Ex Parte LORENZO

Patent Trials and Appeals Board

Feb 26, 2019

14230426 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/230,426 03/31/2014
6980 7590 02/28/2019
TROUTMANSANDERSLLP
600 Peachtree St., NE, Suite 3000
Atlanta, GA 30308
FIRST NAMED INVENTOR
JUAN LORENZO
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.
243382.000153 5565
EXAMINER
MANNAN, MIKAIL A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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 im. schutz@troutmansanders.com
ryan. schneider@troutmansanders.com
patents@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN LORENZO
Appeal2018-003596
Application 14/230,426
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-6, 8, 9, 11-18, and 20. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, DePuy Synthes Products, Inc., which the
Appeal Brief identifies as the real party in interest. Appeal Br. 1.
2 Prior to the appeal, claims 10 and 19 were withdrawn, and claim 7 was
cancelled. Appeal Br. 2; Final Act. 2.
Appeal2018-003596
Application 14/230,426
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to implants within body vessels
and more particularly to occlusion devices for small vascular openings such
as a neck of an aneurysm." Spec. ,r 1. Claims 1, 15, and 20 are independent.
Claim 1 is reproduced below.
1. An occlusion device suitable for endovascular
treatment of an aneurysm in a blood vessel in a patient,
compnsmg:
a substantially tubular structure having a proximal end
region and a distal end region, having a first, expanded
condition and a second, collapsed condition, and having
dimensions in the second, collapsed condition suitable for
insertion through vasculature of the patient and through a neck
of the aneurysm, the tubular structure having an exterior surface
capable of contacting the aneurysm in the expanded condition
and having an interior surface, wherein the tubular structure is a
braided mesh tube, the tubular structure having a hemispherical
shape in the expanded condition; and
a control ring having a substantially annular body
disposed on the proximal end region of the structure and at least
substantially circumscribing the proximal end region to prevent
radial expansion of the proximal end region and to provide an
engagement feature during manipulation of the occlusion
device.
Appeal Br. 10 (Claims App.).
2
Appeal2018-003596
Application 14/230,426
THE REJECTIONS 3
We review the following rejections on appeal:
1. Claims 1--4, 6, 8, 9, and 15-17 under 35 U.S.C. § I02(a)(l) as
anticipated by Murphy. 4
2. Claims 11, 14, 18, and 20 under 35 U.S.C. § 103 as
unpatentable over Murphy and Ishida. 5
3. Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over
Murphy, Ishida, and Peterson. 6
ANALYSIS
Anticipation of Claims 1-4, 6, 8, 9, and 15-17
As to anticipation, Appellant focuses on common aspects of
independent claims 1 and 15, and does not argue for the patentability of any
claims based on any distinctions with claim 1. See Appeal Br. 7. We will
therefore focus our analysis on claim 1.
The Examiner found that Murphy discloses all of the limitations of
claim 1, including a tubular structure ( cover 127) with an exterior surface
capable of contacting an aneurysm in an expanded condition. Final Act. 6
( citing Murphy ,r,r 51, 69, Figs. 3, 4, 18A-18E). The Examiner also found
3 After the Appeal Brief was filed, the Examiner withdrew a number of
rejections. See Ans. 3. We do not review those rejections as part of this
appeal. The Examiner also entered a new ground of rejection with respect to
claim 5. See id. at 2. We dismiss the appeal of that rejection for the reasons
explained below.
4 U.S. Patent Publication No. 2003/0171739 Al, published September 11,
2003 ("Murphy").
5 U.S. Patent No. 5,002,556, issued March 26, 1991 ("Ishida").
6 U.S. Patent Publication No. 2005/0159771 Al, published July 21, 2005
("Peterson").
3
Appeal2018-003596
Application 14/230,426
that Murphy discloses a tubular structure made from a braided mesh tube
having a hemispherical shape in its expanded condition when it conforms to
the interior of an aneurysm as shown in Figures 18A-18E. Id. at 6-7 (citing
Murphy ,r,r 16, 5 8, Figs. 18A-18E); see also Ans. 3. As to the claimed
control ring, the Examiner found that Murphy'sjunctionjoint 124 discloses
the limitation and provides the claimed "engagement feature during
manipulation of the occlusion device." Final Act. 7.
After noting the Examiner's findings that Murphy discloses a tubular
structure that is a braided mesh tube, and that the structure has a
hemispherical shape in the expanded condition, Appellant argues that
"Murphy only describes a loop shape array elements 126 that has a cover
127 wrapped around its perimeter." Appeal Br. 7. Appellant then notes the
