Ex Parte Stopek et al

Patent Trial and Appeal Board

Apr 7, 2017

12486352 (P.T.A.B. Apr. 7, 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.
12/486,352 06/17/2009 Joshua Stopek H-US-01290 4974
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/11/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA STOPEK, JACQUELINE JONES, and
AMIN ELACHCHABI
Appeal 2015-005258
Application 12/486,352
Technology Center 3700
Before JOHN C. KERINS, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joshua Stopek et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—10, 15—17, and 40-42.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is Covidien, LP. Br. 2.
Appeal 2015-005258
Application 12/486,352
THE CLAIMED SUBJECT MATTER
Appellants’ invention “relates to a sheath for use with an anastomosis
for prevention of fluid leaks.” Spec. 12. Claim 1, reproduced below, is
representative of the claimed subject matter.
1. A sheath for positioning within a body lumen adjacent an
anastomosis, the sheath comprising:
a sleeve defining a passage, the sleeve having a proximal
portion and a distal portion;
a first ring-shaped member extending from a first terminal
end of the sheath toward the proximal portion of the sleeve; and
a second ring-shaped member extending from the distal
portion of the sleeve to a second terminal end of the sheath;
each of the first and second ring-shaped members defining
a funnel having a first diameter at a proximal end portion thereof
and a second diameter at a distal end portion thereof, the first
diameter of a respective one of the funnels being larger than the
second diameter of the respective one of the funnels, wherein an
inner surface of the funnel of the second ring-shaped member
tapers radially inward from the distal portion of the sleeve to the
second terminal end of the sheath;
at least one of the first and second ring-shaped members
being formed of a self-sealing material;
the proximal portion of the sleeve being connected to the
first ring-shaped member and the distal portion of the sleeve
being connected to the second ring-shaped member such that the
first ring-shaped member is configured to be positioned proximal
of the anastomosis and the second ring-shaped member is
configured to be positioned distal of the anastomosis.
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Appeal 2015-005258
Application 12/486,352
REJECTIONS
1) Claims 41 and 42 are rejected under 35U.S.C. § 112, first
paragraph for failing to comply with the written description
requirement.
2) Claims 1, 2, 9, 10, 15, and 40-42 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Seguin (US 2005/0043790 Al,
published Feb. 24, 2005).
3) Claims 3—8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Seguin and Osborne (US 2006/0235512 Al, published Oct.
19, 2006).
4) Claims 16 and 17 are rejected under U.S.C. § 103(a) as
unpatentable over Seguin and Hojeibane (US 2003/0236568 Al,
published Dec. 25, 2003).
DISCUSSION
Rejection 1
Claim 41, which depends indirectly from claim 1, recites “the first
diameter of one of the funnels is larger than the first diameter of the other
funnel” and claim 42 recites “the second diameter of one of the funnels is
smaller than the second diameter of the other funnel.” Br. 16—17 (Claims
App.). The Examiner determines that these claims do not comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, because
of lack of textual support in Appellants’ original disclosure and Appellants’
drawings cannot be relied on for written description support because the
Specification does not state that the drawings are to scale. Final Act. 3.
Appellants contend that paragraphs 42 and 43 of the original Specification
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Application 12/486,352
and Appellants’ Figure 1 provide sufficient written description for claims 41
and 42. Br. 7—8.
Although the Specification does not state that Appellants’ drawings
are to scale, a drawing, nevertheless, teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911,914 (CCPA 1979). In this case, one of ordinary skill in the art, when
viewing Appellants’ Figure 1 in light of the written description, would
reasonably understand that the first diameter of funnel 12 (noted as item 12a
in Figure 1) is larger than the first diameter of funnel 16. We, therefore, do
not sustain the rejection of claim 41 under 35 U.S.C. § 112, first paragraph.
With respect to claim 42, Appellants’ Figure 1 illustrates that the
second diameter of funnel 12 (item 12b) is of the same diameter as sleeve 14
