Ex Parte Tremulis et al

Patent Trial and Appeal Board

Aug 30, 2016

10746131 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/746, 131 12/24/2003
131006 7590 08/31/2016
Bayer HealthCare LLC
attn: Aseem V. Mehta, U.S. Chief Patent Counsel
100 Bayer Boulevard, P.O. Box 915
Whippany, NJ 07981-0915
William S. Tremulis
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.
ESU00049 US02 8037
EXAMINER
JACKSON, BRANDON LEE
ART UNIT PAPER NUMBER
3772
MAILDATE DELIVERY MODE
08/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAMS. TREMULIS and JEFFREY P. CALLISTER
Appeal2014-004421
Application 10/746,131
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William S. Tremulis and Jeffrey P. Callister (Appellants) 1 seek our
review under 35 U.S.C. § 134 of the Examiner's decision, as set forth in the
Final Action, dated July 18, 2012 ("Final Act."), rejecting claims 1, 3-5, 7-
9, 13, 15-17, 23, 27, 29, 30, and 32-37, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as Conceptus, Inc. Appeal
Br. 3. According to an assignment recorded at the USPTO on June 29,
2015, Conceptus, Inc. assigned its interest to Bayer Essure Inc.
Appeal2014-004421
Application 10/746,131
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "occluding devices,
delivery systems for such devices and the method of using such devices and
systems in the occlusion of body passageways." Spec. para. 1. Claims 1
and 23 are independent claims. Claim 1 is reproduced below.
1. An occluding device for a patient's reproductive
body lumen comprising:
a first spider segment having a contracted configuration
and an expanded configuration, the first spider segment
comprising a plurality of expansive elements, each expansive
element having a first section extending from a first end secured
to a beam extending axially along a center line axis in the
occluding device and a second section extending to a second end
radially spaced from the beam when in the expanded
configuration, such that the first and second sections are oriented
towards opposing ends of the occluding device;
a second spider segment having a contracted configuration
and an expanded configuration, the second spider segment
comprising a plurality of expansive elements, each expansive
element having a first section extending from a first end secured
to the beam extending axially along the center line axis in the
occluding device and a second section extending to a second end
radially spaced from the beam when in the expanded
configuration, such that the first and second sections are oriented
toward opposing ends of the occluding device;
wherein the second ends of the expansive elements of the
first spider segment are oriented in opposing directions to the
second ends of the expansive elements of the second spider
segment; and
a fibrous mass of strands extending radially across one of
the first and second spider segments.
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Application 10/746,131
EVIDENCE
The Examiner relied upon the following evidence:
Cohn
Metals
Simon
O'Connell
Whitcher
Nikolchev
us 3,334,629
us 4,688,553
us 5,836,968
US 6,267,776 Bl
US 6,273,901 Bl
US 2002/0020417 Al
REJECTIONS
Aug. 8, 1967
Aug.25, 1987
Nov. 17, 1998
July 31, 2001
Aug. 14, 2001
Feb.21,2002
The Final Action contained the following rejections:
1. Claims 1, 3, 5, 7, 8, 13, 15-17, 23, 27, 29, and 32-37 under
35 U.S.C. § 103(a) as unpatentable over Cohn, Metals, Nikolchev,
and Whitcher.
2. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Cohn,
Metals, Nikolchev, Whitcher, and Simon.
3. Claims 4 and 30 under 35 U.S.C. § 103(a) as unpatentable over
Cohn, Metals, Nikolchev, Whitcher, and O'Connell.
ANALYSIS
First Ground of Rejection
Group 1: Claims 1, 3, 5, 7, 8, 13, 15-17, 23, 27, 29, 33, and 36
Appellants argue claims 1, 3, 5, 7, 8, 13, 15-17, 23, 27, 29, 33, and 36
as a group. Appeal Br. 7-14. We select claim 1 as representative of the
group, and the remaining claims of the group stand or fall with claim 1. 3 7
C.F.R. § 41.37(c)(l)(iv). Appellants present arguments under separate
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Application 10/746,131
subheadings for dependent claims 32 and 35 and dependent claims 34 and
37 (Appeal Br. 14-18), which we address infra.
