Ex Parte Osborne et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201612316734 (P.T.A.B. Feb. 29, 2016) Copy Citation 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. 12/316,734 12/16/2008 Thomas A. Osborne 8627/3470 (PA-6328-RFB) 6609 48003 7590 02/29/2016 BGL/Cook - Chicago PO BOX 10395 CHICAGO, IL 60610 EXAMINER GHERBI, SUZETTE JAIME J ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 02/29/2016 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 THOMAS A. OSBORNE and MICHAEL H. PALNE ____________ Appeal 2014-000674 Application 12/316,734 Technology Center 3700 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas A. Osborne and Michael H. Palne (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–15 and 20–261. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed invention “relates to a device for enabling repeated access to a blood vessel.” Spec. 1, ll. 9–10. 1 Claims 16–19 have been cancelled. Appeal Br. 2 (filed May 28, 2013). Appeal 2014-000674 Application 12/316,734 2 Claims 1, 10, 12, and 20 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An intraluminal device for use in accessing a vessel lumen with a medical implement, the intraluminal device comprising: a lattice of structural elements forming a tubular shape having a device wall defining a device lumen, the device wall having a fenestration side and an opposite side located opposite the fenestration side; a fenestration disposed in the fenestration side of the device wall, the fenestration passing through the fenestration side of the device wall allowing access of the medical implement to the device lumen through the fenestration side of the device wall; a reinforced perimeter on the fenestration side around the fenestration; and a reinforced portion opposing the fenestration, the reinforced portion formed in the opposing side of the device wall. Appeal Br. 18. REFERENCES RELIED ON BY THE EXAMINER Wisselink US 5,984,955 Nov. 16, 1999 Brucker US 7,799,064 B2 Sept. 21, 2010 Davidson US 2003/0195606 A1 Oct. 16, 2003 LaDuca US 2008/0275542 A1 Nov. 6, 2008 Kocur US 2009/0012596 A1 Jan. 8, 2009 REJECTIONS ON APPEAL Claims 1–5, 10, 11, and 20–26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brucker and Davidson. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brucker, Davidson, and Wisselink. Appeal 2014-000674 Application 12/316,734 3 Claims 8, 9, 11–13, 15, and 20–26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Brucker, Davidson, and Kocur. Claims 1 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over LaDuca and Davidson. ANALYSIS The rejection of claims 1–5, 10, 11, and 20–26 as unpatentable over Brucker and Davidson The Examiner finds that Brucker discloses most of the limitations of independent claims 1, 10, and 20, including a device wall having a fenestration side 16 and a wall opposite the fenestration side, but that Brucker’s wall does not have “an opposite reinforced portion opposing the fenestration formed in the opposing side of the device wall.” Final Act. 3–4 (mailed December 27, 2012). The Examiner finds that the term “reinforced” may refer to a portion of a stent “having a higher density of struts that form the stent [than the density of the struts] elsewhere on the stent.” Id. at 4 (citing Spec. ¶ 35). The Examiner relies on Davidson as teaching that “a stent device with an opening/hold 22 and a cell pattern that may be formed such that sections are either thicker, wider or formed at a higher cell density to provide a differential wall mass.” Id. (citing Davidson, ¶ 40). The Examiner concludes that it would have obvious to one having ordinary skill in the art at the time the invention was made “to modify the scaffold of Brucker et al. and provide a higher density of struts opposing the reinforced fenestration in order to provide differential wall mass and to prevent instruments from going th[r]ough the cells of the device.” Id. Appeal 2014-000674 Application 12/316,734 4 Appellants argue that the Examiner’s reasoning for combining Brucker and Davidson, namely, to provide differential wall mass and to prevent instruments from going through the cells of the device, is improper because “nowhere within Brucker or Davidson is there any disclosure of an instrument going through a cell of a device.” Appeal Br. 10. Appellants assert that the Examiner’s position that “the differential wall mass will prevent instruments (such as a wire guide 54) from puncturing tissue,” is implausible because the Examiner “does not provide any reference indicating that this is a known problem.” Id. Appellants argue that moreover, “there is no indication as to why ‘providing a differential wall mass’ would be of benefit in Brucker.” Reply Br. 3. Appellants thus argue that the Examiner is “relying on the Appellant’s own disclosure describing the benefit of the reinforced portion as a motivation for combining the references,” which is an improper “reliance on hindsight to combine the references.” Appeal Br. 10; see also Reply Br. 3–4. We agree with Appellants that the Examiner has not adequately explained why it would have been obvious to modify Brucker to include a reinforced portion opposite the fenestration. Although the Examiner found that Davidson teaches a cell pattern that may be formed such that sections are either thicker, wider or formed at a higher cell density, this teaching only provides a differential wall mass, which by itself is not a sufficient reason to modify Brucker. The Examiner does not provide an adequate reason as to why it would have been obvious to modify Brucker to include a differential wall mass. Rather, the Examiner’s rationale for the modification, i.e., to prevent instruments from going through the cells of the device, appears to be a restatement of