Ex Parte Saadat et al

Patent Trials and Appeals Board

Mar 12, 2019

13896075 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/896,075 05/16/2013
34055 7590 03/14/2019
PERKINS COIE LLP - LOS General
POST OFFICE BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
V ahid Saadat
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.
061579-8024.USOl 3982
EXAMINER
JAMIALAHMADI, MAJID
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAHID SAADAT and CANG C. LAM
Appeal2018-002207
Application 13/896,075 1
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
BRENT M. DOUGAL, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision in
the Final Office Action (dated Jan. 25, 2017, hereinafter "Final Act.") rejecting
claims 1-15 and 19-30. 2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
1 USGI Medical Inc. is the applicant and is identified as the real party in interest in
Appellants' Appeal Brief (filed June 26, 2017, hereinafter "Appeal Br."). Appeal
Br. 2.
2 Claims 16-18 are canceled. Appeal Br. 18 (Claims App.)
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants' invention relates to an "apparatus for the deployment of tissue
anchors used for manipulating and/or securing tissue endoluminally." Spec. para.
2.
Claims 1 and 20 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. Surgical apparatus, comprising:
a flexible tube;
a handle having a tubular body attached to a first end of the
flexible tube;
a tissue manipulation assembly attached to a second end of the
flexible tube;
a needle assembly movable within the flexible tube, with the
needle assembly including a hollow needle attached to an end of a
sheath;
a pusher in the handle extendible into the sheath;
a first controller on the handle linked to the tissue manipulation
assembly;
a second controller on the handle for advancing the needle
assembly through the flexible tube, and for advancing the pusher into
the sheath; and
with the handle including a loading chamber in a sidewall of the
tubular body for loading a tissue anchor cartridge into the flexible
tube at the handle.
Independent claim 20 is similar to claim 1, but further recites that "the first
controller ... [is] movable about a first axis and the second controller ... [is]
movable about a second axis." Appeal Br. 16, 18, 19 (Claims App.) (emphasis
added).
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REJECTIONS
I. The Examiner rejects claim 20 under 35 U.S.C. § I02(e) as being anticipated
by Ewers et al. (US 2005/0250988 Al, pub. Nov. 10, 2005, hereinafter
"Ewers '988").
II. The Examiner rejects claims 1--4, 6, and 19 under 35 U.S.C. § I03(a) as
being unpatentable over Ewers et al. (US 2004/0225305 Al, pub. Nov. 11,
2004, hereinafter "Ewers '305"), Onuki et al. (US 2004/0138682 Al, pub.
July 15, 2004, hereinafter "Onuki"), Turley (US 4,154,239, iss. May 15,
1979), and Gottlieb et al. (US 5,964,717, iss. Oct. 12, 1999, hereinafter
"Gottlieb"). 3
III. The Examiner rejects claims 20-23, 25, and 29 under 35 U.S.C. § I03(a) as
being unpatentable over Ewers '305, Onuki, Turley, and Stokes (US
2005/0043582 Al, pub. Feb. 24, 2005).
IV. The Examiner rejects claim 5 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, and Burg (US
4,598,840, iss. July 8, 1986).
V. The Examiner rejects claims 24 and 26-28 under 35 U.S.C. § I03(a) as
being unpatentable over Ewers '305, Onuki, Turley, Stokes, and Burg.
VI. The Examiner rejects claim 7 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, and Irvin (US
4,986,487, iss. Jan. 22, 1991).
3 As the rejection of claim 6 employs the same references as Rejection II, but
merely adds further teachings from Onuki, we have included claim 6 as part of this
rejection. See Final Act. 4--6, 14--15.
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VII. The Examiner rejects claim 12 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, and Mericle (US
4,478,218, iss. Oct. 23, 1984).
VIII. The Examiner rejects claims 8 and 9 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, Stokes, and
Hayhurst (US 5,810,848, iss. Sept. 22, 1998).
IX. The Examiner rejects claim 11 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, and Alesi et al. (US
5,474,566, iss. Dec. 12, 1995, hereinafter "Alesi").
X. The Examiner rejects claims 14 and 15 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Gottlieb, and Swayze et al.
(US 6,530,932 Bl, iss. Mar. 11, 2003).