The Examiner found that Cohn discloses the occluding device of
claim 1 except that (1) Cohn's expansive elements 14 do not include a
second section extending to a second end radially spaced from the beam
when in the expanded configuration, such that the first and second sections
are oriented towards opposing ends of the occluding device, and (2) Cohn
does not disclose a fibrous mass of strands extending radially across one of
the first and second spider segments. Final Act. 4. With regard to the
"second section" limitation, the Examiner found that Metals teaches an
occluding device (10) having a second expansive section (14) with an end
radially spaced from the first end of the first expansive section (12) in the
expanded configuration (fig. 5), wherein the first and second sections (12,
14) of the expansive element are straight (fig. 3). Id. at 4--5. The Examiner
determined that it would have been obvious "to modify the Cohn device
with a second end in order to maintain a centered position with the passage."
Id. at 5.
Appellants admit that Metals discloses a filter for trapping blood clots
that includes a plurality of bent short legs 12, 14 and a plurality of straight
long legs 11 that "together overcome[] the problem of devices illustrated in
Fig. 2 [of Cohn] (which only have straight long legs) where the center axis
of the filter might tilt upon deployment and not be aligned with the center
axis of the vein." Appeal Br. 9. Nonetheless, Appellants assert that the
Examiner erred in making the proposed modification of Cohn to use the bent
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legs of Metals because "Metals does not stand for the proposition that a
configuration of only bent legs 12, 14 would align with the center axis of the
vein any better than a configuration of only straight legs 11." Id. (emphasis
added). Appellants asserted "Metals does not suggest entirely replacing
straight legs 11 with bent legs 12, 14." Id., see also id. at 10. These
arguments are not persuasive for two reasons. First, the arguments do not
address the Examiner's modification, which proposes "to modify the Cohn
device with a second end in order to maintain a centered position with the
passage." Final Act. 5. We understand this modification to propose using
the technique disclosed in Metals, which uses both straight legs 11 and bent
legs 12, 14, to achieve a centered position within the passage. Metals, col. 2,
11. 55-68, Figs. 3-6. As such, we do not understand the Examiner to have
proposed replacing all of the straight vanes 14 of Cohn with bent legs.
Second, the argument is not commensurate with the scope of claim 1,
which does not restrict the spider segments to having only expansive
elements. Rather, claim 1 recites each spider segment "comprising a
plurality of expansive elements" where each expansive element is bent (i.e.,
having a first section and a second section oriented towards opposing ends
of the occluding device). Appeal Br. 20 (Claims App.). The claim does not
recite spider segments "consisting of' expansive elements, or otherwise
preclude the spider segments from including elements in addition to
expansive elements, such as the vanes 14 of Cohn.
Appellants further argue that "one of ordinary skill in the art [would
not] be motivated by the disclosure of Metals to modify the shape of the
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Application 10/746,131
wing-like members 14 of Cohn, which are specifically designed [to] control
the amount of venous blood circulating to the heart, in view of the bent legs
12, 14 of Metals, which are designed to center a filter before the other longer
legs are deployed and become hooked into the inside wall of the vein." Id.
at 10; see also id. at 9 ("the shape of the wing-like members 14 [of Cohn] is
designed to control the amount of venous blood circulating to the heart").
As is clear from the description of the prior art in Metals, devices such as
those having a similar configuration to the devices disclosed in Cohn, have a
known problem with centering the device in the vessel during deployment.
Metals, col. 2, 11. 38-54, Figs. 1, 2. We agree with the Examiner that based
on the express teaching in Metals, one having ordinary skill in the art would
have appreciated that modifying the occlusion device of Cohn to include
bent legs, as taught in Metals, would have solved this problem of centering.
