Ex Parte BUISER et al

Patent Trial and Appeal BoardMay 4, 2016

12188585 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/188,585 08/08/2008 121974 7590 05/06/2016 KACVINSKY DAISAK BLUNI PLLC America's Cup Building 50 Doaks Lane Marblehead, MA 01945 FIRST NAMED INVENTOR Marcia BUISER 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. 7314022001 5308 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/06/2016 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): kddocketing@cpaglobal.com bbonneville@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCIA BUISER and CHRISTOPHER NARDONE Appeal2014-003505 Application 12/188,585 1 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marcia Buiser and Christopher Nardone (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's Final Rejection of claims 1-11, 14, and 16-22.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Boston Scientific Scimed, Inc. Br. 2. 2 Claims 12, 13, 15, and 23-27 were canceled. Id. Appeal2014-003505 Application 12/188,585 CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. An implant delivery system, comprising: a detachable link connecting an implantable device to a pusher wire, the detachable link comprising an elongate body extending along a longitudinal axis from a proximal end to a distal end, the elongate body comprising a first arm having a slot and a first arm extension portion distal to the slot, and a second arm having a second arm extension portion adapted to mate with the first arm slot, and a recessed area proximal of second arm extension portion, the recessed area comprising a guide protrusion configured to mate with a guide recess located on the first arm extension portion when the second arm extension portion mates with the first arm slot to thereby inhibit relative transverse and/or rotational movement between the first and second arms when the first and second arms are mated. REJECTIONS The following Examiner's rejections are before us for review. 1. Claims 1-10 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2. Claims 1-11, 14, and 18-22 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Palermo (EP 0829236 Al, pub. Mar. 18, 1998). 3. Claims 1-11, 14, and 16-22 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Palermo and Orr (US 5,853,375, iss. Dec. 29, 1998). 2 Appeal2014-003505 Application 12/188,585 Indefiniteness rejection ANALYSIS As the Examiner points out, Appellants do not argue the rejection of claims 1-10 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. Ans. 6. We summarily sustain the Examiner's decision to reject claims 1-10 as being indefinite. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board .... the Board may treat any argument with respect to that ground of rejection as waived") (citation omitted). Anticipation of Claims 1-11, 14, and 18-22 by Palermo We are persuaded by Appellants' arguments that the Examiner failed to establish a prima facie showing of anticipation in rejecting claims 1-11, 14, and 18-22 over Palermo. The Examiner finds that Palermo anticipates claims 1 and 11 by disclosing an implant delivery system with all the elements recited by those independent claims, including "a guide protrusion (distal tip of control wire 106) configured to mate with a guide recess (hole in first arm extension) located on the first arm extension portion ... to inhibit relative transverse and/or rotational movement between the first and second arms when the first and second arms are mated." Final Act. 3. (emphasis added). However, Appellants explain that "Palermo does not disclose or suggest a 'guide recess located on the first arm extension portion,' as required by claims 1 and 11," but "discloses 'an interior axial passageway' 3 Appeal2014-003505 Application 12/188,585 in the first arm extension portion, i.e., a lumen defined by the first [arm] extension portion." Br. 4 (citing Palermo, para. 29, and Figs. lA-5). Appellants also point out that "the Examiner admits on page 7 of the Final Office Action that Palermo 'fails to disclose the recessed area comprises a guide protrusion configured to mate with a guide recess located on the first arm extension portion.'" Id. While at page 3 of the Answer, the Examiner responds that "Palermo clearly discloses a recessed area ... with a guide protrusion (distal tip of control wire 106)," we agree with Appellants that Figure 5 of Palermo does not disclose a guide protrusion on the recessed area of Palermo as recited by claims 1 and 11. See the annotated figures on page 5 of the Appeal Brief. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. Â§ 102. Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the Examiner's decision rejecting claims 1-11, 14, and 18-22 as anticipated by Palermo. Obviousness of Claims 1-11, 14, and 16--22 over Palermo and Orr In rejecting claims 1-11, 14, and 16-22 over Palermo and Orr, the Examiner relies on Palermo for teaching essentially all of the limitations of claim 1, but looks to Orr for disclosing "a guide protrusion and socket (Fig 1, peg and socket) extending between the first and second arms (Fig 1) adapted to inhibit relative transverse and/or rotational movement between the first and second arms (abstract)." Final Act. 7-8. The Examiner then reasons that "[i]t would have been obvious ... to add the guide member of 4 Appeal2014-003505 Application 12/188,585 Orr to the device of Palermo in order to provide a stronger fit for the detachable link." Id. at 8 (emphasis added). While acknowledging that Orr "discloses a guide wire extension assembly having a 'peg-and-hole' connection for mating the ends of a respective guide wire and extension wire," Appellants contend that "[a]dding a 'peg-and-hole' connection to the interlocking clasps of Palermo would in fact interfere with the control wire of Palermo by physically obstructing the passageway of the control wire within the interlocking clasps, (i.e. by placing the peg in the wire passageway), thus, rendering the device of Palermo inoperable for its intended purpose." Br. 6. However, Appellants' contention amounts to unsupported attorney arguments, and thus is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). As the Examiner illustrates with an annotated version of figure 5 of Palermo, a "peg and hole [like that of Orr] could be provided that would not interfere with the control wire mechanism [of Palermo] as argued by [Appellants]," because "[i]t would not obstruct the passageway of the control wire 106 of Palermo." Ans. 5. Appellants have not provided any persuasive factual evidence or technical reasoning that the Examiner's proposed modification of Palermo with the teachings of Orr would have been beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). 5 Appeal2014-003505 Application 12/188,585 Appellants also contend that "only by using improper hindsight in view of the Appellants' specification would someone remove and replace the control wire in Palermo with the peg-and-hole connection of Orr." Br. 6. However, the Examiner explains that the rejection was not based on "substituting the peg and hole mechanism of Orr [for] the control wire mechanism of Palermo," but on "providing an additional means of interlocking the detachable portions of Palermo," who already "clearly discloses multiple mechanisms of attachment to ensure a stable connection between detachable portions 110 and 104." Ans. 4. We agree, having been instructed by our reviewing court that the presence of additional structures in the prior art does not undermine a rejection where the claim uses "comprising." See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) ("The claim uses the term 'comprising,' which is well understood in patent law to mean 'including but not limited to."'). For these reasons, we are not persuaded that the Examiner erred in rejecting claims 1-11, 14, and 16-22 under 35 U.S.C. Â§ 103(a) over Palermo and Orr. DECISION The rejection of claims 1-10 under 35 U.S.C. Â§ 112, second paragraph, is AFFIRMED. The rejection of claims 1-11, 14, and 18-22 under 35 U.S.C. Â§ 102(b) as anticipated by Palermo is REVERSED. The rejection of claims 1-11, 14, and 16-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Palermo and Orr is AFFIRMED. 6 Appeal2014-003505 Application 12/188,585 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7