Ex Parte Dobrilovic

Patent Trial and Appeal Board

Jun 29, 2018

14051787 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/051,787 10/11/2013
92438 7590 07/03/2018
Mcinnes & McLane, LLP (JAM)
128 Dorrance Street, Suite 220
Providence, RI 02903
FIRST NAMED INVENTOR
Nikola Dobrilovic
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.
D057 P02606-US1 2361
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
patent@mcmcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLA DOBRILOVIC 1
Appeal2017-006839
Application 14/051, 787
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN E. SCHNEIDER, and DAVID
COTTA, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a heart sizing ring. The
Examiner rejected the claims as anticipated under 35 U.S.C. § 102.
Appellant appeals the rejection pursuant to 35 U.S.C. § 134. We have
jurisdiction under 35 U.S.C. § 6(b ). The rejection is reversed.
STATEMENT OF THE CASE
Claims 1-8 are pending and stand rejected by the Examiner under pre-
AIA 35 U.S.C. § 102(a) as anticipated by U.S. Patent Appl. Publ.
2012/0065729 Al (publ. Mar. 15, 2012) ("Pintor"). Final Office Action
("Office Act."; entered Feb. 24, 2016) 3.
1 The Appeal Brief ("Appeal Br.") 1 lists Nikola Dobrilovic as the real-
party-in-interest.
Appeal2017-006839
Application 14/051, 787
Claim 1, the only independent claim on appeal, is reproduced below
(bracketed numbers added):
1. A heart valve sizing ring, comprising:
[ 1] an outer ring;
[2] an inner ring configured and arranged to removably
couple to the outer ring;
[3] the outer ring and inner ring having a pair of
complementary mating surfaces configured and arranged to grip
annular sutures around the base of a heart valve therebetween
when coupled together, the sutures being slidably adjustable
between the inner ring and outer ring when gripped
there between;
[ 4] a tubular portion extending from the inner ring and
away from the outer ring when coupled together, the tubular
portion having an upper end with an opening distal to the inner
ring and coupled outer ring; and
[5] a plurality of suture holders spaced about the upper
end of the tubular portion, said suture holders configured and
arranged to grip commissure sutures to suspend a heart valve
leaflets within the tubular portion.
DISCUSSION
The Examiner rejected the claims as anticipated by Pintor. Office
Act. 3. The Examiner relied on Figures 13-15 of Pintor, which are
reproduced below (with annotations added), as showing all the features of
rejected claim 1.
2
Appeal2017-006839
Application 14/051, 787
FIG. 13
FIG. 14
Eii~i~~~~ii~~iIE~fii~~~~~~~~~~~~~~~~~~J
86'-.ifitA::~'k80"/
~i~
,.. ............... ~.""-.,,
t~:::2-::.;.;:-~~~f'!
Figures 14 and 15 show the heart valve prosthesis described by Pintor.
The Examiner found that the sewing ring 62 corresponds to [ 1] the outer
ring, the stent frame 80 corresponds to [2] the inner ring, and fabric 82
corresponds to [ 4] the tubular portion of the heart sizing valve of claim 1.
Office Act. 3. The Examiner identified the slots 92 of the tubular portion as
shown in Figure 15B as [5] the suture holders of claim 1. Id. The Examiner
cited paragraph 126 of Pintor as describing the claimed [5] suture holders.
Id. Paragraph 126 of Pintor teaches that "sutures may be passed through
apertures or eyelets 92 arrayed along the upper or first end 86 of the inner
stent frame 80." Figure 15B, above, shows the suture holders 92 at one end
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Appeal2017-006839
Application 14/051, 787
of the stent frame 80 which the Examiner characterized as the [2] "inner
ring" of the claim. The Examiner also found the inner and outer rings
arranged as in the claim [3]. Office Act. 3.
Figures 46A and 46B of Pintor, reproduced below (with annotations
added herein), show the structures described by the Examiner as the inner
and outer rings, and the location of the suture holders, known as the eyelets
92, with respect to the rings.
20
35- ~
FIG. 46A FIG. 468
Figures 46A and 46B of Pintor show [1] the outer ring (sewing ring
62), [2] the inner ring (stent frame 80), and [3] the eyelets 92 which
correspond to [ 5] the suture holders.
Appellant contends that the suture holders 92 ("eyelets") described in
Pintor are at the other end of the tubular graft material than the end where
the suture holders are required to be in rejected claim 1. Appeal Br. 7.
Appellant states that the claims require the suture holder slots to be at the
distal end of the tubular portion, but Pintor describes the eyelets as attaching
the anchoring skirt 26 to the sewing ring 62, which is the proximal end of
the tubular portion). Reply Br. 4.
We agree with Appellant that the Examiner erred.
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Appeal2017-006839
Application 14/051, 787
Claim 1 requires a heart valve sizing ring comprising [ 4] a tubular
portion "having an upper end with an opening distal to the inner ring and
coupled outer ring." The tubular portion, as found by the Examiner, is the
fabric 82 surrounding the stent frame 80. Final Act. 3. See Fig. 13
reproduced above. The upper end of the tubular portion 82 with the opening
which is distal to the inner and outer rings (80 and 62, respectively) is the
end is opposite to where 80 and 82 are attached - as shown in Figures 46A
and 46B of Pintor. We have labeled this the "distal" end in the figure, and,
for reference, the end where the inner and outer rings are attached as the
"proximal" end.
The suture holders are required by the claim to be "spaced about the
upper end of the tubular portion"; the upper end has its "opening distal to the
inner ring and coupled outer ring." In Pintor, as shown in 15B, 46A, and
46B, the suture holders - eyelets 92 - are not on the distal end of the tubular
portion but are located opposite to it, as argued by Appellant, on the
proximal end where the outer and inner rings attach.
The Examiner acknowledged Appellant's "wrong end" argument, but
asserted that the location of the end is not claimed on the heart valve sizing
ring. Ans. 4. For the reasons described above, we do not agree with the
Examiner that the location of suture holder is an unclaimed feature of claim
1 and reverse the rejection of claim 1 and dependent claims 2-8 as
anticipated by Pintor.
REVERSED
5