Ex Parte McGuckin, Jr. et al

Patent Trial and Appeal Board

Apr 20, 2016

12288217 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/288,217 10/17/2008
67339 7590 04/20/2016
IPHORGAN LTD,
195 ARLINGTON HEIGHTS ROAD
SUITE 125
BUFFALO GROVE, IL 60089-1768
FIRST NAMED INVENTOR
James F. McGuckin, Jr.
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.
AMD 0814 US 6327
EXAMINER
ALEMAN, SARAH WEBB
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
04/20/2016 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 JAMES F. McGUCKIN, JR.,
JAMES ERICH BRESSLER, and DAVID M. SCHALLER
Appeal2013-006347
Application 12/288,217
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and MICHAEL L.
WOODS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
James F. McGuckin, Jr., James Erich Bressler, and David M. Schaller
(Appellants) filed a request for rehearing on March 25, 2016 (hereinafter
"Request"), in response to our Decision on Appeal mailed January 28, 2016
(hereinafter "Decision"), affirming the Examiner's rejection of the claims
under 35 U.S.C. § 251.
Appeal2013-006347
Application 12/288,217
ISSUES RAISED ON REQUEST FOR REHEARING
I. Did the Patent Trial and Appeal Board ("Board") err in finding
that Middleman's cannula is advanced for filter delivery, and does such an
error change the outcome of the Decision?
II. Did the Board misunderstand that Middleman fails to teach ( 1)
a wire curved to place a filter centrally in a vein, and (2) rotation of the
device and cannula to a more centered position?
ANALYSIS
37 C.F.R. § 41.52 (2012) states in relevant part:
(a)
( 1) Appellant may file a single request for rehearing within
two months of the date of the original decision of the Board ....
The request for rehearing must state with particularity the point
believed to have been misapprehended or overlooked by the
Board. Arguments not raised [in the brief before the Board], and
[e]vidence not previously relied upon [in the brief and the reply
brief(s)] are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) through (a)(4) of this section ....
(2) Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.50(b) are permitted.
(Emphasis added).
Appellants are required to state with particularity the points believed
to have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(l). The Request for Rehearing does not explicitly identify any
2
Appeal2013-006347
Application 12/288,217
such points. The Board, however, has identified two points for further
consideration, based on arguments presented in the Request.
ISSUE!
Appellants argue that the Board mischaracterized Middleman in
finding that, although Middleman's cannula is not a pusher, "it is
nonetheless advanced for filter delivery and is curved by the wire 24 to place
the filter centrally in the vein." Request 6 (citing Decision 4) (emphasis
omitted). According to Appellants, Middleman's cannula ( 1) does not
"advance a filter for delivery," and (2) "is not curved by the wire 24 to place
the filter centrally in the vein." Id. at 7.
Our finding in the Decision that Middleman's cannula (pusher) is
"advanced for filter delivery and is curved by the wire 24 to place the filter
centrally in the vein" is in error and mischaracterizes its disclosure. Indeed,
Middleman does not disclose that its cannula (pusher) is advanced for filter
delivery. This misstatement in the Decision, however, does not change the
outcome, because the Examiner's determination of obviousness only relies
on Middleman for (1) "teaching the concept of a tubular device with a pre-
bent wire fixedly attached within a tubular structure, wherein movement of
the tubular device within the sheath causes bending of a sheath within a
body lumen," and (2) rotating the device (including the bent portion) about
its longitudinal axis to achieve a desired placement. Ans. 7-8. It is
Roussigne that the Examiner relies on for disclosing advancing a filter for
delivery centrally in the vein. Id. (citing Roussigne, Fig. 8, col. 6, 11. 53-54).
3
Appeal2013-006347
Application 12/288,217
ISSUE II
Appellants argue that Middleman's cannula 22 "is not curved by wire
24 to place a filter centrally in the vein," and that Middleman's device 20 is
not "rotated to a more centered position." Request 7. Appellants note,
referring to Figures 15A-15C, that Middleman's distal segment 30 curves
not to center the device 20 in the vein 172, but to direct the device 20 toward
the vein branch 176. Id. at 8. Appellants argue that this action by
Middleman offsets the device, rather than moving it "to a more centered
position within the vessel." See id. Appellants also note that Middleman is
directed to steering a cannula to reach a destination, whereas Roussigne is
directed to action taken after the destination is reached. Id.
The Examiner addressed this argument, explaining that (1) Roussigne
broadly describes directing a distal end of the device toward the vessel
centerline for filter deployment, (2) Middleman discloses rotating the device
about its longitudinal axis to achieve a desired placement of its distal end,
and (3) both references disclose moving the distal end to a desired location,
such that one skilled in the art "would have found it obvious to rotate the
modified Roussigne assembly about its longitudinal axis to obtain the
desired placement of the distal end of the sheath for optimizing deployment
of the filter." Ans. 8 (citations omitted).
Without being apprised by Appellants as to why the above findings
and conclusion of the Examiner are in error, we are not persuaded that there
were any points misapprehended or overlooked.
We conclude that Appellants have not shown any determinative points
that we misapprehended or overlooked in our Decision.
4
Appeal2013-006347
Application 12/288,217
DECISION
Appellants' Request for Rehearing is granted to the extent that we
have reconsidered our Decision in light of the arguments in Appellants'
Request. We have carefully considered the arguments raised by Appellants
in the Request for Rehearing, and we grant Appellants' request solely to
clarify our holding. Appellants' Request is denied to the extent that we do
not modify the outcome of the Decision. This Decision on Appellants'
Request for Rehearing is deemed to incorporate our earlier Decision (dated
January 28, 2016) by reference. See 37 C.F.R. § 41.52(a)(l).
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).
DENIED
5