12934878 - (D) (P.T.A.B. Jul. 28, 2020)

Malte Neuss

Patent Trials and Appeals BoardJul 28, 2020

12934878 - (D) (P.T.A.B. Jul. 28, 2020)

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. 12/934,878 11/16/2010 Malte Neuss MALT0101PUSA 1193 62836 7590 07/28/2020 Brooks Kushman P.C. / BERLINER & ASSOCIATES 1000 Town Center, 22nd Floor 22nd Floor Southfield, MI 48075 EXAMINER ORKIN, ALEXANDER J ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 07/28/2020 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): docketing@brookskushman.com lwerk@brookskushman.com nwhitlock@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MALTE NEUSS ____________ Appeal 2019-006655 Application 12/934,878 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and JAMES A. WORTH, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 6, 7, 9, 11, 13, 14, and 17–21.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Malte Neuss. Appeal Br. 1. 2 Claims 2–5, 8, 10, 12, 15, and 16 are cancelled. Appeal Br. (Claims App.). Appeal 2019-006655 Application 12/934,878 2 CLAIMED SUBJECT MATTER Claims 1 and 21 are independent claims. Claim 1 illustrates the claimed subject matter. 1. A self-expanding implant for closing of defect openings in human and animal bodies that, in a first state, has the shape of an elongated tube with slit segments and, in a second state, takes on a shorter shape, that defines a proximal and a distal umbrella with a larger lateral extension and a middle piece, the slit segments of the tube forming individual strips (16) that are respectively connected to adjacent strips, the strips forming the proximal and distal umbrellas having equal length so that an overall net-like structure emerges in the second state with an approximately rhombus-shaped or hexagonal-shaped mesh structure, wherein strips of the proximal and distal umbrellas are directly connected to strips of the middle piece, the strips of which in the first state run diagonally parallel in order to reduce tension and for self- centering the implant after implantation, the implant being formed from connected strips of multiple wires that are merged into an annular or tubular shape at both ends, the strips consisting of braided multiple wires and collectively forming approximately quadrangular parallelograms, rhombi or hexagons that are each connected at the tip to the next parrallelogram [sic], rhombus or hexagon thereby facilitating retrieval of the implant. Appeal Br. (Claims App.). REJECTIONS ON APPEAL Claims 1, 6, 7, 9, 11, 13, 14, 17–19, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cahill (US 2008/0249562 A1, published Oct. 9, 2008), Kavteladze (US 6,063,113, issued May 16, 2000), and Huebsch (US 5,853,422, issued Dec. 29, 1998). Final Act. 3. Appeal 2019-006655 Application 12/934,878 3 Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cahill, Kavteladze, Huebsch, and Gainor (US 6,440,152 B1, issued Aug. 27, 2002). Final Act. 7. ANALYSIS Claims 1, 6, 7, 9, 11, 13, 14, 17–19, and 21 as unpatentable over Cahill, Kavteladze, and Huebsch As to claim 1, the Examiner finds that Cahill discloses a self- expanding implant that, in a first state, has the shape of an elongated tube with slit segments (Fig. 5), and, in a second state, takes on a shorter shape that defines a proximal umbrella (proximal side 40), a distal umbrella (distal side 30), and a middle piece (center portion 25) (Fig. 8), where the slit segments form individual strips (proximal struts 42, distal struts 32) forming the proximal and distal umbrellas. Final Act. 3. The Examiner also finds that Cahill’s strips “run diagonally parallel” to reduce tension and for self-centering after implantation, as claimed. Final Act. 3 (citing Cahill ¶¶ 49–51, 67). Regarding this claimed requirement, the Examiner submits that Cahill discloses that cuts can be made both straight and diagonal to form loops, and that middle section cuts can form curved or flat loops with different profiles. Id. at 3–4 (citing Cahill ¶¶ 49–51). The Examiner also determines that, if Cahill does not anticipate the claimed diagonally parallel strips, then it would have been obvious to one of ordinary skill in the art to have the middle section strips run diagonally parallel to each other, as stated in paragraph 49 of Cahill, to “provid[e] sufficient stiffness to withstand deployment stresses, improved collapsibility and or Appeal 2019-006655 Application 12/934,878 4 transformability informed conformance with anatomical landmarks or the anatomy [sic] the patient’s tissue.” Id. at 4. Appellant contends, inter alia, that Cahill does not disclose that strips of its middle piece run diagonally parallel to reduce tension and for self- centering the implant after implantation. Appeal Br. 6. Appellant also contends that paragraph 49 of Cahill does not provide motivation to modify the strips of the middle piece to run diagonally parallel, but is completely silent about a center portion. Id. The Examiner responds that “the claims does [sic] not state that each strip is diagonally parallel to an adjacent strip.” Ans. 5–6. The Examiner also submits that Figure 13 of Cahill “disclose[s] a middle section that will have a strip which will be diagonally parallel to another strip,” as depicted in the annotated version of this figure. Id. at 6. Claim 1 recites, “strips of the proximal and distal umbrellas are directly connected to strips of the middle piece, the strips of which in the first state run diagonally parallel in order to reduce tension and for self- centering the implant after implantation.” Appeal Br. (Claims App.) (emphasis added). This limitation requires that the strips of the middle piece run diagonally parallel in the claimed first state in which the implant “has the shape of an elongated tube.” Appeal Br. (Claims App.). Regarding this limitation, Appellant’s Figures 46 and 47 depict diagonally parallel strips 70 of the middle piece 14 in the first state of the implant. See Spec. 40–41. As shown in these figures, each of the strips 70 extend in the same orientation. The Examiner has taken the position that Cahill’s implant has the shape of an elongated tube in the “first state” shown in Figure 5, and has an expanded configuration in the “second state” shown in Figure 8, in which the implant “defines a proximal and a distal umbrella.” Final Act. 3. As Appeal 2019-006655 Application 12/934,878 5 shown in Figure 5, each of the struts 52 of the center portion extends longitudinally parallel to the other struts 52. Similar to Figure 8 of Cahill, Figure 13 of Cahill shows an occluder in an expanded, deployed condition. See Cahill ¶¶ 63–64. To be consistent with the Examiner’s position in regard to the configuration shown in Figure 8, we must assume that the Examiner considers the configuration of the occluder shown in Figure 13 of Cahill to likewise correspond to the claimed second state, not the claimed first state. Applying this assumption, the configuration shown in Figure 13 does not disclose “strips of the middle piece, the strips of which in the first state run diagonally parallel,” as claimed. Alternatively, the Examiner submits that Cahill discloses generally that the center portion will have slits (citing ¶ 50) and that slits can be made that run parallel and angled (citing ¶ 49), where the angled cuts can have at least two parallel cuts, similar to Figure 13. Ans. 6. We note, however, that paragraph 49 of Cahill describes the loops 35 and 45 of the respective distal side 30 and proximal side 40. See Cahill ¶ 49. This paragraph does not describe that strips of the central portion 25, much less that those strips run diagonally parallel to each other, or that this orientation of the middle section strips would provide sufficient stiffness, etc., as the Examiner implies. See Final Act. 4. Although paragraph 50 of Cahill describes the struts 52 of the central portion 25, it does not describe or suggest that the struts 52 do, or can, run diagonally parallel to each other, especially in a first state, as claimed. See Cahill ¶ 50. We agree with Appellant that paragraphs 49–51 of Cahill fail to support the Examiner’s obviousness position. For the above reasons, we do not sustain the rejection of claim 1, and claims 6, 7, 9, 11, 13, 14, and 17–20 depending therefrom, as unpatentable Appeal 2019-006655 Application 12/934,878 6 over Cahill, Kavteladze, and Huebsch. Additionally, we do not sustain the rejection of independent claim 21 for the same reasons as those for claim 1. Claim 20 as unpatentable over Cahill, Kavteladze, Huebsch, and Gainor3 The Examiner’s additional reliance on Gainor does not cure the deficiency in the rejection of claim 1. Final Act. 7. Accordingly, we do not sustain the rejection of claim 20 as unpatentable over Cahill, Kavteladze, Huebsch, and Gainor. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 7, 9, 11, 13, 14, 17– 19, 21 103(a) Cahill, Kavteladze, Huebsch 1, 6, 7, 9, 11, 13, 14, 17–19, 21 20 103(a) Cahill, Kavteladze, Huebsch, Gainor 20 Overall Outcome 1, 6, 7, 9, 11, 13, 14, 17–21 REVERSED 3 The rejection heading indicates that the rejection of claim 20 is over Cahill, Gilson, Kavteladze, and Gainor. Final Act. 7. However, the discussion of the rejection describes that the rejection is over Cahill, Kavteladze, Huebsch, and Gainor, which is consistent with claim 20 depending from claim 1. Id.