Ex Parte Lorenzo

Patent Trial and Appeal Board

Sep 18, 2017

13436638 (P.T.A.B. Sep. 18, 2017)

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.
13/436,638 03/30/2012 Juan A. Lorenzo MIC5057USNP 7803
27777 7590 09/20/2017
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
DANG, PHONG SON H
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
j nju spatent @ coru s .j nj. com
lhowd@its.jnj.com
pair_jnj @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN A. LORENZO
Appeal 2016-004955
Application 13/43 6,63 s1
Technology Center 3700
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
RYAN H. FLAX, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a therapeutic actuator for securing a therapeutic element. The Examiner
rejects the claims as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is DePuy Synthes
Products, Inc. Br. 1.
Appeal 2016-004955
Application 13/436,638
STATEMENT OF THE CASE
Claims 1, 3—6, and 8—15 are pending an on appeal,2 and can be found
in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the
claims on appeal, and reads as follows (emphasis added):
Claim 1. A therapeutic actuator for securing a therapeutic
element having a compressed configuration to a heating and
delivery system, comprising:
a bead on a distal end of the therapeutic element; and
a coupling union including a polymeric element and an
anchor configured to secure said bead to the heating and
delivery system to retain the therapeutic element in the
compressed configuration, said polymeric element including an
aggregate portion, a filament portion connected to said
aggregate portion, said aggregate portion being disposed within
an internal lumen defined by the therapeutic element, said
anchor being disposed outside the aggregate portion of the
polymeric element and fixedly attached to the aggregate portion
of the polymeric element between an outer surface of the
aggregate portion and an inner surface of the therapeutic
element.
Claims App’x3
Appellant requests review of the Examiner’s rejection of claims 1, 3—
6, and 8—15 as unpatentable under 35 U.S.C. 102(b) over Teoh.4 Br. 3.
Anticipation by Teoh
The issue is: Does the preponderance of the evidence of record
support the Examiner’s finding that Teoh anticipates?
2 Claims 2, 7, and 16—22 are canceled. Br. 2.
3 Claims Appendix as set out in the response to a notice of non-compliant
appeal brief filed on Aug. 19, 2015.
4 Teoh et al., US 2010/0160944 Al, June 24, 2010 (“Teoh”).
2
Appeal 2016-004955
Application 13/436,638
Findings of Fact
FF1. Figure 2 of Teoh is reproduced below:
FIG. 2 is a partial cross-section view depicting an exemplary vaso-
occlusive device . Teoh 118.
FIG. 2 shows another exemplary assembly in which the
meltable polymeric structure 20 that is attached to the
implantable device 10 at the proximal end of the coil.
The polymeric structure 20 forms a loop that extends
from the proximal end of the implantable device 10 and
loops around a heater wire loop 60. Also shown are
delivery coil 50 and pusher wires 40. Also shown in
FIG. 2 is a stretch-resistant member 45 extending through
the lumen of the implantable device 10 and is attached to
both the meltable polymer structure 20 and the distal end
of the implantable device 20 to provide stretch-resistant
function upon detachment from the delivery device.
Teoh 144.
FF2. Teoh shows:
The meltable polymeric structure 20 may be secured
directly at or near the proximal end of the implantable
device 10. Alternatively, as shown in FIG. 2, the
meltable polymeric structure may be integral to a
structure that extends into the lumen of the device and/or
3
Appeal 2016-004955
Application 13/436,638
attached to a structure that extends into the implantable
device.
Teoh 145.
Principle of Law
“A patent is anticipated ‘if a single prior art reference discloses each
and every limitation of the claimed invention.’” In re Rambus, Inc. 753 F.3d
1253, 1256 (Fed. Cir. 2014) (citations omitted).
Analysis
Appellant contends that “[t]he heater wire loop 60 of Teoh and the
loop formed by the polymeric structure 20 simply loop through each other,
and the heater wire loop 60 is not disposed outside or fixedly attached to an
aggregate portion of the polymeric structure 20 between an outer surface of
the aggregate portion and an inner surface of the therapeutic element.” Br.
4.
We find that the Appellant has the better position. The Examiner
identifies a U-shaped structure in Teoh as meeting the claimed anchor
limitation. The Examiner’s annotated version of Teoh’s Figure 2, is shown
below:
4
Appeal 2016-004955
Application 13/436,638
Final Act. 6; see Ans. 3. We recognize that figures are routinely relied upon
for relative information regarding the placement of components. See, e.g. In
re Skvorecz, 580 F.3d 1262, 1270 (Fed. Cir. 2009). Teoh explains that the
“meltable polymeric structure 20 may be secured directly at or near the
proximal end of the implantable device 10.” FF2. We agree with the
Examiner, that this meltable polymeric structure extends into the lumen of
the implantable device. See FF1 & FF2. Specifically, Teoh teaches that the
polymeric structure is “attached to a structure that extends into the
implantable device.” FF2 (emphasis added). The question is, does the
structure of Teoh that extends into the implantable device (see FF2) meet the
limitation of an anchor “between an outer surface of the aggregate portion
and an inner surface of the therapeutic element” as claimed?
Teoh does not describe how the connection between the polymeric
material and the structure that extends into the implantable device is made,
but suggests that one way to make this connection is to integrally form the
structure. See FF2. The other option is to attach the polymeric structure to
the structure that “extends into the implantable device.” FF2.
5
Appeal 2016-004955
Application 13/436,638
The Examiner identifies the U-shaped structure of Teoh as the anchor.
The Examiner’s position is “that the surfaces between the coils that touch
each other are interpreted to be the inner surface of the therapeutic element
since they are relatively inside to the outer surface.” Ans. 2—3. We find the
Examiner’s interpretation is not sufficiently supported by the record. First,
the surface identified by the Examiner could just as well be considered to be
an outside surface based on the interpretation proffered by the Examiner.
Second, Teoh specifically states that the polymeric material is “attached to a
structure that extends into the implantable device.” FF2 (emphasis added).
Something that extends into the device as clearly recited in Teoh cannot at
the same time be configured in such a way as to be “between an outer
surface of the aggregate portion and an inner surface of the therapeutic
element’ as required by the claims.
On the record before us, we are constrained to reverse5 the
Examiner’s decision rejecting all claims as anticipated by Teoh under 35
U.S.C. § 102(b).
SUMMARY
We reverse the rejection of claims 1, 3—6 and 8—15 are unpatentable
under 35 U.S.C. 102(b) by Teoh.
REVERSED
5 We note that the issue of whether the recited therapeutic device of Teoh
would render the claims obvious in view of Teoh alone or in combination
with other references is not before us on this appeal.
6