Ex Parte Dai

Patent Trial and Appeal Board

Jun 7, 2016

13123440 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/123,440 04/08/2011 Rongping Dai
119941 7590 06/09/2016
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
091619-0577 7561
EXAMINER
MATTHEWS, WILLIAM H
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONGPING DAI
Appeal2014-004670
Application 13/123,440 1
Technology Center 3700
Before EDWARD A. BROWN, BEYERL Y M. BUNTING, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rongping Dai (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's Final decision rejecting claims 1-9, 15-17, 21, 35, 37, 41, 58,
and 59. 2 App. Br. 4. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
1 According to Appellant, the real party in interest is Empire Technology
Development LLC. App. Br. 2.
2 Claims 42 and 51 are withdrawn, and claims 10-14, 18-20, 22-34, 36, 38-
40, 43-50, 52-57, and 60-63 are canceled. Id. at 4.
Appeal2014-004670
Application 13/123,440
SUMMARY OF DECISION
We AFFIRM-IN-PART.
SUMMARY OF INVENTION
Appellant's invention is directed to "a stent for treating an eye,
comprising a flexible material, wherein the stent is self adaptive to a
dimension of a vitreous cavity in the eye." Spec. i-f 4. Claims 1 and 41 are
independent and are illustrative of the claimed subject matter. These claims
are reproduced below from the Claims Appendix of the Appeal Brief:
1. A stent for an eye, comprising:
a flexible material,
wherein the stent is of an annular shape at a body
temperature, and has a distal and a proximal end, and is self
adaptive to a dimension of a vitreous cavity in the eye by a self
adaptive zone which is located at the distal end and has either
a single opening which divides the annular shape
of the stent along its height; or
a fold which projects radially inwards and extends
along the height of the annular shape of the stent;
and wherein the self adaptive zone has a width in a range
of about 1-8 mm; and further wherein the stent has a height of
about 5 mm.
41. A stent for an eye, comprising:
a titanium-nickel (Ti-Ni) based shape memory alloy,
which stent is self adaptive to a dimension of a vitreous cavity
in the eye,
wherein the Ti-Ni based shape memory alloy is of an
annular shape in a parent phase region and a folded shape in a
martensite region,
wherein the annular shape has a narrower region with the
diameter of about 20 mm and a wider region with the diameter
of about 22 mm, and
wherein the annular shape has a height of about 5 mm.
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Application 13/123,440
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Shadduck US 2004/0193262 Al Sept. 30, 2004
Yamauchi EP 1570870 Al Sept. 7, 2005
Alvarado US 2007/0073016 Al Mar. 29, 2007
Selden US 2007 /0179426 Al Aug.2,2007
Zhengzhou CN 101049270 A Oct. 10, 2007
REJECTIONS
Claims 1, 7, 8, 21, 58, and 59 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Zhengzhou.
Claims 2-6, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhengzhou; Alvarado; and Selden.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zhengzhou and Yamauchi.
Claims 15, 35, 37, and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zhengzhou and Shadduck.
ANALYSIS
The Anticipation Rejections
The Examiner finds that Zhengzhou discloses all of the elements of
independent claim 1. Final Act. 3--4. More specifically, the Examiner finds
that "[ t ]he annular shape shown in Figures 1 and 3 also show [sic] a variety
of heights from 0 to 20mm or 0 to 14mm depending on the location and
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Application 13/123,440
expansion state (in the direction parallel to "b/c" or "a/d") which would
include about 5mm," and that the
limitations regarding the self adaptive zone are met by the
opening "e" disclosed as 1.8 mm and at the distal end which
extends into the length of the stent. Alternatively, the self
adaptive zone could read on a plurality of openings in the mesh
stent starting at a distal end and extending along the length of
the annular body since the claims use the transitional phrase
"comprising" and are not limited to a single opening.
Id. at 4.
Appellant argues "that Zhengzhou fails to teach or suggest at least a
stent for an eye with a single opening which divides the annular shape of the
stent along its height, or a fold which projects radially inwards and extends
along the height of the annular body of the stent" (App. Br. 10), and the
Examiner's interpretation "that the 'self adaptive zone could read on a
plurality of openings in the mesh stent starting at the distal end and
extending along the length of the annular body ... "' (id. at 11) is in error
because such a "reading of Zhengzhou entirely vitiates the 'divides'
language required by the claim" (Id.).
The Examiner answers that
[t]he terms "divide" and "height" and "annular" are not
explicitly defined in Appellant's specification so as to impart
any strict interpretation of the phrase "a single opening which
divides the annular shape of the stent along its height", such as
an opening which must fully bisect, split, disconnect, or
disunite an annular ring.
