Ex Parte Mirizzi

Patent Trial and Appeal Board

May 17, 2016

12642699 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/642,699 12/18/2009
77218 7590 05/19/2016
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
FIRST NAMED INVENTOR
Michael S. Mirizzi
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.
H-KN-01672 (1) 3051
EXAMINER
SIMPSON, SARAH A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/19/2016 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):
rs. docketingapv@medtronic.com
medtronic _apv _docketing@ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. MIRIZZI
Appeal2014-003931
Application 12/642,699
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael S. Mirizzi (Appellant) appeals under 35 U.S.C. § 134 from
the rejection of claims 1-32. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Claims 33--43 are withdrawn from consideration.
Appeal2014-003931
Application 12/642,699
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. Apparatus for advancing a vascular implant into a blood
vessel, the apparatus comprising:
a first elongate member, the first elongate member having
sufficient column strength to function as a pusher member;
a second elongate member, the second elongate member
being thinner than the first elongate member and extending to a
distal end located at a first point which is at or near a distal end
of the first elongate member;
the elongate members forming an implant retaining
portion while the distal end of the second elongate member is
located at the first point, the implant retaining portion located
proximal of the first point;
the implant retaining portion comprising a space located
between the elongate members and configured for receiving an
implant portion, with the first elongate member on one side of
the space and the second elongate member on another side;
wherein the implant retaining portion further comprises a
proximal side and a distal side which further circumscribe the
space, the proximal and distal sides being effective to prevent an
implant received in the retaining portion from moving out of
engagement with the retaining portion as the first elongate
member is moved distally and proximally;
wherein the implant retaining portion is removable by
withdrawing the second elongate member in a proximal direction
with respect to the first elongate member, thereby moving the
distal end of the second elongate member proximally beyond the
former location of the implant retaining portion.
Clifford
Prestezog
REFERENCES
US 2006/0224083 Al
US 2006/0229668 Al
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Oct. 5, 2006
Oct. 12, 2006
Appeal2014-003931
Application 12/642,699
REJECTIONS
I. Claims 1-12 and 16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Prestezog.
II. Claims 1, 15, 17-29, 31, and 32 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Clifford.
III. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Prestezog.
IV. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Clifford.
DISCUSSION
Rejection I
The Examiner finds that Prestezog discloses each and every limitation
of independent claim 1. Final Act 4---6. In particular, the Examiner finds
that Prestezog discloses "elongate members forming an implant retaining
portion while the distal end of the second elongate member is located at the
first point" and an "implant retaining portion further compris[ing] a
proximal side (proximal V shaped portion of fork shaped pusher head) and a
distal side (tips of pusher head 242) which further circumscribe the space."
Final Act. 4, 5.
Appellants argue that Prestezog fails to disclose a space circumscribed
by the proximal and distal sides of the implant retaining portion. See Appeal
Br. 4. Responding to this argument, the Examiner provides a marked-up
version of Prestezog's Figure 24 illustrating what the Examiner considers to
be the circumscribed space. See Ans. 3. Relying on this marked-up version
of Figure 24, the Examiner finds that Prestezog discloses "the space of [the]
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Application 12/642,699
implant retaining portion has proximal and distal sides and [that the space is]
bounded by four sides." Id.
The Examiner's finding is not supported by the marked-up version of
Figure 24, because as shown in this version of Figure 24, the area that the
Examiner considers to be the claimed space is not circumscribed by the first
and second elongate members in the region on the left side of the indicated
space.
For this reason, we do not sustain the Examiner's decision rejecting
independent claim 1, and claims 2-12, which depend therefrom, as
anticipated by Prestezog.
Rejection II
Appellants argue claims 1, 15, 17-29, 31, and 32 together. See
Appeal Br. 8-11. We select independent claim 1 as the illustrative claim,
and claims 15, 17-29, 31, and 32, stand or fall with claim 1.
The Examiner finds that Clifford discloses all of the limitations of