Cohn discloses that "the occluding device may be adapted to provide a
small, or a high, or a substantially complete occlusion of the inferior vena
cava." Cohn, col. 2, 11. 21-23. We fail to be persuaded by Appellants'
argument that modifying the device of Cohn to include bent legs for
centering the device would somehow frustrate the occluding purpose of
Cohn's device. Rather, centering of the device to achieve the desired
amount of occlusion would seem to be an important consideration in
deployment of Cohn's occluding device in the vessel. We further agree with
the Examiner that a change to some of the vanes 14 of Cohn to a bent
configuration would not prevent the Cohn device from controlling the flow
of fluid through the lumen. Ans. 6.
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Appellants further argue that that "device of Cohn does not suffer
from the same problems of not being aligned with the center axis of the vein
as the device in Fig. 2 of Metals." Appeal Br. 10-11 (arguing that "one of
ordinary skill in the art would additionally understand that the device of
Cohn is in no danger of becoming substantially titled and that the proposed
combination is not warranted"). In support of this argument, Appellants cite
to a portion of Cohn discussing a modified embodiment of an occlusive
device depicted in Figures 4 and 5 that states, "[ t ]he overall length of the
occlusive device is relatively long with respect to its diameter so that it is in
no danger of becoming substantially tilted when it is left in position in the
inferior vena cava." Appeal Br. 11 (citing Cohn, col. 3, 11. 39-43). The
Examiner, however, relied on the embodiment of the occlusive device
depicted in Figure 2 of Cohn. As such, the sentence relied upon by
Appellants does not relate to the embodiment of Cohn on which the
Examiner relied and, thus, does not show Examiner error. Further, this
teaching in Cohn does not provide a complete solution to the problem of
tilting during deployment of the occlusive device. Rather, Cohn's solution
only avoids the device from becoming "substantially tilted." Despite Cohn's
partial solution to the problem of tilting, we agree with the Examiner that
one having ordinary skill in the art would still be led by the teaching of
Metals to add bent legs, to provide an improved technique to overcome the
problem of tilting in the art.
As to the limitation in claim 1 of the spider elements being oriented in
opposite directions, the Examiner found that Whitcher teaches an occluding
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device having first and second spider elements (12, 14) oriented in
opposition directions to one another (fig. 2). Final Act. 5. The Examiner
determined that it would have been obvious "to modify the Cohn spider
elements to be oriented in opposite direction to one another, as taught by
Whitcher, in order to properly orient the device within the lumen and prevent
tilting of the device." Id. at 6. Appellants argue that one having ordinary
skill in the art would not be motivated by the disclosure of Whitcher "to
modify the shape of the wing-like members 14 of Cohn" due to the different
purposes for the devices of Whitcher and Cohn. Appeal Br. 13. As noted by
the Examiner, this argument fails to respond to the Examiner's proposed
modification of Cohn, which is simply to change "the directional orientation
of the spider segments" based on the teaching of Whitcher. Ans. 7.
Appellants further argued that due to the differences in the Cohn and
\Vhitcher devices, "one of ordinary skill in the art would not reasonably
expect the proposed modification to have the proposed effect of maintaining
the modified device in a centered position within the vena cava." Appeal Br.
13. Appellants do not explain or provide adequate evidence demonstrating
why the Examiner erred in finding that reversing the orientation of one of
Cohn's spider segments would aid in centering the device in the vena cava.
Appellants further assert that "one of ordinary skill in the art would
additionally understand that the device of Cohn is in no danger of becoming
substantially tilted and that the proposed combination is not warranted." Id.
at 13-14. We find this argument not persuasive for the same reasons set
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Application 10/746,131
forth above in our analysis of the proposed modification of Cohn with the
teachings of Metals.
The Examiner relied on Nikolchev for its teaching of "an occluding
device (10) comprising a fibrous mass of strands (238) to help promote
tissue ingrowth and lumen occlusion" and determined that it would have
been obvious to further modify the device of Cohn to include such a fibrous
mass of strands. Final Act. 5. Appellants do not contest the Examiner's
finding as to the scope and content ofNikolchev or the proposed further
modification of Cohn with the teaching ofNikolchev. Appeal Br. 14
(arguing only that Nikolchev "does not remedy the deficiencies of Cohn,
Metals, and Whitcher discussed above").
For the reasons set forth above, Appellants have not demonstrated
error in the Examiner's rejection of claim 1. Accordingly, we sustain the
rejection of claim 1, and claims 3, 5, 7, 8, 13, 15-17, 23, 27, 29, 33, and 36,
which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over
Cohn, Metals, Nikolchev, and Whitcher.
Group 2: Claims 32 and 35
Appellants present arguments directed to the patentability of
dependent claims 32 and 35 under a separate subheading. Appeal Br. 14-15.
Despite addressing these claims under a separate subheading in the brief,
Appellants do not provide additional arguments directed to the patentability
of these dependent claims apart from the arguments presented previously for
the claims of Group 1. In particular, Appellants reiterate the subject matter
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of claims 32 and 35, assert that Cohn does not disclose the claimed subject
matter, and then quote the Examiner's finding that Metals discloses the
claimed subject matter. Id. Appellants do not contest this finding and argue
only that "the combinations cannot render obvious Appellant's [sic]
invention as claimed in dependent claim 3 2 and 3 5 for at least the same
reasons described above with regard to independent claims 1 and 23." Id. at
15. We find these arguments do not demonstrate error in the rejection of
claims 32 and 35 for the same reasons discussed above in our analysis of the
claims of Group 1. Accordingly, we sustain the rejection of claims 32 and
35 under 35 U.S.C. § 103(a) as unpatentable over Cohn, Metals, Nikolchev,
and Whitcher.
Group 3: Claims 34 and 37
Appellants present arguments directed to the patentability of
dependent claims 34 and 37 under a separate subheading. Appeal Br. 15-18.
Despite addressing these claims under a separate subheading in the brief,
Appellants do not provide additional arguments directed to the patentability
of these dependent claims apart from the arguments presented previously for
the claims of Group 1. In particular, Appellants reiterate the subject matter
of claims 34 and 37, assert that Cohn does not disclose the claimed subject
matter, and then quote the Examiner's findings as to the scope and content
of Metals and Whitcher that are relevant to the claimed subject matter. Id. at
15-16. Appellants do not contest these findings. Rather, Appellants present
the same arguments against the further modification of Cohn with the
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teachings of Whitcher that were presented in the arguments for the claims of
Group 1. Id. at 17. Appellants further contend that the combinations of
Cohn with Metals and Nikolchev "cannot render obvious Appellant's [sic]
invention as claimed in dependent claim[s] 34 and 37 for at least the same
reasons described above with regard to independent claims 1 and 23." Id. at
1 7-18. We find these arguments do not demonstrate error in the rejection of
claims 34 and 37 for the same reasons discussed above in our analysis of the
claims of Group 1. Accordingly, we sustain the rejection of claims 34 and
37 under 35 U.S.C. § 103(a) as unpatentable over Cohn, Metals, Nikolchev,
and Whitcher.
Remaining Grounds of Rejection
Appellants present no arguments directly addressing the second and
third grounds of rejection of dependent claim 9 and dependent claims 4 and
30, respectively. Because these grounds of rejection rely on the same
underlying combination of Cohn, Metals, Nikolchev, and Whitcher as relied
upon for the rejection of independent claims 1 and 23, we understand
Appellants to rely on the same arguments presented for the claims of Group
1 in seeking reversal of the second and third grounds of rejection. For the
reasons set forth above, we sustain the rejections under 35 U.S.C. § 103(a)
of claim 9 as unpatentable over Cohn, Metals, Nikolchev, Whitcher, and
Simon, and of claims 4 and 30 as unpatentable over Cohn, Metals,
Nikolchev, Whitcher, and O'Connell.
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DECISION
The decision of the Examiner to reject claims 1, 3-5, 7-9, 13, 15-17,
23, 27, 29, 30, and 32-37 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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