Ex Parte Rao et al

Patent Trial and Appeal Board

Nov 14, 2017

12554941 (P.T.A.B. Nov. 14, 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.
12/554,941 09/07/2009 Rob K. Rao Rao-0502CIP 9597
36787 7590
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
11/16/2017 EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
patents @ BLKLawGroup.com
cbelleci @ BLKLawGroup .com
blynn @ BLKLawGroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB K. RAO and MIKE Y. CHEN
Appeal 2015-001433
Application 12/554,941
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rob K. Rao and Mike Y. Chen (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from a final rejection of claims 1—3, 6—13, 15, and 17—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-001433
Application 12/554,941
THE INVENTION
Appellants’ invention is directed to a surgical clamping apparatus.
Claim 11, reproduced below, is illustrative:
11. A surgical clamping apparatus for repairing a defect in
the dura or blood vessel, said dura clamping apparatus
comprising:
(a) an inner plate configured to be placed on an inner surface of
the defect in the dura or blood vessel in a position completely
overlapping the defect in the dura or blood vessel, wherein the
inner plate has a perimeter in plan view larger than the
perimeter in plan view of the defect in the dura or blood vessel,
and wherein the inner plate includes at least one radial
extending rib in the form of a coil;
(b) an outer plate configured to be placed on an outer surface of
the defect in the dura or blood vessel in a position completely
overlapping the defect in the dura or blood vessel and aligned
with the inner plate, wherein the outer plate has a perimeter in
plan view larger than the perimeter in plan view of the defect in
the dura or blood vessel, and wherein the outer plate includes at
least one radial extending rib in the form of a coil; and
(c) a rigid coupling member for coupling the inner plate to the
outer plate such that the peripheral edges of the defect in the
dura or blood vessel is securely clamped between the inner and
outer plates to provide a watertight repair to the defect in the
dura or blood vessel, wherein the coupling member is in the
form of a guide stem and wherein each coiled rib has an
attachment end fixedly secured to the guide stem, wherein the
coupling member includes a guide stem extending from the
inner plate to the outer plate with an attachment grove [sic] for
attaching each rib, and wherein a distal segment of the ribs of
each plate engage the tissue, with this engagement being at least
360 degrees surrounding the defect to secure the tissue around
the defect between the plates and wherein each rib extends
helically and conically expanding along the guide stem toward
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Application 12/554,941
the opposed plate, and wherein the guide stem is maintained
along an axial axis centered within the conically expanding ribs.
REJECTIONS
The Examiner rejects:
(i) claims 11, 12, and 17—20 under 35 U.S.C. § 103(a) as being
unpatentable over Chanduszko (US 2005/0251154 Al, published Nov. 10,
2005, hereinafter “Chanduszko ’154”) in view of Nunez (US 2009/0177225
Al, published July 9, 2009);
(ii) claims 1—3 and 6—9 under 35 U.S.C. § 103(a) as being
unpatentable over Chanduszko ’154 in view of Chanduszko (US
2004/0073242 Al, published Apr. 15, 2004, hereinafter “Chanduszko ’242”)
and Nunez;
(iii) claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Chanduszko ’154 in view of Chanduszko ’242, Nunez, and Janese (US
5,053,046, issued Oct 1, 1991);
(iv) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Chanduszko ’154 in view of Nunez and Abbott (US 2006/0052821 Al,
published Mar. 9, 2006);1 and
(v) claim 15 under 35 U.S.C. § 103(a) as being unpatentable over
Chanduszko ’154 in view of Nunez and Chanduszko (US 2004/0133236 Al,
published July 8, 2004, hereinafter “Chanduszko ’236”).2
1 The statement of rejection erroneously identifies the Abbott reference as
“Janese,” however, the detailed grounds address the Abbott disclosure.
Final Act. 11—12.
2 The Final Action and Answer identify that the rejection involves US
2004/0044364, further identifying the reference as “Chanduszko et al.” See
Final Act. 12; Ans. 2. The printed publication bearing the cited publication
number does not list Chanduszko as an inventor, and does not have a Figure
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Appeal 2015-001433
Application 12/554,941
ANALYSIS
Rejection (i)
Independent apparatus claims 11 and 20 each require a rigid coupling
member in the form of a guide stem, for coupling an inner plate to an outer
plate, with the inner and outer plates being fixedly secured to the guide stem
to maintain the guide stem along an axial axis centered with the first and
second guide plates. Appeal Br., Claims Appendix. The Examiner takes the
position that one or more of the Chanduszko ’ 154 devices have a guide stem
along an axial axis centered with first and second plates, but does not
disclose that the guide stem is to be rigid. Final Act. 5—6. The Examiner
cites to Nunez as disclosing a rigid guide stem, and concludes that it would
have been obvious to modify Chanduszko ’ 154 such that one or more of the
devices disclosed therein would have a rigid guide stem “in order for
facilitating placement of the device.” Id. at 6.
Appellants argue, inter alia, that Chanduszko ’154 does not teach that
the guide stem is fixedly secured to the plates to maintain the guide stem
