Ex Parte Karabey et alDownload PDFPatent Trial and Appeal BoardSep 8, 201612642696 (P.T.A.B. Sep. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/642,696 12/18/2009 77218 7590 09/12/2016 Medtronic Vascular - APV Division c/o IP Legal Department 3576 Unocal Place Santa Rosa, CA 95403 FIRST NAMED INVENTOR Hali! I. Karabey 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. H-KN-01582 (1) 3046 EXAMINER LOUIS, RICHARD G ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 09/12/2016 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 Ex parte HALIL I. KARABEY, MICHAELS. MIRIZZI, WILLIAM N. BOENIG, and MIRANDA M. RAY Appeal2014-009540 1 Application 12/642,6962 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES A. WORTH, and KENNETH G. SCHOPPER, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final rejection of claims 1, 3-18, 29, and 30. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed June 18, 2014) and Reply Brief ("Reply Br.," filed Aug. 28, 2014), and the Examiner's Final Office Action ("Final Act.," mailed Jan. 29, 2014) and Answer ("Ans.," mailed July 3, 2014). 2 According to Appellants, the real party in interest is Covidien LP (Appeal Br. 1). Appeal2014-009540 Application 12/642,696 Introduction Appellants' disclosure relates to "[t]reatment of hollow anatomical structures such as blood vessels, hollow organs, fallopian tubes, gastric structures," and in particular, "introducing an occluding implant into a hollow anatomical structure, such as a vein, comprising an introducer sheath and an apparatus proximally coupled to the introducer sheath" (Spec. i-fi-1 2, 8). Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. An apparatus for introducing an implant into a hollow anatomical structure, the apparatus comprising: a storage unit defining an opening at a distal end and an aperture adjacent the distal end and proximal of the openmg; an elongate vascular implant stored inside the storage unit and having a distal end; and a pushrod at least partially stored inside the storage unit and having a distal end coupled to the distal end of the implant; wherein the implant diverges from adjacency with the pushrod as the implant extends away from the distal end of the pushrod, such that the pushrod extends through the aperture adjacent the distal end of the storage unit and forms a force application region near the distal end of the pushrod, the force application region being accessible for force application but separated from the implant. (Appeal Br., Claims App.) 2 Appeal2014-009540 Application 12/642,696 Rejections on Appeal The Examiner maintains, and the Appellants appeal, the following rejections: I. Claims 1, 3-5, 8-10, and 29 stand rejected under pre-AIA 35 U.S.C. 102(b) as anticipated by Mirizzi (US 200610229669 Al, pub. Oct. 12, 2006). II. Claims 1, 3-5, 8-10, and 29 stand rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Mirizzi and Mitchell (US 2009/0105711 Al, pub. Apr. 23, 2009). III. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Mirizzi, Mitchell, and Ritchart (US 4,994,069, iss. Feb. 19, 1991). IV. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Mirizzi, Mitchell, and Ambrisco (US 6;656;204 B2; iss. Dec. 2; 2003). V. Claims 11-14, 16-18, and 30 stand rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Mirizzi, Fernandez (US 5,897,497, iss. Apr. 27, 1999), and Mitchell. VI. Claim 15 stands rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Mirizzi, Fernandez, Mitchell, and Sepetka (US 2006/0116713 Al, June 1, 2006). 3 Appeal2014-009540 Application 12/642,696 Rejection I (Anticipation) ANALYSIS Independent claim 1 and dependent claims 3-5, 8-10, and 29 We are persuaded by Appellants' argument that Mirizzi fails to disclose an aperture adjacent the distal end of the storage unit, as recited in independent claim 1, which specifically recites "a storage unit defining an opening at a distal end and an aperture adjacent the distal end and proximal of the opening" (Appeal Br. 4-5). In particular, Appellants argue that item B is adjacent the proximal end of the storage unit rather than the distal end (Appeal Br. 5). The Examiner relies on item (B) in a version of Figure 27 A of Mirizzi, as annotated in the Examiner's rejection (reproduced below), for the "aperture adjacent the distal end" of the storage unit: Annotated version of Figure 27 A with arrow depicting item B (Final Act. 3 (citing also Mirizzi i-fi-f 188-191)). Figure 27A ofMirizzi, depicting a system for delivery of a fibrous mass, is reproduced below in full: 4 Appeal2014-009540 Application 12/642,696 / .. ~·· ;.