffener” constitutes a species of
the genus “element for stiffening.” Reply Br. 2. Regarding the temporal
aspect of the claim language “wherein the pump maintains geometry when
implanted,” Appellants assert that “[t]he language when implanted is an
unambiguous statement of the amount of time, i.e. continually.” Id. at 1.
Following this assertion, Appellants state that “the geometry is maintained
during operation.” Id. at 2. Regarding the Examiner’s observation that the
Specification discloses the pump may twist and flex during installation,
Appellants point to the Freed Declaration made of record August 17, 2006.
Id. Appellants argue that the Freed Declaration establishes that the pump
disclosed in Kantrowitz has enough flexibility to allow folding, which
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Appellants assert constitutes more deformation than twisting and flexing.
Id.
To resolve the dispute regarding the proper interpretation of the term
“stiffener” in claim 1, we begin with the disagreement regarding whether the
Specification defines “stiffener.” Appellants do not point to and we do not
find any explicit definition of “stiffener” in the Specification. Accordingly,
we must consider whether the intrinsic evidence Appellants point to
implicitly suggests a special definition of the term “stiffener.” As noted
above, Appellants contend that the intrinsic evidence establishes a mutually
exclusive relationship between the terms “stent” and “stiffener” because 1)
the Specification and the original claims establish these terms both constitute
species of the term “element for stiffening,” and 2) the Specification and
claims establish that a “stent” has a collapsible configuration, whereas a
“stiffener” has a configuration that cannot collapse.
Appellants’ first point suffers from the problem that even if we accept
that “stent” constitutes a species of “element for stiffening” and that
“stiffener” also constitutes a species of “element for stiffening,” this does
not preclude the possibility of a further species/genus relationship between
“stent” and “stiffener” within the overarching genus “element for
stiffening.” Compounding this problem, the intrinsic evidence relied on by
Appellants state that the “element for stiffening” can include “a stent, a
brace, a stiffener, or any combination thereof,” the last portion of which only
serves to blur the relationship between the terms “stent” and “stiffener.” See
Orig. Cl. 3 (emphasis added); Spec., p. 4, l. 20-p. 5, l. 2; p. 5, ll. 11-12.
Further undermining Appellants’ position, original claim 3 and similar
portions of the Specification indicate that a “stent” and a “stiffener” provide
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the same stiffening function. See also Spec., p. 4, l. 19-p. 5, l. 2; p. 5, ll. 10-
12. Thus, while the Specification’s general references to the terms suggest
that “stent” and “stiffener” have different meanings with different scopes,
they do not clearly establish that the terms have mutually exclusive scopes.
This brings us to Appellants’ more specific contention that the
intrinsic evidence establishes that the term “stent” requires a collapsible
construction and the term “stiffener” precludes a collapsible construction.
The Specification’s disclosure that the exemplary stent has a “collapsible”
configuration does not clearly convey that a “stiffener” cannot have a
collapsible configuration. Appellants correctly note that the Specification
does not disclose that a “stiffener” has a collapsible configuration. But this
silence also fails to clearly convey that a “stiffener” cannot have a
collapsible configuration. Nor does any evidence pointed to by Appellants
clearly suggest that collapsibility or the lack thereof constitutes a basis for
distinguishing a “stent” from a “stiffener.”
The evidence also fails to support Appellants’ argument that the claim
language “wherein the pump maintains geometry when implanted”
precludes the claimed “stiffener” from having a collapsible configuration. If
we accept Appellants’ contention that this claim language necessarily has
some limiting effect on the claimed “stiffener,” we must address the
temporal aspect imparted by the words “when implanted.” These words
could mean 1) during implantation, 2) after completion of implantation, or 3)
both. Consistent with the Examiner’s findings, the intrinsic evidence
repeatedly suggests a need to maintain pump geometry during operation,
while also suggesting the acceptability and even desirability of allowing
pump deformation during implantation. See, e.g., Spec., p. 18, ll. 8-12; p.
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13, ll. 13-15; and p. 3, l. 18-p. 4, l. 7; Reply Br. 2 (“As such, the geometry is
maintained during operation.”); Ans. 9. Based on this, we conclude the
claim requires that the pump maintains geometry after completion of
implantation (i.e., during operation), but imposes no restriction on whether
the pump maintains geometry during or prior to implantation.
Thus, at most, the intrinsic evidence pointed to by Appellants may
support a conclusion that the pump and the stiffener must maintain geometry
after completion of implantation. Accordingly, while the intrinsic evidence
may suggest one limitation on the definition of the term “stiffener,” it does
not explicitly disclose or implicitly suggest a general definition that this
limitation modifies.
Where the Specification does not assign or suggest a particular
definition for a claim term, it is appropriate to consult a general dictionary
definition of the term for guidance in determining the ordinary and
customary meaning thereof as viewed by a person of ordinary skill in the art.
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) citing
Phillips v. AWH Corp., 415 F.3d, 1303, 1322-23 (Fed. Cir. 2005). In the
dictionary, the term “stiffener” is a noun associated with the verb “stiffen,”
which means “[t]o make or become stiff or stiffer.” THE AMERICAN
HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000),
accessed at http://www.thefreedictionary.com/stiffener (last visited
December 26, 2012). This suggests that an ordinary meaning of the term
“stiffener” is a structure that makes another structure stiff or stiffer. Taking
this in combination with the above-discussed limitation suggested by the
intrinsic evidence, we conclude that the term “stiffener” in claim 1 means a
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structure that makes the pump stiff or stiffer and that maintains geometry
after completion of implantation.
Given this, we consider next whether the Examiner correctly found
that Dobak’s stent would constitute a “stiffener,” as recited in claim 1, when
combined with Kantrowitz’s pump. As the Examiner notes, Dobak indicates
that its stent has a configuration that allows it to hold a flexible housing “in
an expanded substantially rigid state.” See, e.g., Dobak, Abstr; col. 6, ll. 57-
59; col. 7, ll. 4-37; Ans. 4. Thus, when added to Kantrowitz’s pump,
Dobak’s stent would make the pump stiffer. As also noted by the Examiner,
after it is expanded during implantation, Dobak’s stent holds its expanded
shape until someone takes steps to collapse it. See, e.g., Dobak, col. 7, ll.
20-37; Ans. 4 and 8. Thus, when attached to Kantrowitz’s pump, Dobak’s
stent would make the pump stiffer and would maintain pump geometry after
completion of implantation of the pump and stent. Accordingly, the
Examiner correctly found that Dobak’s stent falls within the broadest
reasonable interpretation of the claimed “stiffener,” and that the combination
of this stiffener with Kantrowitz’s pump would meet the claim language
“wherein the pump maintains geometry when implanted.”
Regarding Appellants’ arguments based on the Freed Declaration,
even if accurate, these assertions establish only the flexibility of
Kantrowitz’s pump without Dobak’s stent; they do not address whether the
combination of Kantrowitz’s pump and Dobak’s stent would meet the claim
limitations. And Appellants’ related argument regarding the “flexible nature
of the stent of Dobak” (See Reply Br. 2) overlooks the Examiner’s correct
finding regarding the disclosed rigidity of Dobak’s stent.

