Ex Parte SantilliDownload PDFPatent Trial and Appeal BoardSep 27, 201711614238 (P.T.A.B. Sep. 27, 2017) Copy Citation 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. 2 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 3 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- 4 Appeal 2015-005664 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 5 Appeal 2015-005664 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 6 Copy with citationCopy as parenthetical citation