in that area. It also appears from Figure 1 that sleeve 14 is generally of a
constant diameter along its length. We note that there is no indication in the
Specification that sleeve 14 is not of constant diameter nor is there any
disclosure or suggestion of a reason why the sleeve would not be of constant
diameter. The second diameter of funnel 16 (item 16a) is illustrated in
Figure 1 as being smaller than the diameter of sleeve 14. We, therefore,
determine that one of ordinary skill in the art would reasonably understand
that the second diameter of funnel 16 (item 16a in Figure 1) is smaller than
the second diameter of funnel 12 (item 12b in Figure 1). Based on the
foregoing, we do not sustain the rejection of claim 42 under 35 U.S.C. § 112,
first paragraph.
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Appeal 2015-005258
Application 12/486,352
Rejection 2
Appellants argue claims 1, 2, 9, 10, 15, and 40-42 as a group. Br. 9—
11. We select claim 1 as representative and claims 2, 9, 10, 15, and 40-42
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv).
The Examiner finds that Seguin discloses all the limitations of claim
1. Final Act. 4—6. The Examiner provides an annotated version of Seguin’s
Figure 10 in support of the rejection. Id. at 6.
Appellants’ sole contention of error is that “Seguin’s sheath 3 does
not taper radially inward to the terminal end of Seguin’s sheath 3. Rather,
Seguin’s sheath 3 includes an inner surface that only tapers distally to a
location proximal of the terminal end of the sheath.” Br. 10. In support of
this contention, Appellants submit an annotated version of an enlarged
portion of Seguin’s Fig. 10. Id. at 11. Appellants argue that, because
Seguin’s sheath 3 is rounded at a very small length at its tip, the inner
surface of sheath 3 curves outwardly near the tip of its terminal end. Id. In
response, the Examiner maintains the rejection and notes that the claim
language recites that the inner surface of the funnel tapers radially inward
from the distal portion of the sleeve “to the second terminal end.” Ans. 3.
For the following reasons, we sustain the rejection of claim 1.
Appellants’ Specification provides that “the second ring-shaped
member 16 may be disposed at an angle (3 relative to the longitudinal axis
‘Y’ of the sleeve to help direct fluids towards distal opening 16a.” Spec.
143. Appellants’ Figure 1 illustrates that angle (3 is determined with respect
to the inner surface of second ring-shaped member 16. Id. Fig. 1. The inner
surface of second ring-shaped member 16, as shown and described by
Appellants, tapers radially inward from distal portion 15 of sleeve 14 to the
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Application 12/486,352
second terminal end of sheath 10 (item 16a). See id. Fig. 1. Appellants have
not directed us to any portion of the Specification indicating that the
function of the radially inward taper to direct fluids toward the distal
opening is affected by whether the terminal end at distal opening 16a is
rounded or flat.
The radially inward taper of Seguin’s sheath 3 can similarly be
defined by the angle between the longitudinal centerline of the device shown
in Seguin’s Figure 10 and the inner surface of the second ring-shaped
member shown in the Examiner’s annotated version of Figure. 10. See Final
Act. 6; Ans. 4. The Examiner’s finding that the limitation “an inner surface
of the funnel of the second ring-shaped member tapers radially inward from
the distal portion of the sleeve to the second terminal end of the sheath”
reads on Seguin’s sheath 3 is, thus, supported by a preponderance of the
evidence. As Appellants have not apprised us of error, we sustain the
rejection of claim 1 as anticipated by Seguin. Claims 2, 9, 10, 15, and 40-42
fall with claim 1.
Rejections 3 and 4
Claims 3—8, 16, and 17 depend directly or indirectly from claim 1.
Br. 14—16 (Claims App.). Appellants argue that these claims are patentable
for the same reasons as claim 1. Id. at 12. We sustain the rejections of
claims 3—8, 16, and 17 for the same reasons discussed above for claim 1.
DECISION
The Examiner’s decision rejecting claims 41 and 42 under 35 U.S.C.
§112, first paragraph is reversed.
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Application 12/486,352
The Examiner’s decision rejecting claims 1—10, 15—17, and 40-42
under 35 U.S.C. § 102(b) and/or 35 U.S.C. § 103(a) 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
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