Appellants’ stated advantage. Final Act. 4; Ans. 7, cf. Spec. Appeal 2014-000674 Application 12/316,734 5 9, ll. 4–8 and Appeal Br. 10. Aside from referring to the same reasoning Appellants’ Specification provides for using a reinforced portion, the Examiner has not provided rational underpinnings for modifying Brucker to include such reinforced portion. Based on the record presented, the Examiner’s rationale for modifying Brucker to provide a reinforced portion appears to be based on impermissible hindsight. Accordingly, we do not sustain the rejection of independent claims 1, 10, and 20, or claims 2–5, 11, and 21–26, dependent from claims 1 and 20, as unpatentable over Brucker and Davidson. The rejection of claims 6 and 7 as unpatentable over Brucker, Davidson, and Wisselink We do not sustain the rejection of claims 6 and 7 as unpatentable over Brucker, Davidson, and Wisselink inasmuch as claims 6 and 7 depend from claim 1 and the Examiner does not rely on Wisselink in any way that would remedy the deficiency of the rejection of claim 1. The rejection of claims 8, 9, 11–13, 15, and 20–26 as unpatentable over Brucker, Davidson, and Kocur Like claim 1, independent claims 12 and 20 each recites, in part, “a reinforced portion opposing the fenestration, the reinforced portion formed in the opposing side of the device wall.” Appeal Br. 21–22. Consequently, the Examiner’s rejection of claims 12 and 20 suffers from the same deficiency as the rejection of claim 1 based on Brucker and Davidson. Because claims 8, 9, 11, 15, and 23 depend from claim 1; claim 13 depends from claim 12; and claims 21, 22 and 24–26 depend from claim 20, and Appeal 2014-000674 Application 12/316,734 6 because the Examiner does not rely on Kocur in any way that would remedy the deficiency of the rejection of claim 1, for the same reasons discussed above, we do not sustain the Examiner’s rejection of claims 8, 9, 11–13, 15, and 20–26. The rejection of claims 1 and 14 as unpatentable over LaDuca and Davidson The Examiner finds that LaDuca discloses most of the limitations of claim 1, including a device wall having at least one fenestration 6a–6c and a wall opposite the fenestration side, but that LaDuca’s wall does not have “a reinforced portion opposing the fenestration.” Final Act. 6. The Examiner finds that the term “reinforced” includes “a stent having a higher density of struts that form the stent [than the density of struts] elsewhere on the stent.” Id. (citing Spec. ¶ 35). The Examiner relies on Davidson as teaching that “a stent device with an opening/hold 22 and a cell pattern [that] may be formed such that sections are either thicker, wider or formed at a higher cell density to provide a differential wall mass.” Id. at 7 (citing Davidson, ¶ 40). The Examiner concludes that it would have obvious to one having ordinary skill in the art at the time the invention was made “to modify the scaffold of LaDuca and provide a higher density of struts opposing the reinforced fenestration in order to provide differential wall mass and to prevent instruments from going th[r]ough the cells of the device.” Id. Appellants argue that the Examiner’s “motivation for combining LaDuca and Davidson,” is improper, because “nowhere within LaDuca or Davidson is there any disclosure of an instrument going through a cell of a device.” Appeal Br. 15. Appellants assert that LaDuca and Davidson “do Appeal 2014-000674 Application 12/316,734 7 not contemplate the possibility of a medical device puncturing the vessel opposite the fenestration.” Id. Appellants thus argue that “the Office Action is relying on the Appellant’s own disclosure describing the benefit of the reinforced portion as a motivation for combining the references.” Id. Appellants therefore assert that “the Examiner has not provided an adequate explanation as to why it would be obvious to combine the differential wall mass of Davidson with the scaffold structure of LaDuca,” and as such the Examiner’s explanation “is hindsight based on the Appellant’s own disclosure.” Id. We agree with Appellants that the Examiner has not provided an adequate reason as to why it would have been obvious to modify LaDuca to include a reinforced portion opposite the fenestration. As discussed supra, Davidson’s teaching of a cell pattern that may be formed such that sections are either thicker, wider or formed at a higher cell density, only provides a differential wall mass, but the Examiner does not explain why it would have been obvious to modify LaDuca to include a differential wall mass. Again, the Examiner’s rationale for the modification, i.e., to prevent instruments from going through the cells of the device, appears to rely on impermissible hindsight. Final Act. 7, cf. Spec. 9, ll. 4–8 and Appeal Br. 15. Aside from referring to the same reasoning Appellants’ Specification provides for using a reinforced portion, the Examiner has not provided reasoning with rational underpinnings for modifying LaDuca to include such reinforced portion. See In re Khan, 441 F.3d at 988. In view of this, the Examiner’s rationale for modifying LaDuca to provide a reinforced portion appears to be based on knowledge gleaned only from Appellants’ disclosure. Accordingly, we do Appeal 2014-000674 Application 12/316,734 8 not sustain the rejection of independent claim 1, or claim 14, dependent therefrom, as unpatentable over LaDuca and Davidson. DECISION The decision of the Examiner to reject claims 1–13, 15, and 20–26 under 35 U.S.C. § 103(a) as being unpatentable over Brucker, Davidson, Wisselink, and Kocur is reversed. The decision of the Examiner to reject claims 1 and 14 under 35 U.S.C. § 103(a) as unpatentable over LaDuca and Davidson is reversed. REVERSED Copy with citationCopy as parenthetical citation