Ex Parte Santilli

Patent Trial and Appeal Board

Sep 27, 2017

11614238 (P.T.A.B. Sep. 27, 2017)

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.
KSI-16377.001 9034
EXAMINER
LEVINE, JOSHUA H
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
11/614,238 12/21/2006 Albert N. Santilli
09/27/201777096 7590
WAYNE D PORTER, JR
LAW OFFICES OF WAYNE D. PORTER, JR.
6200 ROCKSIDE WOODS BOULEVARD NORTH
SUITE 315
INDEPENDENCE, OH 44131
09/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT N. SANTILLI
Appeal 2015-005664
Application 11/614,23s1
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a response to a Request for Rehearing (“Request”) of the
Board’s Decision on July 26, 2017 (“Decision”). Requests for Rehearing are
limited to matters overlooked or misapprehended by the Panel in rendering
the original decision. See 37 C.F.R. § 41.52.
After consideration of Appellant’s Request, we do not modify our
Decision.
1 According to Appellant, an additional interested party is Kapp Surgical
Instrument, Incorporated. Appeal Br. 1 (filed Nov. 24, 2014).
Appeal 2015-005664
Application 11/614,238
OPINION
Appellant asserts our Decision is “deficient in several respects.”
Request 2. The alleged deficiencies are: (1) “the Board did not provide
‘articulate reasoning’ why a skilled artisan would have turned to Jarvik and
modified Jarvik to provide the claimed invention;” (2) the Board relied on
impermissible hindsight “to craft the new ground of rejection;” and (3) the
Board failed to consider evidence of non-obviousness provided by
Appellant. Id. at 2—5. We disagree on all counts.
First, the Decision, at page 8, states clearly,
Because Jarvik discloses using a CT scanner to generate medical
imagery of a heart component, i.e., leaflets, for manufacturing a
pump with surfaces that “match the size and shape of the sealing
surfaces of the two valve leaflets that close against them” (Jarvik
1 32), and because a skilled artisan recognized an implanted
aortic valve needs to fit the patient precisely (AAPA | 4), the
skilled artisan . . . would have been led to use the known
technique of using CT scanner imagery to get the specific
dimensional geometry of a patient's aortic valve to manufacture
an aortic valve that matches the size and shape of the one being
replaced.
Contrary to Appellant’s suggestion that the Decision merely identifies a
problem without explaining why that problem would have led a skilled
artisan to perform the claimed steps of claims 1 and 13, the above excerpt
explains that a skilled artisan’s need for a prosthetic heart component that
fits precisely within a user’s heart would have led to CT scanner imagery to
manufacture the component because Jarvik evidences that CT scanner
imagery was known to be an acceptable means for getting measurements to
manufacture heart parts that have the same size and shape as the parts being
replaced.
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Appeal 2015-005664
Application 11/614,238
Appellant’s reliance on Heart Failure Tech., LLC v. Cardiokinetix,
Inc., IPR2013-00183 (PTAB July 31, 2013) (Paper 12), is misplaced. In that
case, the Petitioner asserted, “a person having ordinary skill in the art would
have had reason to combine the relevant teachings of Murphy, Khairkhahan,
and Lane to reach the claimed subject matter because these references ‘are
related to the repair of a human heart.’” Heart Failure Tech., slip op. at 9
(quoting Petition 5 (Paper 4)). Unlike the petitioner in that case, the
Decision does not simply rely on the fact that the known desire to create a
precisely fitting aortic valve and the teachings of Jarvik both relate to
repairing a human heart generally, but instead finds a specific connection
between a known problem and a known technique for addressing a similar
problem. “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398,417 (2007).
Second, we disagree with Appellant’s contention that the Decision
evidences reliance on hindsight because “Jarvik does not contain any
suggestion or teaching that the technique disclosed therein could be
modified to manufacture the heart components specified in claims 1 and 13.”
Request 3^4. “It is well-established that a determination of obviousness
based on teachings from multiple references does not require an actual,
physical substitution of elements.” In reMouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012). “A reference may be read for all that it teaches, including uses
beyond its primary purpose.” Id. at 1331. The Decision relies on Jarvik to
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Appeal 2015-005664
Application 11/614,238
evidence a skilled artisan knew, separate and apart from manufacturing a
miniaturized heart component,
to use a CT scanner to obtain two and three-dimensional imagery
for the purpose of getting specific dimensional information about
a heart component and to enable a prosthetic heart device to be
manufactured to match the shape and size of a patient’s heart
component.
Decision 8. Thus, rather than hindsight, the Decision relied on what the
evidence of record demonstrated an ordinarily skilled artisan knew at the
time of the invention and the connections that this evidence demonstrated
was within the grasp of the artisan “tak[ing] account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418.
Finally, Appellant is simply incorrect in asserting that we failed to
consider the Santilli Declaration while evaluating all of the evidence and
prior to reaching a determination that claims 1 and 13 would have been
obvious. Request 4—5. That declaration was considered, however, it was
not referenced in the Decision because we did not find it persuasive.
We found the Santilli Declaration to consist largely of conclusory
statements, which have little, if any, probative value. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). For example, Appellant identifies
paragraph 13 from the Santilli Declaration, which states, “the described
manufacturing technique [in Jarvik] is not amenable to manufacturing
custom-fit heart components based on measurements taken from a beating
heart.” Request 5. While Mr. Santilli provides a conclusion, he wholly fails
to identity any evidence or technical reasoning to support this assertion. Mr.
Santilli’s testimony fails to explain persuasively why a skilled artisan would
have recognized a CT scanner to be acceptable for obtaining two and three-
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Application 11/614,238
dimensional imagery of a patient’s heart valve leaflets for the purpose of
getting specific dimensional information to manufacture surfaces in a
prosthetic that match those valve leaflets, but would not have also
recognized the CT scanner to be equally useful for obtaining two and three-
dimensional imagery for the purpose of getting specific dimensional
information to manufacture an aortic valve.
Moreover, Appellant offers no evidence Jarvik used the CT scanner
on a heart that was not beating to get the images that allowed the heart valve
leaflets of the prosthetic to be manufactured to match the size and shape of
the heart valve leaflets in the beating heart the prosthetic would cooperate
with once inserted into the living patient. Mr. Santilli offers no evidence or
persuasive technical reasoning for why a CT scanner would provide
unacceptable imagery of a beating heart to get dimensional data to
manufacture an aortic valve. We note that Appellant’s Specification does
not describe any technological advancement or discovery that Appellant has
made regarding the operation of a CT scanner that enables it to get precise
measurements of a beating heart component. Appellant, and Mr. Santilli,
simply rely on unsupported assertions that we found unpersuasive in view of
contrary evidence provided by Jarvik.
In conclusion, Appellant’s Request does not persuade us that our
Decision overlooked or misapprehended any matter or that our new ground
of rejection is deficient.
DECISION
Appellant’s Request has been considered and we have reconsidered
our Decision in light of the arguments in the Request, but we do not agree
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Application 11/614,238
any of the requested modifications to the Decision are necessary. Upon
reconsideration, the rejection of claims 1 and 13 stands.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
DENIED
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