XLUMENA, INC.

Patent Trials and Appeals Board

May 5, 2021

2020005836 (P.T.A.B. May. 5, 2021)

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.
15/331,151 10/21/2016 Kenneth F. Binmoeller 8150BSC0008C2 5295
121974 7590 05/05/2021
Kacvinsky Daisak Bluni PLLC (8150)
2601 Weston Parkway, Suite 103
Cary, NC 27513
EXAMINER
NGUYEN, TUAN VAN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
05/05/2021 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):
docketing@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH F. BINMOELLER and
CORBETT W. STONE
____________

Appeal 2020-005836
Application 15/331,151
Technology Center 3700
____________

Before DANIEL S. SONG, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 2–9, 11, 13–17, and 19–21. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Xlumena, Inc. as the applicant and
Boston Scientific Scimed, Inc. as the real party in interest. Appeal Br. 3.
Appeal 2020-005836
Application 15/331,151
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We REVERSE.
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THE INVENTION
Appellant’s invention relates to endoscopy. Spec. ¶ 2. Claim 2,
reproduced below, is illustrative of the subject matter on appeal.
2. A medical device to form a fluid pathway between
adjacent tissue layers of a first luminal body and a second body,
comprising:
a central member, forming a lumen to define the fluid
pathway, and defining a longitudinal axis, the central member
having a middle portion, distal and proximal end portions, a
length, a diameter, and a plane transverse to the longitudinal
axis at each of a distal end and proximal end of the middle
portion;
the distal end portion including a distal retention member
and the proximal end portion including a proximal retention
member, the distal and proximal retention members configured
to move from a first configuration to a second configuration;
and
whereby, in the second configuration, the distal and
proximal retention members are separated by a distance along
the longitudinal axis of the middle portion and at least a portion
of each of the distal and proximal end portions extend over
different segments of the middle portion beyond the transverse
plane at the respective distal and proximal ends of the middle
portion, a length of the middle portion decreases and a diameter
of the middle portion increases, thereby presenting an anchor
interface to appose the adjacent tissue layers of the first luminal
body and second body.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Evard US 6,616,675 B1 Sept. 9, 2003
Wallace US 2005/0049675 A1 Mar. 3, 2005
Derowe US 7,022,131 B1 Apr. 4, 2006
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Application 15/331,151
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The following rejections are before us for review:
1. Claims 2–4, 9, 11, 13–16, and 19–21 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Derowe.
2. Claims 2–4, 7–9, 11, 13–17, and 19–21 are rejected under 35
U.S.C. § 103 as being unpatentable over Wallace and Derowe.
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Wallace, Derowe, and Evard.
OPINION
Anticipation of Claims 2–4, 9, 11, 13–16, and 19–21
by Derowe
Claim 2
The Examiner finds that Derowe discloses all of the limitations of
claim 2. Final Act. 3–5. Among other things, the Examiner relies on a first
embodiment illustrated in Figures 7C and 7D for disclosure of a lumen
defining a fluid pathway and defining a longitudinal axis. Id. at 3–4. The
Examiner finds that such embodiment features a length of a middle portion
that decreases as its diameter increases. Id. at 4. The Examiner relies on a
second embodiment illustrated in Figures 7P–7R as disclosing end portion
retention members. Id.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
However, “it is not enough that the prior art reference . . . includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1370 (Fed. Cir. 2008) (citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
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Application 15/331,151
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We agree with Appellant that Derowe does not anticipate claim 2.
