13328006 (P.T.A.B. Dec. 21, 2016)

Ex Parte Kappel et al

Patent Trial and Appeal BoardDec 21, 2016

13328006 (P.T.A.B. Dec. 21, 2016)

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. 13/328,006 12/16/2011 Gary Kappel S63.2-15024-US02 4586 12/23/2016109610 7590 Bookoff McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20037 EXAMINER COLELLO, ERIN L ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): usptomail @bookoffmcandrews.com Kross @ bookoffmcandrews.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY KAPPEL, LARRY STANTON, RUTH CHENG, KEN KEENE, GERALD HELLER, and MAN NGUYEN Appeal 2014-009656 Application 13/328,006 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gary Kappel et al. (Appellants)1 appeal under 35U.S.C. § 134 from the Examiner’s final decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Boston Scientific Scimed, Inc., a subsidiary of Boston Scientific Corporation. Appeal Br. 3. Appeal 2014-009656 Application 13/328,006 THE CLAIMED SUBJECT MATTER Claims 1, 15, and 22 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A snare for retrieving foreign objects within the body of a patient, the snare comprising: a hollow elongate tubular member comprising an inner surface and an outer surface and a lumen defined by the inner surface, a distal end and a proximal end, the hollow elongate tubular member forms a loop at the distal end, the loop comprising at least one opening, the loop having an open position and a closed position; and a wire slidably disposed in the lumen of the elongate tubular member, the wire comprising at least one engaging member for engaging tissue, the at least one engaging member extends through the at least one opening and when the wire is in a first position and the at least one engaging member is retractable into the lumen of the elongate tubular member when the wire is moved to a second position. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Chow US 6,944,490 B1 Sept. 13,2005 Chin US 7,214,180 B2 May 8,2007 REJECTIONS2 I. Claims 1, 3—12, and 14—22 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chow. Final Act. 2—5. 2 The rejections of claims 1, 4—6, 8—10, 13—16, 18, 19, and 21 under 35 U.S.C. § 102(b) as anticipated by Mori (JP 2001258892 A, pub. Sept. 25, 2001) and claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Mori (Final Act. 5—7, 8) have been withdrawn and are not before us on appeal. Ans. 2. 2 Appeal 2014-009656 Application 13/328,006 II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chow. Id. at 7—8. III. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chow and Chin. Id. at 8. OPINION Rejection I The Examiner finds that Chow discloses all of the limitations of independent claims 1,15, and 22, including, inter alia, “[a] hollow elongate tubular member [that] form[s] a loop . . . , the loop having an open position and a closed position.” Final Act. 3 (citing Chow, Figs. 3A-C, 4A—D, 4:58— 67). More particularly, the Examiner relies on a “broadest reasonable interpretation of loop to be a curved piece” and finds that Chow’s hollow elongate tubular member 18 forms a loop because it is curved as shown in Figures 4A—B. Final Act. 9. The Examiner also takes the position that Chow’s arms 16 form a loop, and Chow’s hollow elongate tubular member 18 “forms a portion of the loop” because each of arms 16 includes hollow elongate tubular member 18. Final Act. 9; Ans. 3. Appellants counter that “support arms 16 are individually attached to a tip 22 and do [not] form a loop.” Appeal Br. 14. Moreover, Appellants argue that “the four support arms 16 are separate from the conduits 18 within which the therapeutic tools 20 are disposed” {id.), and “the conduits 18 certainly do not form any loop” (Reply Br. 5) (emphasis omitted). The Patent and Trademark Office gives claims their broadest reasonable constmction “in light of the [Specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification describes that 3 Appeal 2014-009656 Application 13/328,006 “loop 16 has an open position and a closed position” and that “[w]hen loop 16 is in its closed position[,] it can grip and hold tissue.” Spec. 127. We determine that the Examiner’s interpretation of the term “loop” as extending to any curved piece is not reasonable in the context of the Specification. Rather, the broadest reasonable interpretation of “loop” consistent with the Specification requires that the loop be able to be in open and closed positions. Therefore, we determine that the Examiner erred in finding that Chow discloses a hollow elongate tubular member forming a loop merely because Chow’s hollow elongate tubular member 18 is curved, under the broadest reasonable interpretation of “loop.” As to the Examiner’s finding that hollow elongate tubular member 18 forms a portion of a loop created by arms 16, assuming arguendo that arms 16 form a loop, we agree with Appellants that hollow elongate tubular member 18 is separate from arms 16 (Reply Br. 5) and does not form any loop that may be created by arms 16. Accordingly, the Examiner has not established by a preponderance of the evidence that Chow discloses a hollow elongate tubular member that forms a loop having an open and closed position. For the foregoing reasons, we are persuaded by Appellants’ arguments that the Examiner erred in finding that Chow discloses all of the limitations of independent claims 1,15, and 22, and we do not sustain the rejection of claims 1,15, and 22, nor claims 3—12, 14, and 16—21, which depend therefrom, under 35 U.S.C. § 102(b) as anticipated by Chow. Rejections II and III Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chow, and claim 13 stands rejected under 35 U.S.C. § 103(a) as 4 Appeal 2014-009656 Application 13/328,006 unpatentable over Chow and Chin. Final Act. 7—8. Claims 2 and 13 depend from independent claim 1. Appeal Br. 22—23 (Claims App.). The rejections of these claims rely on the Examiner’s erroneous findings as to Chow. Final Act. 7—8. The Examiner does not explain how Chow might be modified to cure the underlying deficiency or how Chin might cure the underlying deficiency. Accordingly, we do not sustain the rejections, under 35 U.S.C. § 103(a), of claim 2 as unpatentable over Chow, and claim 13 as unpatentable over Chow and Chin. DECISION The Examiner’s decision to reject claims 1—22 is reversed. REVERSED 5