Ex Parte Shikhman

Patent Trial and Appeal Board

Sep 19, 2017

13537231 (P.T.A.B. Sep. 19, 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.
13/537,231 06/29/2012 Oleg Shikhman INE-0114USD 9035
21971 7590 09/21/2017
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG SHIKHMAN
Appeal 2016-005016
Application 13/537,2311
Technology Center 3700
Before DONALD E. ADAMS, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—10, 12, and
13 (App. Br. 2).2 Examiner entered rejections under 35 U.S.C. § 112,
second paragraph and 35 U.S.C. § 103(a). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as “Interventional Therapies”
(App. Br. 2).
2 Claim 11 stands withdrawn from consideration (June 30, 2015 Advisory
Act. 115).
Appeal 2016-005016
Application 13/537,231
STATEMENT OF THE CASE
Appellant’s disclosure “relates to an instrument and a method for
closing a hole or puncture in a blood vessel” (Spec. 12). Claims 1 and 12
are representative and reproduced below:
1. A method of securing suture material using a crimping and
cutting device, the method comprising:
threading the suture material through a ferrule in the device;
moving a hammer head proximally through a tip of the device
to crimp the ferrule;
continuing to move the hammer head proximally after the
ferrule has been crimped entrapping the suture material within
the ferrule;
abutting the hammer head against a cutting edge within the tip
and fixed relative to the tip, capturing the suture material
therebetween;
applying pressure with the hammer head against the cutting
edge until the suture material is cut;
and delivering a hemostatic agent to said distal operative
portion.
(September 18, 2015 Corrected Appeal Brief 2 (emphasis added).)3
12. A method in accordance with claim 1, wherein said
delivering a hemostatic agent is via a syringe configured to
deliver a hemostatic agent through said bore to said distal
operative portion.
{Id. at 4 (emphasis added).)
3 The Corrected Appeal Brief was submitted in response to the August 18,
2015 Notification of Non-Compliant Appeal Brief, finding “The Claims
Appendix (filed with Appellant’s June 18, 2015 Appeal Brief) is non-
compliant as it does not match the last entered amendment.”
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Application 13/537,231
The claims stand rejected as follows:
Claims 1—10, 12, and 13 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Shikhman4 and Forsberg.5
Claims 1—10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shikhman and Van Tassel.6
Definiteness'.
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that the phrases “said distal operative portion” (September 18, 2015
Corrected Appeal Brief (Claims 1 and 6)) and “said bore to said distal
operative portion” (September 18, 2015 Corrected Appeal Brief (Claims 12
and 13)) lack antecedent basis in Appellant’s claims?
FACTUAL FINDINGS (FF)
FF 1. Examiner denied entry of the claim amendments filed with
Appellant’s June 18, 2015 Amendment After Final Action {see June 30,
2015 Advisory Action 17; see also August 18, 2015 Notification of Non-
Compliant Appeal Brief (“Examiner denied entry of the after final
amendment filed on 6/18/15”); see Ans. 6—7 (“the amendments to the claims
were not entered per Advisory Action filed 30 June 2015 . . .”)).
4 Shikhman et al., US 2003/0078601 Al, published Apr. 24, 2003.
5 Forsberg et al., US 2008/0082123 Al, published Apr. 3, 2008.
6 Van Tassel et al., US 5,728,132, issued Mar. 17, 1998.
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Application 13/537,231
FF 2. Examiner finds that the phrases “said distal operative portion”
(September 18, 2015 Corrected Appeal Brief (Claims 1 and 6)) and “said
bore to said distal operative portion” (September 18, 2015 Corrected Appeal
Brief (Claims 12 and 13)) lack antecedent basis in Appellant’s claims (Ans.
2-3).
ANALYSIS
Examiner finds that Appellant’s claims 1 and 6 lack antecedent basis
for the phrase “said distal operative portion” (FF 2). In addition, Examiner
finds that Appellant’s claims 12 and 13 lack antecedent basis for the phrase
“said bore to said distal operative portion” (id.).
Appellant contends that Examiner’s rejection is “cured” by
Appellant’s June 18, 2015 Amendment After Final Action (App. Br. 5). We
are not persuaded. Examiner denied entry of Appellant’s amendments (FF
1).
We are not persuaded by Appellant’s “request[] that the Examiner
enter the amendment or, in the alternative, reopen prosecution for such
entry” (Reply Br. 2). See Manual of Patent Examining Procedure § 1204.04
([A]n [EJxaminer’s refusal to enter an amendment, evidence, or other
document is a petitionable matter that is not subject to review by the Board”
(emphasis added)).
CONCLUSION OF LAW
The preponderance of evidence supports Examiner’s conclusion that
the phrases “said distal operative portion” (September 18, 2015 Corrected
Appeal Brief (Claims 1 and 6)) and “said bore to said distal operative
portion” (September 18, 2015 Corrected Appeal Brief (Claims 12 and 13))
lack antecedent basis in Appellant’s claims.
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Application 13/537,231
The rejection of claims 1—10, 12, and 13 under 35 U.S.C. § 112,
second paragraph is affirmed.
Claim Interpretation'.
Examiner interprets the phase “said distal operative portion,” as it
appears in, inter alia, Appellant’s claim 1, “as a step requiring the delivery
of a hemostatic agent” (Ans. 2).
Examiner interprets the phrase “said bore to said distal operative
portion,” as it appears in, inter alia, Appellant’s claim 12, “as a step
requiring the delivery of a hemostatic agent via a syringe” (Ans. 3). In this
