Ex Parte Robin et al

Patent Trial and Appeal Board

Sep 26, 2016

13045468 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/045,468 03/10/2011
20995 7590 09/28/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Kevin Robin
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.
DFMED.023Cl 2967
EXAMINER
OU, JING RU!
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN ROBIN and DOD. UONG
Appeal2015-000978
Application 13/045,468
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Kevin Robin and Do D. Uong (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-13. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to medical methods and devices, and,
in particular, to methods and devices for reducing the cross-sectional profile
of a valve implant to facilitate delivery via minimally invasive procedures."
Spec. ,-i 2. Claim 1 is the sole independent claim on appeal, and recites:
1. A method for reducing an axial profile of a valve implant,
the method comprising:
Appeal2015-000978
Application 13/045,468
providing a valve implant, the valve implant having a
longitudinal axis, and a delivery catheter, the delivery catheter
having a central axis and a distal receiving section;
wherein the valve implant is attached to at least one
inflation tube extending through the delivery catheter;
helically rolling the valve implant around a rolling axis
that is offset at an angle of about 15 degrees to about 60 degrees
with respect to the longitudinal axis to form a rolled valve
implant having a rolled axis, wherein the rolled axis is the same
as the rolling axis;
aligning the rolled axis of the rolled valve implant with the
central axis of the delivery catheter; and
inserting the rolled valve implant into the distal receiving
section of the delivery catheter.
Appeal Br. 16 (Claims App.).
REJECTIONS
I. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stevens (US 2004/0225355 Al, published Nov. 11, 2004), Sherry (US
2003/0074058 Al, published Apr. 17, 2003), and Taheri (US 4,872,874,
issued Oct. 10, 1989).
II. Claims 2, 6, 7, 12, and 13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Stevens, Sherry, Taheri, and Holman (US 6,319,276
Bl, issued Nov. 20, 2001).
III. Claims 3-5 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens, Sherry, Taheri, Holman, and Chobotov (US
2003/0216802 Al, published Nov. 20, 2003).
IV. Claims 9-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens, Sherry, Taheri, Holman, Chobotov, and Lazim
(US 5,330,528, issued July 19, 1994).
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Appeal2015-000978
Application 13/045,468
ANALYSIS
Rejection I
Claim 1 recites the step of "helically rolling the valve implant around
a rolling axis that is offset at an angle of about 15 degrees to about 60
degrees with respect to the longitudinal axis to form a rolled valve implant
having a rolled axis, wherein the rolled axis is the same as the rolling axis."
Appeal Br. 16 (Claims App.) (emphasis added). The Examiner finds
Stevens does not disclose this step, but finds Taheri teaches helically rolling
vascular implant 14 around a rolling axis offset at an angle with respect to
the longitudinal axis to form a rolled vascular implant having a rolled axis,
which is the same as the rolling axis. Final Act. 3--4 (citing Taheri, Figs. 4,
5). The Examiner concludes it would have been obvious to modify the
method of Stevens in view of Sherry to include the teaching of Taheri "to
obtain the advantage of substantially reducing the diameter of the implant
(Taheri, Col. 5, lines 8-13) which can be compactly held within a smaller-
diameter catheter for a less invasive surgery." Id. The Examiner reasons it
would have been obvious to modify the angle of the rolling axis in the
combination to be about 15 degrees to about 60 degrees "since it has been
held that where the general conditions of a claim are disclosed in the prior
art, discovering the optimum or workable ranges involves only routine skill
in the art." Id. (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Taheri discloses securing graft end 22 of tubular graft 14 to bulb 40.
Taheri, col. 4, 11. 65-68; Fig. 4. Graft end 20 is then rotated relative to distal
end 32 about flexible tube 36 to place tubular graft 14 in a twisted condition
