Ex Parte Jahns et al

Board of Patent Appeals and Interferences

Jul 19, 2012

11604932 (B.P.A.I. Jul. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SCOTT E. JAHNS, JAMES R. KEOGH, PAUL A. PIGNATO,
CHRISTOPHER P. OLIG, KAREN P. MONTPETIT,
CYNTHIA T. CLAGUE, RAYMOND W. USHER,
PHILIP J. HAARSTAD, and
GARY W. GUENST
__________

Appeal 2011-004154
Application 11/604,932
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a seal for
an opening in a blood vessel. The Examiner has rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Appeal 2011-004154
Application 11/604,932

2
STATEMENT OF THE CASE
The Specification discloses “devices that are capable of creating and
sealing incisions in cardiac blood vessels in order to facilitate a medical
procedure, such as an anastomosis, on a stopped or beating heart” (Spec. 1).
Claims 31-33, 35, and 37-46 are on appeal. Claims 31 and 38 are
representative and read as follows:
31. A seal for temporarily sealing an opening in a blood vessel
comprising:
a seal member having an inflatable chamber with a proximal portion
and a distal portion, the seal member having a collapsed configuration and
an inflated configuration wherein the distal portion of the seal member in the
inflated configuration is configured to extend into and include a continuous
surface across the opening of the blood vessel;
a shaft coupled to the seal member, the shaft having a shaft inner
lumen fluidly connected to the inflatable chamber at the proximal portion for
adding or removing fluid from the inflatable chamber;
wherein the seal member comprises one or more ribs wherein at least
one rib comprises a rib inner lumen fluidly connected to the shaft inner
lumen.

38. A seal for temporarily sealing an opening in a blood vessel
comprising:
a plurality of seal members coupled to a delivery shaft having an axis,
wherein the seal members are configurable into a delivery configuration for
passage through the opening in the blood vessel and a sealing configuration
for sealing the opening in the blood vessel such that the plurality of the seal
members are disposed in an interior of the blood vessel, wherein each of the
plurality of the seal members covers a portion of the opening and are radially
disposed from each other about the axis of the delivery shaft in the sealing
configuration, and
a hinge for moving the seal members relative to the shaft.

Appeal 2011-004154
Application 11/604,932

3
The claims stand rejected as follows:
• Claims 31, 33, 35 and 37 under 35 U.S.C. §103(a) in view of
Rutner;1
• Claims 32 under 35 U.S.C. §103(a) in view of Rutner and Bander;2
• Claims 38 and 40-46 under 35 U.S.C. § 102(a) in view of Golden;3
and
• Claims 39 under 35 U.S.C. §103(a) in view of Golden and Borst.4
I.
The Examiner has rejected claims 31, 33, 35 and 37 as obvious in
view of Rutner, and has rejected claim 32 as obvious in view of Rutner and
Bander. The same issue is dispositive for both of these rejections.
The Examiner finds that Rutner “discloses a seal member (22) having
an inflatable chamber … having a collapsed configuration (Figure 1) and an
inflated configuration (… Figure 3)” (Answer 4), and that the “distal portion
of the seal chamber in the inflated chamber is capable of extending into a
vessel and providing a continuous surface across the opening of a blood
vessel” (id. at 4-5). The Examiner finds that Rutner “discloses a shaft (11)
coupled to the seal member (22)” (id. at 5).
Appellants contend that Rutner does not teach or makes obvious a seal
member “configured to extend into and include a continuous surface across
the opening of the blood vessel,” as required by claim 31 (Appeal Br. 7).

1 Rutner et al., US 6,254,570 B1, July 3, 2001.
2 Bander, US 6,299,598 B1, Oct. 9, 2001.
3 Golden et al., Patent Application Publication US 2004/0102797 A1, May
27, 2004 (filed Nov. 18, 2003).
4 Borst et al., US 6,395,015 B1, May 28, 2002.
App
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04154
/604,932
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Appeal 2011-004154
Application 11/604,932

