Ex Parte KHAIRKHAHAN et al

Patent Trial and Appeal Board

Dec 27, 2018

13773235 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/773,235 02/21/2013 Alexander KHAIRKHAHAN
30452 7590 12/27/2018
EDWARDS LIFESCIENCES CORPORATION
LEGAL DEPARTMENT
ONE EDWARDS WAY
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
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.
THVMC-9220US02 1257
EXAMINER
BUI, VYQ
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/27/2018 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
Ex parte ALEXANDER KHAIRKHAHAN,
SERJAN D. NIKOLIC, and HUGH R. SHARKEY
Appeal2018-003535
Application 13/773 ,23 5
Technology Center 3700
Before JEREMY M. PLENZLER, RICHARD H. MARSCHALL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-8, 10-14, and 16-182 under
35 U.S.C. § 102(b) as anticipated by Vijay, 3 or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Vijay. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the Applicant, Edwards Lifesciences Corp. The Appeal Brief
identifies CardioKinetix, Inc. as the real party in interest. Appeal Br. 2.
2 Claim 9 was withdrawn and claim 15 was cancelled. Appeal Br. 9 (Claims
App.); Final Act. 2.
3 U.S. Patent No. 7,320,665 B2, issued January 22, 2008 ("Vijay").
Appeal2018-003535
Application 13/773,235
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to the treatment of heart disease,
particularly congestive heart failure, and more specifically, to devices,
systems and methods for partitioning a patient's heart chamber." Spec. ,r 4.
Claim 1 is the only independent claim and is reproduced below.
1. A device for partitioning a ventricle of a patient's heart into a
productive portion and a non-productive portion, the device
compnsmg:
a membrane and a membrane support frame, the membrane
and the membrane support frame sized to span the
patient's ventricle, wherein the membrane and the
membrane support frame are configured to have a
collapsed configuration and an expanded configuration,
wherein the membrane and membrane support frame are
concave to form a trumpet-shaped surface in the
expanded configuration;
at least one securing element on a peripheral portion of the
membrane or membrane support frame configured to
secure the membrane to a wall of the ventricle; and
a container secured to the device and positioned between the
membrane support frame and the non-productive portion
of the subject's ventricle when the device is deployed in
the subject's ventricle.
Appeal Br. 8 (Claims App.).
ANALYSIS
The Examiner found that Vijay discloses "a membrane and a
membrane support frame, the membrane and the membrane support frame
sized to span the patient's ventricle." Final Act. 2; Appeal Br. 8 (Claims
App.). The Examiner relied on Vijay's balloon wall chamber 520 as the
claimed "membrane," and a structure extending from Vij ay' s valve 514 as
the claimed "membrane support member." Final Act. 2. The Examiner
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Application 13/773,235
provided an annotated version of Vijay's Figure 20, which is reproduced
below.
Valve/ Central
hub514
A stem/ a foot
extending from
2na side of
central hub 514
Securing elements
Final Act. 3. The Examiner's annotated version of Figure 20 points to
"[ m ]embrane support frame extending from pt side of central hub 514." Id.
The annotated figure also points to "A stem/ a foot extending from 2nd side
of central hub 514" as distinct from the membrane support frame. Id. The
Examiner found that structure extending from Vij ay' s valve 514 at least
partially supports "Vijay's membrane 520," and therefore satisfies the
"membrane support frame" limitation. Ans. 5. The Examiner emphasized
that the claim 1 "does not require the membrane support frame to be in
contact with the membrane." Id. (emphasis omitted). As to the requirement
to "span the patient's ventricle," the Examiner found that claim 1 "does not
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Application 13/773,235
require the membrane support frame alone to span the patient's ventricle."
Id. at 6. The Examiner found that the combination of membrane 520 and the
structure extending from valve 514, taken together, span the patient's
ventricle. Id.
Appellant argues that the "only structure that provides any support to
the balloon wall 520 of Vijay's device is the central perforate stem 406," and
the Examiner does not rely on that structure for the member support frame,
and instead relies on some undefined structure allegedly extending from
valve 514. Appeal Br. 5. Whatever that structure may be, according to
Appellant, it "does not support the balloon wall 520." Id. Appellant also
argues that this structure fails to "span the patient's ventricle" as required by
claim 1. Id.
We agree with Appellant that the Examiner's finding that Vijay
discloses a "membrane support frame sized to span the patient's ventricle"
lacks adequate support. The Examiner's finding does not rely on any
structure related to the member support frame that, standing alone, span's
the patient's ventricle. See Final Act. 3; Ans. 6. Instead, the finding is
premised entirely on a construction of "the membrane and the membrane
support frame sized to span the patient's ventricle" that merely requires the
combination of the membrane and membrane support frame to span the
ventricle. See Ans. 6. We disagree with such a construction. First, the
language of the claim, read most naturally, requires both the membrane
"and" the member support frame, i.e., both considered separately, to span
the ventricle, not a combination of the two structures. Appeal Br. 8 (Claims
App 'x. ). The specification discloses a support frame that spans the
ventricle. See Spec., Figs. 22A, 22B, 25A. The specification does not
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Application 13/773,235
appear to disclose an embodiment where the membrane support frame alone
does not span the patient's ventricle, and the Examiner does not point to any
portion of the specification in support of the construction. See Ans. 6. The
"broadest reasonable construction" must be the "broadest reasonable
construction consistent with the specification." In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added). We
do not view the Examiner's construction as consistent with the specification,
which consistently discloses a membrane and membrane support that each,
standing alone, span the ventricle.
With that construction in mind, we conclude that the Examiner's
finding that Vijay discloses the claimed "membrane support frame" lacks
adequate support. The Examiner does not purport to find Vijay's alleged
membrane support frame standing alone spans the patient's ventricle, and
our own review of Vijay does not find support for such a finding because the
alleged support frame extending from valve 14, 4 does not extend toward the
ventricle walls at all, much less "span" the ventricle. See Vijay, Fig. 20;
Final Act. 3. Based on the foregoing, we do not sustain the rejection of
claim 1, or any of the claims that depend from claim 1.
4 Although we need not reach the issue to conclude that we cannot sustain
the rejection, it is not apparent that the Examiner points to any structure
other than Vijay's valve 14 as the claimed membrane support frame. Final
Act. 3. The Examiner relies on valve 14 for a distinct claim limitation and
also as the hub, and therefore the same structure would not appear to
disclose the additional, separately claimed "membrane support frame"
structure. See Appeal Br. 9 (Claims App.) (claim 9 requiring a "valve");
Final Act. 3 ("central hub 514"); Ans. 5 ( referring to unidentified "portion
extending proximally from valve 514/hub 514"). Moreover, once implanted,
the structure does not appear to support the membrane, either through direct
contact or otherwise.
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DECISION
We reverse the decision of the Examiner to reject claims 1-8, 10-14,
and 16-18.
REVERSED
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