Appeal Br. 8. Derowe describes the Figure 7C–7D embodiment as a
separate and distinct embodiment from what is illustrated in Figure 7P–7R.
Compare Derowe col. 46, ll. 12–44 to col. 47, ll. 44–64. The Examiner may
not combine elements from disparate embodiments in an anticipation
rejection. Net MoneyIN, 545 F.3d at 1370.
We do not sustain the Examiner’s Section 102 anticipation rejection
of claim 2 over Derowe.
Claims 3, 4, 9, 11, 13–16, and 19–21
Claims 9 and 15 are independent claims. Claims App. In rejecting
these claims as anticipated by Derowe, the Examiner combines elements of
Figure 7C–7D and Figure 7P–7R embodiments in a manner that is
substantially similar to that of the rejection of claim 2. Final Act. 5–8.
Claims 3, 4, 11, 13, 14, 16, and 19–21 depend, directly or indirectly, from
one of claims 2, 9, and 15. Id. The Examiner’s rejection of these claims
suffers from the same infirmity that was identified above with respect to
claim 2. Thus, for essentially the same reason expressed above in
connection with claim 2, we do not sustain the Examiner’s anticipation
rejections of claims 3, 4, 9, 11, 13–16, and 19–21.
Unpatentability of Claims 2–4, 7–9, 11, 13–17, and 19–21
over Wallace and Derowe
Claim 2
The Examiner finds that Wallace discloses the invention substantially
as claimed except for the length of the middle portion decreasing upon an
increase in the diameter of such portion. Final Act. 9–10. The Examiner
relies on the Figure 7P–7R embodiment of Derowe as supplying the missing
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disclosure of Wallace. Id. at 11–12. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify Wallace by the teaching of Derowe to
achieve the claimed invention. Id. at 11. According to the Examiner, a
person of ordinary skill in the art would have done this to facilitate the
transformation of Wallace’s retention members 210 from a first
configuration to a second configuration. Id.
The Examiner’s findings of fact with respect to the Figure 7P–7R
embodiment of Derowe are in error. The Figure 7P embodiment is
described as a connector, not a stent or graft or similar structure that defines
a fluid pathway. See Derowe, col. 47, ll. 44–64, Fig. 7P. Thus,
Derowe’s 7P structure is more akin to the “end portions” of Appellant’s
claim 2 rather than Appellant’s elongated middle portion that decreases in
length upon radial expansion. Id. As shown in Figures 7P–R, Derowe’s
connector structure is substantially planar in Figure 7P before the spikes are
progressively bent as depicted in Figures 7Q–7R. Id. Thus, Derowe has no
“middle portion” apart from possibly considering that it is a three-
dimensional object and, therefore, has a thickness. Radial expansion does
not alter that thickness. Id.
Wallace does teach that its device may undergo radial expansion to an
“unconstrained” position (Wallace ¶ 48, Figs. 6E), but there is no teaching
that the device decreases in length while it increases in diameter. There is
no underlying factual basis to support the Examiner’s finding that the
Figure 7P embodiment of Derowe supplies such missing teaching from
Wallace.
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The Examiner’s findings of fact are not supported by a preponderance
of the evidence and therefore do not support the Examiner’s legal conclusion
of unpatentability. We do not sustain the Examiner’s unpatentability
rejection of claim 2 over Wallace and Derowe.
Claims 3, 4, 7–9, 11, 13–17, and 19–21
The Examiner’s rejection of these claims suffers from the same
infirmity that we have discussed above with respect to claim 2. For the same
reasons as with claim 2, we do not sustain the Examiner’s obviousness
rejection of claims 3, 4, 7–9, 11, 13–17, and 19–21.
Unpatentability of Claims 5 and 6
over Wallace, Derowe, and Evard
As conceded by the Examiner, the rejection of claims 5 and 6 stands
or falls with independent claim 2. Ans. 7. In view of our disposition of
claim 2, the rejection falls.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2-4, 9, 11,
13-16, 19-21
102 Derowe 2-4, 9, 11,
13-16, 19-21
2-4, 7-9, 11,
13-17, 19-21
103 Wallace, Derowe 2-4, 7-9, 11,
13-17, 19-21
5, 6 103 Wallace, Derowe,
Evard
5, 6
Overall
Outcome
2-9, 11,
13-17, 19-21

REVERSED