~ ... t:? Figure 27 A depicts the delivery system of Mirizzi Figure 27C, reproduced below, depicts Mirizzi's delivery system in use: Figure 27C depicts the delivery system of Mirizzi in use. 5 Appeal2014-009540 Application 12/642,696 ivfapping the Examiner's item B onto Figure 27C, one can see that the Examiner relies on the other side of the handles from the patient delivery end, i.e., on the other side of the handles from the distal end. The Examiner also relies on a definition from Webster's dictionary, defining "adjacent" to mean "nearby," and on the principle from Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000) that measurements cannot be relied on unless a drawing is to scale (Final Act. 3; Ans. 16). We find that, regardless of measurements, the aperture relied on by the Examiner is at the other end of the device from the distal end and may not be said to be adjacent the distal end even under the broadest reasonable interpretation of the claim. The Examiner also finds that Mirizzi' s pushrod extends through the aperture to the distal end of the storage unit where it exerts a force (Final Act. 4), but the claim requires that the aperture itself be adjacent to the distal end of the storage unit. The Examiner also points to the Specification (i-f 316 & Fig. 4) for an understanding of the claim terms at issue. Nevertheless, the Specification discloses that aperture 90 is on the same side of the device as the patient delivery side of the device, and away from the handle, i.e., adjacent the distal end of the storage device. As such, the Specification does not support the Examiner's broader interpretation of "adjacent" or of "distal." We, therefore, do not sustain the Examiner's rejection of independent claim 1 under§ 102 as anticipated by Mirizzi. For the same reason, we do not sustain the Examiner's rejection under§ 102 of claims 3-5, 8-10, and 29, which depend from independent claim 1. 6 Appeal2014-009540 Application 12/642,696 Rejection II (Obviousness) Independent claim 1 and dependent claims 3-5, 8-10, and 29 Claims 1, 3-5, 8-10, and 29 stand rejected under§ 103 as being obvious over Mirizzi and Mitchell. We are persuaded by Appellants' argument that Mitchell fails to remedy the Examiner's rejection under§ 102 of claims 1, 3-5, 8-10, and 29 (see Appeal Br. 6-10). The Examiner has similar reasoning underlying the finding that aperture 55 of Figure 2 of Mitchell is "adjacent the distal end" of the storage unit, i.e., that "adjacent" means "nearby" (Final Act. 4 (citing also i-fi-13, 6, 38, 40); Ans. 17). Figure 2 of Mitchell is reproduced below: 10 r FIG~2 Again, the Examiner's reliance on the principle of Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000), that measurements cannot be relied on unless a drawing is to scale, cannot be used to support a factual finding that aperture 55 is nearby the distal end of the storage unit. Rather, we find that, to the extent Mitchell's drawing can be relied on for the relationship of the component features, Figure 2 depicts aperture 55 as "adjacent" the proximal end of the storage unit, rather than 7 Appeal2014-009540 Application 12/642,696 "adjacent" the distal end, as recited. The textual portions of ivlitchell relied on by the Examiner refer to an exit port, which is the recited "opening" rather than the recited "aperture" proximal to the "opening." The Examiner also reasons that it would have been obvious to move the aperture of Mirizzi from the proximal end to the distal end to facilitate maneuvering to achieve predictable results with no change in function (Final Act. 4-5). However, the Examiner does not provide evidence that it would have been obvious to make such a change. We, therefore, do not sustain the Examiner's rejection of 1, 3-5, 8-10, and 29 under§ 103 as unpatentable over Mirizzi and Mitchell. Rejection III-IV (Obviousness) Dependent claims 6 and 7 Claims 6 and 7 depend from claim 1, and stand rejected under § 103 as being obvious over Mirizzi and Mitchell, and further in view of one of Ritchart and Ambrisco. The Examiner does not rely on Ritchart or Ambrosio to remedy the deficiency in the Examiner's rejection of independent claim 1 under § 103 as being obvious over Mirizzi and Mitchell. We, therefore, do not sustain the Examiner's rejection of claims 6 and 7 under § 103 as being obvious over Mirizzi and Mitchell, and further in view of one of Ritchart and Ambrisco, for similar reasons as independent claim 1. Rejection V-VI (Obviousness) Independent claim 11 and dependent claims 12-18 and 30 Independent claim 11 stands rejected as obvious over Mirizzi, F emandez, and Mitchell, and contains similar language and requirements as independent claim 1. The Examiner does not rely on Fernandez to remedy 8 Appeal2014-009540 Application 12/642,696 the deficiency in the Examiner's rejection of independent claim 1 under § 103 as being obvious over Mirizzi and Mitchell. We, therefore, do not sustain the Examiner's rejection of independent claim 11 under§ 103 as obvious over Mirizzi, Fernandez, and Mitchell, for similar reasons as independent claim 1. Claims 12-18 and 30 depend from claim 11, and stand rejected under 103(a) as obvious over Mirizzi, Fernandez, and Mitchell, alone or further in view of Sepetka. The Examiner does not rely on Sepetka to remedy the deficiency in the Examiner's rejection of independent claim 11 under§ 103 as being obvious over Mirizzi, Fernandez, and Mitchell. Therefore, we do not sustain the Examiner's rejection under§ 103 of claims 12-18 and 30 over Mirizzi, Fernandez, and Mitchell, alone or further in view of Sepetka, for similar reasons as independent claim 11. DECISION The Examiner's decision to reject claims 1, 3-18, 29, and 30 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation