XLUMENA, INC.Download PDFPatent Trials and Appeals BoardMay 5, 20212020005836 (P.T.A.B. May. 5, 2021) 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. 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 2 We REVERSE. Appeal 2020-005836 Application 15/331,151 3 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 Appeal 2020-005836 Application 15/331,151 4 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). Appeal 2020-005836 Application 15/331,151 5 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 Appeal 2020-005836 Application 15/331,151 6 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. Appeal 2020-005836 Application 15/331,151 7 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 Copy with citationCopy as parenthetical citation