5
Figure 3 shows a “longitudinally sectioned view of the distal portion of
elongated tubular member 11 of drainage catheter 10” (id. at col. 4, ll. 59-
61).
Rutner discloses that “first and second retention balloons 20 and 22
are shown in an expanded state and attached to the outer surface of
elongated tubular member 11 just proximal side drainage port 15” (id. at col.
4, ll. 61-66). We agree with Appellants that the balloon retention members
of Rutner do not provide “a continuous surface across the opening of the
blood vessel” because the surface of the balloons is interrupted by the
tubular member that protrudes from them. We also agree with Appellants
that the Examiner has not adequately explained why of one of skill in the art
would look to a drainage catheter, or would modify a drainage catheter, to
arrive a device that is capable of sealing a blood vessel. Even if the device is
used on its side, as suggested by the Examiner, the Examiner has not
adequately explained how the balloons of Rutner are sized or otherwise
configured to extend into the opening of a blood vessel. Thus, we reverse
the obviousness rejection of independent claim 31 and dependent claims 33,
35 and 37.
With respect to the rejection of claim 32, the Examiner relies on
Rutner as discussed above, and relies on Bander only to supply dependent
claim limitations (Answer 5). Thus, we also reverse this rejection.
II.
The Examiner has rejected claims 38 and 40-46 as anticipated by
Golden. The Examiner has also rejected claim 39 as obvious in view of
Golden and Borst. The same issue is dispositive for both of these rejections.
Appeal 2011-004154
Application 11/604,932

6
The Examiner finds that Golden “discloses a plurality of seal
members (702) coupled to a delivery shaft (727) that have a delivery
configuration (Figure 16a) and a sealing configuration (Figure 16b)”
(Answer 4). The Examiner find that the “joint between shaft (727) and the
seal members (702) is flexible and the seal members move relative to this
joint, reading on the definition of a hinge” (id.), because the “Merriam-
Webster dictionary defines a hinge as: ‘a jointed or flexible device on which
a door, lid, or other swinging part turns’” (id.).5 The Examiner finds that the
Specification “does not provide any further description that distinguishes
over this definition” (id.).
Appellants contend that “the examples in Figures 16a and 16b …
make clear that there is no hinge between the seal members 702 and the
delivery shaft 727 as required in claim 38” (Appeal Br. 11) and that “there is
no teaching in the Golden Publication that a hinge is included between the
seal members 702 and the delivery shaft 727” (id.).
The Examiner responds that the Specification does not “state that the
hinge is a separate device … [and] Figure 20, element 870 does not show a
separate hinge … [or] anything besides a bend where the seal members
move relative to the shaft” (Answer 8).
We agree with Appellants that the Examiner has not adequately
shown that Golden discloses a seal that comprises “a hinge for moving …
seal members relative to the shaft.” Golden discloses an “apparatus … for
performing an anastomosis” (Golden 1, ¶ 0002) that comprises, among other

5 The Examiner cites “http://www.merriam-webster.com/dictionary/hinge”
as the source of the above definition (Answer 4).
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04154
/604,932
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lden’s dev
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at 3, ¶ 005
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.
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2) turn in
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d “an occ
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. at 2, ¶ 00

omosis de
bristles” (
tles radiall
the outer
that, “[a]
mory shap
pening of
or moving
the “joint
e seal me
hinge” (A
has not ad
ween the s
form an
ber [that]
vessel
17).
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id. at 3,
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between
mbers
nswer 4).
equately
haft and

Appeal 2011-004154
Application 11/604,932

8
bristles (seal members). Golden discloses that the bristles are made of a
shape memory material that resumes its memory shape upon the removal of
restraint. Thus, Golden suggests that the bristles bend along the length of
the wire as they resume their memory shape, not that they bend because of a
flexible joint at the point where they join the shaft. Because the Examiner
has not shown that Golden discloses every limitation of claim 38, the
anticipation rejection of claim 38 and of dependent claims 40-46 is reversed.
With respect to the rejection of claim 39, the Examiner relies on
Golden as discussed above, and relies on Borst only to supply dependent
claim limitations (Answer 6). Thus, we also reverse this rejection.
SUMMARY
We reverse the rejection of claims 38 and 40-46 under 35 U.S.C.
§ 102(a). We also reverse the rejection of claims 31, 32, 33, 35, 37 and 39
under 35 U.S.C. §103(a).

REVERSED

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