Ex Parte Morriss

Patent Trial and Appeal Board

Aug 31, 2016

13353192 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/353, 192 01/18/2012
110990 7590 09/02/2016
Acclarent, Inc,
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
FIRST NAMED INVENTOR
John Morriss
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.
ACC5020USDIV1.0604792 3681
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
patents@fbtlaw.com
lgroves@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MORRISS
Appeal2014-006911
Application 13/353,192 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Morriss (Appellant) appeals under 35 U.S.C. § 134(a) from the
final decision rejecting claims 2-10, 12-17, 34, 36-39, and 41--47.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 According to Appellant, the real party in interest is Acclarent, Inc. Appeal
Br. 4 (filed Jan. 10, 2014).
2 Claims 1, 11, 18-33, 35, and 40 are cancelled. Id. at 22-26, Claims
Appendix.
Appeal2014-006911
Application 13/353, 192
Appellant's invention relates generally to medical devices, and more
particularly to methods for determining the size of an ostium. Spec. i-f 1.
Claim 34 is illustrative of the claimed invention and reads as follows:
34. A method for measuring the size of a paranasal sinus
ostium of a patient, the method comprising the steps of:
(a) inserting a distal end portion of a paranasal sinus ostium
measuring device internally into a patient, locating the paranasal
sinus ostium to be measured with the distal end portion of the
paranasal sinus ostium measuring device;
(b) positioning the distal end portion of the paranasal sinus
ostium measuring device within the patient to enable the target
paranasal sinus ostium to be measured;
( c) determining the paranasal sinus ostium size of the targeted
paranasal sinus ostium by the paranasal sinus ostium measuring
device, wherein the act of determining the paranasal sinus ostium
size comprises determining the diameter of the paranasal sinus
ostium by identifying a diameter of a portion of the distal end
portion of the paranasal sinus ostium measuring device which
contacts or closely approximates the walls of the paranasal sinus
ostium, \'I/herein the portion of the distal end portion of the
paranasal sinus ostium measuring device which contacts the
walls of the paranasal sinus ostium is a tapered mandrel including
a proximal portion and a distal end, the distal end having a tip,
the tip being narrower in width than the proximal portion;
( d) withdrawing the paranasal sinus ostium measuring device
from the targeted paranasal sinus ostium;
( e) subsequent to withdrawing the paranasal sinus ostium
measuring device, selecting a dilator device based upon the
determined size of the targeted paranasal sinus ostium; and
( f) dilating the targeted paranasal sinus ostium with the
selected dilator device, wherein the act of dilating comprises
remodeling bony structure that surrounds or is adjacent to the
targeted paranasal sinus ostium.
Appeal Br. 24--25, Claims Appendix.
2
Appeal2014-006911
Application 13/353, 192
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 2--4, 9, 10, 34, 41--43, 46, and 47
under 35 U.S.C. § 103(a) as being unpatentable over McKinley
(US 2004/0102721 Al, pub. May 27, 2004), Lee (US 6,331,112
B 1, iss. Dec. 18, 2001 ), and Lofstedt (US 5, 116,311, iss. May
26, 1992).
II. The Examiner rejected claims 7, 8, 12, and 45 under 35 U.S.C.
§ 103(a) as being unpatentable over McKinley, Griego (US
2006/0064039 Al, pub. Mar. 23, 2006), and Ohline (US
2007 /0249901 Al, pub. Oct. 25, 2007).
III. The Examiner rejected claims 5, 6, 17, 36-39, and 44 under 35
U.S.C. § 103(a) as being unpatentable over McKinley, Griego,
Lee, and Chang (US 2006/0004323 Al, pub. Jan. 5, 2006).
IV. The Examiner rejected claims 13-16 under 35 U.S.C. § 103(a)
as being unpatentable over McKinley, Lee, Lofstedt, and
Griego.
Final Rejection 2-5 ("Final Act.," mailed Aug. 13, 2013).
ANALYSIS
Rejection I
Independent claim 34 requires, inter alia, "selecting a dilator device
based upon the determined size of the targeted paranasal sinus ostium; and
dilating the targeted paranasal sinus ostium with the selected dilator device."
See Claim 34 supra.
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Appeal2014-006911
Application 13/353, 192
