Ex Parte Cornelius

Patent Trial and Appeal Board

Dec 29, 2015

11333966 (P.T.A.B. Dec. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111333,966 01117/2006 Richard Cornelius
37374 7590 12/31/2015
INSKEEP INTELLECTUAL PROPERTY GROUP, INC
2281W.190TH STREET
SUITE 200
TORRANCE, CA 90504
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.
21947-510 7678
EXAMINER
SIMPSON, SARAH A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/3112015 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):
inskeepstaff@inskeeplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD CORNELIUS
Appeal 2013-002113
Application 11/333,966
Technology Center 3700
Before JOHN C. KERINS, LISA M. GUIJT, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Cornelius ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-9 and 16-28. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1 According to the Appellant, the real party in interest is Syntach AG.
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Application 11/333,966
1. A pulmonary vein implant for treating
arrhythmia comprising:
a first ring having a compressed state and an
expanded state sized to contact an inner diameter
of a pulmonary vein; said first ring having a first
cross section size;
a second ring having a compressed state and
an expanded state sized to contact ostial tissue
associated with said pulmonary vein; said second
ring having a second cross section size smaller
than said first cross section size;
a plurality of connecting members disposed
between said first ring and said second ring;
said connecting members having an
expanded state urging said second ring into said
ostial tissue~
wherein a radial expansion force generated
by said first ring is at least partially conveyed to
said second ring by said connecting members for
increasing a force per area of said second ring on
said ostial tissue.
REJECTIONS
A. Claims 1-3 and 6-9 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Schwartz (US 2003/0055491 Al; pub. Mar. 20, 2003) and
Kaplan '747 (US 7,731,747 B2; iss. June 8, 2010).
B. Claims 1, 4, and 5 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Kim (US 2002/0169498 Al; pub. Nov. 14, 2002) and
Kaplan '747.
C. Claims 16-18 and 20-22 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Globerman (US 2005/0288769 Al; pub. Dec. 29, 2005)
and Kaplan '747.
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D. Claims 19 and 23-25 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Globerman, Kaplan '747, and Schwartz.
E. Claims 26-28 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Globerman, Kaplan '747, and Leschinsky (US 5,904,713;
iss. May 18, 1999).
ANALYSIS
A. Claims 1-3 and 6-9 - Unpatentable over Schwartz and Kaplan '7 47
Regarding independent claim 1, the Examiner finds, inter alia, that
Schwartz discloses first and second rings, as claimed. Final Act. 2-3 (citing
Schwartz i-f 48, Examiner's Annotated Fig. 3C). The Examiner maintains
that "[a ]lthough Schwartz does not specifically recite a 'ring' at the distal
end of the stent 30, a ring does in fact exist at the distal end of the stent as
members at the distal end of the stent form a circumferential structure with a
circular cross section." Ans. 16.
Appellant argues that although Schwartz discloses device 30
comprising a lip or ring 48, "Schwartz discloses only a single ring." Appeal
Br. 10. Appellant contends that "one skilled in the art would see a
continuous web structure with nothing to delineate a ring on the right-hand
side of [Figure 3C] that is distinct from the rest of the device" and that "the
Examiner's interpretation ... of the device in Fig. 3C is not reasonable
because there is no structure identifiable as a ring separate from the rest of
the device such that the device could reasonably be described as having two
rings connected by connecting members." Reply Br. 6.
We accept the Examiner's definition of ring, which is not disputed by
Appellant, as "a small circular band," and although the Specification
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describes a ring as "structured from a continuous and regularly angled wire
that forms an overall wave-like or sinusoidal shape," we agree with the
Examiner that a ring may be a small, circular band. See Ans. 16; Spec. i-f 88;
see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the specification as it
would be interpreted by one of ordinary skill in the art.).
We also agree with the Examiner that Schwartz describes that device
30 may have a separate and additional structure described as ring 48, which
the Examiner finds corresponds to a second ring. Id. at i-f 64; see Final Act.
However, we agree with Appellant that the Examiner cannot rely on
Schwartz's device 30 as both corresponding to the claimed first ring and the