Examiner's finding that Murphy'sjunctionjoint 124 corresponds to the
claimed control ring, and argues that the Examiner's reliance on Murphy's
paragraph 64 for the finding lacks support because it only refers to Figure
11, disclosing a different embodiment, not joint 124. Id.
In the Answer, the Examiner states that "cover 127 is interpreted as a
braided mesh tube by being a woven mesh or braided mesh (Paragraph
[0016]) and being secured to the array elements 126; in tum, having the
same collapsed and expanded configurations as the array elements 126
(Paragraph [0051])." Ans. 3. The Examiner again pointed to Murphy's
Figures 18A-18E as disclosing the claimed hemispherical shape in the
expanded condition. Id. As to the control ring issue, the Examiner found
that Murphy'sjunctionjoint 124 is not only shown in Figure 11, "ring 124 is
clearly seen in figures 2--4 as well." Id. at 4. Appellant did not file a Reply
Brief responding to the Examiner's Answer.
4
Appeal2018-003596
Application 14/230,426
Appellant's brief arguments do not apprise us of error in the
Examiner's rejections. See Appeal Br. 7. First, Appellant's statement that
"Murphy only describes a loop shape array elements 126 that has a cover
127 wrapped around its perimeter" does not specifically argue that Murphy
fails to disclose any specific limitation. Id. Taken in context with the
summary of the Examiner's findings, Appellant may be arguing that Murphy
fails to disclose a braided mesh tube. If so, we disagree. As shown in
Murphy's Figure 4 and discussed at paragraphs 16 and 18, Murphy discloses
a cover that "may comprise a braided or mesh-like structure that includes a
plurality of loops," and appears substantially tubular in a collapsed
condition. Murphy ,r,r 16, 18 ("braided ( or 'mesh-like') structure ... is
capable of being stretched into a delivery shape when positioned in a lumen
of a delivery catheter"), Fig. 4 (showing substantially tubular mesh-like
cover within delivery tube); see also Final Act. 6-7; Ans. 3.
Appellant's statement may also be read to argue that Murphy fails to
disclose a hemispherical shape in an expanded condition. Again, we
disagree. As the Examiner found, Murphy's figures depict cover 127 in an
expanded condition that can be readily described as hemispherical. See
Final Act. 7; Ans. 3; Murphy Figure 18B. In fact, Murphy's hemispherical
shape bears a strong resemblance to Appellant's own disclosure of the
claimed shape. Compare Murphy Figs. 3, 18B-18E, with Spec. Figs. 3-6,
,r 35 (referring to "hemi-spherical shape within sac S as shown in FIG. 3").
Appellant has not provided us with any claim construction that would
somehow cover its own disclosure of a hemispherical shape without also
covering Murphy's shape.
5
Appeal2018-003596
Application 14/230,426
Appellant's argument regarding the "control" ring limitation fares no
better, as the Examiner addressed Appellant's argument that Murphy's
paragraph 64 only discusses Figure 11, and not joint 124. See Appeal Br. 7;
Ans. 4. The Examiner correctly found that Murphy discloses joint 124 in
Figures 2--4, and Appellant does not contest that finding. See Ans. 4;
Murphy Figs. 2--4. In addition, Appellant does not argue directly that joint
124 fails to disclose the claimed control ring, and we discern no error in the
Examiner's findings as to this limitation.
Based on the foregoing, we sustain the rejection of claim 1. Because
Appellant does not raise any other arguments with respect to claims 2--4, 6,
8, 9, and 15-17, we sustain the rejection of those claims for the same
reasons.
Obviousness of Claims 11-14, 18, and 20
For the obviousness rejections, Appellant concedes that the rejections
stand or fall with the anticipation rejection of claims 1 and/or 15. See
Appeal Br. 8-9. Accordingly, we sustain the rejection of claims 11-14, 18,
and 20 for the same reasons discussed above.
Claim 5
The Examiner did not reject claim 5 based, in part, on Murphy in the
Final Office Action, but did include such a rejection of claim 5 in the
Answer. See Final Act. 6, 13-16; Ans. 2. The rejection was designated as
a new ground of rejection. Ans. 2. The Answer quoted 37 C.F.R.
§ 41.39(b ), which states that in order to avoid "sua sponte dismissal" of the
appeal as to claim 5, Appellant "must" either request that prosecution be
reopened, or maintain the appeal by filing a Reply Brief that "must" address
the new ground of rejection. See Ans. 4--5; 37 C.F.R. § 4I.39(b). Appellant
6
Appeal2018-003596
Application 14/230,426
neither reopened prosecution nor filed a Reply Brief. Accordingly, pursuant
to 37 C.F.R. § 4I.39(b), we dismiss the appeal as to claim 5.
DECISION
We affirm the decision of the Examiner to reject claims 1--4, 6, 8, 9,
11-18, and 20. We dismiss the appeal as to claim 5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
7