XI. The Examiner rejects claim 30 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, Stokes, and Swayze.
XII. The Examiner rejects claims 1, 10, and 13 under 35 U.S.C. § I03(a) as being
unpatentable over Ewers '305, Onuki, Turley, and Gottlieb. 4
ANALYSIS
Rejection I
The Examiner finds that Ewers '988 discloses "a first controller (Figure
40B) (564) . .. a second controller (570) ... for advancing the needle assembly
... with the first controller ... movable about a first axis and the second controller
4 We appreciate that Rejection XII employs the same references as Rejection
II. However, in Rejection XII, the Examiner relies on an embodiment from
Ewers '305 that is different from the embodiment used din Rejection II.
Compare Final Act. 4 (citing Ewers '305, Figs. 1A--4B) with, 21 (citing
Ewers '305, Figs. 20A-20D).
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... movable about a second axis." Final Act. 3. To better illustrate, the Examiner
provides an annotated Figure 40B of Ewers '988 shown below:
The Examiner's annotated Figure 40B of Ewers '988 indicates first controller 564
directed to "motion in first axis," second controller 570 directed to "motion in
second axis," and a longitudinal axis. Id. at 3.
Appellants argue that because the claimed second controller is movable
"about" a second axis, it has "a scissor-handle hinging or pivoting movement,"
and, thus, is not "directed to a motion in a second axis." Appeal Br. 14--15.
The Examiner responds that "[ A Jppellant is not claiming that the controllers
need to pivot about a first and second axis" and, furthermore, "[ e ]ven if the
controllers are sliding up and down similar to Ewers '988 in Figure 40[B], they are
still moving about a first and second axis." Examiner Answer 11 ( dated Oct. 20,
2017, hereinafter "Ans.").
During examination, "claims ... are to be given their broadest reasonable
interpretation consistent with the specification, [ ] and ... claim language should
be read in light of the specification as it would be interpreted by one of ordinary
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skill in the art." In re Bond, 910 F.2d 831,833 (Fed. Cir. 1990) (alteration in
original) (citing In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)). This means
that the words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the Specification. In re Zietz, 893 F.2d 319, 321 (Fed.
Cir. 1989). In this case, an ordinary and customary meaning of the term "about" is
"in a circle around: on every side of: AROUND." 5 Such an interpretation is
consistent with Appellants' Specification, which states that "[t]issue engagement
member 102 may be rotated about its longitudinal axis." Spec. para. 5 8 ( emphasis
added). Hence, in light of Appellants' Specification and the ordinary and
customary meaning of the term "about," we construe the limitation "the second
controller . . . movable about a second axis" to mean that the second controller
rotates around the second axis. In contrast, as controller 570 of Ewers '988
translates along an axis, it does not rotate around the axis, and, thus, is not
"movable about a second axis," as required by independent claim 20. See Final
Act. 3.
Accordingly, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 102(e) ofclaim20 as anticipated by Ewers '988.
Rejection II
Claims 1, 3, 4, 6, and 19
Appellants do not present arguments for the patentability of claims 3, 4, 6,
and 19 apart from claim 1. See Appeal Br. 5-9. Therefore, in accordance with 37
C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative, with claims 3, 4, and
19 standing or falling with claim 1.
5 See MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary
/about (last visited February 28, 2019).
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The Examiner finds that Ewers '305 discloses, inter alia, flexible tube 11,
handle 15 attached to a first end of tube 11, tissue manipulation assembly 18
attached to a second end of tube 11, needle assembly 34 having a hollow needle,
pusher 42, and first controller 17 on handle 15 and attached to control wire 19 to
open and close the jaws of control tissue manipulation assembly 18. Final Act. 4
(citing Ewers '305, Figs. 1A--4B). However, the Examiner finds that Ewers '305
does not
disclose a handle having a tubular body, a second controller on the
handle for advancing the needle assembly through the flexible tube,
and for advancing the pusher into the sheath and the handle including
a loading chamber for loading a tissue anchor cartridge into the
flexible tube at the handle.
Final Act. 4. Nonetheless, the Examiner finds that Gottlieb's endoscopic biopsy
forceps includes, inter alia, handle 16 having a tubular body and control wire 80
with spool 20 to open and close jaws 50, 52. Id. at 5 ( citing Gottlieb, Figs. 1, 2).