regard, Examiner interprets the phrase “distal operative portion” as “a distal
operative portion which may be part of the operative site” {id. at 8).
For the purpose of this Appeal, we adopt Examiner’s interpretation of
the foregoing phrases.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 3. Examiner finds that Shikhman discloses “a method of securing
suture material using a crimping and cutting device” within the scope of
Appellant’s claimed invention with the exception that “Shikhman does not
disclose the step of delivering a hemostatic agent” (Ans. 3^4 and 5).
FF 4. Examiner relies on Forsberg to disclose “an apparatus used to
promote hemostasis wherein the length of a suture is impregnated with a
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hemostatic agent. . (Ans. 4; see App. Br. 5 (Forsberg “generally refers to
coating and impregnating a suture”)).
FF 5. Examiner relies on Van Tassel to disclose “a method wherein a
hemostatic agent is forced out of a syringe [] to seal a puncture” (Ans. 5).
ANALYSIS
The combination of Shikhman and Forsberg:
Based on the combination of Shikhman and Forsberg, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious “to have provided the suture of the device of
Shikhman with a hemostatic agent, as taught by Forsberg, to promote
hemostasis and clotting during a closure procedure []” (Ans. 4; see FF 3—4).
We are not persuaded by Appellant’s contention that Forsberg’s
“‘delivery’ ... is completely different from the presently claimed system
and method,” which fails to account for Shikhman’s contribution to the
combination of Shikhman and Forsberg (see App. Br. 6; see generally Ans.
7).
Because Appellant’s claim 1 is not limited to the “separate delivery of
a hemostatic agent to the distal operative site,” we are not persuaded by
Appellant’s contention that the combination of Shikhman and Forsberg fails
to suggest this unclaimed subject matter (see App. Br. 6; see generally Ans.
7).
The combination of Shikhman and Van Tassel'.
Based on the combination of Shikhman and Van Tassel, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious “to have provided the method of Shikhman with a
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step of delivering a hemostatic agent through the use of a syringe, as taught
by Van Tassel, to provide means for hemostasis and clotting following a
closed procedure” (Ans. 5; see FF 3 and 5). In this regard, Examiner
explains that Van Tassel’s modification of Shikhman’s method “of using a
syringe to deliver a hemostatic agent. . . would assist in closing the puncture
at the site” (Ans. 8).
Appellant’s “claims do not require the hemostatic agent to be
delivered through the bore of a suture mediated closure device” (Ans. 7; see
also id. at 9 (Appellant’s “claims do not include a device bore” or define
“where the distal operative portion is located”)). Therefore, we are not
persuaded by Appellant’s contentions that “the present claims[] incorporate
a hemostatic agent separately delivered (or injected) thereto in the closure
device via the crimping and cutting device bore” (App. Br. 9); “[tjhere is no
motivation to that [Van Tassel’s] independent teaching and change the
independent nature of [Van Tassel’s] teaching into an integrated form,” as
Appellant asserts is required by Appellant’s claimed invention {id. at 10);
the combination of Shikhman and Van Tassel “does not equate or relate to a
combination of a hemostatic delivery] device [] through the bore of a suture
mediated closure device"1 (id.); or “Examiner [] completely ignores [the] use
of a syringe to ‘deliver’ the hemostatic agent via a syringe through the bore
to the distal operative portion . . .” (Reply Br. 2).
We are not persuaded by Appellant’s contention that Van Tassel “is
wholly distinct from the type of procedure of Shikhman . . .” (id. ). As
Examiner explains,
Van Tassel is directed to injecting a hemostatic agent in a tissue
tract and Shikhman is directed to closing a hole or puncture in a
blood vessel. The modification of the method of Shikhman of
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Application 13/537,231
using a syringe to deliver a hemostatic agent, as taught by Van
Tassel, would assist in closing the puncture at the site[, as
suggested by Shikhman],
(Ans. 8.) On this record, we find no error in Examiner’s conclusion that, at
the time of Appellant’s claimed invention, it would have been prima facie
obvious to use a syringe to deliver a hemostatic agent to “a distal operative
portion which may be part of the operative site” from Shikhman’s “method
of securing suture material using a crimping and cutting device” (see id.; see
also FF 1 and 3). Therefore, we are not persuaded by Appellant’s contention
that “Examiner ignores ‘delivering a hemostatic agent to said distal
operative portion”, [sic] which is [] separately recited relative to threading
suture, crimping of the ferrule and cutting the suture,” which is taught by
Shikhman (Reply Br. 2).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s combination of Shikhman and Van Tassel
“would necessarily change the independent nature of Van Tassel’s
injections” (App. Br. 10).
CONCEUSION OF FAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Shikhman and Forsberg is affirmed. Claims 2—10
are not separately argued and fall with claim 1.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Shikhman and Van Tassel is affirmed. Claims 2—
10, 12, and 13 are not separately argued and fall with claim 1.
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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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