Ans. 6-7. The Examiner asserts that Zhengzhou anticipates claim 1 because
under the broadest reasonable interpretation of the claim terms,
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Application 13/123,440
Zhengzhou' s Figures 1--4 provides [sic] a stent of annular shape
which has either A) annular surface which surrounds/encircles
an axis parallel to dimensions a/d or B) annular surface which
surrounds/ encircles an axis parallel to dimensions b/ cl e, and
whereby ... the distal end of stent includes a region having a
width of 1-8mm (width measured along a/d, Figures 1,3) and
an opening "e" as the self-adaptive zone. In addition, the
opening "e" ... is a single opening of the self-adaptive zone
since the other opening "f' is not in the self-adaptive zone at the
distal end. Furthermore, the opening "e" ... divides the
annular shape along a height of the stent because the division
must merely occur, as broadly claimed, along the direction of
the stent height (wherein the height may be overlapping with a
width, diameter, or length of a local region or entirety of the
device). The annular shape ... is divided by a central
opening/bore "e" that separates upper and lower surfaces along
a height measured in the direction of dimensions "a" & "d" and
the width of the self-adaptive zone.
Id. 7-8 (first emphasis added). The Examiner further asserts that "[s]ince
the height, as broadly recited, is not described in connection with any
particular expansion state or location, Zhengzhou anticipates the claimed
phrase 'the stent has a height of about 5mm' since Figure 3 possesses
heights between 0 (at left apex side) to 12-20mm (max heights, 'b' & 'c')."
Id. at 8.
Appellant replies by contending that the Examiner's interpretation of
the Zhengzhou reference is overly broad. See Reply Br. 2---6. Specifically,
Appellant argues, inter alia, that "the height must be perpendicular to a
diameter of the annular shape" (Id. at 2) and that if "elements 'e' and 'f'
taken together define the annular, i.e. ring-shape of the device of
Zhengzhou[,] ... [then] elements 'e' and 'f,' cannot both be defining of the
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annular shape and be the single opening that divides the annular shape" (Id.
at 5---6).
"To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). "[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We are persuaded by Appellant's arguments
that the Examiner has failed to establish that Zhengzhou anticipates claim 1.
Initially, we disagree with the Examiner's interpretation of Zhengzhou
as defining an "annular surface which surrounds/ encircles an axis parallel to
dimensions b/c/e." Ans. 7. Appellant argues that "'annular' is defined as
'shaped like or forming a ring"' (App. Br. 11 (citing The American Heritage
Dictionary (2000)), while the Examiner contends that "the broadest
reasonable interpretation of 'annular shape' includes 'shaped like a ring but
not necessarily a complete circular ring nor symmetric' (noting Appellant's
device of Figures 1---6B may have extensions, tapered surfaces, and lacks any
complete circular ring)" (Ans. 7). Under either of these proposed
definitions, however, the Zhengzhou stent does not define an annular shape
about an axis parallel to any of the b/c/e dimensions. Thus, we are
persuaded by Appellant's arguments that the Examiner's contentions to the
contrary are in error.
We now address the Examiner's two proposed interpretations of the
recited self-adaptive zone. The Examiner first proposes that Zhengzhou
opening "e" serves as the claimed self-adaptive zone. See Final Act. 4.
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Appellant argues persuasively that opening "e" does not "divide the annular
shape of the stent along its height," as required by claim 1, because opening
"e" defines the annular, or ring-like shape of the Zhengzhou stent. See App.
Br. 12; see also Reply Br. 6. Appellant also argues that "'divide' means 'to
cause to separate into opposing factions; disunite"' (App. Br. 11 (citing The
American Heritage Dictionary (2000)), while the Examiner contends that
"the broadest reasonable interpretation of 'divide' includes 'to separate
portions of something," (Ans. 7). We observe that the wall of the
Zhengzhou stent is continuous along its entire length from its "front
opening" to its "rear yellow spot hole" (see Zhengzhou, English abstract;
Figs. 1--4), and thus opening "e" does not divide the Zhengzhou stent under
either of the proposed definitions.
Next, the Examiner proposes that a plurality of the individual
openings in the mesh forming the Zhengzhou stent could be the claimed
self-adaptive zone. See Final Act. 4. Appellant argues sufficiently that this
interpretation is unavailing for the same reasons as the Examiner's first
interpretation-viz., the wall of the Zhengzhou stent extends continuously
from end-to-end, and is therefore not divided. See App. Br. 12. Moreover,
the Examiner's finding that a plurality of mesh openings satisfies the recited
self-adaptive zone disregards the claim requirement that the zone be "a
single opening" (emphasis added).
