Brunnett, William C. et al.

Patent Trials and Appeals Board

Sep 5, 2019

15333055 - (D) (P.T.A.B. Sep. 5, 2019)

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.
15/333,055 10/24/2016 William C. Brunnett HVTRG-6282US04 3341
30452 7590 09/05/2019
EDWARDS LIFESCIENCES CORPORATION
LEGAL DEPARTMENT
ONE EDWARDS WAY
IRVINE, CA 92614
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
USDOCKET@edwards.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM C. BRUNNETT and ALISON S. CURTIS
____________

Appeal 2019-0018901
Application 15/333,0552
Technology Center 3700
____________

Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 2, 4–7, 9–16, and 18–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed Sept. 5,
2018), the Reply Brief (“Reply Br.,” filed Jan. 3, 2019), the Examiner’s
Answer (“Ans.,” mailed Nov. 13, 2018), and the Final Office Action (“Final
Act.,” mailed Apr. 5, 2018).
2 According to Appellants, the real party in interest is Edwards Lifesciences
Corporation. Appeal Br. 1.
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BACKGROUND
The Specification discloses that “[t]he present invention relates
generally to methods of implanting medical devices in particular
annuloplasty rings with reduced propensity for dehiscence.” Spec. ¶ 2.
CLAIMS
Claims 2 and 13 are the independent claims on appeal. Claim 2 is
illustrative of the appealed claims and recites:
2. A prosthetic tricuspid annuloplasty ring, comprising:
a ring core made of a relatively rigid material and defining
a discontinuous periphery around an axis along an inflow-
outflow direction with a first free end separated from a second
free end across a gap; and
a suture-permeable interface that surrounds the ring core
along its length and extends circumferentially from both free
ends into the gap to form floppy regions through which sutures
may be passed to secure the annuloplasty ring to a valve annulus,
the floppy regions being axially flattened, wherein the
annuloplasty ring defined by the ring core and interface has an
asymmetrical ovoid shape shaped for implanting at the tricuspid
annulus.
Appeal Br. 16.
REJECTIONS
1. The Examiner rejects claims 2, 4–7, 11, and 12 under 35 U.S.C. § 103(a)
as unpatentable over Carpentier 3033 in view of Carpentier 6104 and
McCarthy.5

3 Carpentier, US 2009/0287303 A1, pub. Nov. 19, 2009.
4 Carpentier et al., US 6,217,610 B1, iss. Apr. 17, 2001.
5 McCarthy et al., US 2003/0208264 A1, pub. Nov. 6, 2003.
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2. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Carpentier 303 in view of Carpentier 610, McCarthy,
and Ryan.6
3. The Examiner rejects claims 13, 15, and 18–21 under 35 U.S.C. § 103(a)
as unpatentable over Carpentier 303 in view of Carpentier 610 and Ryan.
4. The Examiner rejects claims 14 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Carpentier 303 in view of Carpentier 610, Ryan, and
McCarthy.
DISCUSSION
As discussed below, we are persuaded of error in the rejection of each
of the independent claims because the Examiner has not established that the
art of record teaches or otherwise renders obvious the inclusion of floppy
ends in an annuloplasty ring.
With respect to claim 2, the Examiner finds that Carpentier 303
teaches an annuloplasty ring including a suture-permeable interface
surrounding a ring core with free ends that form floppy regions. Final Act.
4–5 (citing Carpentier 303 Figs. 7, 9; ¶ 53). The Examiner similarly relies
on Carpentier 303 in the rejection of claim 13. See id. at 10. The Examiner
also finds that Carpentier 610 teaches an annuloplasty ring with floppy ends.
Ans. 12. Further, the Examiner interprets the claimed “floppy ends” to only
require that the ends are soft and flexible. Id.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of

