Edward Mcnamara et al.

Patent Trials and Appeals Board

Oct 25, 2019

13471419 - (D) (P.T.A.B. Oct. 25, 2019)

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.
13/471,419 05/14/2012 Edward McNamara 12679-700.302 8771
66854 7590 10/25/2019
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
info@shayglenn.com
shayglenn_pair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD MCNAMARA, DAVID CELERMAJER,
STEPHEN FORCUCCI,
and HIROATSU SUGIMOTO1
____________

Appeal 2018-006548
Application 13/471,419
Technology Center 3700
____________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant seeks our review under 35 U.S.C. § 134 of the Final
rejection of claims 1–15 which are all the claims pending in the application.
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. Appellant identifies Corvia Medical, Inc. as the real party in
interest (Appeal Br. 2).
Appeal 2018-006548
Application 13/471,419

2

CLAIMED SUBJECT MATTER

The Appellant’s claimed invention is directed to devices for treating
heart failure in interatrial pressure vents, shunts and the like (Spec., para 2).
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A device for implanting in an opening is a septal wall in
a heart of a patient, the device comprising:
a core segment defining a passage through which fluid
can flow after implantation of the device, the passage
comprising a diameter larger than about 5 mm, the flow being
from one side of the septal wall to another side of the septal
wall, the core segment having a
first diameter when deployed;
a first annular flange contiguous with the core segment;
and
a second annular flange contiguous with the core
segment, wherein the device is collapsible, enabling the core
segment to have a second diameter less than the first diameter
thereby enabling percutaneous delivery of the device to the
heart of the patient,
and
wherein the core segment comprises a non-braided
substantially open mesh.

THE REJECTIONS
The following rejection is before us for review:
1. Claims 1–10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Berg (Berg et al., US 6,712,836 B1; iss. Mar. 30, 2004,
hereinafter “Berg”).
2. Claims 11–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berg and Melsheimer (US 2007/0043431 A1;
pub. Feb. 22, 2007).

Appeal 2018-006548
Application 13/471,419

3

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS

Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) is improper because Berg discloses “apparatuses and methods for
preventing the flow of body fluids through apertures in body cavity walls”
(App. Br. 3). The Appellant has stated that in contrast the current claim
includes a limitation for:
a core segment defining a passage through which fluid can flow after
implantation of the device, the passage comprising a diameter larger
than about 5 mm, the flow being from one side of the septal wall to
another side of the septal wall, the core segment having a first
diameter when deployed.

(App. Br. 2) (emphasis added). The Appellant argues that the rejection is
improper because: Berg does not disclose or suggest the aperture to have a
diameter of about 5mm; Berg does not disclose a device including a passage
in which fluid can flow after implantation; and that modifying Berg to
include a passage in which fluid can flow after implantation of the device
renders Berg inoperable for its intended purpose (App. Br. 2–8; see also
Reply Br. 2–4).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2018-006548
Application 13/471,419

4

In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2, 3; see also Ans. 2, 3).
We agree with the Appellant. In KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398 (2007) the Supreme Court at KSR, 550 U.S. at 418 noted that in an
obviousness analysis that “[r]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In this case, the rejection before us lacks
articulated reasoning with rational underpinning to support a legal
conclusion of obviousness without impermissible hindsight. The disclosure
of the device of Berg is essentially for closing fluid flow in a passage after
implantation while in contrast the claim at issue is directed to “defining a
passage through which fluid can flow after implantation” (Appeal Br. 2).
The rejection also requires a modification in changing of the dimension of
the passage to 5mm. Here, the cited modifications taken together lack
articulated reasoning with rational underpinnings without impermissible
hindsight and the rejection of claim 1 and its dependent claims 2–10 is not
sustained.
With regard to claims 11–15, the Melsheimer reference fails to correct
the deficiency of the rejection of the base claim and the rejection of these
claims as well. Accordingly, the rejection of claims 11–15 is not sustained
as well.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1–10 under 35 U.S.C. § 103(a) as unpatentable over Berg.
Appeal 2018-006548
Application 13/471,419

5

We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 11–15 under 35 U.S.C. § 103(a) as unpatentable over Berg
and Melsheimer.

DECISION
The Examiner’s rejection of claims 1–15 is reversed.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10 103(a) Berg 1–10
11–15 103(a) Berg and
Melsheimer
11–15
Overall
Outcome
1–15

REVERSED