Ex Parte Fitz et al

Patent Trial and Appeal Board

Jan 21, 2016

12180834 (P.T.A.B. Jan. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/180,834 07/28/2008 Matthew Fitz
37374 7590 01/25/2016
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.
388700-507 1816
EXAMINER
SHI, KATHERINE MENGLIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01125/2016 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 MATTHEW FITZ, CATHY LEI, JOSEPH
GULACHENSKI, MARICRUZ CASTANEDA, and
GARY CURRIE
Appeal2014-000085
Application 12/180,834
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and
JASON W. MELVIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10, 22, and 24--31. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a detachable coil incorporating stretch
resistance. Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
Appeal2014-000085
Application 12/180,834
1. A detachable implant delivery system comprising:
a delivery device having a distal end and a heater
proximate said distal end;
an implant attached to said distal end of said delivery
device, wherein said implant defines a lumen;
a stretch-resistant member characterized by a single
monofilament connecting said delivery device and said implant,
said stretch-resistant member passing through said lumen and
attached to said implant near a distal end of said implant, and
tied to said implant making a knot near a proximal end of said
implant, said stretch-resistant member continuing proximally in
operable proximity to said heater, such that upon activation of
said heater, said stretch-resistant member breaks, releasing said
implant.
REJECTION 1
Claims 1-10, 22, 24--31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitz (US 2006/0052815 Al, pub. Mar. 9, 2006) and
Simon (US 2007/0239193 Al, pub. Oct. 11, 2007).
OPINION
The claims are argued as a group. We select claim 1 as
representative. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
1 The Final Office Action of November 7, 2012 rejected the pending claims
under 35 U.S.C. § 112, first paragraph. Final Act. 2. Appellants filed an
After-Final Amendment on March 4, 2013, essentially adopting certain
recommendations that the Examiner suggested to overcome this rejection.
The Advisory Action mailed March 28, 2013, indicated that, for purposes of
this appeal, the After-Final Amendment would be entered. Although there
does not appear to be any express indication of record, the Examiner appears
to consider the After-Final Amendment to render the rejection under 35
U.S.C. § 112, first paragraph moot, as this rejection is not addressed in the
Examiner's Answer. We do not consider the rejection under 35 U.S.C.
§ 112, first paragraph as being before us for review.
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Application 12/180,834
The Examiner rejected claim 1, determining that it would have been
obvious to incorporate a secondary fixation location, as taught by Simon,
into Fitz, in order to prevent unwanted stretching of the implant. Final Act.
3--4. Although Appellants argue that the Examiner distilled the invention
down to its "gist" (App. Br. 11 ), Appellants do not identify any specific
language of the claim left unsatisfied if the Examiner's proposed
modification to Fitz were made.
Appellants' main argument is that the Examiner's proposed
combination would destroy the so-called "cue" functionality of Simon,
produced due to the presence of slack in Simon's stretch-resistant member.
Id. at 7. As the Examiner correctly points out, this argument does not
address the rejection set forth by the Examiner which involves a proposed
modification to Fitz, not Simon. Ans. 7-9. It is true that a proposed
modification that impairs or destroys functionality for an intended purpose
may be indicative of the improper use of hindsight in an obviousness
analysis. App. Br. 10-11. However, hindsight in the Examiner's analysis is
not demonstrated by arguing against a combination never proposed by the
Examiner.
In any case, Appellants' arguments are based on extrapolating, from
two sentences of a single paragraph (55) of Simon, a device that is
inconsistent with the express teachings of Simon, taken as a whole. Id. at 6-
9. Slack in Simon's filament 30 is felt because of the interaction of Simon's
hook 67 with the loop into which filament 30 is formed. Paras. 49-55; Fig.
6. As recognized by the Examiner, a secondary fixation location of the
filament would not necessarily hinder the physicians' ability to feel slack
due to the filament-hook interface. Adv. Act. 2. In fact, as the Examiner
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Application 12/180,834
correctly points out, Simon itself suggests multiple attachment locations for
the filament. Final Act. 4; Ans. 6 (both citing Simon paras 49--51). In doing
so, Simon suggests only a location distal of the attachment junction 60.
Appellants argue that "the combined Fitz/Simon device will always have a
constant amount of slack between the proximal filament attachment point on
[sic and] the distal end of the pusher member." App. Br. 8. In order for
Appellants' supposition that to be true, both sides of Simon's filament loop
would need to be fixed at locations distal to the hook-filament interface.
Appellants' argument again does not address the Examiner's basis for
rejection. It is only Appellants, and not the Examiner, that propose a
modification that involves non-slack-transmitting knots placed at a specific
location to destroy the slack-observing interface of the filament and hook.
Simon may teach away from the absence of slack (id. at 9--10), but it is only
Appellants, and not the Examiner, that proposes such an arrangement. As
noted above, Simon itself suggests multiple attachment locations for the
filament. We cannot agree with Appellants that the only way to effectuate
this would be to do so in a manner that destroys functionality Simon regards
as desirable. Adv. Act. 2. We recognize that Simon does not disclose that
knot 35 is connected to the coil 50. App. Br. 5. However, merely as an
alternate example of how Appellants propose to provide a secondary knot, a
proximal connection at that location (near reference numeral 35 in Figure 6)
would not hinder the hook-filament interface's slack indicating ability.
Appellants' arguments are based on the shortcomings of an arrangement
only they propose to make.
As far as Appellants' attack on the Examiner's first rationale for
making the proposed combination, the Examiner correctly points out that
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Application 12/180,834
"unwanted stretching" is not, as Appellants suggest (App. Br. 7-8), only that
stretching that might occur prior to deployment (Final Act. 4). It is
stretching from the secondary or relaxed configuration into an undesired
(non-relaxed) state that is discouraged by Simon's stretch resistant member.
Ans. 10; Adv. Act. 2; Final Act. 4 (citing Simon para. 42); see also Simon
para. 54. It is undisputed that Simon's proximally and distally attached
stretch-resistant member can provide this function.
As diameter uniformity would be affected by unwanted stretching,
there is also a rational basis for the Examiner's alternate reason for making
the proposed modification. Adv. Act. 2 (citing Simon para. 26); Ans. 10.
We recognize that when Simon elaborates on exactly why the diameter is
more uniform, it is due to the absence of heat treating as opposed to the
presence of a knot. App. Br. 8-9; Simon para. 52. However, first, though
not expressly stated by Simon, it is reasonably implied that the anchor and
knots facilitate avoiding heat-treatment. Second, the Examiner need not rely
on only the benefits expressly stated in a reference to support an obviousness
rejection. "Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed." KSR
Int'! Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007).
Either of the rationales discussed above supports the Examiner's
conclusion of obviousness. We note that the amount of rebuttal to include in
an Examiner's Answer is a matter of discretion. See Reply Br. 6-9; MPEP
§ 1207.02. The absence of an elaborate response, particularly to
unsupported arguments, is not necessarily prejudicial. We review appeals
on the totality of the record with due consideration to all evidence and
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Application 12/180,834
argument before us. On that record, we agree with the Examiner's factual
findings, analysis, and legal conclusions.
DECISION
The Examiner's rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
cda
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