6 Ryan et al., US 7,377,940 B2, iss. May 27, 2008.
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the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Here, we determine that the rejection relies on an unreasonably
broad interpretation of the term “floppy.” The Examiner relies on a
dictionary definition of floppy as “being both soft and flexible.” Ans. 12.
However, we agree with Appellants that one of ordinary skill in the art
would understand the term floppy to require a region that is not only soft and
flexible but also has the tendency to flop, as explained below. Reply Br. 2
(citing Merriam-Webster).
Using the dictionary relied upon by both the Examiner and
Appellants, the term floppy is defined as “tending to flop[;] especially: being
both soft and flexible.” Merriam-Webster.com, https://www.merriam-
webster.com/dictionary/floppy, (last visited Aug. 22, 2019). Further, this
dictionary defines flop as “to swing or move loosely.” Id. at
https://www.merriam-webster.com/dictionary/flop, (last visited Aug. 22,
2019). Thus, we find that the plain meaning of the term “floppy” is tending
to swing or move loosely. Further, we find that one of ordinary skill in the
art would understand that the use of the term “floppy” in the claims
comports with this plain meaning of the claim. We note that neither the
claims nor the Specification indicate that any specialized meaning for the
term is being applied. Further, given the description of the various
embodiments in the Specification, one of ordinary skill in the art would
understand that the term “floppy” is being used in a manner that is narrower
than the Examiner’s proposed interpretation.
The Specification first describes an embodiment in which the free
ends 58 of the ring 40 are described as being “highly flexible or flaccid.”
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Spec. ¶ 44; Fig. 5. The Specification then describes an embodiment in
which the free ends are enlarged so as to be highly flexible. Id. at ¶ 48;
Fig. 6. The Specification then describes embodiments in which the gap
between the free ends of the core of the ring is larger than Figure 5 and now
describes the free ends 58 as “floppy.” Id. at 52; Fig. 7. And comparing the
depiction of these embodiments, one of ordinary skill in the art would
understand that these varying descriptions of the flexibility of the free ends
are based on how much the core 42 extends into the free ends of the device.
For example, the core extends up to the enlarged end regions in Figure 5,
creating a flaccid end; the core extend most of the way into the enlarged end
regions of Figure 6, creating only a flexible end; and the core is withdrawn
away from the enlarged end regions in Figure 7, creating a floppy end. One
of ordinary skill in the art would understand that the enlarged ends of
Figure 7 would be able to swing or move loosely in comparison to the
enlarged ends of the other embodiments.
Based on our interpretation of the claim term “floppy,” we agree with
Appellants that the Examiner has not established that the art of record
teaches the use of a floppy end region as required by the claims. The
Examiner relies on the end regions of the devices of Carpentier 303 and
Carpentier 610. However, the Examiner does not find that the ends of these
devices would tend to swing or move loosely. Further, we see no indication
in either Carpentier 303 or Carpentier 610 that the ends are enlarged such
that they may swing or move loosely as required. With respect to Carpentier
303, the only indication of where the core of the ring ends with respect to the
outer cover is shown in Figure 10D, and we agree with Appellants that this
figure shows the covering closely surrounding the inner core. See Appeal
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Br. 4; see also Carpentier 303 ¶ 59. Although Carpentier 303 describes the
core at the end as having “its greatest flexibility,” Carpentier 303 does not
describe the end regions as swinging or moving loosely.
Carpentier 610 is similarly deficient. The Examiner finds that the
terminal ends 334a and 334b are floppy because they are filled with silicone,
which is described as closely conforming to the exterior of the ring and
pliable. Ans. 12 (citing Carpentier col. 16, ll. 19–21, 23–25; col. 20, ll. 31–
43). However, as with Carpentier 303, Carpentier 610 discloses only a close
relationship between the end of the covering and the end of the inner core.
See Carpentier Fig. 15a; ¶ 16. Although Carpentier 610 discloses that the
gap between the covering and the inner core may be filled with silicone, we
see no indication that the ends of the ring would tend to swing or move
loosely such that they may be considered floppy.
Finally, we determine that the Examiner neither explains adequately
why it would have been obvious to use floppy ends, as required by the
claim, in the proposed combination of prior art nor does the Examiner rely
on the other art of record to cure this deficiency in Carpentier 303 and
Carpentier 610. Thus, we are persuaded of error in the rejections of
independent claims 2 and 13. Accordingly, we do not sustain the rejections
of these claims. With respect to the rejections of the dependent claims, the
Examiner relies on the same deficient findings discussed above and does not
rely on the prior art of record to cure this deficiency. Thus, we also do not
sustain the rejections of dependent claims 4–7, 9–12, 14–16, and 18–21 for
the same reasons.
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CONCLUSION
We REVERSE the rejections of claims 2, 4–7, 9–16, and 18–21.

REVERSED