Ex Parte Wittenberger et al

Patent Trial and Appeal Board

Dec 30, 2015

11476928 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111476,928 06/28/2006 Dan Wittenberger
89554 7590 01/04/2016
Christopher & Weisberg, P.A.
200 East Las Olas Boulevard
Suite 2040
Fort Lauderdale, FL 33301
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.
21819-238U (P0035597.00) 2188
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
ptomail@cwiplaw.com
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN WITTENBERGER, MARWAN ABBOUD, and
IOANADEAC
Appeal2013-007561
Application 11/476,928
Technology Center 3700
Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dan Wittenberger et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1, 3-
7, 24, and 25 as unpatentable over Hart (US 5,868,708; iss. Feb. 9, 1999)
and Dubrul (US 2004/0260333 Al; pub. Dec. 23, 2004). Claims 2 and 8-23
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 1, 3-7, 24, and 25 pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal2013-007561
Application 11/476,928
CLAI1\1ED SUBJECT l\1ATTER
The claimed subject matter relates to "a medical device capable of
having multiple geometric configurations." Spec. para. 3; Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is illustrative of the
claimed subject matter and recites:
1. A medical device, comprising:
a shaping element selectively transitionable from a first
geometric configuration to a second geometric configuration,
the shaping element defining a braided mesh including a
plurality of first material components biased towards the first
geometric configuration, and a plurality of second material
components biased towards the second geometric
configuration;
an actuator element coupled to the shaping element,
wherein the actuator element is coupled to the shaping element
to transition the shaping element from the first geometric
configuration to the second geometric configuration; and
an expandable element at least partially disposed within
the shaping element.
Appeal Br. 7, Claims App.
ANALYSIS
Independent claim 1 recites a medical device, including, in relevant
part, "the shaping element defining a braided mesh including a plurality of
first material components biased towards the first geometric configuration,
and a plurality of second material components biased towards the second
geometric configuration." Id. The Examiner finds that Hart discloses the
medical device of claim 1 substantially as claimed except "Hart does not
teach the braided mesh including a plurality of first material components
biased towards the first geometric configuration and a plurality of second
material components biased towards the second geometric configuration."
Final Act. 2. The Examiner finds that "Dubrul teaches an analogous shaping
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Application 11/476,928
element (i.e. a tubular braid, see [0183- 0188]) selectively expandable for a
first geometric configuration to a second geometric configuration ([O 185]),"
"the tubular braid including a plurality of first material components biased
towards the first configuration, and a plurality of second material
components biased towards the second configuration ([0186])." Id. at 2-3.
According to the Examiner:
[Dubrul's] disclosure of the use of more than one material (i.e.
the non-elastic filaments and the elastic filaments which can be
a shape memory materials) inherently teaches a bias towards a
certain configuration. For example, the shape memory can be
programmed to be in either an elongated configuration or and
expanded configuration while the non-elastic filaments can also
either be programmed to be in an elongated configuration or
and expanded configuration. Therefore, there is an inherent
bias towards the two configurations that results from the
programming of the shape memory alloy which result in one
bias in combination with the non-elastic filaments which result
in another bias.
Id. at 3; see also id. at 5; Ans. 3.
Appellants contend that "the cited references fail to teach a bias
toward either a first or second geometric configuration." Appeal Br. 3.
Specifically, Appellants contend:
[Dubrul does] not disclose using [] Lay-In yams, even if
elastic in nature, to bias the tubular braid towards either a first
or second geometric configuration. Furthermore, even if
different materials were used in the Dubrul device, it does not
necessarily mean that each material is biased towards different
geometric configurations.
Id. at 3--4; see also Reply Br. 6.
In this case, the Examiner does not establish by a preponderance of
the evidence how the use of more than one material in Dubrul inherently
teaches a bias towards a certain configuration. See Final Act. 3; see also id.
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Application 11/476,928
at 5; Ans. 3. "Inherency ... may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient."' In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (internal quotations and citations omitted). The Examiner's
finding does not go far enough to show that the use of shape memory elastic
filaments and non-elastic filaments necessarily results in "bias towards []
two configurations." See Final Act. 3; see also id. at 5; Ans. 3.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1 and its dependent claims 3-7,
24, and 25 as unpatentable over Hart and Dubrul. 1
NEW GROUND OF REJECTION
Claims 1, 3-7, 24, and 25
We enter a new ground of rejection of claims 1, 3-7, 24, and 25 under
35 U.S.C. § 103(a) as unpatentable over Hart and Dubrul.
Independent claim 1
We agree with and adopt as our own the Examiner's findings as to the
disclosure of Hart. In particular, we agree with the Examiner that Hart
discloses the medical device of claim 1 substantially as claimed except Hart
does not disclose the braided mesh including a plurality of first material
1 We note that Appellants contend: "Neither the Hart nor Dubrul reference
discloses a device for ablating tissue. Instead, both references disclose
devices suitable for removing vascular occlusions." Appeal Br. 4.
However, as correctly noted by the Examiner, "the features upon which
[Appellants rely] (i.e., an ablation device) are not recited in the rejected
claim(s)." Ans. 3. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability ).
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Appeal2013-007561
Application 11/476,928
components biased towards a first geometric configuration and a plurality of
second material components biased towards a second geometric
configuration. See Final Act. 2. 2
Dubrul discloses a medical device including a tubular mesh braid
shaping element. Specifically, Dubrul discloses:
[The] tubular mesh braid could be composed of many
different materials used now in the medical device industry as
well as newer yet to be released or discovered materials
including, but certainly not limited to polymers such as PET' s,
Silicones, Nylons, Polyesters, Mylar, etc. metals and metal
alloys such as Stainless Steels, Elgiloys, NiTi's (Nickel
Titanium alloys, both TWSM (Two Way Shaped Memory) and
Super Elastic NiTi's), etc.
Id. at para. 169 (emphasis added). Dubrul further discloses:
The tubular braid is preferably formed as a mesh of
individual non-elastic filaments (called "yams" in the braiding
industry). However, it can have some elastic filaments
interwoven to create certain characteristics. . . . all expandable
mechanisms described heretofore, can be manufactured using
shape memory materials so that they are self expanding or even
expandable when certain temperatures or thermal energies are
delivered to the mechanisms. Such material characteristics can
be accomplished with different programming methods such as,
but not limited to Two Way Shape Memory (TWSM) alloys.
Id. at para. 186 (emphasis added).
Under the broadest reasonable interpretation of claim 1, a skilled
artisan would recognize that Dubrul discloses a shaping element defining a
braided mesh including a plurality of first material components (e.g., non-
elastic and shape memory elastic filaments) that would be biased
(programmed) towards a first geometric configuration upon heating, and a
2 We note that Appellants do not dispute the findings of the Examiner
regarding the Hart reference. See Appeal Br. and Reply Br., generally.
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Application 11/476,928
plurality of second material components (e.g., non-elastic and shape memory
elastic filaments) that would be biased (programmed) towards a second
geometric configuration upon cooling (i.e., via Two Way Shape Memory
(TWSM) alloys). 3 It would have been obvious to one of ordinary skill in the
art at the time of the invention to substitute the tubular braid of Dubrul for
the shaping element of Hart as an obvious substitution of one known shaping
element for another. Additionally, it would have been advantageous to
substitute the tubular braid of Dubrul for the shaping element of Hart
because this technique has been used to improve a medical device, a person
of ordinary skill in the art would recognize that it would improve similar
medical devices in the same way, and application of this technique is not
beyond the skill level of one of ordinary skill in the art. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). The improvement of adding
shaping elements of material components having different geometric
configurations to a medical device is the predictable use of the prior art
elements according to their established functions. Id. In other words, the
shaping elements taught by Dubrul provide use-enhancing features to the
medical device of Hart, in accordance with their functions as established by
3 Appellants' description does not differentiate the first and second material
components. See Spec. para. 28 (emphasis added) ("[T]he transition from a
first particular configuration to a second particular configuration of the
shaping element 22 may be achieved by the application of mechanical,
thermal, or electrical forces. Further, the transition may be a result of
particular material properties exhibited by the construction of the shaping
element 22. For example, the shaping element 22 may include a mesh
structure including components made from a shape-memory material, as
well as components made from a relatively non-elastic material.").
Moreover, other than being recited in claim 1, the terms "first material
components" and "second material components" do not appear in
Appellants' disclosure. See Spec., generally.
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Application 11/476,928
Dubn.11. As such, the combined disclosures of Hart and Dubnil render
unpatentable the claimed medical device as called for in independent claim
1.
Dependent claims 3-7, 24, and 25
We agree with and adopt as our own the findings of the Examiner as
to the disclosures in Hart and Dubrul of the features called for in claims 3-7,
24, and 25 and the articulated reasoning for modifying the medical device of
Hart with such features. See Final Act. 3-5.4 Based on the same findings
and reasoning articulated by the Examiner, we determine that claims 3-7,
24, and 25 are unpatentable over the combination of Hart and Dubrul.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3-7,
24, and 25 as unpatentable over Hart and Dubrul.
We enter a NEW GROUND OF REJECTION, pursuant to 37 C.F.R.
§ 41.50(b), of claims 1, 3-7, 24, and 25 under 35 U.S.C. § 103(a) as set forth
supra.
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
4 We note that Appellants do not present arguments for dependent claims 3-
7, 24, and 25 separate from those presented for independent claim 1. See
Appeal Br. 5.
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Appeal2013-007561
Application 11/476,928
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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).
REVERSED; 37 C.F.R. § 41.50(b)
msc
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