In rejecting independent claim 34, the Examiner finds that McKinley
teaches selecting a dilator device based upon the determined size of the
targeted paranasal sinus ostium and dilating the target with the dilator. See
Answer 3 ("Ans.," mailed Mar. 21, 2014); see also Final Act. 2-3 (citing
McKinley Figure 4). According to the Examiner, "[i]n Figure 4, it shows
that based on whether the tip of known diameter (so based on the determined
size of the opening) fits in the opening (404) (412) a dilator is selected or not
selected at the cutting step (414)." Ans. 3. As such, the Examiner interprets
the claimed "dilating device" as a cutting device or tip for "cutting the edge
of the foramen 414." See McKinley i-f 24 (describing Fig. 4).
Appellant contends that McKinley fails to disclose the selection of a
dilator device based on a predetermined size and an act of dilating, as
required in claim 34. Appeal Br. 16. In particular, Appellant argues that
contrary to the Examiner's assertion, the relied upon tips (McKinley, Fig. 3,
tips 310, 312, 314, and 316) are not configured to dilate a foramen, but
instead to cut the edge of the foramen. Id. (citing McKinley i-f 21 ).
Therefore, Appellant concludes that the rejection mischaracterizes the
teachings of the reference because McKinley's tips fail to correspond to "a
dilating device, much less dilating a target." Reply Br. 7. We agree.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (internal citation and quotations omitted). This means
that the words of the claim must be given their plain meaning unless the
4
Appeal2014-006911
Application 13/353, 192
plain meaning is inconsistent with the specification. In re Zletz, 893 F .2d
319, 321 (Fed. Cir. 1989). In this case, an ordinary and customary meaning
of the term "dilate" is to "stretch an opening or hollow structure beyond its
normal dimensions"3 and the term "dilator" is an "instrument used to widen
or enlarge an opening, orifice or passage. "4 This interpretation is consistent
with Appellant's Specification, which describes a "dilator" as a balloon or
balloon catheter advanced through the nose to a position within the ostium
("without requiring removal or surgical alteration of the intranasal
anatomical structures") for expanding the ostium to facilitate drainage.
Spec. i-f 8. Accordingly, the Examiner's interpretation of the claimed
"dilator device" for "dilating" the ostium as corresponding to McKinley's
"tip" for "cutting" away the edge of the neural foramen is unreasonable in
view of the plain and ordinary meaning of these terms as they would be
understood by persons of ordinary skill in the art and Appellant's
Specification.
We are persuaded by the Appellant's position that, when the claim
term "dilator device" is properly interpreted, the Examiner fails to establish
that McKinley discloses the steps of "selecting a dilator device based upon
the determined size of the targeted paranasal sinus ostium; and dilating the
targeted paranasal sinus ostium with the selected dilator device," as required
by claim 34. The Examiner's findings with respect to Lofstedt do not
remedy this shortcoming of McKinley.
3 http://medical-dictionary.thefreedictionary.com/dilate (last visited Aug. 26,
2016).
4 httg://medical-dictionary.thefreedictionary.cornJdi1ator (last visited Aug.
26, 2016).
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Appeal2014-006911
Application 13/353, 192
For the foregoing reasons, we do not sustain the rejection of
independent claim 34. Because independent claims 46 and 47 recite
substantially similar language and are rejected based on the same
interpretation as claim 34, we do not sustain the rejection of those claims
either. For the same reasons, we also do not sustain the rejection of their
dependent claims. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("dependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
Rejections II-IV
Rejections II-IV rely on the same erroneous interpretation of the
claim term "dilator device" and the Examiner's use of the disclosures of
Lee, Ohline, Griego, and Chang does not remedy the deficiencies of
McKinley and Lofstedt, as discussed supra. See Final Act. 3-5. Thus, for
the reasons discussed above, we do not sustain Rejections II, III, and IV.
SUMMARY
The decision to reject claims 2-10, 12-17, 34, 36-39, and 41--47 is
reversed.
REVERSED
6