Ex Parte LORENZO et al

Patent Trial and Appeal Board

Sep 18, 2018

13793474 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/793,474 03/11/2013
27777 7590 09/20/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
JUAN A. LORENZO
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.
CRD54l2USCIP1 9399
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@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 AND HUSSEIN GIRNARY1
Appeal2017-005846
Application 13/793 ,4 7 4
Technology Center 3700
Before ULRIKE W. JENKS, JOHN G. NEW, and JOHN E. SCHNEIDER,
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 marker for locating an intravascular device. Examiner rejects the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appeal Brief ("Br.") names the DePuy Synthes Products LLC, which
is an affiliate of Johnson & Johnson Corporation, the assignee of record, as
the real party in interest. Br. 1.
Appeal2017-005846
Application 13/793,474
STATEMENT OF THE CASE
Claims 1-9 and 11-13 are 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:
1. A marker to assist locating a device within vasculature of
a patient, comprising:
an elongated body formed of a biocompatible radiopaque
material that enhances locating the marker when using at least
one imaging technique, the body having a first end, a second end,
an inner surface, an outer surface, and at least two opposing
edges extending between the first and second ends and
establishing a boundary between the inner surface and the outer
surface;
the inner surface of the body defining a passageway
extending between the first and second ends;
in a first condition, the body defining a gap between the at
least two opposing edges, the gap enabling unobstructed
communication of the passageway with the outer surface of the
body;and
in a second condition, the gap being obstructed to
substantially prevent communication of the passageway with the
outer surface of the body.
Br. 8 (Claims Appendix)( emphasis added).
Examiner rejects the claims as follows:
I. Claims 1-8 and 12 under 35 U.S.C. § I02(b) as being
anticipated by Case3 or in the alternative under 35 U.S.C.
§ I03(a) as unpatentable over Case.
II. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over Case in
view of Bavaro. 4
2 Claims 10 and 14--22 have been withdrawn. Br. 2.
3 Case et al., US 2004/0167619 Al, published Aug. 26, 2004 ("Case").
4 Bavaro et al., US 2005/0064224 Al, published Mar. 24, 2005 ("Bavaro").
2
Appeal2017-005846
Application 13/793,474
III. Claims 11 and 13 under 35 U.S.C. § I03(a) as unpatentable
over Case in view of Yang. 5
I. Anticipation and/or Obviousness over Case
The issue is: Does the preponderance of evidence of record support
Examiner's finding that Case discloses a marker that has the shape of a tube
(cannula) with a slit along its length?
Findings of Fact
FF 1. Case teaches an intraluminal prosthesis that includes one or more
imageable elements such as radiopaque markers. Case ,r,r 1, 5.
Figure 9 of Case, reproduced below, shows a perspective view of an
intraluminal prosthesis support structure:
Figure 9 shows a vasculature support structure "comprising a number
of components that are interconnected by a series of cannula[] 51, 52,
5 Yang et al., US 2004/0254637 Al, published Dec. 16, 2004 ("Yang").
3
Appeal2017-005846
Application 13/793,474
53, 54, 55, 56, 62, 63." Id. ,r 44. FPL The radiopaque "elements are
aligned with a structural feature of the prosthesis, such as the valve
orifice, so that the clinician can ascertain the position of the prosthesis
under radiographic imaging." Id. ,r 8.
FF2. Case teaches that the "radiopaque markers are attached to a strut of
the framework at strategic locations, such as for permitting
identification of the valve orifice." Id. ,r 7. Case teaches that the
radiopaque material can be secured by "wrapping radiopaque metal
wire around the struts; attaching and/or crimping radiopaque metal
cannulae over the struts." Id. ( emphasis added).
Principle of Law
[T]he examiner bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the record,
by a preponderance of evidence with due consideration to
persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
Appellants contend that Case does not anticipate because the
reference does not disclose "that the cannulated markers have a slit/opening
extending along their longitudinal length." Br. 5. A cannula is a tube. Id. at
6 ( citing Merriam-Webster definition). "A tube does not, by definition, have
a slit/ opening extending along their longitudinal length." Id.
4
Appeal2017-005846
Application 13/793,474
With respect to the anticipation rejection based on Case, we find that
Appellants have the better position. Case teaches the application of
radiopaque elements to a vascular prosthesis (see FFl and FF2, see Ans. 4--
5), including for example by taking "radiopaque wire [] or thread (i.e., gold,
platinum, titanium, etc.) that is wrapped around the struts [] to form a
radiopaque member." Case ,r 43. Case also teaches "attaching and/or
crimping radiopaque metal cannula[] over the struts." FF2. We find that
Case is silent with respect to the process of attaching the cannula to the strut
of the prosthesis.
As Appellants point out, one way to attach a cannula, a tube, to a strut
would be to slide the tube over the strut and then crimp the tube in place in
order to ensure that it does not move along the strut and maintain the
position. See Br. 5. Although Case teaches the application of radiopaque
elements to a vascular prosthesis, Case does not disclose taking a sheet of
radiopaque material and wrapping that sheet around one of the struts of the
prosthesis in order to attach the radiopaque marker.