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Appellants’ Argument 2
Starting with the assumption that simply combining Dobak’s stent
with Kantrowitz’s pump would not meet the limitations of claim 1,
Appellants’ Argument 2 advances that modifying Dobak’s stent to meet the
limitations of claim 1 would “destroy[] the function and principle of
operation of the stent of Dobak.” App. Br. 8-9. As part of this argument,
Appellants allude to the above-discussed argument that adding Dobak’s stent
to Kantrowitz’s pump would not meet the claim limitations “wherein the
pump maintains geometry when implanted.” Id. at 8 (Stating that “[i]t is
noted that pending independent claims 1 and 5 recite that the pump
maintains geometry when implanted, and for Dobak to do so would render
Dobak inoperative to perform as intended.”). Appellants also assert that
“[t]he claimed apparatus . . . requires rigidity to ‘maintain implant stability
by resisting deformation.’” Id. at 9 (citing Spec., p. 14, ll. 19-20). In
concert with this, Appellants suggest that Dobak’s collapsible configuration
lacks the requisite rigidity. Id.
The Examiner responds that Appellants’ err in suggesting that the
combination of Dobak’s stent and Kantrowitz’s pump would not meet the
claim language “wherein the pump maintains geometry when implanted.”
See Ans. 9. And the Examiner asserts that the claims do not claim “rigidity
to ‘maintain implant stability by resisting deformation,’” as suggested by
Appellants. Id.
The argument that modifying Dobak’s stent would destroy its function
and change its principle of operation does not establish error in the rejection
because Appellants have not established that one would need to modify
Dobak’s stent to meet the limitations of claim 1. For the reasons discussed
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above in connection with Argument 1, Appellants have not established error
in the Examiner’s position that Dobak’s stent corresponds to the claimed
“stiffener” and that the combination of Dobak’s stent with Kantrowitz’s
pump would result in a pump that meets the claim limitations regarding
maintaining geometry when implanted.
Regarding Appellants’ assertion that “[t]he claimed apparatus . . .
requires rigidity to ‘maintain implant stability by resisting deformation,’”
Appellants do not identify specific claim language that requires these
features. Instead, Appellants point to the Specification in support of this
proposition, and the portion of the Specification to which Appellants point
does not even mention “rigidity.” See Spec., p. 14, ll. 19-20. We must
decline to import these limitations from the Specification into the claim,
particularly where the cited portion of the Specification itself does not
clearly disclose the limitations. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the claims.)
Appellants’ Argument 3
Appellants argue that “[t]he combination of Kantrowitz and Dobak
. . . produce a pump that does not maintain geometry when implanted.”
App. Br. 10. Appellants rest this position on arguments substantially the
same as those presented in Argument 1, including arguments that
Kantrowitz’s pump has a flexible construction, that Dobak’s stent has a
collapsible construction, and that the combination would be collapsed during
implantation. Id. at 10-11. The Examiner counters that the combination
does meet the claim language “wherein the pump maintains geometry when
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implanted” for substantially the same reasons the Examiner explained in
response to Appellants’ Argument 1. Ans. 9-10.
As discussed above, Appellants’ arguments fail to recognize the
temporal aspect of the claim language, as well Dobak’s disclosure that its
stent holds its shape in the expanded state until someone takes active steps to
collapse it. Again, because Dobak’s stent holds its shape in the expanded
state, the combination of Dobak’s stent with Kantrowitz’s pump would
allow the pump to maintain its geometry after completion of implantation.
For the reasons discussed above, the claim requires nothing more.
Accordingly, Appellants have not established error in the Examiner’s
rejection of claim 1.

Rejection of Claim 28
Appellants do not advance any separate arguments traversing the
rejection of claim 28. See App. Br. 5-11. Accordingly, for the reasons
discussed above, Appellants have not established error in the rejection of
claim 28.

Rejection of Claims 30 and 31
Appellants do not advance any separate arguments traversing the
rejection of claims 30 and 31. See App. Br. 5-11. Accordingly, for the
reasons discussed above, Appellants have not established error in the
rejection of claims 30 and 31.

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DECISION
We affirm the Examiner’s decision regarding claims 1, 4, 5, 10-13,
and 26-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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