Thus, according to the Examiner, because both Ewers '305 and Gottlieb open and
close jaws using a control wire, it would have been obvious to a person of ordinary
skill in the art to "substitute[] the handle and first controller of Ewers ['305] with
[the] handle and controller of Gottlieb so that the handle has a tubular body for the
controller or spool to slide along the tubular body, in order to achieve a predictable
result." Id.
The Examiner further finds that Onuki discloses an endoscopic suture device
including, inter alia, controller 94 for advancing needle 92 and pusher 93. Id.
( citing Onuki, para. 110, Fig. 26). Hence, the Examiner concludes that
It would have been obvious to one of the ordinary skill in the art at the
time the invention was made to have [further] modif[ ied] the device of
Ewers ['305, as modified by Gottlieb,] to have included a second
controller [of Onuki] on the handle for advancing the needle assembly
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through the flexible tube, and for advancing the pusher into the sheath
as taught by Onuki, in order to provide an easier mechanism for
advancing the needle and [the] pusher.
Id. Finally, the Examiner finds that Turley's drug pellet implanter includes, inter
alia, handle 10 having loading chamber 20 for loading cartridge 22. Id. at 6 ( citing
Turley, Figs. 1, 2). As such, the Examiner concludes that
It would have been obvious to one of the ordinary skill in the art at the
time the invention was made to have modif[ied] the handle of Ewers
['305] modified by Gottlieb and Onuki to have included a loading
chamber for loading a cartridge into the handle as taught by Turley, in
order to allow the user to quickly and easily load tissue anchors into
the device.
Id. The Examiner explains that because the handle of Ewers '305, as modified by
Gottlieb, has a tubular body, Turley's further modification of providing a loading
chamber "will result in the loading chamber ... [being] in a sidewall of the tubular
body." Id. (emphasis omitted).
Appellants first argue that Gottlieb's "shaft 16 is not tubular," but rather "is
a solid bar." Appeal Br. 7 (citing Gottlieb, col. 5, 11. 35-36).
We do not agree with Appellants' position because the Examiner is correct
that "handle ( 16) of Gottlieb as shown in Figure 2 is clearly tubular." Ans. 6.
Moreover, Gottlieb explicitly discloses that pull wire 80 extends through
"throughbore 24 of the shaft 16." Gottlieb, col. 5, 1. 31 (emphasis added); see also
id., Fig. 1. We further agree with the Examiner that both Ewers '305 and Gottlieb
open and close jaws using a controller and a control wire. Compare Ewers '305,
Fig. IA with, Gottlieb, Fig. 1. Hence, the Examiner has a sound basis for finding
that the tubular body handle 16 and the wire/ spool 80, 20 controller of Gottlieb
would have been a suitable substitute for the handle 15, 17 and wire 19 of Ewers
'305 "in order to achieve a predictable result of closing and opening the jaws." Id.
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at 7. Appellants provide no persuasive reason why a person of ordinary skill in the
art could not have implemented such a substitution nor why the results of the
substitution would have been unpredictable.
Second, Appellants argue that "the second controller 94 in Onuki is not 'on
the handle' as claimed," but rather "dangles off of the handle via the two flexible
sheaths 91." Appeal Br. 8.
We are not persuaded by Appellants' argument because "[ n ]onobviousness
cannot be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. [Each reference] must be
read, not in isolation, but for what it fairly teaches in combination with the prior art
as a whole." See In re Merck& Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner is correct that "when modifying Ewers ['305] with Onuki, the
second controller (94) of Onuki will be connected to the inlet (35) of Ewers ['305]
... because this inlet is where [Ewers '305 discloses that] the needle assembly ...
[34] is inserted." Ans. 7 (citing Ewers '305, para. 84). Hence, we agree with the
Examiner that because inlet 35 of Ewers '305 is part of handle 15, when modifying
the device of Ewers '305, as modified by Gottlieb, with the second controller of
Onuki, "the second controller of Onuki ... [ will] be on the handle." Id. at 8.
Finally, Appellants argue that the combined teachings of Ewers '305,
Gottlieb, Onuki, and Turley fail to "suggest[] a chamber in a sidewall," because
"[i]n Turley, the chamber 20 is on top," "the slot 18 in Gottlieb is also on top," and
"nothing suggests moving the chamber 20 of Turley to a sidewall." Appeal Br. 8-
9 ( citing Turley, Fig. 1; Gottlieb, Fig. 2).
We are not persuaded by Appellants' arguments because even though the
loading chamber in the device of Ewers '305, Gottlieb, Onuki, and Turley is at the
top of the handle, nonetheless, we agree with the Examiner that "this would result
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in the loading chamber to be at the sidewall of the handle." Ans. 8. The Examiner
is correct that any surface of a tubular handle, such as the handle in the device of
Ewers '305, Gottlieb, Onuki, and Turley, would constitute a "side wall ...
including the top and bottom." Id. at 9. Accordingly, Appellants' argument that a
skilled artisan would have to further modify the device of Ewers '305, Gottlieb,
Onuki, and Turley to move the chamber 20 of Turley to a sidewall is not
commensurate with the Examiner's rejection. See Reply Brief 1 (dated Dec. 20,
2017, hereinafter "Reply Br."). Moreover, the Examiner is correct that Appellants'
loading chamber 240 shown in Figure 13 "is [likewise] on the top of the handle
similar to Turley in Figure 1." Appellants do not persuasively argue the
Examiner's reasoning to combine the teachings of Ewers '305, Gottlieb, Onuki,
and Turley is in error.
In conclusion, for the foregoing reasons, we sustain the rejection under 35
U.S.C. § 103(a) of claim 1 as unpatentable over Ewers '305, Onuki, Turley, and
Gottlieb. Claims 3, 4, 6, and 19 fall with claim 1.
Claim 2
Claim 2 adds the limitation that "the loading chamber [is] between the first
controller and the second controller." Appeal Br. 16 (Claims App.).
The Examiner finds that the combined teachings of Ewers '305, Gottlieb,
Onuki, and Turley disclose this limitations because the device "will have the
loading chamber located at the center of the first controller of Ewers ['305]
similar to the device of Turley which would results in the loading chamber to
be between the first controller and the second controller when assembled."
Final Act. 6.
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Appellants argue that the combined teachings of Ewers '305, Gottlieb,
Onuki, and Turley fail to disclose the above noted limitation of claim 2 because
"[i]n Onuki, the second controller (the puncture control portion 94) dangles off of
the handle" and, thus, "[i]t has no fixed or permanent position relative to any other
element." Appeal Br. 9. Further, Appellants note that in Turley, the loading
chamber "is at the front of the handle, not at the center." Id. at 10.
In response, the Examiner takes the position that "the appellant is not
claiming that the second controller has a fixed or permanent position relative to
any other element" and, thus, "appellant is not arguing the broadest reasonable
interpretation of the claim but is instead arguing language that is not in the
claim[]." Ans. 9.
In the Examiner's rejection, tubular the body handle 16 and the wire/spool
80, 20 controller of Gottlieb are substituted for the handle 15, 17 and control wire
19 of Ewers '305. See Final Act. 5. The device of Ewers '305, as modified by
Gottlieb, is further modified to include Onuki's second controller 94 connected to
inlet 35. See id. at 5, Ans. 7-8. Lastly, the Examiner includes Turley's loading
chamber 20 to the device of Ewers '305, as modified by Gottlieb and Onuki. See
Final Act. 6.
We do not agree with the Examiner that "[ w ]hen the device of Ewers [ '3 05]
modified by Gottlieb, Onuki and Turley is assembled, the loading chamber will be
located at the center of the first controller of Ewers ['305] similar to the device of
Turley." See Ans. 9 (emphasis added). Rather, when combining the teachings of
Ewers '305, Gottlieb, Onuki, and Turley the resulting device would have Turley's
loading chamber 20 at the front of tubular body 16 of Ewers '305, as modified by
Gottlieb and Onuki, such that the loading chamber 20 does not interfere with
Gottlieb's central slot 18. See Gottlieb, Figs. 1, 2. Moreover, we agree with
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Appellants that in Turley, the loading chamber "is at the front of the handle, not at
the center." Appeal Br. 10.
