Ex Parte TenerzDownload PDFPatent Trial and Appeal BoardDec 22, 201613076998 (P.T.A.B. Dec. 22, 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. 13/076,998 03/31/2011 Lars TENERZ 030481-0360 4790 22428 7590 12/27/2016 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER HOLWERDA, KATHLEEN SONNETT ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): ipdocketing @ foley. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARS TENERZ Appeal 2013-0065051 Application 13/076,9982 Technology Center 37003 Before PHILIP J. HOFFMANN, KEVIN W. CHERRY, and TARA L. HUTCHINGS, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lars Tenerz (Appellant) seeks review under 35U.S.C. § 134 of a final rejection of claims 1, 4, and 6—9, the only claims pending in the application 1 Our decision references the Appellant’s Appeal Brief (“Appeal Br.”), filed December 19, 2012, and Reply Brief (“Reply Br.”), filed April 15, 2013, and the Examiner’s Answer (“Ans.”), mailed February 13, 2013, and Final Action (“Final Act.”), mailed June 27, 2012. 2 Appellant’s Appeal Brief identifies “Radi Medical Systems AB, also known as St. Jude Medical Systems AB,” as the real party in interest for this appeal (Appeal Br. 1). 3 The record includes a transcript of the oral hearing held October 20, 2016 (“Tr.”). Appeal 2013-006505 Application 13/076,998 on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellant appeared for oral hearing on October 20, 2016. We REVERSE. Appellant’s claimed invention relates generally to the field of sealing devices for the sealing of a percutaneous puncture in a vessel wall, and in particular to the class of sealing devices that comprises an intra-arterial member and an extra-arterial member, which are sandwiching the vessel wall and are held together by a retaining member, and more particularly to a sealing device which at least partly is made from a polymer having a shape memory. (Spec. 1). Claim 1 is illustrative of the subject matter on appeal and is reproduced below (with paragraphing added). 1. A medical sealing device for sealing a hole in a wall of a body organ, comprising: an inner member adapted to be positioned against an interior surface of the wall; a retaining member attached to the inner member; and an outer member adapted to be positioned outside the wall, the outer member having a hole through which the retaining member passes; wherein at least one of the inner member and the outer member comprise a shape memory material; wherein in a first state the at least one of the inner member and the outer member has a surface with a flat cross-section configured to face the wall of the body organ and in a second state the surface of the at least one of the inner member and the outer member has a non-flat shape configured to clamp the wall between the inner member and the outer member, wherein the at least one of the inner member and the outer member has the flat cross-section at a temperature below a 2 Appeal 2013-006505 Application 13/076,998 transition temperature and the non-flat shape above the transition temperature. (Appeal Br. 11 (Claims App.)). Rejections Claims 1, 4, 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Swanstrom (US 6,626,919 Bl, iss. Sept. 30, 2003) and Morita (US 4,450,616, iss. May 29, 1984). Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Swanstrom, Morita, and Kamiya (US 5,192,301, iss. Mar. 9, 1993). ANALYSIS We are persuaded by Appellant’s argument that Morita is non- analogous art to the claimed invention (Appeal Br. 3—9; Reply Br. 2—5). Morita is directed to a method of ensuring the tightness of a bolt (Morita (54)). Morita teaches a washer made of metal shape memory alloy {id. at col. 1,11. 7—10). The washer is heated above a certain phase transition temperature (in Morita’s example, 200°C) and formed into a “dish shape” {id. at col. 2,1. 65—col. 3,1. 5, Fig. 1). The washer is then cooled and flattened between bolt 4 and member 6 {id. at col. 3,11. 19-25, Fig. 4). The washer is then reheated, and when the temperature of the washer rises above a certain temperature, the washer “tends to return to the dish-like form in the original phase” {id. at col. 3,11. 25—33, Fig. 4). Returning to the “dish-like” form causes the washer to push the seating plane of the bolt to ensure the tightness of the bolt {id.). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even 3 Appeal 2013-006505 Application 13/076,998 if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, the Examiner agrees that Morita is not in the same field of endeavor as the claimed invention (Final Act. 3), but instead contends that “Morita is reasonably pertinent to the particular problem of enhancing the gripping of material sandwiched between two elements of a device” (id.). The Examiner contends that the claimed invention is directed to enhancing the gripping force because, “as one skilled in the art would recognize, enhancing the gripping force of the device enhances sealing capacity” (Ans. 6). The Examiner further submits that “the instant application recognizes that increased clamping force enhances sealing capacity, and part of the problem with which applicant is concerned is enhancing the clamping force of the device when fastened to tissue as this affects the sealing capacity” (id.). The Examiner finds that “Morita is concerned with the problem of enhancing the clamping force (‘fastening force’ in claim 1 of Morita) of a fastener device in order to ensure tightness of the fastener (see preamble to claims of Morita)” (id.). Therefore, the Examiner concludes that Morita is analogous art. Even assuming that the Examiner is correct that the Appellant’s problem was enhancing the clamping force of a medical device, the problem with this analysis is that the Examiner has failed to explain, and we fail to see, how Morita’s method for ensuring tightness of a bolt and nut would have logically commended itself for enhancing the sealing or clamping in a medical device. We agree with Appellant that Morita has no disclosure 4 Appeal 2013-006505 Application 13/076,998 about sealing, clamping, or that the washer could perform a sealing function (Reply Br. 3). The Examiner provides no explanation or support for the finding that the fastening force of Morita is the same as a clamping force. Moreover, we agree with Appellant that there is nothing in Morita that suggests that its bolt or nut would work with delicate human tissue (id.). Indeed, Morita discloses that the washer must be heated to over 100°C to undergo the phase transformation to realize the shape memory effect (see Morita, col. 3,11. 29—31), which would suggest that Morita would be incompatible for use in solving Appellant’s problem. In addition, there is no disclosure in Morita, or explanation from the Examiner, how the forces, materials, or configuration of Morita would be pertinent to the medical sealing device Appellant claims. Thus, we agree with Appellant that the Examiner has failed to show that Morita is analogous art to the claimed invention. Because all of the rejections rely on Morita, we cannot sustain any of the Examiner’s rejections of claims 1, 4, and 6—9. DECISION The Examiner’s decision to reject claims 1, 4, and 6—9 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation