Ex Parte Salahieh et alDownload PDFPatent Trial and Appeal BoardAug 1, 201613282247 (P.T.A.B. Aug. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/282,247 10/26/2011 11050 7590 08/03/2016 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Amr Salahieh 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. 2001.1546102 2391 EXAMINER PRESTON, REBECCA STRASZHEIM ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 08/03/2016 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): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMR SALAHIEH, DANIEL HILDEBRAND, and TOM SAUL Appeal2014-007532 Application 13/282,247 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Amr Salahieh et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's non-final rejection of claims 1-6. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants submit the real party in interest is Boston Scientific Scimed, Inc., a subsidiary of Boston Scientific Corporation. Appeal Br. 3. Appeal2014-007532 Application 13/282,247 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is representative of the claimed subject matter. 1. A method for endovascularly replacing a patient's native heart valve, the method comprising: delivering an expandable anchor, the anchor having a proximal end and a distal end and a replacement valve to a vicinity of the native heart valve, wherein leaflet engagement elements extend distally from the proximal end of the anchor; sandwiching native valve leaflets between the distally extending leaflet engagement elements and the anchor; and expanding the anchor from a collapsed delivery configuration to an expanded configuration to secure the anchor within the native heart valve; and positioning a proximal end of the anchor further from a left ventricle than the distal end of the anchor; wherein the replacement valve allows the flow of blood through the replacement valve in a first configuration and prevents the flow of blood through the valve in a second configuration. REJECTIONS 1) Claims 1-3 are rejected under 35 U.S.C. § 102(e) as anticipated by Philipp (US 2003/0036791 Al, pub. Feb. 20, 2003). 2) Claims 1---6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Garrison (US 2002/0151970 Al, pub. Oct. 17, 2002) and Philipp. 2 Appeal2014-007532 Application 13/282,247 DISCUSSION Rejection 1: Claims 1-3 Anticipation by Philipp Appellants argue these claims as a group. Appeal Br. 9-13. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative, and all claims in this group stand or fall with claim 1. The Examiner, referring to Philipp's Figures 1-3, finds that Philipp discloses all the limitations of claim 1 including the "leaflet engagement elements (feeler elements 31 )"which "extend distally (toward bottom of page) from the proximal end (the end of feeler element 30 closer to top of the page) of the anchor (feeler elements 30)." Final Act. 4. Appellants contend the Examiner's finding regarding the leaflet engagement elements is erroneous because feelers 30 and 31 are one element and "cannot be separated into two separate elements wherein one element extends distally from the other." Appeal Br. 11. As a corollary to this contention, Appellants argue Philipp discloses that feelers 30 and 31 "extend proximally from the carrier element 20 of the valve 10." Id. Appellants next contend that feelers 30 and 31 "help position and then engage a cavity, such as the wall of a tubular vessel, not valve leaflets." Id. The Examiner responds that "[a]ppellant has not defined the anchor or leaflet engagement elements within the claims other than to say the anchor is expandable and the leaflet engagement elements extend distally from the proximal end of the anchor." Ans. 2. Philipp discloses a device for "the implantation of heart valves." Philipp i-f 2. Philipp discloses a carrier element 20 formed from a cylindrical mesh for holding the valve. Id. i-fi-126, 28. The carrier element 20 is "joined to a plurality of feeler, or palpation, elements or fingers 30, 31." Id. i-f 26. 3 Appeal2014-007532 Application 13/282,247 Feeler elements 30, 31 are formed in "a generally cylindrical exterior ring of wire loops of which one (31) at least ... protrudes laterally and towards the front."2 Id. i-f 28. When deployed, feeler elements 31 engage the native aorta valve 50. See id. i-fi-136, 37, Fig. 3. In the un-deployed state, feeler element 30 is approximately parallel to carrier element 20. See id. at Fig. 1. In the deployed state, feeler element 30 expands outward from the carrier element 20. See id. at Fig. 3. Feeler element 31 extends from the proximal end of feeler 30 in the distal direction. Id. at Figs. 1, 3, i-f 28. Based on the foregoing, the Examiner's finding that feeler element 30 meets the claim limitation of an "expandable anchor" is supported by a preponderance of the evidence. The Examiner's finding that feeler element 31 meets the claim limitation of "leaflet engagement elements extending distally from the proximal end of the anchor" is also supported by a preponderance of the evidence. Appellants' argument that feeler elements 30 and 31 are one element and cannot be separated is not persuasive because claim 1 does not recite that the anchor and leaflet engagement elements must be distinct and/or separate elements. In addition, the Specification states that "leaf engagement elements 120 may also be disposed, e.g., attached or coupled on the proximal region of the anchor (as is illustrated in Figure 7)." Spec. i-f 86, Fig. 7. Appellants' argument that Philipp's feeler elements 30 and 31 engage "the wall of a tubular vessel, not valve leaflets" is contrary to Philipp and, therefore, unpersuasive. Philipp' s Figures 2 and 3 illustrate that feeler elements 30 engage element 50. Element 50 is "the native aorta valve[]." Philipp i-f 27. 2 We understand Philipp' s reference to "the front" to mean the distal direction. 4 Appeal2014-007532 Application 13/282,247 The Examiner's finding that Philipp anticipates claim 1 is supported by the requisite preponderance of the evidence. Therefore, we sustain the rejection of claims 1-3 under 35 U.S.C. § 102(e). Rejection 2: Claims 1-6 Obviousness over Garrison and Philipp Appellants argue these claims as a group. Appeal Br. 13-14. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative, and all claims in this group stand or fall with claim 1. The Examiner finds that Garrison discloses all the limitations of the claims other than the "distally extending leaflet engagement elements." Final Act. 6. The Examiner finds that Philipp discloses the leaflet engagement elements and concludes it would have been obvious to include the leaflet engagement elements (feeler elements 31) and the anchor (feeler elements 30), as taught by Philipp et al., on the valve displacer (8B), as disclosed by Garrison et al., instead of the recess (24), as disclosed by Garrison et al., as both structures are used to trap the native valve leaflets when replacing a damaged valve. Id. at 7. Appellants repeat the same contention as stated above that Philipp does not disclose the leaflet engagement elements. Appeal Br. 14. Appellants argue that Philipp does not cure Garrison's failure to disclose the leaflet engagement elements and, consequently, the combination of Garrison and Philipp does not render claim 1 obvious. Id. As noted above in connection with rejection 1, Appellants' contention that Philipp does not disclose the leaf engagement elements is not persuasive. Appellants do not present any other contentions of error concerning either the Examiner's factual findings or rationale for the 5 Appeal2014-007532 Application 13/282,247 combination of Garrison and Philipp. Id. at 13-14. Therefore, we sustain the rejection of claims 1---6 under 35 U.S.C. § 103(a). DECISION The Examiner's decision rejecting claims 1---6 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation