Ex Parte Williamson et alDownload PDFPatent Trial and Appeal BoardMay 23, 201813194152 (P.T.A.B. May. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/194, 152 07 /29/2011 26875 7590 05/25/2018 WOOD, HERRON & EV ANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 FIRST NAMED INVENTOR Warren P. Williamson IV 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. IDXAC-03CO 9337 EXAMINER DORNBUSCH, DIANNE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/25/2018 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WARREN P. WILLIAMSON IV, JASON I. GLITHERO, MICHAEL W. GOLDENBOGEN, CHADD R. TYLER, TODD A. HALL, and DELOS M. COSGROVE Appeal2017-004214 Application 13/194, 152 1 Technology Center 3700 Before FRANCISCO C. PRATS, ELIZABETH A. LA VIER, and JOHN E. SCHNEIDER, Administrative Patent Judges. LA VIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the Examiner's rejections of claims 1-5, 8-13, 15-19, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND During atrial fibrillation, the left atrial appendage often fails to contract, allowing blood to pool. Spec. i-f 8. This pooling can lead to clot 1 Appellants state the real parties in interest are IDx Medical, Ltd., Atricure, Inc., and The Cleveland Clinic Foundation. Appeal Br. 1. Appeal2017-004214 Application 13/194,152 formation, and possibly stroke. Id. i-fi-18, 12. To reduce this risk, occlusion of the left atrial appendage may be performed, often in conjunction with other surgical procedures such as mitral valve replacement or coronary artery bypass. Id. The Specification describes, inter alia, a clamp that can be deployed around the left atrial appendage to occlude bloodflow therewithin. See generally Spec. i-fi-158, 61---64, Figs. 5, 8-11. Claim 1 is illustrative: 1. A device for occluding a left atrial appendage of the heart, the device comprising: a clamp having at least first and second elongate clamping portions configured to be placed on opposite, outside surfaces of the left atrial appendage, said first and second elongate clamping portions being coupled together proximate respective ends with resilient urging members configured to urge at least one of said first and second elongate clamping portions toward the other of said first and second elongate clamping portions from an open position into a clamping position to occlude the appendage, said clamp configured to receive the appendage in the open position and occlude the hollow interior of the appendage in the clamping position, wherein said first and second elongate clamping portions have tissue engaging surfaces for engaging the appendage in the clamping position, and wherein said first and second elongate clamping portions and said resilient urging members are surrounded along an entire length thereof by a fabric structure that promotes tissue ingrowth in the clamping position, said fabric structure forming a closed continuous configuration lengthwise around said clamp. Appeal Br. 19 (Claims Appendix). 2 Appeal2017-004214 Application 13/194,152 REJECTIONS MAINTAINED ON APPEAL 1. Claims 1-5, 8-11, 13, 15-18, 25, and 26 stand rejected under 35 U.S.C. § 103 as unpatentable over Yoon2 and Greenhalgh. 3 Ans. 2. 2. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable over Yoon, Greenhalgh, and Barefoot. 4 Ans. 2. 3. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over Yoon, Greenhalgh, and Smith. 5 Ans. 2. DISCUSSION The Examiner's rejection of claim 1 relies largely on Yoon, as describing a clamp having all the structural 6 features recited in claim 1 (see Final Action 2--4), except that "Yoon does not disclose that the first and second clamping portions and urging members are surrounded along an entire length thereof by a fabric structure that promotes tissue ingrowth and that forms a continuous configuration lengthwise around the clamp" (id. at 4). For this, the Examiner turns to Greenhalgh. See id. The Examiner finds 2 Yoon, US 5,217,473, issued June 8, 1993. 3 Greenhalgh et al., US 2005/0049681 Al, published Mar. 3, 2005. 4 Barefoot et al., US 3,726,279, issued Apr. 10, 1973. 5 Smith et al., US 2008/0149685 Al, published June 26, 2008. 6 As the Examiner notes: "[w]ith respect to the statement that the clamp is configured to be placed on opposite outside surfaces of the left atrial appendage, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations." Final Action 3 (citing Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987)). 