Ex Parte Binmoeller et al

Patent Trials and Appeals Board

Jun 13, 2019

13865098 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/865,098 04/17/2013
121974 7590 06/17/2019
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Kenneth F. Binmoeller
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.
8150BSC0008Cl 7044
EXAMINER
NGUYEN, TUAN VAN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
bbonneville@kdbfirm.com
docketing@kdbfirm.com
ehysesani@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
Appeal2018-008440 1
Application 13/865,0982
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-6, 29, 30, and 32--43. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Apr. 20,
2018), the Reply Brief ("Reply Br.," filed Aug. 13, 2018), the Examiner's
Answer ("Ans.," mailed June 12, 2018), and the Final Office Action ("Final
Act.," mailed Nov. 16, 2017).
2 According to Appellants, the real party in interest is Boston Scientific
Scimed, Inc. Appeal Br. 2.
Appeal2018-008440
Application 13/865,098
BACKGROUND
The Specification discloses that "[t]he invention relates to a device for
endoscopy or endosonography-guided translmninal interventions whereby
an anastomosis can be formed between two luminal structures in the body.
More specifically devices and methods are described to anchor, create a
fluid conduit and to approximate luminal structures using an expandable
hollow stent." Spec. ,r 2.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A [sic] 3 to form a fluid pathway between a first luminal
body and a second body comprising:
a penetrating member;
a central member forming a lumen and having distal and
proximal end portions, a length, and a diameter;
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 such
that the length of the central member between the distal and
proximal end portions decreases and the diameter of the central
member increases, thereby presenting an anchor interface to
appose the first luminal body and second body.
REJECTIONS
1. The Examiner rejects claims 1---6, 33, 34, and 35--43 under 35 U.S.C.
§ 102( e) as anticipated by Phelps. 4,5
3 Appellants indicate that the word "system" is missing. Appeal Br. 6, n. 1.
4 Phelps et al., US 6,610,100 B2, iss. Aug. 26, 2003 (hereinafter "Phelps").
5 The Examiner relies on Salmon et al., US 6,315,708 Bl, iss. Nov. 13,
2001, and Yip et al., US 6,846,323 B2, iss. Jan. 25, 2005, as evidentiary
support for the rejection of claim 35.
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Application 13/865,098
2. The Examiner rejects claims 29, 30, and 32 under 35 U.S.C. § I03(a) as
unpatentable over Phelps in view of Kim6 and Freidberg 7 as evidentiary
evidence.
DISCUSSION
As discussed below, we are persuaded by Appellants' argument that
the Examiner has not established that Phelps discloses a system as claimed.
With respect to claim 1, the Examiner finds that Phelps discloses a
system including a second configuration as claimed. See Final Act. 4--5. In
relevant part, the Examiner finds that the overall length of Phelps's central
member decreases in a second configuration in which proximal and distal
end portions are curved to form anchors. Id. ( citing Phelps Figs. 7, 8). The
Examiner also finds that this second configuration presents "an anchor
interface ... to oppose the first luminal body ... and [a] second body." Id.
at 4--5. The Examiner interprets the length referred to in the claim with
respect to the second configuration to be the overall length of the device, i.e.,
the Examiner states that "the limitation of 'length' and 'the length of the
central member between the distal and proximal end portions' have been
interpreted as the longest extent as measured from end to end of the central
member." Ans. 3--4.
We agree with Appellants that the Examiner has not established that
Phelps discloses a system with a second configuration as claimed. We agree
with Appellants that the Examiner has not shown that Phelps discloses that
the length between the proximal and distal end portions decreases in the
6 Kim, US 6,719,781 Bl, iss. Apr. 13, 2004.
7 Freidberg et al, US 6,699,277 Bl, iss. Mar. 2, 2004 (hereinafter
"Freidberg").
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Appeal2018-008440
Application 13/865,098
second configuration. See Reply Br. 5---6. More specifically, we determine
that the length between the distal and proximal end portions recited in the
claim is not inclusive of the distal and proximal end portions.
The claim first describes the central member as including distal and
proximal end portions and having a "length," and thus, this "length" does
include the end portions. The claim later requires that "the length of the
central member between the distal and proximal end portions decreases."
Interpreting the claim in the manner proposed by the Examiner renders the
later language "between the distal and proximal end portions" superfluous.
If the "length of the central member between the distal and proximal end
portions" includes both the distal and proximal end portions, as the
Examiner proposes, the recitation of "between the distal and proximal end
portions" would be unnecessary in light of the use of the term "length" to
describe the central member's length inclusive of the those end portions.
This point is further demonstrated by the fact that the claim then requires
that "the diameter of the central member increases" without reference to the
proximal and distal end portions. We also note that the claim limitation at
issue recites "between the distal and proximal end portions" ( emphasis
added) as opposed to merely reciting that the length is between the distal and
proximal ends, which indicates that the length is something different than
the overall length from one end of the device to the other. Thus, we interpret
the "length of the central member between the distal and proximal end
portions" to be the length of the central member not inclusive of those end
portions so as to give meaning to all words in the claim. See Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (declining to
adopt an interpretation that rendered a claim term superfluous in view of
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Application 13/865,098
other limitations of the claim, where an alternative interpretation was
available). Our interpretation is consistent with the Specification, which
indicates that the portion of the central member located in between the
proximal and distal end portions decreases in length when the distal and
proximal retention members move from a first configuration to a second
configuration. See, e.g., Spec. Fig. 23.
Based on the foregoing, we agree with Appellants that the claim
requires that the length of the central lumen, between the end portions and
not inclusive thereof, decreases when the retention members move from the
first to the second configuration. Because the Examiner has not established
that Phelps discloses such a decrease in length, we do not sustain the
rejection of claim 1 as anticipated. See Final Act. 4--5 (indicating that the
overall length of Phelps's system decreases without specifically finding that
the particular portion of the central member in between the first and second
end portions decreases). We also do not sustain the anticipation rejection of
dependent claims 2-6 and 33--43 for the same reasons. Finally, because the
Examiner does not rely on the other art of record in manner that cures the
deficiency in the rejection of claim 1, we also do not sustain the rejection of
claims 29, 30, and 32 as obvious.
CONCLUSION
We REVERSE the rejections of claims 1---6, 29, 30, and 32--43.
REVERSED
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