Ex Parte Sirimanne et al

Patent Trial and Appeal Board

Nov 14, 2017

10961979 (P.T.A.B. Nov. 14, 2017)

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.
10/961,979 10/08/2004 D. Laksen Sirimanne DEV5247USCNT5.0577924 7770
97998 7590 11/16/2017
Devicor Medical Products, Inc.
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
CATTUNGAL, SANJAY
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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 D. LAKSEN SIRIMANNE, DOUGLAS S. SUTTON,
NATALIE V. FAWZI, and GAIL LEBOVIC
Appeal 2015-002170
Application 10/961,979
Technology Center 3700
Before WILLIAM A. CAPP, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 5, 6, and 8—21 under 35 U.S.C. § 102(b) as anticipated by
Stinson (US 6,174,330 Bl, iss. Jan. 16, 2001). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-002170
Application 10/961,979
THE INVENTION
Appellants’ invention relates to a subcutaneous cavity marking
device. Spec. 1. Claim 5, reproduced below, is the only pending
independent claim and is representative of the subject matter on appeal.
5. A biopsy marker for marking a selected biopsy site
within tissue of a patient, comprising:
a) a body of expandable, bioabsorbable material, the body
defining a first closed volume prior to deployment within the
biopsy site, and the body defining a second, larger generally
closed volume after being placed within the biopsy site, and
wherein the body has a generally continuous outer surface
enclosing the volume; and
b) a radiopaque marker carried by the body, wherein the
radiopaque marker is recognizably artificial when the marker is
subject to ultrasound or X-ray imaging, so as to be readily
distinguishable from biological features within the biopsy site;
and wherein the body is expandable relative to the radiopaque
marker.
OPINION
Claim 5
The Examiner finds that Stinson discloses every element of claim 5.
Final Action 2—3. Appellants argue, among other things, that Stinson’s
“body” does not define a “closed volume” with differing volumes before and
after deployment as claimed. Id. We agree.
Stinson’s Specification describes element 14, which the Examiner
identifies as the “body,” as a bioabsorbable-radiopaque marker having
hollow 15, cavity 25, porous 35 portions, or combinations thereof filled with
a non-toxic, radiopaque material. Stinson, Figures 10a—d, col. 15,11. 49-65;
Ans. 5 (“element 14 is the body as required by claim 5, with the radiopaque
marker elements (15, 25, and/or 35) disposed in the body.”).
2
Appeal 2015-002170
Application 10/961,979
Stinson element 14 is “relatively flexible” and “deformable,” so that it
will fit within the weaves of endoprosthesis 16, which could be, for example,
a stent. Stinson, col. 1,11. 11—12; col. 10,11. 14—18; col. 16,11. 36-41.
Nevertheless, we agree with Appellants that such disclosure is insufficient to
establish that element 14 undergoes a change of “closed volume” before and
after deployment. The Examiner’s findings regarding Stinson’s change in
volume relate primarily to the volume taken up by stent 16.
It is known in the art that a stent/endoprosthesis is compressed
to fit in the lumen of the stent delivery system, as such the
endoprosthesis will have a larger volume when placed in the
biopsy site, compared to its compressed state prior to
deployment. Col. 9 line 53 through col. 10 line 5 teaches the
compression and expansion of the endoprosthesis during
delivery.
Ans. 7. The Examiner, however, has identified element 14 as the “body,”
not stent 16. We are not persuaded that the expandability of a stent during
deployment necessarily entails a change in the “closed volume” of
element 14 which is intertwined with the stent.
The Examiner’s findings of fact are not supported by a preponderance
of the evidence and we do not sustain the Examiner’s rejection of claim 5.
DECISION
The decision of the Examiner to reject claims 5, 6, and 8—21 is
reversed.
REVERSED
3