3 Appeal2017-004214 Application 13/194,152 it would have been obvious at the time of the invention to add a fabric as described in Greenhalgh to the device of Yoon, "to promote tissue ingrowth which would encapsulate the device in tissue ([0077] of Greenhalgh) therefore preventing the device form dislodging." Id. Appellants present two arguments, both of which relate to the combination of the references instead of their individual teachings. First, Appellants posit that the ordinarily skilled artisan would not have been motivated to combine Yoon's clamping device, which is applied externally to the tissue being clamped (in Yoon, for example, Fallopian tubes or vas deferens (see Yoon 1: 14--16), or the left atrial appendage as recited in claim 1) with the internally-deployed cardiovascular occlusion device of Greenhalgh. See Appeal Br. 9-10. Greenhalgh's goal of preventing clotting responses in the bloodstream, Appellants argue, "simply would not correlate" with solving problems or challenges related to a clamp applied external to a vessel or organ. Id. at 11. This is not persuasive because the Examiner relies not on prevention of clot formation as the motivation to combine, but rather on tissue ingrowth to prevent dislodging, as discussed above. See Final Action 4. As to prevention of dislodgement, Appellants argue that Greenhalgh teaches hooks to anchor its device, and that tissue ingrowth alone is not sufficient. See Appeal Br. 13-14. Whether tissue ingrowth is itself sufficient to hold a device in place is not relevant to the Examiner's rationale; indeed, neither Greenhalgh nor the Specification relies on fabric coverings alone to hold the device in position. As the Examiner further explains in the Answer: the examiner is merely using the Greenhalgh device to add the tissue ingrowth cover over the clip of Yoon which would prevent the device from dislodging and enhancing the closure 4 Appeal2017-004214 Application 13/194,152 of tubular body member such as when the tubes are severed by the clip of Yoon it would enhance the cell growth at the clot location and close the tubes with tissue. Ans. 3. 7 Second, Appellants argue that, even if the combination of Yoon and Greenhalgh is proper, the result is not the device of claim 1, but rather a clamp that is only partially encased by fabric. See Appeal Br. 15-16. Appellants acknowledge that Greenhalgh teaches embodiments in which "the entire device ... is encased with a shroud" (id. at 16 (citing Greenhalgh Figs. 10-15)); Appellants reason that Yoon's external clamp would only benefit from fabric encasing those selected portions that contact external portions of a vessel (id.). Appellants conclude that "[a]dding tissue ingrowth material to the other portions would appear to be a useless endeavor and an added expense which would not be undertaken without reason." Id. We are not persuaded by this argument. As a preliminary matter, we note that Appellants provide no factual support for their speculation regarding higher manufacturing costs. Moreover, the Examiner more persuasively explains that "by covering the entire device of Yoon it provides the clip with the ability to be used in different locations of the body to clip onto different tissues which can be of different shapes and sizes therefore for providing tissue ingrowth at all locations." Ans. 4--5. 7 The Examiner cites two additional documents in the Answer as supporting the proposition that coatings or covers were well known in the art to promote tissue ingrowth. See Ans. 3--4. These references are not part of the rejections on appeal, nor were they otherwise cited in the Final Action. In sustaining the Examiner's rejections, we do not rely on either of these additional documents. 5 Appeal2017-004214 Application 13/194,152 Having considered each of Appellants' arguments, we are not persuaded of any reversible error by the Examiner in rejecting claim 1. Appellants' only additional arguments concern claims 12 and 19, but only to the extent that Appellants maintain that the additional references cited for the rejections of those claims do not cure the alleged deficiencies of Yoon and Greenhalgh or the combination. See Appeal Br. 17. Accordingly, we affirm the Examiner's rejections in their entirety. CONCLUSION The rejections of claims 1-5, 8-13, 15-19, 25, and 26 are 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)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation