Ex Parte Marsella et al

Patent Trial and Appeal Board

Mar 27, 2013

11230147 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/230,147 09/19/2005 Andrew Marsella 10124/03201 3035
30636 7590 03/27/2013
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
HENDERSON, RYAN N
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
03/27/2013 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 ANDREW MARSELLA, AIDAN PETRIE, TODD SLOAN,
JON T. McINTYRE, DAVID ROBSON, JOSEPH M. GORDON,
JEFF P. CHEEK, and JOHN F. HOWARD
__________

Appeal 2011-008886
Application 11/230,147
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 9, 14, 16, 17, 19, 28, 29, 31, and 32. We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-008886
Application 11/230,147

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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A device for accessing a hollow organ, comprising:
an elongated body sized for insertion into a hollow organ via a body
passage having a diameter smaller than that of the hollow organ, the
elongated body including a working channel extending therethrough from a
proximal opening to a distal opening which, when the elongated body is in
an operative position, opens into the hollow organ; and
a seal mounted around a portion of the elongated body positioned so
that, when the elongated body is in the operative position, the seal resides
within the body passage, the seal expanding from an insertion configuration
to a sealing configuration to seal the body passage and including an
expanding weave portion adapted to interlock with tissues of the body
passage.

The following grounds of rejection are before us for review:
I. Claims 1, 9, 14, 17, 19, 28, 31, and 32 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Hibler1 and Julius2 (Ans. 3). As Appellants only separately
address independent claims 1 and 19, the dependent claims stand
or fall with the independent claim on which they depend. 37
C.F.R. § 41.37(c)(1)(vii).
II. Claims 16 and 29 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Hibler and Julius as
further combined with Zadno-Azizi3 (Ans. 7).

1 Hibler, US 2004/0122463 A1, issued Jun. 24, 2004.
2 Julius, US 4,071,955, issued Feb. 07, 1978.
3 Zadno-Azizi, US 2002/0065507 A1, May 30, 2002.
Appeal 2011-008886
Application 11/230,147

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We affirm.

ANALYSIS
The Examiner rejects claims 1 and 19 over the combination of Hibler
and Julius (Ans. 3-5). As we agree with the Examiner’s finding and
conclusions, we adopt them as our own.
As to claim 1, Appellants argue that Hibler “does not show or suggest
expandable members that interlock with tissues of the body passage” (App.
Br. 6). Appellants further argue that Julius does not cure that deficiency (id.
at 7).
Appellants argue further that Julius does not teach or suggest
mechanical interlocking between the tissue and the woven material, and that
such interlocking would do nothing for the device of Julius (id.).
Specifically, according to Appellants, the woven material adds to the bulk of
the sponge to facilitate the separation of soft tissues in the oral cavity (id.).
We do not find Appellants’ arguments to be convincing. As taught by
the Specification, “the foam element … is formed of an expanding weave of
material adding a mechanically interlocking function to the material, as the
tissue of the cervix … works its way into the interstices of the weave” (Spec.
5, ¶13). Thus, as taught by the Specification, it is the weave of the material
that allows the expandable member to interlock with the tissues of the body
passage.
Julius teaches a highly absorbent sponge, wherein the sponge
comprises a sponge-like material, such as cellulose, and at least a layer of a
lint free woven or non-woven fabric (Julius, col. 1, ll. 52-55). The fabric-
Appeal 2011-008886
Application 11/230,147

4
like materials 2 and 6 may be a woven material such as cotton gauze (id. at
col. 3, ll. 19-21). Thus, in view of the teachings of the Specification that it is
the expanding weave of material that allows for the mechanical interlocking,
the expanding weave of the cotton gauze would serve the same function.
We thus agree with the Examiner that the combination of Hibler and Julius
renders claim 1 obvious.
As to claim 19, Appellants reiterate the arguments made with respect
to claim 1 (App. Br. 9). Those arguments are not found to be convincing for
the reasons set forth above.
Claims 9, 14, 17, 28, 31, and 32 fall with claims 1 and 19.
As to the rejection of claims 16 and 29 over the combination of Hibler
and Julius as further combined with Zadno-Azizi, Appellants argue that
Zadno-Azizi does not remedy the deficiencies of the combination of Hibler
and Julius (id. at 10). Those arguments are not found to be convincing for
the reasons set forth above for the reasons set forth above with respect to
claim 1.

Appeal 2011-008886
Application 11/230,147

5

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

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