Furthermore, we appreciate the Examiner's position that Onuki's controller
94 is connected to inlet 35 of Ewers '305. See Ans. 7-8. However, even assuming
arguendo that Turley's loading chamber 20 is somehow located at the center of the
tubular handle of Ewers '305, as modified by Gottlieb, it is still not clear whether
the loading chamber is between the wire/spool 80, 20 controller of Gottlieb (first
controller) and Onuki's controller 94 (second controller), as called by claim 2. As
such, the Examiner's position appears to be based on speculation and hindsight,
which cannot form the basis for concluding obviousness. The Examiner has not
adequately explained where inlet 35 of Ewers '305 is located with respect to the
tubular handle of Ewers '305, as modified by Gottlieb, Onuki, and Turley.
In conclusion, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claim 2 as unpatentable over Ewers '305, Onuki,
Turley, and Gottlieb.
Re} ection III
The Examiner relies on Onuki to disclose a second controller 94 for
advancing needle assembly 92 through a flexible tube and for advancing pusher 93
into a sheath, wherein "the second controller moves about a second axis that is not
parallel to the longitudinal axis of the handle (2)." Final Act. 9 (emphasis omitted)
( citing Onuki, para. 110, Fig. 26).
As discussed supra, we construe the limitation "the second controller
movable about a second axis" to mean that the second controller rotates around the
second axis. In contrast, as controller 94 of Onuki includes needle slider 96 and
pusher slider 97 for moving needles 92 and pusher members 93, respectively,
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controller 94 translates along an axis, and, thus, it does not rotate around the axis.
Therefore, Onuki's second controller 94 is not "movable about a second axis," as
called for by independent claim 20.
The Examiner's use of the Ewers '305, Turley, and Stokes disclosures does
not remedy the deficiency of the Examiner's interpretation of Onuki. See Final
Act. 8-10. Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 20-23, 25, and 29 as unpatentable over Ewers
'305, Onuki, Turley, and Stokes.
Rejections IV and VI-X
Appellants do not submit any arguments with respect to these rejections.
See Appeal Br. 5-10. As such, Appellants have waived any argument of error, and
we summarily sustain Rejections IV and VI-X.
Re} ections V and XI
The Examiner's use of the Burg and Swayze disclosures does not remedy
the deficiency of the Ewers '305, Onuki, Turley, and Stokes combination discussed
supra. See Final Act. 13-14, 20.
Therefore, for the reasons discussed above, we also do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 24 and 26-28 as unpatentable over
Ewers '305, Onuki, Turley, Stokes, and Burg and of claim 30 as unpatentable over
Ewers '305, Onuki, Turley, Stokes, and Swayze.
Rejection XII
Appellants do not submit any arguments with respect to the rejection of
claims 1, 10, and 13 over the combined teachings of Ewers, Onuki, Turley, and
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Gottlieb. See Appeal Br. 5-15. As such, Appellants have waived any argument of
error, and we summarily sustain the rejection under 35 U.S.C. § 103(a) of claims 1,
10, and 13 as unpatentable over Ewers, Onuki, Turley, and Gottlieb.
SUMMARY
The Examiner's decision to reject claim 20 under 35 U.S.C. § 102( e) as
anticipated by Ewers is reversed.
The Examiner's decision to reject claims 1--4, 6, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Ewers, Onuki, Turley, and Gottlieb is affirmed as to
claims 1, 3, 4, 6, and 19 and reversed as to claim 2.
The Examiner's decision to reject claims 20-23, 25, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Ewers '305, Onuki, Turley, and Stokes is reversed.
The Examiner's decision to reject claims 5, 7-9, 11, 12, 14, and 15 under 35
U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 24 and 26-28 under 35 U.S.C.
§ 103(a) as being unpatentable over Ewers '305, Onuki, Turley, Stokes, and Burg
is reversed.
The Examiner's decision to reject claim 30 under 35 U.S.C. § 103(a) as
being unpatentable over Ewers '305, Onuki, Turley, Stokes, and Swayze is
reversed.
The Examiner's decision to reject claims 1, 10, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Ewers '305, Onuki, Turley, and Gottlieb is
affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED-IN-PART
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