along an axis centered with the first and second plates, but rather the guide
stem is secured so as to pivot relative to the plates so that, in use, the plates
are intentionally misaligned. Appeal Br. 18—20. Additionally, Appellants
point out that the use of a rigid guide stem fixedly secured to the plates
would tend to keep open the patent foramen ovale (PFO) that the
20a or a paragraph 114 referenced by the Examiner. Final Act. 12.
Chanduszko ’236 is of record in the application file history, and includes a
Figure 20a and a paragraph 114 that references adhesive, the teaching
identified by the Examiner as being relevant from the reference being
applied. Therefore, it is our best guess that the Examiner intended to rely on
Chanduszko ’236 in the rejection of claim 15.
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Appeal 2015-001433
Application 12/554,941
Chanduszko ’154 device is intended to close. Id. at 21. According to
Appellants, the proposed modification would destroy the operation of the
Chanduszko ’ 154 device as it is intended to be used. Id.
The Examiner equivocates as to whether the guide stem is to be rigid
or more elastic, in pointing out that Nunez teaches that the guide stem “can
be rigid or more elastic” and Nunez presents the benefits of both. Ans. 5,
citing Nunez, para. 49. That paragraph in Nunez indeed states that the
element corresponding to the claimed guide stem can be flexible or rigid, to
facilitate permanent placement of a sensor. Nunez, para. 49. It says nothing
about the circumstances for which either a flexible or a rigid member would
be more useful than the other. This highlights that the reason advanced by
the Examiner for modifying the Chanduszko ’154 device to have a rigid
guide stem, i.e., to facilitate placement of the device, is not supported by
rational underpinnings.
Further, the Examiner’s response to Appellants’ argument that a rigid
guide stem would interfere with the intended operation of the
Chanduszko ’154 device fails to rehabilitate the rejection. The Examiner
shifts to reliance on Chanduszko ’242 for the teaching of a rigid guide stem,
and points out that Chanduszko ’242 illustrates an embodiment in which the
plates are aligned and centered with the guide stem. Ans. 6, citing to
Chanduszko ’242, Fig. 15e.3 That embodiment in Figures 15a—e is directed
to a procedure in which the septum primum is pierced as an initial step in
positioning a first plate, whereas Chanduszko ’154 illustrates and discloses
only procedures in which the first plate is positioned in the right atrium by
3 We note that Chanduszko ’242 is not identified in the original statement of
the rejection of claims 11 and 17, nor in the original analysis.
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Appeal 2015-001433
Application 12/554,941
inserting the first plate through an opening between the septum primum and
septum secundum. Chanduszko ’154, passim.
This change in reasoning is, in effect, an acquiescence by the
Examiner that the initial basis for rejecting claims 11 and 17 suffered from
the shortcomings pointed out by Appellants. The Examiner’s belated
assertion that “the combination of Chanduszko (‘154) and Chanduszko
(‘242) and Nunez will read on the claims and not destroy the primary
reference” (Ans. 6), is not supported by a preponderance of the evidence, as
it pertains to the proposed modification of the Chanduszko ’154 device.
The rejection of independent claims 11 and 20, as well as of
dependent claims 12 and 17—19, as being unpatentable over
Chanduszko ’ 154 and Nunez, is not sustained.
Rejection (ii)
Independent claim 1 is a method claim that, while not identical in
scope to apparatus claims 11 and 17, requires the method to be carried out
using inner and outer plates each secured to an axially extending rigid guide
plate, with the guide stem being maintained along an axial axis centered
within the opposing plates. Although the Examiner includes
Chanduszko ’242 in the grounds for rejecting claim 1, the rejection as
initially stated fails to recognize that the method disclosed in
Chanduszko ’154, the principal reference, is not directed to a method for
repairing a defect in the dura or a blood vessel, but is instead a procedure
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Appeal 2015-001433
Application 12/554,941
intended to hold the septum primum and septum secundum against one
another in patients having PFOs.
The rejection additionally relies on Nunez as teaching the use of a
rigid guide stem, and concludes that it would have been obvious to use a
rigid guide stem in the Chanduszko ’154 device for facilitating placement of
the device. This position is, as noted previously, lacking in rational
underpinnings.
The Response to Arguments section of the Answer presents the same
attempt to rehabilitate the rejection as discussed above with respect to claims
11 and 17. For the reasons noted above, we do not find the Examiner’s
position to be one which we could sustain. The rejection of claims 1—3 and
6—9 as being unpatentable over Chanduszko ’154, Chanduszko ’242, and
Nunez is therefore not sustained.
Rejections (iii)—(v)
The Examiner does not rely on the Janese, Abbott, or
Chanduszko ’236 references in any manner that remedies the deficiencies in
the rejections as discussed with respect to independent claims 1,11, and 20.
Rejections (iii)-(v) are thus not sustained.
DECISION
The rejections of claims 1—3, 6—13, 15, and 17—20 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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