To anticipate a reference must expressly or inherently disclose "within
the four comers of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
Cir. 2008). Because Case is missing the structural element of having "at
least two opposing edges extending between the first and second ends and
establishing a boundary between the inner surface and the outer surface" we
agree with Appellants that Case does not anticipate claim 1.
We also are not persuaded by Examiner's position that Case's
teaching of attaching a cannula to a strut by crimping necessarily means that
5
Appeal2017-005846
Application 13/793,474
the cannula has a slit. See Final Act. 2 ("[T]he recitation of the cannulae
being crimped over the struts indicates that there is a slit or opening through
the tubular structure and the ends are brought together around the strut for
attachment"); see Ans. 10. As discussed above, Appellants describe an
alternative way of attaching a cannula, i.e. a tube, to a strut specifically by
sliding the tube over the strut and then crimping it into position. See Br. 5.
Anticipation by inherency requires that any material missing from the prior
art must necessarily be present and would be recognized as such by
POSITA. In re Robertson, 169 F.3d 743 (Fed. Cir. 1999). Because Case
does not disclose how the cannulae are attached to the struts we agree with
Appellants that the references are not anticipatory.
With respect to the obviousness rejection over Case, Appellants
contend that the Examiner does not provide a motivation "from any prior art
to modify Case" in the manner suggested. Br. 5. "While Case may be
capable of using a tubular device with a gap, and while a person of ordinary
skill in the art may be capable of making such a modification, this alone is
not sufficient to establish that such a modification would have been
obvious." Id. at 6. Therefore, Examiner has failed to establish a prima facie
case of obviousness.
We are not persuaded by Appellants' contentions. Examiner
acknowledges that
there is no explicit teaching of a slit/opening in Case ... , an
implication of its presence is believed to be there (inherently).
As the Examiner [previously] noted . . . , the recitation of the
cannulae being crimped over the struts ( as an alternative to
sliding over struts) indicates the presence of a slit/ opening
6
Appeal2017-005846
Application 13/793,474
through the tubular structure and the ends are brought together
around the strut for attachment.
Ans. 9--10.
"If the claim extends to what is obvious, it is invalid under§ 103."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability. Id. at 417. It is proper to "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418, see also id. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
Here, Examiner acknowledges that Case does not disclose a teaching
of how a cannula is attached to the strut but provides a reasonable
explanation of how one of ordinary skill in the art might attached a cannula
to a strut. See Ans. 11. "[T]he presence of the opening/slit would 'allow
attachment of the cannulated marker to the wire stent, in order to enable
attachment of the marker to the wire after stent formation and allow precise
marker placement."' Ans. 11. Case teaches taking radiopaque wire or
thread and wrapping it around the struts in order to form a radiopaque
member. Case ,r 43. In other words, a flat metal strip could similarly be
bent or wrapped around a strut to arrive at a structure that represents a
cannula having a slit along the length. Here, the Examiner has reasonably
identified an alternate method, as opposed to the method suggested by
Appellants, that one of ordinary skill having ordinary creativity could attach
a cannula to a strut. See Ans. 11.
We conclude that the evidence of record supports Examiner's
conclusion that the teachings of Case render obvious the limitations of
7
Appeal2017-005846
Application 13/793,474
claim 1. Appellants have not provided sufficient rebuttal evidence or
evidence of secondary considerations that outweighs the evidence
supporting Examiner's conclusion of obviousness. Claims 2-8 and 12 were
not separately argued and fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(vi).
II. Obviousness over Case and Bavaro
The Examiner has rejected claim 9 as obvious based on Case and
Bavaro. Ans. 7. Appellants' only argument with respect to this rejection is
that Bavaro "fails to teach or suggest the deficiencies noted in Case." Br. 7.
This argument is not persuasive because, as discussed above, we conclude
that Case would have made obvious the marker of claim 1. Accordingly, we
affirm the rejection of claim 9 for the reasons given by the Examiner.
III. Obviousness over Case and Yang
The Examiner has rejected claims 11 and 13 as obvious based on Case
and Yang. Ans. 8. Appellants' only argument with respect to this rejection
is that Yang "fails to teach or suggest the deficiencies noted in Case." Br. 7.
This argument is not persuasive because, as discussed above, we conclude
that Case would have made obvious the marker of claim 1. Accordingly, we
affirm the rejection of claims 11 and 13 for the reasons given by the
Examiner.
8
Appeal2017-005846
Application 13/793,474
SUMMARY
We reverse the anticipation rejection of claims 1-8 and 12 by Case.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) over
Case. Claims 2-8 and 12 were not separately argued and fall with claim 1.
We affirm the rejection of claim 9 under 35 U.S.C. § 103(a) over Case
and Bavaro.
We affirm the rejection of claims 11 and 13 under 35 U.S.C. § 103(a)
over Case and Yang.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9