about distal end 32. Id. at col. 5, 11. 1--4; Fig. 5.
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Appeal2015-000978
Application 13/045,468
Appellants argue because Taheri's tubular graft 14 is "twisted by
rotating one end while holding the other end stationary, it is different from
being helically rolled up." Appeal Br. 10. Appellants also assert:
In fact, when the graft is twisted, the axis around which
the rotating of one end of the graft occurs is the same as the
longitudinal axis of the graft. As shown in Fig. 5 of Taheri, the
graft 14 is twisted around the conduit 36, which is parallel to the
longitudinal axis of the graft as shown in Fig. 4. As such, there
is no rolling axis that is offset at an angle with respect to the
longitudinal axis.
Id. (emphasis added).
The Examiner responds that "the graft of the [sic] Taheri is helically
rolled around the rolling axis that is offset at an angle about 45 degrees with
respect to the longitudinal axis to form a rolled implant having a rolled axis,
wherein the rolled axis is the same as the rolling axis." Ans. 2. The
Examiner provides an annotated Figure 4 of Taheri, having notations for the
"Longitudinal Axis" and "Rolling Axis/Rolled Axis." Final Act. 5; Ans. 3.
The Examiner also reproduces Figure 5 of Taheri and Figure 60C of
Appellants' application (Ans. 3) "to show how the implant of Taheri and
[the] implant of the pending application appear to have similar rolling
configurations" (id. at 2).
Appellants disagree with the Examiner's indicated rolling axis/rolled
axis in annotated Taheri Figure 4. Reply Br. 3. Appellants contend because
"Taheri twisted the tubular graph [sic] by rotation [sic] one end of the graph
[sic] while holding the other end stationary, there cannot be a rolling
axis/rolled axis. A tubular graph [sic] cannot be rolled up in a tubular state."
Id.
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Appeal2015-000978
Application 13/045,468
Appellants' contentions are persuasive. Figure 5 8 of Appellants'
application shows valve implant 100 having a longitudinal axis, L, and a
second longitudinal axis, M, which is oriented at an angle e with respect to
longitudinal axis L, and about which valve implant 100 "can be rolled
around." See Spec. ,-i 439; Fig. 58. In contrast, Taheri teaches twisting
tubular graft 14 with respect to its longitudinal axis. See Taheri, Figs. 4, 5.
Taheri does not teach helically rolling tubular graft 14 around an axis that is
offset at an angle relative to its longitudinal axis. Nor does the Examiner
explain how Taheri's tubular graft 14 is helically rolled around the identified
rolling axis/rolled axis in annotated Taheri Figure 4. Absent any
explanation, this determination by the Examiner appears to be arbitrary.
Further, we agree with Appellants that "even if both Taheri and the
present application are aiming to reduce the axial profile, it does not infer
that Taheri's twisted graph [sic] is the same as the rolled valve as recited in
Claim 1." Reply Br. 3. Claim 1 is directed to a method, not to the valve
implant itself. Accordingly, even if Taheri's twisted tubular graft 14 shown
in Figure 5 may have a similar configuration as helically rolled valve
implant 100 shown in Figure 60C of Appellants' application, this does not
establish that tubular graft 14 is produced by helical rolling around an offset
axis, as claimed.
For the foregoing reasons, we do not sustain the rejection of claim 1
as unpatentable over Stevens, Sherry, and Taheri.
Rejections II-IV
The Examiner's application of Holman, Chobotov, and Lazim to the
rejections of dependent claims 2-13 does not cure the deficiencies of the
rejection of claim 1. See Final Act. 5-10. Accordingly, we do not sustain
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Appeal2015-000978
Application 13/045,468
the rejections of claims 2, 6, 7, 12, and 13 as unpatentable over Stevens,
Sherry, Taheri, and Holman; claims 3-5 and 8 as unpatentable over Stevens,
Sherry, Taheri, Holman, and Chobotov; and claims 9-11 as unpatentable
over Stevens, Sherry, Taheri, Holman, Chobotov, and Lazim.
DECISION
We reverse the rejections of claims 1-13.
REVERSED
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