claimed connecting members. In other words, we do not agree with the
Examiner's finding that the end of device 30 may be fairly interpreted as a
structure that is separate from the main body of device 30. Thus, the
Examiner erred in finding that "Figure 3C of Schwartz clearly shows at least
two rings and connecting members therebetween." Ans. 16.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2, 3, and 6-9 depending therefrom, as
obvious over Schwartz and Kaplan '747.
B. Claims 1, 4, and 5- Unpatentable over Kim and Kaplan '747
Regarding independent claim 1, the Examiner finds, inter alia, that
Kim discloses connecting members disposed between first and second rings,
as claimed. Final Act. 6. In particular, the Examiner identifies "[Kim's]
flared portion 27 ... as the second ring as it comprises a circular band,"
"[t]he opposite end of the stent or non-flared portion [as] the first ring," and
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Application 11/333,966
"[t]he struts that connect the two rings [as] the connecting members." Ans.
18 (citing Kim, Fig. 1 ). Appellant maintains that Kim's "stent is made of a
wire []formed to make an anti-migration tum comprising a flare tum on one
end of a first tum and an intersection tum." Appeal Br. 19 (citing Kim i-fi-1
19, 46). Appellant concludes that "one of ordinary skill reading Kim would
not reasonably interpret Kim as disclosing a pulmonary vein implant," with
connecting members connecting first and second rings, as claimed. Id.
We are persuaded by Appellant's argument. The Examiner has not
supported the finding that the mesh structure M, formed from interlocking
valleys 21, 23 and peaks of adjacent intersection turns, discloses a first ring
as a separate structure from connecting members. See Kim i-fi-132, 36.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 4 and 5 depending therefrom.
C. Claims 16-18 and 20-22 - Unpatentable over Globerman and Kaplan
'747
The Examiner finds, inter alia, that Globerman discloses the spatial
anchoring and scar-generating portions, as recited in independent claim 16.
Final Act. 7-8 (citing Globerman, Figs. lA-D, 3). The Examiner identifies
barbs for inducing scarring. See Final Act. 7-8 (citing Globerman i-f l 07
("fingers [708] include barbs that ... engage or disengage adjacent
tissues")); Ans. 18-19. The Examiner concludes that "the claimed structural
limitations are satisfied." Id. at 19.
Appellant argues that "[t]he Examiner cites only [Figures] lA-D and
3 in support of the assertion that Globerman discloses the above claim
limitations." Appeal Br. 22. For example, Appellant points out that "[t]he
Examiner does not articulate a correspondence between the apparent
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anchoring fingers shown in [Figure] 7 and the scar generating portion and
plurality of connecting arms." Reply Br. 11. Appellant maintains that
because "the Examiner provides no explanation of what elements shown in
the cited figures are alleged to correspond with any of the limitations recited
in claim 16, ... the Examiner has failed to establish prima facie obviousness
under 35 U.S.C. § 103(a) with respect to claim 16." Appeal Br. 22; see also
Reply Br. 11.
We are persuaded by Appellant's argument. The Examiner has failed
to identify with specificity the structures disclosed in Globerman that the
Examiner finds correspond to the claimed structures. Thus, the required
factual basis for a prima facie case is therefore lacking. In re Warner, 379
F .2d 1011, 1017 (CCP A 1967) ("The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not. .. resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.").
Accordingly, we do not sustain the Examiner's rejection of
independent claim 16, and claims 17 and 20-22 depending therefrom.
D. Claims 19 and 23-25- Unpatentable over Globerman, Kaplan '747,
and Schwartz
The Examiner relies on the same findings with respect to Globerman
and the rejection of claim 16 to support the rejection of dependent claims 19
and 23-25. Because Schwartz does not cure the deficiencies of the
Examiner's findings, as discussed supra, we also do not sustain the
Examiner's rejection of claims 19 and 23-25.
E. Claims 26-28- Unpatentable over Globerman, Kaplan '747, and
Leschinsky
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The Examiner relies on the same findings with respect to Globerman
and the rejection of claim 16 to support the rejection of dependent claims 19
and 23-25. Because Leschinsky does not cure the deficiencies of the
Examiner's findings, we also do not sustain the Examiner's rejection of
claims 26-28.
DECISION
The Examiner's rejections of claims 1-9 and 16-28 under 35 U.S.C.
103(a) are REVERSED.
REVERSED
Ssc
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