Brunnett, William C. et al.Download PDFPatent Trials and Appeals BoardSep 5, 201915333055 - (D) (P.T.A.B. Sep. 5, 2019) 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. 15/333,055 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. Appeal 2019-001890 Application 15/333,055 2 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. Appeal 2019-001890 Application 15/333,055 3 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. Appeal 2019-001890 Application 15/333,055 4 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.” Appeal 2019-001890 Application 15/333,055 5 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 Appeal 2019-001890 Application 15/333,055 6 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. Appeal 2019-001890 Application 15/333,055 7 CONCLUSION We REVERSE the rejections of claims 2, 4–7, 9–16, and 18–21. REVERSED Copy with citationCopy as parenthetical citation