Ex Parte 7,691,143 B2 et al

Patent Trial and Appeal Board

May 5, 2016

95000694 (P.T.A.B. May. 5, 2016)

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.
95/000,694 09/13/2012 7,691,143 B2 80668-851423 3998
28390 7590 05/05/2016
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/05/2016 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
____________________

EDWARDS LIFESCIENCES CORPORATION
Requester

v.

MEDTRONIC, INC.1
Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Medtronic, Inc. is the Patent Owner and the real party in interest (Appeal
Brief of Patent Owner (hereinafter “App. Br.”) 1).
2 Patent US 7,691,143 B2 (hereinafter “the ’143 patent”) issued April 6,
2010 to Wright et al.
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STATEMENT OF THE CASE
Claims 35 and 36 of the ’143 patent are the only claims subject to
reexamination that remain rejected (Right of Appeal Notice (hereinafter
“RAN”) PTOL-2066). The Patent Owner appeals under 35 U.S.C.
§§ 134(b) and 315 from the Examiner’s rejections of claims 35 and 36 (App.
Br. 1). In addition to the Appeal Brief and Rebuttal Brief, the Patent Owner
also relies on the Declaration of Ryan3 (hereinafter “Ryan Decl.”). We have
jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We are also informed that the ’143 patent was involved in a legal
action, the settlement of which resulted in the withdrawal of the Requester in
any further participation in the reexamination proceeding and related appeals
(Rebuttal Br. (hereinafter “Reb. Br.”) 1).
We REVERSE the Examiner’s rejections.

The ’143 patent is directed to an annuloplasty ring holder and a
method for releasing an annuloplasty ring (Abstract; Claims App’x). Claim
35 is independent and claim 36 depends therefrom. Claim 35 reads as
follows (Claims App’x):
35. A method of releasing an annuloplasty ring from an
annuloplasty ring holder comprising: providing an annuloplasty
ring holder having more than one spoke with an upper surface
and an annuloplasty ring receiving surface facing opposite the
upper surface, an annuloplasty ring removably attached with at
least one suture to the annuloplasty ring receiving surface;
severing a single suture once thereby fully releasing the
annuloplasty ring; and disassociating the annuloplasty ring
holder from the annuloplasty ring.

3 Declaration of Timothy R. Ryan, dated Aug. 19, 2013.
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The Examiner rejects claims 35 and 36 as follows:
1. Under 35 U.S.C. § 102(b) as anticipated by Cosgrove4; and
2. Under 35 U.S.C. § 102(b) as anticipated by Schoon.5

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in interpreting the claim term
“fully releasing.”
2. Whether the Examiner erred in interpreting the claim term
“opposite.”
3. Whether the Examiner erred in rejecting claims 35 and 36 as
anticipated by Cosgrove.
4. Whether the Examiner erred in rejecting claims 35 and 36 as
anticipated by Schoon.

ANALYSIS
Claim Interpretation: “Fully Releasing”
The Examiner states that because the ’143 patent does not set forth a
definition for the limitation “fully releasing,” and because this limitation is
not a term of art, its plain and ordinary meaning is applicable (Ans. 10).
Referring to a dictionary, the Examiner states that “‘fully’ is understood to
mean ‘completely’ or ‘entirely’ and ‘release’ is understood to mean ‘to set

