Robert C. FarnanDownload PDFPatent Trials and Appeals BoardDec 4, 201913788039 - (D) (P.T.A.B. Dec. 4, 2019) 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. 13/788,039 03/07/2013 Robert C. Farnan 21819J-2038U- C00016891.US 4385 89554 7590 12/04/2019 Christopher & Weisberg, P.A. 1232 N. University Drive Plantation, FL 33322 EXAMINER SO, ELIZABETH K ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 12/04/2019 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): cwdocketing@cardinal-ip.com ptomail@cwiplaw.com rs.patents.five@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT C. FARNAN ____________ Appeal 2018-005581 Application 13/788,039 Technology Center 3700 ____________ Before GEORGE R. HOSKINS, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–9, 12, 13, 22, 25, and 26. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Real Party in Interest is CircuLite, Inc. Appeal Br. 1. Appeal 2018-005581 Application 13/788,039 2 CLAIMED SUBJECT MATTER Appellant’s invention relates “to cannulae for use in moving bodily fluids.” Spec ¶ 1. Of the rejected claims, claims 1 and 26 are independent. Appeal Br. (Claims App’x). We reproduce claim 1, below, with emphasis added to a particular limitation discussed in this Decision. 1. A malleable cannula for moving blood from a chamber of the heart of a patient to a heart pump, the malleable cannula comprising: a polymeric jacket having proximal and distal ends, wherein the proximal end is configured to be coupled to the heart pump; and a malleable member surrounded by the jacket, the malleable member having a proximal end, a distal end, and a lumen extending therebetween and along a lengthwise axis of the malleable cannula, the lumen being configured to transfer blood from the chamber of the heart to the heart pump, the malleable member including a longitudinal strut extending parallel to the lengthwise axis and a plurality of non-helical transverse struts coupled to and extending laterally from the longitudinal strut and around at least a portion of the lumen, the malleable member configured to assume and maintain a formed shape of the malleable cannula, wherein the longitudinal strut is discontinuous along a lengthwise dimension thereof and is comprised of a plurality of spaced apart segments. Id. (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Jacobsen US 2003/0069522 A1 Apr. 10, 2003 Wübbeling US 2010/0036364 A1 Feb. 11, 2010 Appeal 2018-005581 Application 13/788,039 3 REJECTION Claims 1–9, 12, 13, 22, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jacobsen and Wübbeling. Final Act. 4. OPINION I. Examiner’s Rejection In rejecting the claims, the Examiner relies on Jacobsen for meeting several of the claimed limitations, citing in part Jacobsen’s Figure 13. Final Act. 5 (rejecting independent claim 1); see id. at 10 (applying the rejection of claim 1 to independent claim 26). We reproduce Jacobsen’s Figure 13, below: Figure 13 depicts “a perspective, partially fragmented, view of a guidewire in accordance with principles” of one of Jacobsen’s embodiments. Jacobsen ¶ 25 (emphasis added). The Examiner finds that Jacobsen’s guidewire satisfies the claimed “malleable member.” See Final Act. 5–6. The Examiner cites to Jacobsen’s disclosure that its guidewire—the “malleable member”—is “configured to have torsional stiffness and bending flexibility for maneuvering in a patient’s vasculature.” Id. at 6 (citing Jacobsen ¶¶ 73, 82–83). The Examiner further finds that Jacobsen’s guidewire is a super elastic material. Ans. 9 (citing Jacobsen ¶¶ 85, 99). Appeal 2018-005581 Application 13/788,039 4 To address the claimed “malleable member surrounded by [a polymeric] jacket,” the Examiner relies on a combination of Jacobsen and Wübbeling. Final Act. 6. The Examiner finds that Jacobsen discloses a polymeric jacket, but the jacket is on the inside of the malleable member. See id. at 6 (citing Jacobsen ¶¶ 10, 52) (“Jacobsen shows that the polymeric jacket is inside the malleable member.”) The Examiner relies on Wübbeling for addressing this deficiency, finding that Wübbeling teaches a polymeric jacket that surrounds a malleable member. Id. (citing Wübbeling ¶¶ 7, 11, 25, Fig. 5a). In combining Jacobsen with Wübbeling, the Examiner reasons that a skilled artisan would have modified Jacobsen’s jacket to surround its malleable member, as taught by Wübbeling, “for the purpose of preventing leakage of liquid through the slots.” Id. II. Appellant’s Argument Appellant contends that “the Examiner has construed the term malleable to mean anything flexible, an unreasonably broad construction.” Appeal Br. 4. We agree. III. Analysis The issue is whether Jacobsen’s flexible, super elastic guidewire satisfies a broad, but reasonable, construction of the claimed “malleable member configured to assume and maintain a formed shape.” The Examiner interprets “malleable” to mean “something as flexible, pliable, and non-brittle so that it does not break when manipulated.” Ans. 8– 9. In applying this interpretation, the Examiner finds that Jacobsen’s Appeal 2018-005581 Application 13/788,039 5 “flexible guide wire . . . is a superelastic material” but “is malleable for being compliant to maneuver through said vasculature without incurring damage to the vasculature.” Id. at 9 (citing Jacobsen ¶¶ 85, 99) (emphasis added). Appellant, on the other hand, submits that “the malleable member . . . provides plasticity—plasticity meaning ‘the ability to retain a shape attained by pressure deformation.’” Appeal Br. 5 (citing