Finally, we do not find the Examiner's suggestion that the height of
the Zhengzhou stent could be measured "in the direction parallel to 'b/c'"
(Final Act. 4) to be convincing. It is well settled that the United States
Patent and Trademark Office (USPTO) is obligated to give claim terms their
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Application 13/123,440
broadest reasonable interpretation, taking into account any enlightenment by
way of definitions found in the specification. In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Pursuant to that
standard, the claim language should be read in light of the specification, as it
would be interpreted by one of ordinary skill in the art. In re Suitco Surface,
Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim
terms their ordinary and customary meaning. See In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ("The ordinary and customary
meaning 'is the meaning that the term would have to a person of ordinary
skill in the art in question."' (citing Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en bane))). The Specification consistently uses
"height" to refer to the distance measurement along the longitudinal axis of
the stent. See, for example, Spec. i-fi-174, 81 (contrasting diameter and
height); Figs. 1, 2. Based on this description from the specification, the
broadest reasonable interpretation of the height orientation is collinear with
or parallel to the longitudinal axis (i.e., parallel to Zhengzhou dimensions
a/ d) of the stent. This interpretation is in keeping with both the ordinary
meaning of the term (we note that the shape of both Appellant's and
Zhengzhou's stents approximates a cylinder) and Appellant's use thereof in
the Specification.
Accordingly, for the foregoing reasons, we reverse the Examiner's
rejection of independent claim 1, as well as of claims 7, 8, 21, 58, and 59
depending therefrom, as being anticipated by Zhengzhou.
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The Obviousness Rejections
Claims 2-6, 9, 15-17, 35, and 37
With respect to the rejections under 35 U.S.C. § 103(a) of claims 2---6,
9, 15-17, 35, and 37, which directly or indirectly depend from claim 1, as
unpatentable over Zhengzhou in view of one or more of Alvarado, Selden,
Shadduck, and Yamauchi, the secondary references are not relied upon by
the Examiner in any manner that would remedy the deficiencies noted above
with respect to the rejection of independent claim 1. See Final Act. 4---6.
The rejection of these claims is therefore also reversed.
Claim 41
Regarding independent claim 41, the Examiner finds that Zhengzhou
discloses the invention substantially as claimed, including "a diameter of
about 20 mm and height of about 12mm," "but is silent as to the stent having
a folded shape at room temperature ... or all of the specific dimensions as
claimed." Final Act. 4--5. The Examiner "takes Official Notice that folding
of a stent is a well known technique of compressing a stent for introduction
into a body cavity." Id. at 5. The Examiner asserts that because "[i]t has
been held '[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation,"' it would have been obvious to a skilled artisan
to modify the stent of Zhengzhou to include ... a folded state
for ease of insertion, and the dimensions as claimed since ...
one of ordinary skill in the art would readily understand to
adjust dimensions of an implant to match the anatomical
dimensions of different ocular cavities.
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Id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)) (second bracket set
in original). The Examiner also indicates that "Shadduck is cited for
evidentiary support of folding a stent for implantation in the eye." Id. (citing
Shadduck, Figs. 9a, 9b; i-f 41 ). The Examiner further asserts that "absent a
clear definition of the term 'about' ... 'about' could be reasonably
interpreted to include +/-10%." Id. at 2. Finally, the Examiner contends that
"the height could be determined by the diameter of the eye into which the
device is implanted[,] ... [so] one of ordinary skill in the art would readily
appreciate optimization of 'a height', as claimed." Ans. 9.
Appellant argues that
[ n Jo where does Zhengzhou disclose a stent having a self-
adaptive zone3 wherein the annular shape has a narrower region
with the diameter of about 20 mm and a wider region with the
diameter of about 22 mm, and a height of about 5 mm.
App. Br. 16.
We are not persuaded by Appellant's arguments. Appellant attempts
to rebut the Examiner's prima facie case of obviousness by arguing that
Zhengzhou fails to set forth the specific dimensions recited in claim 41.
App. Br. 15-17. The Examiner's rejection, however, proposes to modify the
Zhengzhou stent to have such dimensions. Appellant fails to address the
actual rejection set forth by the Examiner.
Additionally, an improvement in the art is obvious if "it is likely the
product not of innovation but of ordinary skill and common sense." KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402---03 (2007). Appellant has not
shown sufficiently that optimizing the stent dimensions to fit the patient's
3 We note that claim 41 does not require a "self-adaptive zone."
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eye would have been outside the skill of the ordinary artisan or that the
claimed diameters and height are critical or result in the stent exhibiting
unexpected or superior properties over the improvement that would have
been expected due to routine optimization. See In re Boesch, 617 F.2d 272,
276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F .2d at 456.
For the foregoing reasons, we sustain the rejection of claim 41.
DECISION
The Examiner's decision to reject claims 1, 7, 8, 21, 58, and 59 under
35 U.S.C. § 102(b) is reversed.
The Examiner's decision to reject claims 2-6, 9, 15-17, 35, and 37
under 35 U.S.C. § 103(a) is reversed.
The Examiner's decision to reject claim 41under35 U.S.C. § 103(a)
is affirmed.
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).
AFFIRMED-IN-PART
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