4 U.S. Patent No. 5,350,420 issued Sept. 27, 1994.
5 U.S. Patent No. 6,319,280 B1 issued Nov. 20, 2001.
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free from restraint’ or ‘to stop holding.’” (Ans. 11, citing www.merriam-
webster.com). Based thereon, the Examiner interprets “fully releasing” to
mean “completely or entirely setting free or disassociated.” (Ans. 11).
The Patent Owner generally agrees with the Examiner’s articulated
construction stating that “fully releasing” means to completely or entirely
stop holding (App. Br. 11), but disagrees that the limitation includes
“disassociated.” (Reb. Br. 1–2). We understand the Patent Owner’s
objection to be based on the inclusion of the term “disassociated,” which is
recited in the subsequent step of the claimed methods. While we perceive
no significant difference as to the articulated constructions of the Patent
Owner and the Examiner, we do agree that the Examiner’s construction is
somewhat confusing in that it utilizes a term explicitly recited in a
subsequent step in the claims. Thus, we construe “fully releasing” to mean
completely or entirely stop holding as advocated by the Patent Owner.
The substantive claim interpretation dispute is directed to what this
limitation “fully releasing” means within the context of claim 35. The
Examiner states that because the claim specifically recites an additional
disassociating step, which is generally described in the Specification of the
’143 patent as “gentle pulling or teasing of the hairpin loops 78,” the claim
allows for and requires an additional step “to obtain a complete release of
the ring from the holder.” (Ans. 11 citing col. 6, ll. 9–15 and 49–52; see
also Ans. 10). The Examiner further notes that the Specification of the ’143
patent only mentions “fully releasing” in the context of releasing the ring
suture from the ring (Ans. 10). Thus, the Examiner concludes that
considering the claim language, a person of ordinary skill in the art “would
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have understood that the single suture provides the removable attachment of
the ring to the receiving surface.” (RAN 6–7; see also App. Br. 12).
The Patent Owner argues that “fully releasing” as recited in claim 35
“means that the holder must ‘completely’ or ‘entirely’ ‘stop holding’ the
annuloplasty ring” (App. Br. 11, bolding removed) so that it is the severing
of the suture that fully releases the annuloplasty ring (Reb. Br. 4). In
support, the Patent Owner argues that “[i]mportantly, ring suture 76 is the
only means by which the annuloplasty ring is held to the holder.” (App. Br.
10, citing col. 2, ll. 51–52 (“a single ring suture which is also securely
attached to the head is used to secure the ring”). In further support, the
Patent Owner (App. Br. 10; see also Reb. Br. 2) notes that the Specification
of the ’143 patent states:
[r]elease of the annuloplasty ring from the holder is
accomplished by using a scalpel in scalpel slot 70, hence
severing the retaining suture 74, which in turn releases hairpin
loops 78.
(’143 patent, col. 6, ll. 9–12; see also col. 2, ll. 54–57).
The Patent Owner also argues that other actions, such as pulling the
ring suture from between the ring and the annulus tissue, are part of the
“disassociation” step which is distinct from the step of “fully releasing” the
annuloplasty ring. (App. Br. 11; see also Reb. Br. 2).
While we understand the dispute, we do not find the issue to be
dispositive because as discussed infra, we agree with the Patent Owner that
the prior art fails to anticipate claim 35 regardless of the claim interpretation
applied.

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Claim Interpretation: “Opposite”
Another claim interpretation issue pertains to the term “opposite” that
is recited in the limitation “opposite the upper surface.” The Examiner states
that “[t]he term ‘opposite’ is broadly considered to be any direction other
than the upper surface.” (Ans. 3). The Patent Owner argues that the
Examiner’s interpretation is unreasonably broad, citing to various portions
of the Specification of the ’143 patent that describe the annuloplasty ring
receiving surface is opposite the upper surface and faces away from the
handle (Reb. Br. 4–5, citing col. 3, ll. 50–57; col. 3, l. 64–col. 4, l. 1; col. 4,
ll. 3–6; see also Figs. 1, 2).
We agree with the Patent Owner. There is no reasonable basis to
conclude that the term “opposite” can be read to mean “any direction other
than the upper surface.” To the contrary, a person of ordinary skill in the art
reading the claims in view of the Specification would understand that the
ordinary meaning of the term “opposite” is applicable6 so that the
annuloplasty ring receiving surface must be positioned across, and at the
other end/side of the spokes’ upper surface.

Anticipation by Cosgrove
As noted above, the Examiner concludes a person of ordinary skill in
the art “would have understood that the single suture provides the removable
attachment of the ring to the receiving surface.” (RAN 6–7; see also App.