https://www/merriam- webster.com/dictionary/plasticity). Appellant proposes that a malleable material “retain[s] its shape . . . on its own, without something else imparting a force on it, and when that force is removed.” Reply Br. 2–3. As an initial matter of claim construction, we look to the Specification for context regarding the broadest reasonable interpretation of the claim term “malleable.” See In re Morris, 127 F.3d 1048, 1054 (holding that during prosecution, claim limitations are given the broadest reasonable interpretation consistent with the specification) (internal citations omitted). The Specification describes: The malleable member 94 is configured to provide the inflow cannula 50 with a degree of plasticity allowing the physician to bend and shape the inflow cannula 50 to fit the patient’s anatomy without breakage. . . . With the malleable member 94, the inflow cannula 50 is configured to retain the desired shape without relaxing into an unformed and loose shape. Spec. ¶¶ 32, 33 (emphases added). The Specification describes that the malleable member provides the inflow cannula “a degree of plasticity” that allows a physician to bend and shape the cannula. Id. ¶ 32. The Specification further describes that the Appeal 2018-005581 Application 13/788,039 6 inflow cannula retains its desired shape without relaxing “with the malleable member.” Id. ¶ 33. We determine that the Specification supports Appellant’s construction that the malleable member undergoes plastic deformation that retains its shape after a deforming force is removed. See Reply Br. 2–3. Turning to the pertinent claim limitation, Claim 1 recites, inter alia, “the malleable member configured to assume and maintain a formed shape of the malleable cannula.” Appeal Br. 8 (Claims App’x) (emphasis added). Because the claim explicitly requires that the malleable member is configured to “assume and maintain a formed shape of the malleable member,” the claim language itself supports Appellant’s proposed construction, in that a malleable member retains its shape “on its own, without something else imparting a force on it, and when that force is removed.” Reply Br. 2–3. Furthermore, the Examiner’s interpretation of the term “malleable” is unreasonably broad because it encompasses any material that is flexible, whether it undergoes plastic or elastic deformation. Indeed, the Examiner finds that Jacobsen’s super elastic guidewire is malleable (see Ans. 9), even though an elastic material undergoes elastic, rather than plastic, deformation. In other words, even though an elastic material is flexible, upon removal of a deforming force, the elastic material generally returns to its original shape, which is opposite plastic deformation. See, e.g., https://www.britannica.com/science/plasticity (“Plasticity enables a solid under the action of external forces to undergo permanent deformation without rupture. Elasticity, in comparison, enables a solid to return to its Appeal 2018-005581 Application 13/788,039 7 original shape after the load is removed. . . . Plastic deformation is a property of ductile and malleable solids.”) (last visited December 2, 2019). Finally, the Examiner relies on Wübbeling for its teaching of a polymeric jacket (Final Act. 6), and Wübbeling does not remedy the Examiner’s reliance on Jacobsen. For the foregoing reasons, we are not persuaded that Jacobsen’s super elastic guide wire satisfies the claimed malleable member. As such, we reverse the rejection of claims 1–9, 12, 13, 22, 25, and 26 as unpatentable over Jacobsen and Wübbeling. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 12, 13, 22, 25, 26 103 Jacobsen, Wübbeling 1–9, 12, 13, 22, 25, 26 REVERSED Notice of References Cited Application/Control No. Applicant(s)/Patent Under Patent Appeal No. Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. Plasticity Plasticity, ability of certain solids to flow or to change shape permanently when subjected to stresses of intermediate magnitude between those producing temporary deformation, or elastic behaviour, and those causing failure of the material, or rupture (see yield point). Plasticity enables a solid under the action of external forces to undergo permanent deformation without rupture. Elasticity, in comparison, enables a solid to return to its original shape after the load is removed. Plastic deformation occurs in many metal-forming processes (rolling, pressing, forging) and in geologic processes (rock folding and rock flow within the earth under extremely high pressures and at elevated temperatures). Plastic deformation is a property of ductile and malleable solids. Brittle materials, such as cast iron, cannot be plastically deformed, though at elevated temperatures some, such as glass, which is not a crystallized solid, do undergo plastic flow. Plasticity, as the name of a science, refers either to mathematical descriptions of what happens in plastic deformation in terms of stresses, strains, and loads or to physical explanations of plastic flow in terms of atoms, crystals, grains, and motions of structural defects (dislocations) within crystals. CITATION INFORMATION ARTICLE TITLE: Plasticity WEBSITE NAME: Encyclopaedia Britannica PUBLISHER: Encyclopaedia Britannica, Inc. DATE PUBLISHED: 26 April 2016 URL: https://www.britannica.com/science/plasticity ACCESS DATE: December 02, 2019 Page 1 of 1Plasticity -- Britannica Online Encyclopedia 12/2/2019https://www.britannica.com/print/article/463769 Copy with citationCopy as parenthetical citation