claim 1. Final Act. 7-8. In particular, the Examiner finds that Clifford
discloses an "implant retaining portion [that] is removable by withdrawing
the second elongate member in a proximal direction with respect to the first
elongate member, thereby moving the distal end of the elongate member
proximally beyond the former location of the implant retaining portion
([F]ig. 25)." Id. at 7.
Noting that Clifford is directed to "'[d]evices and methods for
collecting or cutting and collecting a specimen from a mass of tissue within
a patient,"' Appellants argue that Clifford is directed to an "entirely different
procedure from that of the apparatus recited in the claims of the present
application." Appeal Br. 8 (citing Clifford, Abst. ); see also Reply Br. 6. In
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Appeal2014-003931
Application 12/642,699
other words, Appellants argue that Clifford does not anticipate claim 1
because it is from an entirely different field of endeavor.
Whether a reference is analogous art, however, is irrelevant to
whether that reference anticipates claim 1. A reference may be from an
entirely different field of endeavor than that of the claimed invention or may
be directed to an entirely different problem from the one addressed by the
inventor, yet the reference will still anticipate if it explicitly or inherently
discloses each and every limitation recited in the claim. State Contracting &
Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057 (Fed. Cir.
2003). Thus, Appellants do not apprise us of error.
Appellants further argue that "[t]he specimen collection assembly
1710, which the Examiner asserts is 'an implant retaining portion' is not
disclosed as removable." Appeal Br. 10; see also Reply Br. 7-9. In support
of this contention, Appellants note that:
Id.
as is clearly shown in Figures 17-25, the specimen collection
assembly 1710 is configured to assume a variable expanded
configuration and a retracted configuration. Clifford at para.
[0092]. This is accomplished by sliding the specimen collection
assembly 1710 within a channel, which causes the specimen
collection assembly 1710 to expand and contract. See, e.g.,
Clifford at para. [0099]. In the one embodiment in which the
specimen collection assembly 1710 is moved along the device, a
slider 1722 maintains the configuration of specimen collection
assembly 1710. Clifford at para. [0103]. Therefore, even when
the specimen collection assembly 1710 is pulled along the
device, 30 it is never "removed."
Responding to this argument, the Examiner notes that "'removable'
does not require the implant retaining portion to be removed from any
[specific] portion of the device; it only requires that the second elongate
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Appeal2014-003931
Application 12/642,699
member be removable from the former location." Ans. 5. The Examiner
explains that:
Figure 21 of Clifford [shows] 'the former location'. The implant
retaining portion 1710 is then removable by withdrawing the
second elongate member 1724 (shown in Figure 25) in a
proximal direction with respect to the first elongate member
1716, thereby moving the distal end of the second elongate
member proximally beyond the former location (Figure 21) of
the implant retaining portion.
Id. The Examiner is correct. Claim 1 merely requires that the implant
retaining portion be removable from some undefined device or location by
"moving the distal end of the second elongate member proximally beyond
the former location of the implant retaining portion." Appeal Br. 14. A
comparison of Clifford's Figure 21 with Figures 24 and 25 clearly shows
that Clifford's implant retaining portion is removable in the manner claimed.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 15, 17-29, 31, and 32, which fall therewith.
Rejection III
The rejection of claims 13 and 14 as unpatentable over Prestezog
relies on the same erroneous finding as the rejection of claim 1 discussed
supra. Accordingly, we do not sustain the Examiner's decision rejecting
claims 13 and 14 as unpatentable over Prestezog.
Rejection IV
Appellants do not present separate arguments for the patentability of
claim 30, which depends from claim 17. Accordingly, we sustain the
Examiner's decision rejecting claim 30 as unpatentable over Clifford for the
reasons discussed supra.
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Appeal2014-003931
Application 12/642,699
DECISION
The Examiner's rejection of claims 1-12 and 16 as anticipated by
Prestezog is REVERSED.
The Examiner's rejection of claims 1, 15, 17-19, 31, and 32 as
anticipated by Clifford is AFFIRMED.
The Examiner's rejection of claims 13 and 14 as unpatentable over
Prestezog is REVERSED.
The Examiner's rejection of claim 30 as unpatentable over Clifford is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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