6 The term “opposite” is defined as: “placed in corresponding positions
across an intervening, line, space, etc.” (Random House Webster’s College
Dictionary (1992); and “set over against something that is at the other end or
side of an intervening line or space.” (www.merriam-webster.com).
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Br. 12). The Examiner finds that Cosgrove anticipates claim 35 because
“Cosgrove severs a single suture 70 to fully release the annuloplasty ring []
and then the annuloplasty ring 10 is disassociated from the annuloplasty ring
holder 18.” (Ans. 4; see also Ans. 3, 16–17). The Examiner also finds that
because “[t]he term ‘opposite’ is broadly considered to be any direction
other than the upper surface,” the spokes of the device of Cosgrove have an
upper surface and an annuloplasty ring receiving surface opposite thereto
(Ans. 3).
In addition to arguments based on the claim construction of “fully
releasing” (App. Br. 18), the Patent Owner argues that:
[n]otably, Cosgrove also fails to meet the Office’s
purported interpretation, that the claim requires “full release of
the ring from the receiving surface”. (RAN, p. 10 (emphasis
original).) Cosgrove’s ring is not fully released from the ring
receiving surface because the ring receiving surface –– namely
groove 32 –– still holds the ring after the suture is severed.
(App. Br. 20).
We generally agree with the Patent Owner. While the suture would
be necessary to properly position the holder of Cosgrove together with its
annuloplasty ring, it is speculative to find that the annuloplasty ring in the
device of Cosgrove would not still be retained in groove/trough 32, which
defines the receiving surface upon severing the suture. In this regard, we
observe that Cosgrove discloses that “the trough 32 slightly deforms the ring
prosthesis 10” so that “[t]his deformation places a thicker portion of the
woven cloth 16 outside of the trough 32.” (Cosgrove, col. 5, ll. 38–42).
This disclosure in Cosgrove indicates that at least a portion of groove 32 is
dimensioned slightly smaller than the ring prosthesis to be received therein
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so as to at least slightly grip the ring prostheses. Such gripping of the ring
prostheses makes the Examiner’s finding that the severing of the suture
would fully release the annuloplasty ring from the groove/trough somewhat
speculative.
We also find persuasive the Patent Owner’s argument that:
Cosgrove discloses the type of holder from which the ’143
patent specifically departs and explicitly disparages. (’143
patent 3:60–4:6; Ryan Decl., ¶ 16.) That is . . . Cosgrove
teaches an annuloplasty ring mounted about a circumferential
groove and against circumferential flanges of the holder. (Ryan
Decl., ¶ 16.)
(App. Br. 18).
Construing and applying the claim to encompass a device of the type
explicitly disparaged and distinguished in the Specification of the ’143
patent is unreasonable. Furthermore, as discussed supra, we disagree with
the Examiner’s construction of the term “opposite,” and find that the groove
of Cosgrove does not face “opposite the upper surface” as required by claim
35.
Therefore, for the above reasons, we reverse the Examiner’s
anticipation rejection of claims 35 and 36 based on Cosgrove. Remaining
issues of dispute between the Examiner and the Patent Owner with respect to
this rejection do not alter our analysis.

Anticipation by Schoon
The Examiner finds that Schoon anticipates claim 35 because it
“discloses that annuloplasty ring 50 can be released from holder 10 by
severing suture 58,” the Examiner further finding that the holder is
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disassociated from the annuloplasty ring by tiling or lifting the holder at an
angle (Ans. 6, citing Schoon, col. 3, ll. 17–22; see also Ans. 15). The
Examiner also finds that because “[t]he term ‘opposite’ is broadly
considered to be any direction other than the upper surface,” the “[r]ing
attachment portion 16 [of Schoon] faces opposite the upper surface of the
spokes of the annuloplasty ring holder” as required by the claims (Ans. 7).
In addition to arguments based on the claim construction of “fully
releasing” (App. Br. 13–14), the Patent Owner argues that:
[n]otably, Schoon also fails to meet the Office’s
purported interpretation, that the claim requires “full release of
the ring from the receiving surface”. (RAN, p. 10 (emphasis
original).) Schoon’s ring is not fully released from the ring
receiving surface because the “ring receiving surface” ––
namely ring attachment portion 16, backing lip 22, and shoulder
tab 24 –– still holds the ring after the suture is severed.
(App. Br. 17).
We generally agree with the Patent Owner, and find that upon
severing of the suture in Schoon, ring attachment portion 16, backing lip 22,
and shoulder tab 24 that define the receiving surface would still retain the
annuloplasty ring therein. As pointed out by the Patent Owner (App. Br.
16), Schoon specifically states that:
prosthetic ring 50 is securely held to holder 10 at two locations
approximately 180° apart by suture 58 extending between holes
42a, 42b and between backing lip 22 and shoulder tab 24
(shown in FIG. 5).
(Schoon, col. 3, ll. 10–13).
In view of this explicit teaching in Schoon, we generally agree with
the Patent Owner (App. Br. 16) that even after suture 58 is cut, prosthetic
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ring 50 would likely not be fully released from the annuloplasty ring
receiving surface as required by claim 35. The Examiner’s finding to the
contrary is speculative. Furthermore, for reasons already discussed supra,
we also disagree with the Examiner’s construction of the term “opposite, and
find persuasive the Patent Owner’s argument that:
Schoon teaches an annuloplasty ring mounted about a
circumferential groove and against circumferential flanges of
the holder. This is the type of holder from which the ’143
specifically departs and explicitly disparages. (’143 patent,
3:60–4:6; Ryan Decl., ¶ 13.)
(App. Br. 14).
Therefore, for the above reasons, we also reverse the Examiner’s
anticipation rejection of claims 35 and 36 based on Schoon. Remaining
issues of dispute between the Examiner and the Patent Owner with respect to
this rejection do not alter our analysis.

ORDERS
The Examiner’s anticipation rejections of claims 35 and 36 based on
Cosgrove or Schoon are REVERSED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.
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REVERSED

PATENT OWNER:
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 Unocal Place
Santa Rosa, CA 95403

THIRD PARTY REQUESTER:
KILPATRICK TOWNSEND & STOCKTON LLP
Two Embarcadero Center
Eighth Floor
San Francisco, CA 94111-3834

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