Ex Parte Tu et al

Patent Trial and Appeal Board

May 31, 2016

11455598 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111455,598 06/19/2006
20995 7590 06/02/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Hosheng Tu
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.
GLAUK0.017Cl 1345
EXAMINER
MENDOZA, MICHAEL G
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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 HOSHENG TU, DAVID STEVEN HAFFNER,
GREGORY T. SMEDLEY, BARBARA A. NIKSCH,
MORTEZA GHARIB, THOMAS W. BURNS,
and RICHARD LINDSTROM
Appeal2014-003229 1
Application 11/455,5982
Technology Center 3700
Before JAMES A. WORTH, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Aug. 10, 2012) and Reply Brief ("Reply Br.," filed Jan. 3, 2014), and the
Examiner's Final Office Action ("Final Action," mailed Mar. 21, 2012) and
Answer ("Ans.," mailed Nov. 5, 2013).
2 According to Appellants, the real party in interest is Glaukos Corporation.
(Appeal Br. 3).
Appeal2014-003229
Application 11/455,598
STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4 and 6-18. 3 We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b ).
Appellants appeared for an oral hearing on May 23, 2016.
We REVERSE.
Introduction
Appellants' disclosure relates to "the treatment of glaucoma by
trabecular bypass surgery, which is a means for using an implant or stent,
such as a micro stent, shunt or the like, to bypass diseased trabecular
meshwork at the level of trabecular meshwork and use/restore existing
outflow pathways." (Spec. i-f 2).
Claim 1, reproduced below, is the sole independent claim and is
illustrative of the subject matter on appeal:
1. A method for implanting an implant in an eye, the method
compnsmg:
providing a delivery device comprising a trocar and an implant
mounted on the trocar;
placing a distal end of the trocar against eye tissue;
piercing the eye tissue with the distal end of the trocar;
actuating a source of energy to expel the implant from a distal
end of the delivery device and into the eye tissue such that at least a
portion of the implant is placed into the eye tissue; and
anchoring the implant in the eye tissue.
3 Although claim 5 was discussed in the Answer (p. 6), it was not included in
the rejections set forth in the Final Office Action. Rather, the Final Office
Action states that "Claim 5 is objected to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims." (Final Act. 4). As such, claim 5 does not stand rejected and is not
part of this appeal.
2
Appeal2014-003229
Application 11/455,598
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
1. Claims 1, 3, 4, and 6-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yu (US 6,544,249 Bl, iss. Apr. 8, 2003)
in view of Bums (US 4,449,529, iss. May 22, 1984).
2. Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yu, Bums, and Avery (US 5,725,493, iss. Mar.
10, 1998).
ANALYSIS
Claims 1, 3, 4, and 6--18
Appellants argue that the Examiner has not provided adequate
reasoning as to why a person of ordinary skill would have looked to Bums
for a teaching of how to actuate the delivery of an implant into the eye, as
recited by independent claim 1, i.e., "actuating a source of energy to expel
the implant from a distal end of the delivery device and into the eye tissue
such that at least a portion of the implant is placed into the eye tissue" (see
Appeal Br. 8-9). Appellants contend that "Bums' firing of a lancet simply
lacks the delicacy required by a precise delivery of an implant into a
sensitive and relatively small region of an eye as in Yu, as further discussed
herein." (Appeal Br. 8). We are persuaded by Appellants' arguments.
In this connection, we agree with Appellants that Bums teaches an
automatic retractable lancet assembly used in penetrating a patient's skin to
provide an outflow of blood (see Reply Br. 3; Bums, col. 1, 11. 7-10).
3
Appeal2014-003229
Application 11/455,598
Although the Examiner reasons that different sized springs may be used and
that it is well-known in the art of actuators to adjust the spring tension, force,
and rate for a desired purpose (Ans. 6), this reasoning does not directly
address Appellants' argument, i.e., as to the motivation of a person of
ordinary skill in looking to Bums for the teaching of actuation.
Moreover, to the extent that the Examiner is relying on a further
modification of Bums' spring, the Examiner does not provide sufficient
explanation as to the nature of the proposed modification. Nor does the
Examiner provide evidence with respect to the likelihood of success, at the
time of the invention, of actuating a spring for implanting an implant in the
eye, as required by independent claim 1. 4
We, therefore, do not sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Yu and Bums. For
the same reason, we do not sustain the Examiner's rejection of dependent
claims 3, 4, and 6-18 under 35 U.S.C. § 103(a) as unpatentable over Yu and
Bums.
Claims 2 and 4
Claims 2 and 4 stand rejected under 35 U.S.C. 103(a) as unpatentable
over Bums, Yu, and Avery. The Examiner does not rely on additional
evidence or provide additional reasoning to remedy the deficiency in the
rejection based on the combination of Yu and Bums. We, therefore, do not
sustain the Examiner's rejection of dependent claims 2 and 4 under 35
U.S.C. § 103(a) as unpatentable over Bums, Yu, and Avery.
4 There is an asterisk at the end of the responsive section of the Examiner's
Answer (p. 6) for which there is no corresponding footnote in the Answer,
nor elsewhere in the prosecution file.
4
Appeal2014-003229
Application 11/455,598
DECISION
The Examiner's decision to reject claims 1--4 and 6-18 under 35
U.S.C. § 103(a) is reversed.
REVERSED
5